In a decision addressing a state’s waiver of constitutional immunity under the Eleventh Amendment, the U. S. Court of Appeals for the Federal Circuit held that by initiating and participating in a contested interference proceeding before the U.S. Patent and Trademark Office (USPTO), the Curators of the University of Missouri waived their constitutional immunity in an ensuing civil action for judicial review. Vas-Cath, Incorporated v. Curators of the University of Missouri, Case No. 06-1100 (Fed. Cir., Jan. 23, 2007) (Newman, J.).

A patent interference proceeding is a procedure conducted before the USPTO to determine which of (two or more) competing inventions is entitled to priority of invention. In this case, the University patent application was filed first, even though the Vas-Cath application was the first to issue as a patent by the USPTO. In response, the University copied claims from the Vas-Cath patent, thereby provoking a patent interference. After a six-year interference proceeding, the USPTO awarded priority of the invention to the University.

Under the provisions of 35 U.S.C. § 146, Vas-Cath appealed the USPTO determination to the district court where the University asserted Eleventh Amendment immunity to the federal suit. Relying on the Ninth Circuit Quileute Indian Tribe v. Babbitt decision, the district court held that there was no waiver of immunity under the Eleventh Amendment by the University. In Quileute, the Ninth Circuit held that a prevailing tribe had not waived its immunity to a subsequent court action by participating in an administrative proceeding. Vas-Cath appealed.

The Federal Circuit reversed. While the Court concurred that the University cannot be sued in federal court without its consent, the Federal Circuit found that University voluntarily participated in a federal administrative forum whose action was statutorily reviewable in federal court. While the University’s participation in the federal patent system does not waive immunity, the Federal Circuit relied upon the University’s recourse to the USPTO tribunal for adjudication of the claim of prior inventorship and patent ownership to deny the University Eleventh Amendment immunity from suit.

According to the Federal Circuit, the University’s initiation and participation in the interference proceeding before the USPTO not only waived the University’s constitutional immunity under the Eleventh Amendment in the interference proceeding, but also in an appeal taken by the losing party to the interference.