University Can’t Have Its Cake and Eat It Too – Immunity NegatedJanuary 25, 2007

The University of Missouri’s waived its constitutional immunity under the Eleventh Amendment when it fully participated in an interference action against Vas-Cath, Inc. A Vas-Cath patent had issued while the University’s application, although filed before the Vas-Cath application, was still pending. The University invoked the procedures to institute an interference between the University’s pending application and Vas-Cath’s issued patent. The University amended its application by copying into its application all nineteen claims from the Vas-Cath patent, as practice permits. After a six-year interference proceeding, the PTO awarded priority to the University, granting the nineteen Vas-Cath claims to the University and holding that Vas-Cath was not entitled to the patent that it had been issued. Vas-Cath appealed. The University moved to transfer the case to the Western District of Missouri pursuant to 28 U.S.C. ? 1406(a) and then asserted Eleventh Amendment immunity from suit in federal court. On this ground, the district courted granted the University’s motion to dismiss. Vas-Cath appealed the dismissal. The Federal Circuit reversed the dismissal and remanded to the district court for further proceedings. By participating in the PTO interference, the Federal Circuit concluded that because judicial review of PTO adjudication is established by statute, the interference proceeding is a multi-part action with appeal as of right. The Court further stated that the appeal is not a new claim, but an authorized phase of the interference proceeding that is conducted by the PTO and is subject to judicial review. Thus, the University waived any potential immunity as to the interference contest in the PTO. To read the full decision in Vas-Cath, Inc. v. Curators of the Univ. of Mo., click here.

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