Wednesday, September 28, 2011

John M. Golden: Patentable Subject Matter and Institutional Choice

Is the patentable subject matter requirement obsolete or just underdeveloped? Many criticize the Patent Office for its mounting backlog and the rising number of “bad” patents that issue. In Patentable Subject Matter and Institutional Choice, John M. Golden, a Law Professor at the University of Texas, offers a well-analyzed approach to preventing patent grants in undesirable classes of innovation with a rejuvenated patentable subject matter requirement. He advocates for clarification of limits on patentable subject matter in order to better use this threshold inquiry into patentability as a categorical filter. Although Golden suggests ways in which Congress and the courts can act to clarify the patentable subject matter requirement themselves, his primary proposal is for the Patent Office to have substantive rulemaking authority on this issue.

Golden explains that patents can promote rapid development of ideas. Disclosure of these ideas can encourage follow-on innovation, which leads to other potential uses of the initial idea. He then argues any benefit gained from a patent granted on an innovative idea with an extraordinary number of potential uses (e.g., laws of nature) can be severely outweighed by its high cost to society. Limiting patentable subject matter to exclude such categories can therefore improve social welfare.

The inevitable question that follows is who should impose such limitations? Golden sees the Patent Office as the better choice for interpreting questions of patentable subject matter. His proposition seems less based on the Patent Office’s capability and more on the demonstrated inability of Congress and the courts. Golden performs a thorough review of the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit’s continued struggles with subject matter inquiries and Congress’s difficulties in acting quickly, impartially, and by providing more than high level guidance. His institutional assessment is valuable because it highlights the weaknesses in the current system and addresses concerns that arise when placing authority in the hands of Congress, the courts, or the Patent Office.

Golden’s article offers an intriguing solution to clarify an incoherent body of law, reduce the Patent Office’s backlog, and increase the quality of patents issued. I think the article leaves unanswered how this transition of power could effectively take place, as well as whether the Patent Office is capable of handling this increased responsibility at this time. Still, the Patent Office could be critical in preventing a potential flood of undesirable patents in coming years, and it is an agency with the capacity, knowledge, and incentive to act promptly to develop this legal doctrine.

Posted by Brandi Doyle, a third-year student at SMU Dedman School of Law, President of the SMU Student IP Organization, and research assistant to Sarah Tran.

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