We're Ready To Review Your Legal Matter

We Work With Clients Locally And Globally

Sovereign Immunity and Patent Challenges

The USPTO's Patent Trial & Appeal Board (PTAB) recently dismissed a petition for Inter Partes Review (IPR) challenging the validity of a patent owned by the University of Florida Research Foundation on unusual grounds. In a detailed decision, the PTAB ruled that the Research Foundation-a Florida state institution-had not waived its sovereign immunity under the Eleventh Amendment.

The USPTO's Patent Trial & Appeal Board (PTAB) recently dismissed a petition for Inter Partes Review (IPR) challenging the validity of a patent owned by the University of Florida Research Foundation on unusual grounds. In a detailed decision, the PTAB ruled that the Research Foundation-a Florida state institution-had not waived its sovereign immunity under the Eleventh Amendment.

Notably, the PTAB found no merit in the challenger's arguments that the lack of monetary damages in proceedings before the PTAB distinguishes such proceedings from a judicial challenge. Thus, without consent, the validity of patents owned by state entities (such as state universities) cannot be challenged at the USPTO. This could add significant value to such patents, especially during the licensing stage.

An interesting question remains whether a state entity implicitly waives its sovereign immunity if it brings a patent infringement action itself, and the patent is subsequently challenged in front of the PTAB.

Case details: Covidien LP v. UFRF Inc., IPR2016-01274, paper 19.

No Comments

Leave a comment
Comment Information

Questions?

Bold labels are required.

Contact Information
disclaimer.

The use of the Internet or this form for communication with the firm or any individual member of the firm does not establish an attorney-client relationship. Confidential or time-sensitive information should not be sent through this form.

close

Privacy Policy

Email Us For A Response

10801 Mastin Boulevard
Suite 1000
Overland Park, KS 66210

Toll Free: 888-483-2697
Fax: 913-647-9057
Map & Directions