PTAB Not Constitutional - Can't Return Public Disclosure to Inventor

By: Ashley Sloat, Ph.D.

I love the argument that Ron Katznelson makes in his new paper, titled Private Patent Rights, the Patent Bargain and the Fiction of Administrative ‘Error Correction’ in Inter Partes Reviews.  Ron argues:

"The exclusive patent right is not a creature of Congress. That right originates with, and is created by, the inventor. It is only secured by statute subject to the Constitution, as part of the patent bargain in exchange for the inventor’s public disclosure of the invention and of the manner and process of making and using it.

No PTO “error correction” in an issued patent is possible because the public disclosure (that might have been otherwise kept as a common-law trade secret) cannot be returned – the exchange of rights upon patent issuance is irreversible and uncorrectable. Extinguishing the inventor’s private patent right must therefore be the exclusive province of Article III courts."

The original right is created by the inventor but she is incentivized to publicly disclose the invention in exchange for protection under the Constitution. If the USPTO's PTAB strips away this protection, what remedy does the Inventor get for her public disclosure that now comes with no protection? The public disclosure most certainly can't be rescinded from the minds of people who have viewed it!  I agree with Ron's declaration that extinguishing this right should only be under the purview of an Article III court.