Reasoned Decisionmaking vs. Rational Ignorance at the Patent Office

By Duffy, John F. | Iowa Law Review, July 2019 | Go to article overview

Reasoned Decisionmaking vs. Rational Ignorance at the Patent Office


Duffy, John F., Iowa Law Review


I. Introduction

A polestar of modern administrative law is that the Administrative Procedure Act ("APA") imposes a comprehensive system of "reasoned decisionmaking" to regulate agency behavior.1 That interpretation of the APA has unanimous support on the supreme court and has been expressly invoked by Justices on both sides of the Court's ideological divide.2 It is also a long-standing principle. The exact phrase dates back more than a third of a century to the Supreme Court's momentous 1983 decision in Motor Vehicle Manufacturers Ass'n v. State Farm Mutual Automobile Insurance Co.,3 but the theoretical basis for the doctrine extends to some of the supreme court's earliest interpretations of the APA.4 Indeed, the precursors of the principle are evident not only in pre-APA administrative case law, but also in the very aspirations of modern administrative law.5

Despite the prominence of reasoned decisionmaking as a constraint on administrative action, the principle has been, until recently, largely absent from judicial decisions reviewing the work of the Patent Office.6 The Federal Circuit did not invoke the concept in even a single patent case until 2002 -two decades after the court's creation-and more than a decade would pass before the principle would make another appearance in an appellate patent decision. Indeed, the 2002 case that did require "reasoned decisionmaking" in the Patent Office-In re Lee7-likely did not become a watershed case because the opinion included unfortunate passages that appeared to bar the Patent Office from using "common sense" in evaluating patent applications.8 Subsequent Supreme Court precedent soon made clear that the Lee court was wrong in its hostility toward the agency's use of common sense.9 The controversy over Lee's "common sense" statements seemed to overshadow the far more supportable portions of the opinion recognizing that the Patent Office, just as any other administrative agency, must follow a course of "reasoned decisionmaking" that includes, among other things, a "thorough and searching" factual inquiry and "a full and reasoned explanation" justifying the agency's choice.10

While the constraint of "reasoned decisionmaking" was not being applied to the Patent Office in the late 20th and early 21st centuries, another theory of appropriate administrative behavior for the Patent Office gained prominence and influence. Mark Lemley's article Rational Ignorance at the Patent Office posited that "[b]ecause so few patents are ever asserted against a competitor, it is much cheaper for society to make detailed validity determinations in those few cases than to invest additional resources examining patents that will never be heard from again."11 "In short," he argued, "the PTO doesn't do a very detailed job of examining patents, but we probably don't want it to."12 It is instead better for the agency to remain "'rationally ignorant' of the objective validity of patents."13

The "rational ignorance" theory always suffered from at least three fundamental difficulties. A first and threshold problem is that the theory, if more than a truism, is hopelessly ill-defined. It is of course true that no governmental agency-and indeed, no individual-makes decisions with perfect information. Because information is costly, rational actors economize on its acquisition. They collect information up to the point where the marginal costs of gathering more information begin to outweigh the marginal benefits. They do not bother collecting information beyond that point because the collection of such additional information is not cost-justified. All of this is, however, a mere truism that follows from the assumptions of rational actors and costly information. In sum, all rational actors can be accurately said to be "rationally ignorant"-and also, for that matter, "rationally informed" -in all contexts.

If a theory of "rational ignorance" is to be more than just a truism, it must refer to some set of conditions that would cause rational actors to remain especially uninformed about facts. …

The rest of this article is only available to active members of Questia

Already a member? Log in now.

Notes for this article

Add a new note
If you are trying to select text to create highlights or citations, remember that you must now click or tap on the first word, and then click or tap on the last word.
One moment ...
Default project is now your active project.
Project items
Notes
Cite this article

Cited article

Style
Citations are available only to our active members.
Buy instant access to cite pages or passages in MLA 8, MLA 7, APA and Chicago citation styles.

(Einhorn, 1992, p. 25)

(Einhorn 25)

(Einhorn 25)

1. Lois J. Einhorn, Abraham Lincoln, the Orator: Penetrating the Lincoln Legend (Westport, CT: Greenwood Press, 1992), 25, http://www.questia.com/read/27419298.

Note: primary sources have slightly different requirements for citation. Please see these guidelines for more information.

Cited article

Reasoned Decisionmaking vs. Rational Ignorance at the Patent Office
Settings

Settings

Typeface
Text size Smaller Larger Reset View mode
Search within

Search within this article

Look up

Look up a word

  • Dictionary
  • Thesaurus
Please submit a word or phrase above.
Print this page

Print this page

Why can't I print more than one page at a time?

Help
Full screen
Items saved from this article
  • Highlights & Notes
  • Citations
Some of your highlights are legacy items.

Highlights saved before July 30, 2012 will not be displayed on their respective source pages.

You can easily re-create the highlights by opening the book page or article, selecting the text, and clicking “Highlight.”

matching results for page

    Questia reader help

    How to highlight and cite specific passages

    1. Click or tap the first word you want to select.
    2. Click or tap the last word you want to select, and you’ll see everything in between get selected.
    3. You’ll then get a menu of options like creating a highlight or a citation from that passage of text.

    OK, got it!

    Cited passage

    Style
    Citations are available only to our active members.
    Buy instant access to cite pages or passages in MLA 8, MLA 7, APA and Chicago citation styles.

    "Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences." (Einhorn, 1992, p. 25).

    "Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences." (Einhorn 25)

    "Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences." (Einhorn 25)

    "Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences."1

    1. Lois J. Einhorn, Abraham Lincoln, the Orator: Penetrating the Lincoln Legend (Westport, CT: Greenwood Press, 1992), 25, http://www.questia.com/read/27419298.

    Cited passage

    Thanks for trying Questia!

    Please continue trying out our research tools, but please note, full functionality is available only to our active members.

    Your work will be lost once you leave this Web page.

    Buy instant access to save your work.

    Already a member? Log in now.

    Search by... Author
    Show... All Results Primary Sources Peer-reviewed

    Oops!

    An unknown error has occurred. Please click the button below to reload the page. If the problem persists, please try again in a little while.