Revisiting the Presumption of Patent Validity

47 Pages Posted: 4 Jul 2009

Date Written: 2008


This Article seeks to solve the seemingly intractable problem of the Patent Office ('PTO') routinely issuing patents of dubious validity. Some have convincingly argued that the PTO is justified in its “rational ignorance” because most patents are of nugatory value and the judiciary is better placed to perform an accurate screening function. Yet, the statutory presumption of patent validity markedly frustrates the efficacy of the foregoing process, given its reinforcement of erroneously granted patents.

The author supports a new form of prosecution in which applicants can elect two forms of review. Those electing a contemporary standard of review would have their applications considered by an examiner in much the same manner as today, but would be awarded a patent with a far lower presumption of validity. Potential infringers who later try to invalidate such patents would only have to prove invalidity on the balance of probabilities. However, a second - and far more scrutinizing - form of review would also be available to a prospective patentee. An applicant electing this route would be required to pay a significant filing fee, would be charged with providing a full, researched report on the prior art, and would be subjected to truly exhaustive scrutiny by the pertinent examiner. Those succeeding on this ground would receive a 'gold- plated' patent enjoying an enhanced presumption of validity.

Nevertheless, there is good ground to believe that the prospect of such a presumption alone would lead to sub-optimal use of the 'gold-plated' review process. In particular, submitting one’s application to heightened review front-loads risk of rejection. Moreover, an obscure anticipatory reference may still elude the PTO, which would rationally expend less resources combing the prior art than an accused infringer for whom millions of dollars may be at stake. In the face of an explicit reference - elusive as it may have been - a presumption of validity will have limited prophylactic effect. This Article argues that the anticipatory effect of abstruse prior art is without normative justification in a world where the Patent Office functions at the level of reliability likely to be associated with heightened review. By granting holders of gold-plated patents both a presumption of validity and an immunity from obscure prior art never realistically within their purview, society would encourage inventors of potentially lucrative technologies to submit their applications to scrutinizing review.

Keywords: patent, presumption of validity, injunction, prior art, obviousness, gold-plated

Suggested Citation

Devlin, Alan James, Revisiting the Presumption of Patent Validity (2008). Southwestern University Law Review, Vol. 37, No. 323, 2008. Available at SSRN:

Alan James Devlin (Contact Author)

Latham & Watkins LLP ( email )

555 - 11th Street, N.W.
Suite 1000
Washington, DC 20004-1304
United States

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