Generally, administrative law scholars, including those in patent law, emphasize “ex ante” control mechanisms through which presidential administrations can direct agency policymaking, such as policy and budgetary review. But they tend to discount “ex post” control mechanisms, such as the Department of Justice’s (DOJ) litigating authority, as important sources of administrative influence.
However, in a paper I wrote several years ago and recently posted on SSRN, I argue that ex ante control mechanisms, such as budgetary and policy review, are weaker in patent law than in other areas. Because of this, DOJ—and in particular, the Office of the Solicitor General (SG)—has assumed significant influence over patent law and policy.
I argue that the relative weakness of ex ante controls in patent law stems from several factors. First, ex ante controls are only effective if administrations have strong policy preferences and know which policies will satisfy them. But neither factor has traditionally held in patent law. Throughout 1980s and 1990s, administrations tended to defer to technocrats within the Patent Office (PTO), at least on individual doctrinal issues. By the time administrations began to develop strong policy preferences, coinciding with increasing public interest in the patent system, doctrinal rules had solidified, and policy review and other ex ante controls were no longer viable.
Second, the courts are more influential in patent law than in other regulatory fields (with the possible exception of antitrust law), which weakens administrations’ ability to establish policy. Under Merck & Co., Inc. v. Kessler, the Federal Circuit doesn’t recognize PTO’s authority to establish rules governing substantive issues in patent law. Accordingly, the Federal Circuit refuses defer to PTO’s interpretations of the patent laws. (Supreme Court watchers will recognize that the Government’s opposition brief in Cuozzo Speed Technologies, Inc. v. Lee challenges the Federal Circuit’s interpretation of PTO’s rulemaking authority.) The significance of this is debatable. John Golden, for example, has argued that PTO remains influential despite the Federal Circuit’s position. But even if Golden is right, courts remain undeniably important in setting patent doctrine and policy. Consequently, administrations cannot simply reverse the direction of patent law by instructing PTO to promulgate rules.
Third, even if administrations do have strong policy preferences, ex ante controls rely on loyal agents. But loyalty trades off with competence. In areas like patent law, where legal and technical expertise are (or are at least are perceived to be) important qualifications, administrations have a smaller pool of candidates to choose from. The Patent Act, for example, imposes professional experience requirements on the PTO Director and Deputy Director, and consequently, appointees for these positions have tended to come from the relatively small number of registered patent attorneys and agents. Thus, administrations may be unable to find candidates whose preferences strongly align with their own.
As a consequence, DOJ exerts significant influence in patent law, perhaps to an extent not present elsewhere. Association for Molecular Pathology v. Myriad Genetics, Inc. is the most recent and obvious example. That case, of course, was brought by a coalition of public interest litigants who argued that Myriad’s monopoly on the BRCA1 and BRCA2 genes inhibited public access to breast cancer diagnostic screening. During the litigation, DOJ reversed course and adopted a position on subject matter eligibility that contradicted PTO’s longstanding policy of granting gene patents. DOJ’s position attempted to strike a balance between PTO’s policy and the views of other interest groups.
As a matter of theory, I argue that DOJ’s litigating authority follows the pattern described by Matthew McCubbins and Thomas Schwartz’s “fire-alarm” model of congressional oversight. To conserve resources, they argue, Congress chooses to oversee agency activities indirectly, by implementing procedures that allow private parties to raise the alarm when agencies diverge from their policy preferences. I identify the SG as an important figure in this process. Because the SG acts as an intermediary between the Administration, the Supreme Court, and litigants, he or she can be instrumental in developing and defending the Government’s position.
Here, my arguments complement John Duffy’s earlier analysis of the SG’s extraordinary influence in patent law. Duffy argued that the SG has become increasingly active because of the Supreme Court’s return to the field of patent law, and the special relationship that the SG enjoys with the Court. In my paper I attribute the SG’s activity in patent law to DOJ’s role as an “ex post policymaker” in accordance with the fire-alarm model.
Of course, as with everything, there are sections I would have rewritten in hindsight. In my view, my biggest oversight was failing to appreciate the changing administrative dynamics in patent policy. Since at least 2013, the Office of Science and Technology Policy (OSTP), a White House office, has become a significant driver in patent reform. My analysis of DOJ’s litigating authority seems anachronistic in light of that move towards centralization.
Additionally, I suspect I over-relied upon DOJ and PTO’s split in Myriad to illustrate my theory. Those kinds of open disagreements between the Government and PTO are few and far between.
Finally, my proposal to partially expand PTO’s litigating authority seems forced to me now. I felt compelled to propose a policy change, when the paper’s significance lay in demonstrating how a common theoretical model applies to patent law. Still, I hope, the paper provides an interesting* view of 1980s- and 1990s-era patent policymaking and its consequences, which echo today.
* Adrian Vermeule uses the phrase “interestingly wrong” to describe writing that “illuminates through its very errors and distortions.” I hope I’ve achieved at least that!
However, in a paper I wrote several years ago and recently posted on SSRN, I argue that ex ante control mechanisms, such as budgetary and policy review, are weaker in patent law than in other areas. Because of this, DOJ—and in particular, the Office of the Solicitor General (SG)—has assumed significant influence over patent law and policy.
I argue that the relative weakness of ex ante controls in patent law stems from several factors. First, ex ante controls are only effective if administrations have strong policy preferences and know which policies will satisfy them. But neither factor has traditionally held in patent law. Throughout 1980s and 1990s, administrations tended to defer to technocrats within the Patent Office (PTO), at least on individual doctrinal issues. By the time administrations began to develop strong policy preferences, coinciding with increasing public interest in the patent system, doctrinal rules had solidified, and policy review and other ex ante controls were no longer viable.
Second, the courts are more influential in patent law than in other regulatory fields (with the possible exception of antitrust law), which weakens administrations’ ability to establish policy. Under Merck & Co., Inc. v. Kessler, the Federal Circuit doesn’t recognize PTO’s authority to establish rules governing substantive issues in patent law. Accordingly, the Federal Circuit refuses defer to PTO’s interpretations of the patent laws. (Supreme Court watchers will recognize that the Government’s opposition brief in Cuozzo Speed Technologies, Inc. v. Lee challenges the Federal Circuit’s interpretation of PTO’s rulemaking authority.) The significance of this is debatable. John Golden, for example, has argued that PTO remains influential despite the Federal Circuit’s position. But even if Golden is right, courts remain undeniably important in setting patent doctrine and policy. Consequently, administrations cannot simply reverse the direction of patent law by instructing PTO to promulgate rules.
Third, even if administrations do have strong policy preferences, ex ante controls rely on loyal agents. But loyalty trades off with competence. In areas like patent law, where legal and technical expertise are (or are at least are perceived to be) important qualifications, administrations have a smaller pool of candidates to choose from. The Patent Act, for example, imposes professional experience requirements on the PTO Director and Deputy Director, and consequently, appointees for these positions have tended to come from the relatively small number of registered patent attorneys and agents. Thus, administrations may be unable to find candidates whose preferences strongly align with their own.
As a consequence, DOJ exerts significant influence in patent law, perhaps to an extent not present elsewhere. Association for Molecular Pathology v. Myriad Genetics, Inc. is the most recent and obvious example. That case, of course, was brought by a coalition of public interest litigants who argued that Myriad’s monopoly on the BRCA1 and BRCA2 genes inhibited public access to breast cancer diagnostic screening. During the litigation, DOJ reversed course and adopted a position on subject matter eligibility that contradicted PTO’s longstanding policy of granting gene patents. DOJ’s position attempted to strike a balance between PTO’s policy and the views of other interest groups.
As a matter of theory, I argue that DOJ’s litigating authority follows the pattern described by Matthew McCubbins and Thomas Schwartz’s “fire-alarm” model of congressional oversight. To conserve resources, they argue, Congress chooses to oversee agency activities indirectly, by implementing procedures that allow private parties to raise the alarm when agencies diverge from their policy preferences. I identify the SG as an important figure in this process. Because the SG acts as an intermediary between the Administration, the Supreme Court, and litigants, he or she can be instrumental in developing and defending the Government’s position.
Here, my arguments complement John Duffy’s earlier analysis of the SG’s extraordinary influence in patent law. Duffy argued that the SG has become increasingly active because of the Supreme Court’s return to the field of patent law, and the special relationship that the SG enjoys with the Court. In my paper I attribute the SG’s activity in patent law to DOJ’s role as an “ex post policymaker” in accordance with the fire-alarm model.
Of course, as with everything, there are sections I would have rewritten in hindsight. In my view, my biggest oversight was failing to appreciate the changing administrative dynamics in patent policy. Since at least 2013, the Office of Science and Technology Policy (OSTP), a White House office, has become a significant driver in patent reform. My analysis of DOJ’s litigating authority seems anachronistic in light of that move towards centralization.
Additionally, I suspect I over-relied upon DOJ and PTO’s split in Myriad to illustrate my theory. Those kinds of open disagreements between the Government and PTO are few and far between.
Finally, my proposal to partially expand PTO’s litigating authority seems forced to me now. I felt compelled to propose a policy change, when the paper’s significance lay in demonstrating how a common theoretical model applies to patent law. Still, I hope, the paper provides an interesting* view of 1980s- and 1990s-era patent policymaking and its consequences, which echo today.
* Adrian Vermeule uses the phrase “interestingly wrong” to describe writing that “illuminates through its very errors and distortions.” I hope I’ve achieved at least that!
