IP Law Bulletin

The importance of patent term, or the period of time during which the exclusive nature of a patent is in effect, cannot be overstated. The patent term for an issued patent, which is currently set at 20 years from the filing date of the earliest U.S. non-provisional application, can drive business and investment strategies, dictate allocation of technological resources, and impact financial valuations. 

Late last week, the Federal Circuit issued Power Integrations, Inc. v. Semiconductor Components Indus., LLC and Regents of the Univ. of Minnesota v. LSI Corp. These two precedential decisions bring further clarity to who is subject to the time bar for filing petitions for inter partes review (“IPR) and whether sovereign immunity protects patents from being subject to IPR challenges. The key takeaways are:

1. Consider the impact of mergers and acquisitions on IPR petitions, including those that have already been filed; and
2. Patents owned by states (including, state universities and research institutions) can be challenged in an IPR.

In a case that could have a significant impact on the interpretation and drafting of patent licensing agreements, a patent licensee filed an appeal for an en banc proceeding at the Federal Circuit to challenge the court’s finding that a forum selection clause governing disputes that “arise out of and under [the Master License Agreement]” and does not explicitly allow proceedings at the Patent Trial and Appeal Board (PTAB) prevents proceedings from being initiated at the PTAB. If this holding remains intact, many licenses having forum selection clauses that are silent about PTAB proceedings may be able to be successfully relied upon to prevent PTAB proceedings.