PTAB Has Its Day in Court: The Anticipated Impact of 'Oil States' and 'SAS'*


PTAB Has Its Day in Court: The Anticipated Impact of ‘Oil States’ and ‘SAS’*

The arguments in the much-awaited Oil States case highlighted two chief issues for the Court to resolve: (1) whether an Executive Branch agency has the authority to revoke issued patent claims, and (2) whether the process is too judicial in nature for an Executive Branch agency.

Regarding the issue of whether the PTAB has the power to revoke issued patents, Oil States pressed its view that patents are a private right and, as a result, the PTAB does not have the authority to revoke those rights. Justice Gorsuch compared a patent right to historically private rights like land patents. The Court also questioned whether inter partes reviews should be available retroactively for pre-AIA patents. On behalf of the Executive Branch, the Deputy Solicitor General argued that because pre-AIA patents were sought with the understanding that the patents could be invalidated through reexamination, retroactive application is fair.

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*This article first appeared in The Recorder, December 5, 2017.

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