"Challenging the Fundamentals of Administrative Review in the Patent System," Daily Report


In an article published on Jan. 8, 2018 in the Daily Report, Lori Johnson discusses two recently argued Supreme court cases that may frustrate the entire patent review system. Oil States Energy Services v. Greene’s Energy Group, and Statistical Analysis System (SAS) Institute v. Lee question the means and the constitutionality of the Leahy-Smith America Invents Act (AIA) of 2012.

Johnson explains that under the current administrative review process, a person dissatisfied with the grant of a patent files a petition with the U.S. Patent and Trademark Office (USPTO). Then the USPTO determines if it will institute the proceeding and conduct a mini-trial. SAS challenges how the agency carries out these proceedings, Johnson writes. The case “… contends that, while the USPTO has the right to decide which issues to try, it is required by statute to address all challenged claims in the written decision.” Oil States addresses the constitutionality of these proceedings. Johnson continues, “Oil States argues that Congress went beyond their authority when they allowed patent challenges to occur outside an Article III forum, without a jury.”

Johnson explains that the Supreme Court’s decision in these cases will have serious commercial impact, as companies use these proceedings to reduce the cost and uncertainty associated with patent litigation. According to Johnson this highlights an important issue: “Just because many do not like the cost and lack of certainty associated with patent litigation, that doesn’t necessarily give Congress the ability to address the problem by removing the decision of patent validity from the federal courts.”

Patent Office Practice Blog