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Supreme Court ruling affects IPR and post-grant review processes

Patents give holders a great deal of control over an invention. These rights determine who may use, sell and license the invention, and it can be a crucial component of a business’s competitive edge in the marketplace.

However, people can challenge patents. And a recent U.S. Supreme Court ruling could make it easier for parties to do so.

APJ decisions now subject to review

Currently, when parties wish to challenge the patentability of an issued patent in the U.S., they can petition for inter partes review (IPR). As part of this process, an Administrative Patent Judge (APJ) will render a final decision. The decisions were not subject to review. 

However, the U.S. Supreme Court recently ruled that this was a Constitutional defect because it gave APJs unreviewable authority as “principal officers.” To remedy the defect, the Court ruled that APJ decisions will be subject to review by the Director of the United States Patent and Trademark Office, appointed by the President.

Thus, parties may now decide to seek a Director-level review of APJ decisions with which they disagree. Note that the ruling does not require the Director to review APJ decisions; it provides another opportunity for contesting decisions and seeking a satisfactory outcome.

What does this mean for Minnesota businesses?

The implication of this ruling remains to be seen. Further, it depends on whether you are a patent-holder or someone challenging patentability.

If you previously went through IPR and continue to enjoy patent rights for an invention, you could be discouraged to learn that parties may seek a rehearing. This process could result in more time, expenses and stress for you.

If you previously challenged patentability in IPR and were dissatisfied by the outcome, you may want to explore your options for requesting a rehearing. Note, however, that President Biden has yet to appoint a Director.

This ruling can also serve as a reminder that patent cases are not always as straightforward as people expect. There are a host of legal nuances that can change over time that will affect patent holder rights. Thus, navigating these complicated situations with an attorney can be crucial.


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