In Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al the Supreme Court found that inter partes review is constitutional under Article III and the Seventh Amendment of the Constitution in a 7-2 opinion delivered by Justice Thomas.
The Court determined that inter partes review falls “squarely” within the public rights doctrine. In making that determination, the Court compared the grant of a patent to inter partes review, one happening up front, the grant, and the other happening later, inter partes review. The grant of a patent, according to the Court, has been long recognized as a matter involving public, not private, rights. Accordingly, granting patents is one of the constitutional functions that can be carried out by “the executive or legislative departments” without judicial determination. Thus, the powers to grant a patent reside within Article I, not Article III. So when the PTO adjudicates the patentability of inventions, it is exercising the executive power, not the judicial power. Continue Reading