By: Adam J. Cook*
Abstract
The United States’ patent system provides a framework for the protection of an inventor’s intellectual property: their inventions. A valid utility patent is useful, novel, and nonobvious. Patents incentivize an inventor to disclose their invention to the public in exchange for limited-in-time, exclusive rights to practice their invention.
The United States Patent and Trademark Office (USPTO) vets patent applications for validity. After the USPTO grants a patent, the patent remains subject to administrative review proceedings. These proceedings allow the USPTO to review a patent’s validity. One such proceeding is inter partes review (“IPR”). An IPR is an adversarial process in which a third-party petitioner challenges a patent’s validity.
First, the USPTO must institute the IPR. Then, the Patent Trial and Appeal Board (PTAB) makes a final decision to determine whether the challenged patent still contains valid claims. The America Invents Act (AIA), which codified the IPR procedure, grants the USPTO’s Director authority to make the institutional IPR decision and grants the PTAB authority to make the final IPR decision. However, by regulation, the Director delegated their institutional decision-making authority to the same PTAB panel that also makes the final IPR decision.
This delegation of authority is problematic because it ignores Congress’s legislative intent and the AIA’s plain language. PTAB panel judges are susceptible to clear biases when they make both IPR decisions because of this delegation. Biases among PTAB panel judges violate a patent owner’s due process rights. Further, the appearance of bias in the IPR process diminishes public credibility of the patent system. To fix blatant defects in IPR procedure, this Comment argues that the Supreme Court should bifurcate the two IPR decisions by requiring one group of PTAB judges to make institutional IPR decisions only and a separate group of PTAB judges to make final IPR decisions only.
* J.D. Candidate, The Pennsylvania State University School of Law, 2024.