John Golden: Is the USPTO Entitled to Chevron Deference?

This is a guest post by Ben Picozzi, a J.D. Candidate at Yale Law School.

Is the U.S. Patent and Trademark Office (PTO) entitled to Chevron deference? Does this matter? Many commentators believe that courts’ failure to grant Chevron deference to the PTO’s interpretations of substantive patent law renders it powerless as a policymaking institution. As previously discussed on this blog, Arti Rai and Melissa Wasserman have argued that the America Invents Act (AIA) changes this by granting adjudicatory or rulemaking authority to the PTO over substantive questions of patent law, including the standards of patentability, and consequently interpretive authority.

Top 31 IP scholars by h-index

Scholarometer is a citation-analysis tool developed by researchers at Indiana University Bloomington. It mines Google Scholar data to generate a scholar's h-index: the maximum number of articles h such that each has received at least h citations. (It also computes the h_s-index, which normalizes an h-index by the discipline average, which is 14.8 for law.)

Seaman: The case against federalizing trade secrecy

In his new article, The Case Against Federalizing Trade Secrecy, forthcoming in the Virginia Law Review, Chris Seaman does what the title suggests: he makes the case against federalizing trade secrecy protections and challenges the wisdom of current proposals in this direction. I'll quickly summarize the article and then make a few points. In general, I found the article highly educational and think Seaman makes a compelling case that federalization would be an unnecessary legal innovation.

Merges: An Essay on the Legacy of Chisum on Patents

Robert Merges originally wrote this essay, previously unpublished, on the thirtieth anniversary of Chisum on Patents: A Treatise on the Law of Patentability, Validity and Infringement (1978-present). Merges has generously provided Written Description with a copy. In the essay, Merges discusses the world of patent law scholarship in the 1970s and the significant effect Chisum's treatise had within the patent community.

Amy Kapczynski on the Future of "Beyond IP" Scholarship

I was thrilled to participate this past Sunday in the Innovation Law Beyond IP Conference at Yale Law School hosted by the Information Society Project (ISP). The list of attendees included Mark Lemley, Amy Kapczynski, Yochai Benkler, Lisa Larrimore Ouellette, John Golden, Hannah Wiseman, Rebecca Eisenberg, Michael Abramowicz, Sean Pager, Jessica Silbey, Pam Samuelson, Barton Beebe, Ian Ayres, Brett Frischmann, Mark McKenna, Bryan Choi, Frank Pasquale, Tal Zarsky, Julie Cohen, Margot Kaminski, Michael Burstein, Bhaven Sampat, Brian Wright, Jonathan Masur, Dan Burk, Liza Vertinsky, Roger Ford, Sean O’Connor, Jim Bessen, Talha Syed, Arti Rai, Orly Lobel, Mario Biagioli, Rochelle Dreyfuss, Ann Bartow, Kiel Brennan-Marquez, Nicholson Price, David Grewal, and the ISP's own Jack Balkin.

#BeyondIP Blog Symposium

On Sunday the Yale Law School Information Society Project is hosting our Innovation Law Beyond IP conference, at which I'll be moderating the plenary session and presenting Beyond the Patents-Prizes Debate (coauthored with Daniel Hemel). Participants have been blogging about the conference papers at Balkinization, and you can see my summaries of some of these posts here, here, and here. Here is a list of all the blog posts, organized by conference panel. (I will update this list as more posts are added, including after the conference.)

#BeyondIP Blog Symposium: Burstein & Murray, Masur, Lobel, Pasquale, and Zarsky

Since my prior two updates, we have five new posts in the Innovation Law Beyond IP blog symposium. First, Michael Burstein and Fiona Murray described their new paper on Governing Innovation Prizes. They note that real-world prizes are different from those modeled in the economic literature, and they begin to remedy this empirical gap through a case study of the Progressive Insurance Automotive X Prize.

New Article: Deference Mistakes

Professor Jonathan Masur and I have posted a draft of our new article, Deference Mistakes, on SSRN. This article is more trans-substantive than my prior work, but it still has a significant IP angle. Here is the abstract:

This Article begins with what should seem a relatively straightforward proposition: it is impossible to fully understand the holding of a case without understanding its “deference regime”—the standard of review or burden of proof that governs the case. If a court holds in the context of a habeas petition that a constitutional right was not “clearly established,” that does not mean that the court would hold that the right does not exist were it writing on a blank slate. If a court refuses to invalidate a granted patent, which is presumed valid and can only be held invalid upon a showing of clear and convincing evidence, that does not mean that the court believes the patent should have been granted in the first place. And if an appellate court holds that a trial court’s ruling was not “plain error,” that does not mean that the appellate court believes the trial court necessarily reached the correct result or would have affirmed the ruling if the review were more searching.

Yet in case after case, we find that judges (and their clerks) confuse one deference regime for another or ignore deference entirely. In so doing, they make what we term deference mistakes. Courts in standard criminal cases regularly rely upon habeas precedents holding that a federal right was not “clearly established” to conclude that the right does not exist. The Federal Circuit and the Patent and Trademark Office regularly rely on precedents involving granted patents (which are presumed valid) to justify granting new patents (which are not entitled to that presumption). And courts of appeals regularly rely upon “plain error” precedents to justify holdings in cases where the standard of review is less deferential.

Although the problem of deference mistakes cuts across legal doctrines, it has been neither identified nor described in prior scholarship. Our article presents a multitude of examples of deference mistakes in practice and explains why they are likely to occur. Deference mistakes may seem relatively innocuous, particularly if they are confined to individual cases. But that appearance is misleading. We develop a theoretical model of how deference mistakes, coupled with particular asymmetries in adjudication, can generate systematic shifts in legal doctrine. Deference mistakes may have contributed to the current patent crisis by adding to the proliferation of bad patents. They may also be partly responsible for retrenchment in the law of constitutional criminal procedure rights or the pro-employer shift in employment discrimination law. After analyzing the potential for deference mistakes to affect the long-term evolution of the law, we discuss potential solutions.

We welcome your comments and suggestions!

#BeyondIP Blog Symposium: Golden & Wiseman, Vertinsky, Pager, and Silbey

Following up on my opening post and our first four contributions, we have another four posts in the Innovation Law Beyond IP blog symposium at Balkinization. First, John Golden and Hannah Wiseman describe their paper, The Fracking Revolution: A Case Study in Policy Levers to Promote Innovation, which will be presented in our "Comparing Innovation Policy Levers" along with my paper with Daniel Hemel. Golden and Wiseman's study of public policies behind the fracking boom reveals a "complex backstory [that] features multiple significant roles for government action" including "government-funded R&D, tax and regulatory relief, and a FERC-sanctioned surcharge on interstate gas that financed the private Gas Research Institute." While a case study does not provide "universal truths," it does reaffirm the government's capacity to use a diverse policy mix. "The relatively modest role of patents in the story behind the shale gas boom suggests that, under appropriate circumstances, a mix of alternative policy levers can substitute for the benefits often thought to be supplied by patents."

#BeyondIP Blog Symposium: Hrdy, Bessen, Frischmann & McKenna, and Cohen

Four new posts in the Innovation Law Beyond IP blog symposium at Balkinization! First, Camilla Hrdy describes her paper Local Commercialization Incentives, which she has also blogged about here. In this paper, Hrdy questions whether proposals for "commercialization patents" would actually be preferable to the many "commercialization awards" that national and local governments already provide through direct financing, and she also contributes to the federalism literature by arguing that such awards may be better administered at the local level.

Innovation Law Beyond IP Pre-Conference Blog Symposium at Balkinization

Today I launched our blog symposium for the upcoming Innovation Law Beyond IP conference at Balkinization:

On Sunday, March 30, the Yale Law School Information Society Project is hosting a conference on Innovation Law Beyond IP. To expand the discussion beyond our one day in New Haven, participants will be blogging here over the coming weeks with some initial thoughts on the conference papers, and more broadly on how we should define our field as scholars as innovation. To kick off this symposium, I’ll say a bit about the article I’m presenting, Beyond the Patents–Prizes Debate (coauthored with Daniel Hemel and recently published in the Texas Law Review), and how it fits with the broader conference agenda.

Continuing reading at Balkinization. I'll be posting links to new posts over the coming weeks.

In Memoriam: Sarah Tran

I was deeply saddened to hear that my co-blogger, SMU Law Professor Sarah Tran, has lost her battle with leukemia at age 34. This post from SMU describes some highlights of her incredible life, and this story describes her amazing resolve to continue teaching despite her illness, but neither can fully capture her warmth, generosity, courage, or boundless optimism and enthusiasm. Her legal scholarship (including important work on the PTO's administrative powers) is available here, and her many contributions to Written Description are available here. Sarah will be sorely missed by many, including the patent law community. I hope Written Description readers who have enjoyed her work will consider making a contribution to the fund that has been created to support her two young children, the Tran Children Development Fund.

Do We Need More IP To Promote Commercialization?

The patent system already protects inventors' exclusive rights in their "novel" and "nonobvious" inventions. But do we also need intellectual property rights to promote commercialization? In their influential article Intellectual Property for Market Experimentation, Michael Abramowicz and John Duffy concluded that we might. Just as technical information is subject to free riding by competitors, so is information generated from marketing a new product to the public or a game-changing business model. And "[j]ust as patents encourage risky but ultimately beneficial technological experimentation," they conclude, "some form of intellectual property protection" for "economically nonobvious" products "could result in a socially beneficial increase in market experimentation and entrepreneurial activity."

Shubha Ghosh: IP Federalism

In his new piece, Short-Circuiting Contract Law: The Federal Circuit's Contract Law Jurisprudence and IP Federalism, Shubha Ghosh discusses what he sees as the Federal Circuit's inappropriate encroachment on state contract laws respecting intellectual property rights, especially patent rights.  In doing so, Ghosh joins many other scholars in addressing the fascinating topic of IP and federalism, including Mark Lemley, Paul Goldstein, Paul Heald, John Shepard Wiley, Douglas Lichtman, Xuan-Thao Nguyen, Jeanne Fromer, Paul Gugliuzza, and myself.  (Notably, Gugliuzza recently made a similar argument to Ghosh that the Federal Circuit has inappropriately impeded state courts from influencing the patent system with their own laws, blogged on here.) 

Follow @PatentScholar for IP Updates During Light Blogging

Due to my current job, my blogging will continue to be light until July or August, when I will begin a permanent academic position. But I continue to Tweet as @PatentScholar about new IP papers posted to SSRN and other IP news (such as updates on Supreme Court patent cases, which are also tracked on this blog). Yale ISP Fellow Camilla Hrdy will also continue to blog here. If you are interested in guest posting, email me (lisa.ouellette@aya.yale.edu). And stay posted for more information about the Yale ISP Innovation Law Beyond IP conference, which will involve blog posts from a terrific array of presenters. Happy holiday patents!