Patent Trial and Appeal Board's Consistency-Enhancing Function

By Frakes, Michael D.; Wasserman, Melissa F. | Iowa Law Review, July 2019 | Go to article overview

Patent Trial and Appeal Board's Consistency-Enhancing Function


Frakes, Michael D., Wasserman, Melissa F., Iowa Law Review


I.Introduction

In recent years, the U.S. Patent and Trademark Office ("Patent Office" or "Agency") has come under increasing scrutiny over inconsistent patentability determinations. In fiscal year 2017 alone, more than 8,000 patent examiners made more than 600,000 patentability decisions.1 There is mounting empirical evidence that these 8,000 patent examiners have sharply divergent grant rates, implicating concerns that the decision to grant a patent is driven not only by the merits of the invention but also by the examiner to which the application is randomly assigned.2 The concern regarding interexaminer disparities is so pressing that it led at least one scholar to quip, "there may be as many patent offices as patent examiners."3

The harms associated with inter-examiner disparities in decision-making are undeniable. To begin, the fact of wildly divergent grant rates among examiners is highly suggestive that the Patent office is regularly getting the decision to grant or deny a patent wrong. Much is at stake with the application of legal patentability standards. The patent system encourages valuable innovations by granting patents on inventions that are novel and that represent more than a trivial advancement over the current scientific understanding. However, should patents be issued covering technologies that fail to meet proper patentability thresholds, there may be an insufficient level of spurred innovation to justify the key costs of extending patent protection: higher prices and restricted access to the patented invention. As a result, if examiners are allowing invalid patents to issue, these patents may impose the costs of the patent system on society without producing the commensurate innovative benefits.4 Alternatively, if patent examiners are routinely denying patents on valid inventions, then innovation incentives may be dampened. To the extent that future inventors can observe these erroneous patent denials, they will discount the value of participating in the patent system to reflect concerns that they too may have their patent improvidently rejected.5 Beyond implicating examination quality concerns, inconsistent examiner decisions also offend theories of administrative justice while also raising questions of equity.6

One of the primary mechanisms by which agencies bring uniformity to low-ranking official's determinations is by subjecting their decisions to higherlevel agency review. The Patent Trial and Appeal Board ("PTAB" or "the Board"), which sits in panels of three administrative patentjudges, reviews the determinations of patent examiners and reverses those in which they believe the examiner has erred. PTAB has been the subject of increasing scholarly attention and just this past term the Supreme Court upheld the constitutionality of the Board.7 However, the impact of PTAB on examiner decision-making has eluded analysis. While empirical examinations of the role agency adjudicatory boards play in bringing consistency to agency determinations has received scant scholarly attention, the few studies to date focusing on this issue conclude that agency adjudicatory boards largely fail to perform this consistency-enhancing function.8

The dearth of empirical scholarship addressing these issues stems at least in part from the difficulty of measuring the behavior of low-level administrative actors and uniformity in their practices. The Patent Office is helpful in this regard given the predictability offered by the relatively homogenous nature of examiners'jobs. In essence, examiners are tasked with reviewing patent applications and determining whether a patent should be granted covering the underlying invention, a decision that can readily be codified and recorded. Moreover, it is exceedingly rare to be able to match data covering the behaviors of low-level administrative agents with information regarding administrative board reviews. Fortunately, we were able to collect data on both the application-level decisions that examiners make and the adjudicatory decisions of PTAB and to link those data sources by unique identifier codes assigned to each patent application and issued patent. …

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