Scott D. Marty, J.D., Ph.D.
Over the last several months, universities and technology
transfer programs have increasingly become the target of petitions for Inter
Partes Review (IPR) filings. Effective September 16, 2012, IPR proceedings
allow parties to challenge the validity of an issued patent before the United
States Patent and Trademark Office (USPTO).
To date, more than 360 petitions for IPR have been filed,
mostly by defendants in co-pending patent infringement actions. In their
approach to patent defense, universities and many state-run technology transfer
licensing programs have relied on the benefit of immunity based on the 11th
Amendment of the U.S. Constitution (state sovereign immunity) to avoid having
to defend the validity of their issued patents.
It is clear from the recent flurry of activity before the
USPTO that the 11th Amendment is no longer an easy option for
universities to avoid defending their intellectual property rights. In most
cases, universities remain the owners of patents that are licensed to
commercial partners who often venture out to enforce those patents against
alleged infringers. These actions can put university-owned patents in a new
type of jeopardy where immunity under the 11th Amendment cannot save
It is important to note, however, that a co-pending
litigation is not required for a third party to involve a university in an IPR
proceeding. The mere ownership of a patent provides all that is necessary to
render a party susceptible to a third-party challenge of validity in an
IPR proceeding. Just being served with a petition for IPR requires the patent
owner to reply.
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