Patent Validity across the Executive Branch: Ex Ante Foundations for Policy Development
Rai, Arti K., Duke Law Journal
In patent law, as in most areas of law, Congress, courts, and administrative agencies are the key institutions with the potential to shape policy. (1) In practice, though, courts have generally been regarded as the dominant players in shaping patent policy. This perception of judicial dominance is grounded in several notable features of the patent system. Since 1790, when the first patent statute (2) was enacted, patent legislation has been remarkably general in its provisions. Even when Congress has passed legislation to update the Patent Act of 1952 (Patent Act), (3) the amendments have typically left significant room for interpretation. Rather than passing more detailed provisions, Congress has instead delegated responsibility for interpreting the statute to the U.S. Patent and Trademark Office (PTO) and the courts--with a historical emphasis on the courts. The judicial nature of patent law has been particularly evident since 1982, when Congress created a single specialized court, the U.S. Court of Appeals for the Federal Circuit, to hear ali appeals in patent cases. (4) These appeals include direct challenges to the PTO's denial of patent applications. They also include challenges to the decisions of regional trial courts regarding patent validity and infringement with respect to previously granted patents.
Perhaps not surprisingly, then, the institutional debate has often focused on the Federal Circuit. Many patent scholars have written about the Federal Circuit, and some law reviews have devoted entire issues to analysis of the Federal Circuit as an institution. (5)
But other institutions are also beginning to compete for institutional primacy. The Supreme Court's increasingly assertive review of the Federal Circuit has prompted many articles discussing the Court's institutional role. (6) Even the PTO, long considered a weak agency because of its limited rulemaking power, has begun to flex its muscle. In recent years, the PTO has repeatedly challenged Federal Circuit decisions before the Court. (7) The PTO also succeeded in securing passage of the 2011 America Invents Act (AIA). (8) Although the AIA did not give the agency the expansive rulemaking authority over questions of substantive patent law that had been proposed in earlier versions of the legislation, the AIA did confer upon the PTO the ability to conduct postgrant review proceedings that resemble formal adjudications. (9) Under standard administrative law, formal adjudication is a salient mechanism through which agencies make policy. Based on these developments, patent-law scholars are beginning to treat the PTO as a full-fledged participant in the institutional debate.
To some extent, patent-law scholars have also begun to recognize the policymaking role of agency actors beyond the PTO. For the most part, the literature has focused on the International Trade Commission (ITC) and the Federal Trade Commission (FTC). Scholars note that the ITC--which issues injunctions barring the entry of goods that infringe valid U.S. patents--affects patent policy, particularly policy related to remedies for infringement. (10) The literature on the FTC emphasizes the agency's prominent role in investigating the antitrust implications of patent-litigation settlements between brand-name- and generic-pharmaceutical firms. (11)
That non-PTO agency actors play a significant role in specific areas of patent policy beyond patent validity is unsurprising. After all, under the Patent Act, the PTO's decisionmaking authority is largely confined to the adjudication of questions of patent validity. (12) More notable is the manner in which the Supreme Court's renewed interest in patent law has transformed the executive branch's Supreme Court litigator, the Department of Justice's (DOJ's) Office of the Solicitor General (SG), into a significant player in patent policy across the board, including on core issues of patent validity. …