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Article
The Non-Doctrine of Redundancy
Berkeley Technology Law Journal
  • Saurabh Vishnubhakat, Texas A&M University School of Law
Document Type
Article
Publication Date
2-2019
ISSN
1086-3818
Abstract

This Article explores and evaluates a controversial practice that the Patent Office undertook beginning early in the post-AIA regime, the practice of denying otherwise meritorious requests for review because of what the Office termed "redundant" grounds. The controversy over redundancy-based rejections had several sources. One was that making such rejections required the Patent Office to decide petitions piecemeal—and, indeed, the agency claimed that power for itself—even though it was not clear that this power lay within the statute. Another source was that the Patent Office persistently declined to explain what, in the agency's view, did or did not constitute redundancy. Still another was that the Patent Office resisted Federal Circuit oversight of this practice by claiming unreviewable discretion as part of a larger campaign of self-immunization. This confluence of problematic agency choices has generated other, related controversies with AIA review as well, with a mixed record of success for the Patent Office. Yet while redundancy-based rejection now seems to be ebbing as a matter of agency policy, the underlying structural conditions that gave rise to the practice still persist and repay closer analytical and doctrinal scrutiny. This Article offers that scrutiny and discusses ways forward for AIA review.

Num Pages
40
Publisher
University of California Berkeley School of Law
Disciplines
File Type
PDF
Citation Information
Saurabh Vishnubhakat. "The Non-Doctrine of Redundancy" Berkeley Technology Law Journal Vol. 33 Iss. 3 (2019) p. 777 - 816
Available at: http://works.bepress.com/saurabh_vishnubhakat/84/