Patent Office Power & Discretionary Denials
64 Pages Posted: 19 Aug 2022 Last revised: 31 Oct 2022
Date Written: August 11, 2022
One of the most divisive and debated issues in patent law in recent years has been the Patent Office’s practice of denying petitions for inter partes review (IPR) – the Patent Office proceeding to review and cancel wrongfully issued patents – on discretionary procedural grounds, such as duplicative Patent Office proceedings or the existence of advanced parallel litigation. On the surface, the discretionary denial practice seems like an odd candidate to provoke such fierce opposition. Discretionary denials have affected a small percentage of IPR petitions without making any changes to the features that have made IPRs so effective at invalidating “bad” patents. As a normative matter, the discretionary denial practice presents a close, nuanced, and unclear trade-off between the benefits of invalidating wrongfully issued patents and the inefficiencies and burdens of duplicative proceedings. And despite frequent objections from sophisticated patent stakeholders, the one thing that is clear about the discretionary denial practice is that it is consistent with the statutory text and objectives and a lawful exercise of the enhanced power and authority granted to the Patent Office by the America Invents Act of 2011 (AIA). But below the surface, the discretionary denial controversy is more understandable. It reflects a patent system struggling to accept a shift to greater administrative authority after two-hundred years of judicial dominance of patent policymaking. Discretionary denials offer a useful case study to evaluate the patent system’s changing institutional arrangements. This Article demonstrates how the AIA gave the Patent Office significant power and discretion over IPRs, authority that comfortably encompasses the discretionary denial practice. It further shows how the experience with discretionary denials confirms the benefits provided by the AIA’s shift towards greater administrative patent power: expertise, flexibility, reasoned deliberation and policymaking, and accountability.
Keywords: IP, intellectual property, patent, inter partes review, IPR, PTAB, PTO, Patent Office, discretionary denials, administrative patent law, FinTiv, Western District of Texas, AIA, America Invents Act
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