The PTO's Asymmetric Incentives: Pressure to Expand Substantive Patent Law

Abstract

The development of substantive patent law is principally associated with the United States Court of Appeals for the Federal Circuit (Federal Circuit). The Patent and Trademark Office (PTO), the central agency in the patent system, is largely thought to play a negligible role in the evolution of substantive patent law standards. This Article challenges this view and argues that the PTO has a considerable effect on the development of substantive standards - one that drives substantive patent law in an expansive direction. It begins by focusing on the PTO’s inevitable need to develop its own views on substantive patent law. It then identifies and explains how key elements of the administrative structure of the agency, as well as its relationship with the Federal Circuit, generally push the PTO’s views on substantive patent law in a patent-protection direction. Significantly, this Article also explores how the PTO’s tendency to expand the patentability standards, in turn, creates pressure on the Federal Circuit to enunciate legal standards that are expansive in nature. Finally, it examines multiple mechanisms which could improve the PTO’s ability to develop substantive patent law.