Buffalo Intellectual Property Law Journal

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In Copyright


Post-grant review is a new review procedure for granted patents in the United States. The procedure, instituted as a mechanism to get rid of "bad patents," allows any outside party, within nine months of the patent grant date, to challenge the validity of a granted patent on any ground under the patent law, including patentable subject matter, provided that the petitioner can demonstrate that it is more likely than not that at least one of the claims challenged in the petition is unpatentable, or if there is a showing that "the petition raises a novel or unsettled legal question that is important to other patents." This review and decision on novel or unsettled legal questions is done by a trial-like proceeding before the newly-created Patent Trial and Appeal Board, whose decisions are appealable to the Court of Appeals for the Federal Circuit. This note uses a model developed by positive political theory to argue that (1) the new post-grant review proceeding gives the PTO a considerable amount of power to determine what constitutes patentable subject matter; (2) the PTO's power to determine what constitutes patentable subject matter may not create long-term security in what patentable subject matter is; and (3) that the best way to create security for long-term investment in patent protection may be for the Court of Appeals to take a more active, policymaking role in its review of PTAB decisions.