Monday, March 26, 2012

Arti Rai – Patent Validity Across the Executive Branch: Ex Ante Foundations for Policy Development

What can the recent DNA patent controversies teach us about the role of executive agencies in shaping patent policy? In Professor Arti Rai’s essay: Patent Validity Across the Executive Branch: Ex Ante Foundations for Patent Development, Rai analyzes how systematic interagency debate can facilitate the development of beneficial patent policy ex ante. Professor Rai uses recent Supreme Court holdings to demonstrate that executive agencies like the International Trade Commission (ITC), the National Institute of Health (NIH), and the Department of Justice can work in tandem with the U.S. Patent and Trademark Office (PTO or Patent Office) to avoid some of the policy pitfalls created by the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) and Congress.

The essay does an excellent job of identifying the wide range of agencies involved in setting patent policy. Whether it’s the Solicitor General persuading the Supreme Court to take a patent case or the Federal Trade Commission articulating antitrust concerns about patent settlements, there is an array of actors outside of the PTO and the Federal Circuit that influence patent policy.

But this raises the question, what constitutes sound patent policy? Starting with the premise that policy should encourage the efficient promotion of technological innovation, Rai argues that agencies should focus on building their expertise in economics and technology. Who then should be responsible for shaping patent policy? Congress would appear to be the logical answer. But while Congress has access to relevant policy information and can act prospectively, they are vulnerable to capture. Interest groups play too large a role in the policy making of Congress and often create “vetogates” that preclude the passage of legislation. So the discussion turns to the Patent Office and the Federal Circuit. The court system is hindered by an inability to act prospectively. Rai points out that the reality of inevitable retroactivity may make courts reluctant to curtail expansive rights that have been created (even when not officially created by law, as with the patentability of gene sequences). This leaves the Patent Office. Although the Patent Office has limited rulemaking authority, ex ante decision making through patent guidelines are less likely to have a retroactive impact on patent rights and can quickly be confirmed by the Federal Circuit.

So how can ex ante decision making made by the PTO garner more support? There are growing arguments that Congress should confer expansive rulemaking authority on agencies that deal with technologically and economically complex questions. The PTO has recently added an Office of the Chief Economist, and when the PTO consults with other executive agencies, it would be in a position to create well founded guidelines.

The Article articulates a persuasive argument for the ex ante implementation of patent policy implemented by executive agencies. The inclusion of modern policy disputes concerning the patentability of DNA structures, adds clarity to a complex and multifaceted debate. Professor Rai also highlights an interesting problem that others have attempted to dissect: While patent law is technology-neutral in theory, it is technology-specific in application. See Dan Burk & Mark Lemley, Policy Levers in Patent Law, 89 Va. L. Rev. 1575 (2003) (arguing the Federal Circuit should implement industry specific patent policy). Finding institutions that are able to efficiently deal with technology specific patentability questions supplies another layer to the discussion of what institutions are best situated to deal with the changing patent landscape.

Posted by Bryan Parrish (, a registered patent agent, research assistant to Sarah Tran, and a 2014 Juris Doctor candidate at SMU Dedman School of Law.

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