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 them.

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.

Ballard Spahr’s Intellectual Property Department has a team of patent prosecutors and litigators who have experience with IPR proceedings. Our attorneys have the skills and know-how to file IPR petitions for university clients. Our deep knowledge of universities, coupled with our early experience in these new IPR proceedings, provides us with a unique perspective on this quickly growing practice. For more information, please contact Scott D. Marty, Ph.D., J.D.,  at 678.420.9408 or martys@ballardspahr.com. 


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