Balancing the Competing Functions of Patent Post-Grant Proceedings

Since the 1980s, the United States Patent and Trademark Office has amended or revoked patents through post-grant proceedings. These are quasi-judicial proceedings that are often used to resolve patent disputes. But aside from adjudicating private disputes, post-grant proceedings also aim to protect the public against invalid patents, create more certainty in patent rights, and bolster confidence in the patent system. These functions are often described as “examinational” because they rely on the PTO’s ability to reexamine the validity of issued patents. This Article explores the extent to which post-grant proceedings under the America Invents Act (AIA) perform examinational functions. Although post-grant proceedings have proven effective at adjudicating patent validity during litigation, they have been less effective at fulfilling their examinational functions. In particular, several provisions of the AIA undermine the patent office’s ability to protect the public from invalid patents, while others discourage early resolution of patent validity and scope. To assess the potential benefits and drawbacks of reform, this Article also looks at the European Patent Office’s experience with post-grant proceedings. Despite their problems, European proceedings have been fairly successful at screening patents and improving patent quality. As such, they may offer useful insights for the U.S. patent system