Melissa F. Wasserman (University of Illinois College of Law) has posted The Changing Guard of Patent Law: Chevron Deference for the PTO (William & Mary Law Review, Vol. 54, 2013) on SSRN. Here is the abstract:
-
While Congress has increasingly turned to administrative agencies to regulate technically complex areas, the patent system has remarkably remained an outlier. In the patent arena, the judiciary — not a federal agency — is perceived to be the most important expositor of substantive patent law standards. Criticism of the patent system has grown and calls for institutional reform of this unusual power dynamic culminated in late 2011 with the enactment of the historic Leahy-Smith America Invents Act (AIA). While scholars have recognized that the AIA bestows upon the Patent and Trademark Office (PTO) a glut of new powers, commentators have failed to recognize the extent to which the AIA alters the fundamental power dynamics between the judiciary and the PTO. This Article contends that the AIA rejects over two hundred years of court dominance in patent policy by anointing the PTO the primary interpreter of the core patentability standards through its new formal adjudicatory authority.
Although the patent system has traditionally suffered from a lack of serious engagement with administrative law, an application of administrative law principles to the AIA has not only tremendous implications for the roles of patent institutions but also, as this Article argues, results in a normatively desirable outcome. Making the PTO the primary expositor of the core provisions of the Patent Act ushers the patent system into the modern administrative era, which has long recognized the deficiencies associated with judge-driven policy. Moreover, the incorporation of administrative law principles into the patent system has substantial implications for administrative law.
This Article concludes by exploring some of the implications of granting the PTO the ability to speak with the force of law only by case-by-case adjudication. More specifically, the PTO’s new authority is implemented asymmetrically: deference will more often be due to PTO interpretations that uphold patent validity than to those that deny patentability, resulting in an expansionary pressure on substantive patent law. This Article also explores policy proposals to eliminate this asymmetry.
Very interesting and recommended.