Addressing the Patent Gold Rush: The Role of Deference to PTO Patent Denials

Abstract:     
In the past few years, we have witnessed a proliferation of patents in the two industries that are central to our information economy - computer software and biotechnology. Many commentators fear that the rush to patent in these economically vital industries will lead to restricted information flow and retarded innovation and development. The proliferation of high-technology patents directly implicates the two institutions that are primarily responsible for administering the patent system - the Patent and Trademark Office ("PTO"), which grants patents, and the Court of Appeals for the Federal Circuit ("CAFC"), which hears all patent appeals. Moreover, given that the CAFC's reversal of PTO decisions denying patent protection to certain biotechnology and computer program inventions has been a major reason for the recent proliferation of patents, it is important to reassess the relationship between the CAFC and the PTO. This paper argues that, from the standpoint of institutional competence, the CAFC should not independently review the PTO's decisions denying patentability. Rather, it should apply traditional administrative principles of deference to the PTO's patentability denials.

Working Paper Series