Taking Patent Rights: Sovereign Immunity & the Fourteenth Amendment in Patent Validity & Inventorship Challenges

Connor J. Hansen

The Fourteenth Amendment provides that “No State shall . . . deprive any person of . . . property without due process of law” and has been interpreted to incorporate the Takings Clause of the Fifth Amendment: “nor shall private property be taken for public use, without just compensation.” Collectively, the Fourteenth Amendment and the Takings Clause, prohibit a state from depriving property owners of all economically beneficial use of their property without providing compensation for that deprivation.

A patent “confers upon the patentee an exclusive property in the patented invention which cannot be appropriated or used by the government itself, without just compensation, any more that it can appropriate or use without compensation land which has been patented to a private purchaser.” Patent rights “fall squarely within both classical and judicial definitions of protectable property” that may be taken. This is largely because the right to exclude others concomitant with patent rights is “one of the most essential sticks in the bundle of rights that are commonly characterized as property.” When a sovereign owns an invalid patent or a patent to which it is not entitled, it has the right to exclude all others, even those who are the rightful owner of the patent or those who developed the prior art that would render the patent invalid, from practicing the claimed innovation. Other parties are also precluded from obtaining patent rights for the subject matter encompassed in the sovereign patent. The state has effectively appropriated from those parties the entire bundle of exclusionary rights conferred by a patent. 


The Likelihood of Exclusion: Economic Disparity in the United States Trademark System

Michael J. Choi

Trademarks are integral in the marketplace, serving as identifiers of the source of a business’s goods or services. Consumers rely on trademarks not only as source identifiers, but also as “quality guarantor[s] and consumer status symbol[s].” Entrepreneurs use trademarks to develop a brand and pursue opportunities for economic mobility. Although trademarks originally sprouted to protect consumers from fraud and counterfeit, the actual effects of modern trademark law severely overshadow these traditional purposes. Patterns in legislation and interpretations reveal a system of favoring the haves over the havenots, depriving have-nots of both offensive and defensive protections otherwise provided by trademark law.

The value of a trademark in modern day is the mark itself, rather than the brand it represents. Companies take just as much pride in their logos and brands as their actual products and services. As a personal property right, a trademark creates the duty to diligently manage and oversee these rights. However, overzealous trademark policing creates a hostile climate for the freedom of expression, the entrepreneurial spirit, and ultimately, a competitive and free-flowing marketplace. As a result, small businesses and other marginalized groups, often lacking the resources of large companies, are effectively excluded from the trademark system. 


Warning! Patent Agent Privilege Ends Abruptly

Matthew M. Welch

Say I have lost all faith in patents, judges, and everything related to patents. –Thomas Edison

Thomas Edison and many of the innovators following in his footsteps have been disgruntled and discouraged by United States patent law. However, patentintensive industries promote innovation, increase the GDP, and create millions of jobs. Patent law is vital to the continued prominence of America as a world power, and, to continue that prominence, patent law must adapt to current times. As a start, it must begin providing solutions to a number of problems plaguing the patent realm. One of the most outstanding problems currently running course through patent law is the dynamic between the attorney-client privilege and patent agents. The problem is two-fold. First, some courts have extended the privilege to patent agents, but the way they are treating this privilege is insufficient. Second, other courts are not recognizing the privilege whatsoever.

Attorney-client privilege is a pillar of the legal system that is entrenched throughout the United States. This privilege was instituted to allow full and frank discussions between clients and their attorneys. The purpose behind this was to allow attorneys to fully represent their clients based on all available facts. However, attorneys are not the only players in the field of patent law. In fact, one fourth of all patent practitioners are non-attorneys. These individuals are patent agents. 


BRUCE A. LEHMAN 1993-1998

Bruce A. Lehman was born in Beloit, Wisconsin, on September 19, 1945. He received history and law degrees from the University of Wisconsin – Madison and served as legal counsel to the Wisconsin state legislature before entering military service during the Vietnam War. He was a first lieutenant in the U.S. Army.  

Afterward he worked at the Department of Justice in Washington, D.C. He joined the staff of the House Judiciary Committee when it was considering a recommendation to impeach President Richard Nixon. In 1978 he was appointed chief counsel of the Judiciary subcommittee with jurisdiction over intellectual property issues. He then spent 10 years in private law practice in Washington, where he was active in civic affairs.

President Bill Clinton appointed Lehman assistant secretary of commerce and commissioner of patents and trademarks, and he entered service on August 11, 1993. He was the first openly gay man to be confirmed by the U.S. Senate. 


PTAB Practice Tips on Oral Arguments

James A. Worth

PTAB oral arguments provide an opportunity for parties to highlight select points from their written briefs and to answer questions from the panel hearing the case. Failing to answer questions from the panel is one of the quickest ways to lose credibility with the panel. This article sets forth certain considerations and practice tips for counsel appearing for arguments before the PTAB.

In particular, this article suggests that counsel refrain from relying on evidence not already of record or new theories of a case, that counsel prepare for a wide range of questions based on the record, and with respect to AIA hearings, that counsel may wish to take a flexible approach towards the use of slide presentations and exhibits. This article will address each suggestion in turn, and review some of the animating considerations. 


Here’s a sneak peak into Volume 101 Issue 1

  • Federico and Rossman Awards 2019
Joshua Schwartz
  • PTAB Annual Meeting Keynote Address – Will You Be My Valentine: Celebrating the USPTO Examiner Through History
The Honorable Laura A. Peter
  • The Current State of Innovation within the U.S. Legal System – Views on Evolving Protection for Intellectual Property Rights in the United States
The Honorable Andrei Iancu
  • PTAB Practice Tips: Comparing a Motion to Strike and a Motion to Exclude
The Honorable James A. Worth
  • The New Highwayman: Enforcement of U.S. Patents on Cannabis Products
William J. McNichol, Jr.
  • Looking for a Needle in a Haystack: Limitations of Searching Foreign Trademark on TESS
Yan Song
  • Who Owns Fox? Possession is the Root of Title in Patent Law
Christine Johnson
  • The Rumble About the Jungle: The Fight Over Dot Brand gTLDs and Geographic Names
J. Spencer Sanders, II
  • Section 101: What’s Left to Patenting in the Life Sciences after Myriad, Mayo, and Alice?
Warren D. Woessner & Robin A. Chadwick



HARRY F. MANBECK JR. 1990-1992

Harry F. Manbeck Jr., was born in Honesdale, Pennsylvania on June 26, 1926. He received a bachelor’s degree in electrical engineering from Lehigh University and was hired as an engineer by General Electric Co. in 1949. A few years later he received a law degree from the University of Louisville and became a GE patent attorney.

He rose through the ranks at GE, a company with a large patent department, to become the chief patent counsel, a position he would hold for 20 years. During that period he was a prolific, well-known speaker on intellectual property rights.

President George H.W. Bush appointed Manbeck assistant secretary of commerce and commissioner of patents and trademarks, and he took the oath of office on March 12, 1990.



DONALD J. QUIGG 1985-1989

Donald J. Quigg was born April 28, 1916, in Kansas City, Missouri. He received a bachelor’s degree in business administration from the University of Oklahoma and a law degree from the University of Missouri. After a brief period with a law firm he entered the U.S. Army during World War II and received the Silver Star Medal for valor in combat.

In 1946 he joined Phillips Petroleum Co. in Bartlesville, Oklahoma, as a staff patent attorney and studied chemistry at night. In an era when employees often stayed with a company for an entire career, Quigg was a Phillips patent attorney for 35 years and was named an inventor in 10 Phillips patents.

He was chief patent counsel for his last 10 years at Phillips. Although Quigg worked at Phillips headquarters in Oklahoma, he was responsible for an office the company maintained in Washington, D.C., to train patent attorneys. The office monitored patent legislation and regulations for Phillips, giving Quigg familiarity with patent policy issues in Washington.

In 1981 he retired and took the post of deputy commissioner of patents and trademarks. After four years as deputy President Ronald Reagan appointed him assistant secretary of commerce and commissioner of patents and trademarks. He took office on October 13, 1985, at age 69. 

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