Comments from Adam Hess
were included in a Westlaw Journal of Intellectual Property
article on May 9, 2018, about how the Patent and Trademark Office and attorneys nationwide are speculating on the consequences of the U.S. Supreme Court's April 24 decision that the PTO lacks the authority to select the claims it reviews in a challenge to a patent.
In a 5-4 ruling, the justices held that Section 318(a) of the Patent Act, 35 U.S.C.A. § 318(a), "supplies a clear answer" to that question, and found the decision to review only some claims in an IPR petition violated that provision in SAS Institute Inc. v. Iancu et al.
Mr. Hess said, "This decision likely will result in fewer settlements and more work for all parties. There will remain more uncertainty throughout the entire process as to whether any claims will survive review."