My objective in this Article is to demonstrate that the PTO's patentability determinations are questions of policy and, therefore, the Federal Circuit's standards of review, as applied to these determinations, are unsound. With respect to the Commissioner's statutory interpretations, I intend to demonstrate that the court's “traditional factors of statutory construction,” which are used in such a way as to avoid deferring to the PTO, result in irrational decisions, or at the very least, an alternative theory of interpretation no more convincing than that put forth by the PTO. My principle assertion, grounded in both doctrine and policy, is that the Federal Circuit's judicial review of the BPAI's patentability determinations and the Commissioner's statutory interpretations is paternalistic and results in a less than optimal balance of interpretive power. What I ultimately advocate, therefore, is a “paradigm shift” with respect to the way deference is viewed by the Federal Circuit.
Patent Law, Legal System
Place of Original Publication
Ohio State Law Journal
56 Ohio St. L. J. 1415 (1995)
Nard, Craig Allen, "Deference, Defiance, and Useful Arts" (1995). Faculty Publications. 368.