Articles

Jason Hoffman Article Analyzes Effects of Retroactive Inter Partes Review

Articles / September 15, 2017

Partner Jason Hoffman authored an article published by Law360 on Sept. 12, 2017. In the article, “How Congress Making IPR Retroactive Affects Oil States,” Hoffman discusses the upcoming U.S. Supreme Court case Oil States Energy Services v. Green’s Energy Group, which will determine the constitutionality of inter partes review. Hoffman identifies the history of both inter partes re-examination and inter partes review and identifies a key distinction, the retroactive nature of inter partes review, writing: “inter partes re-examination was prospective in nature — it only applied to patent applications filed after the effective date of the statute. In contrast, in 2011 when Congress provided for inter partes review, this new procedure not only applied to new patents, but was also retroactive in nature, and applied to patents then in force.” Hoffman explores how even if the Supreme Court determines that a patent is a “private right” and that IPRs violates Article III of the Constitution, the Supreme Court’s decision might have a different outcome if Congress had not made IPRs retroactive in nature.

Read the article (registration required).