The availability of state sovereign immunity shields against IPR petition challenges to patent claims of state-chartered universities and their affiliates is a hot topic within TTO circles. Where available PTAB immunity increases patent value and royalties. Issues still under consideration, however, include:
- How broad is the immunity’s reach from state capitals beyond state-chartered university affiliates?
- When must non-waiver status be asserted?
- When is it legally presumed to have been abandoned?
- Does it apply to other PTO proceedings like reexaminations?
- Are there any district court patent proceedings to which it does not apply?
- If you assert a patent in a district court enforcement proceeding is it then considered waived at PTAB?
- Can its protective shield be shared with non-state chartered universities or other co-owners?
The extent of state sovereign immunity’s availability under the 11th amendment has been considered again at PTAB. A petition against a state-chartered university was rejected when the university in question was found not to have waived its immunity despite its initial engagement in the preceding. This post highlights some of these issues and also links to an IPWatchdog post that does so in more depth. PTAB is an expensive and deadly procedure for all university patent holders. Yet only same have 11th Amendment immunity. CAFC will have to clarify some of these issues. One open question is how its eventual clarification will bear on the formation of friendly “ownership alliances” with state agencies or with state-chartered universities. Continue reading 11th Amendment Sovereignty Reach to be Tested