Over the last several months, universities and technology transfer programs have increasingly become the target of petitions for Inter Partes Review (IPR) filings. Effective September 16, 2012, IPR proceedings allow parties to challenge the validity of an issued patent before the United States Patent and Trademark Office (USPTO).

To date, more than 360 petitions for IPR have been filed, mostly by defendants in co-pending patent infringement actions. In their approach to patent defense, universities and many state-run technology transfer licensing programs have relied on the benefit of immunity based on the 11^th Amendment of the U.S. Constitution (state sovereign immunity) to avoid having to defend the validity of their issued patents.

It is clear from the recent flurry of activity before the USPTO that the 11^th Amendment is no longer an easy option for universities to avoid defending their intellectual property rights. In most cases, universities remain the owners of patents that are licensed to commercial partners who often venture out to enforce those patents against alleged infringers. These actions can put university-owned patents in a new type of jeopardy where immunity under the 11^th Amendment cannot save them.

It is important to note, however, that a co-pending litigation is not required for a third party to involve a university in an IPR proceeding. The mere ownership of a patent provides all that is necessary to render a party susceptible to  a third-party challenge of validity in an IPR proceeding. Just being served with a petition for IPR requires the patent owner to reply.