Supreme Court Upholds Patent Office Authority

A challenge to the Patent Office’s authority was denied by the Supreme Court earlier this year. This case was one of two significant rulings by the Supreme Court that will affect intellectual property rights well into the future. The issue before the court in this case was how far the Patent Office can go in determining patent rights through inter partes reviews.

This case, Cuozzo Speed Technologies v. Lee, is an authoritative interpretation of the landmark legislation known as the Leahy-Smith America Invents Act. The controversy of the case began when the Patent Office, of its own accord, instituted a so called “inter partes review” of several of the claims involved in a dispute. The patent holder was doubly upset when the spontaneous review of their claims were invalidated because of the Patent Office.

The case wound its way through the judicial system, and ended in the Supreme Court asking three questions. Those questions were whether:

  • The Patent Office can institute an inter partes review without being requested;
  • A party can appeal the Patent Office’s decision to begin an inter partes review;
  • The Leahy-Smith Act grants the Patent Office the authority to write a regulation demanding patents be construed in the broadest reasonable construction available;

All of these questions were answered against the patent holder, and the court upheld the Patent Office’s authority to do all of what it did.

Inter Partes Review

Inter partes reviews have long been part of the patent dispute process. Typically a third party will make a request for the Patent Office to review the validity of a patent claim. But since the implementation of the Smith-Leahy Act, this authority and process has been significantly bolstered. Now there is a patent review board made up of former patent attorneys and judges, and their decisions can invalidate a patent for a number of reasons.

The determination to issue an inter partes review is an appeal, by statute. That does not mean, however, that if the board invalidates a claim that decision cannot be appealed. Just the opposite, if a patent is invalidated the patent holder can ask for judicial review. But in this decision the court made it clear that a party cannot appeal the decision to issue an inter partes review, even if the Patent Office institutes it.

Rulemaking Authority

The court also upheld the Patent Office’s broad authority to issue rules regarding this process. Like most major pieces of legislation that come from the Congress, it issued broad rulemaking authority to the Patent Office, and those rules take on the force of federal law in more ways than one. Essentially, once Congress abdicates that power, it is found in the federal agency where it is lodged.

Intellectual property law is complex, dynamic, and ever changing. Your company needs the right counselors on your side to help navigate the many facets of IP law, and give your the right advice. At The Royse Law Firm we can help guide your company in all the aspects of business law, including patent law and IP law. Contact us today to help meet your company’s needs.

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Roger Royse
rroyse@rroyselaw.com

Roger Royse, the founder of the Royse Law Firm, works with companies ranging from newly formed tech startups to publicly traded multinationals in a variety of industries. Roger regularly advises on complex tax structuring, high stakes business negotiations and large international financial transactions. Practicing business and tax law since 1984, Roger’s background includes work with prominent San Francisco Bay area law firms, as well as Milbank, Tweed, Hadley and McCloy in New York City. Read My Full Bio

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