Patent Validity Across the Executive Branch: Ex Ante Foundations for Policy Development

Abstract

Among patent scholars who address institutional questions, many favor the courts over the PTO as the policymaker of choice. Even though courts have familiar limitations with respect to policymaking, scholars often argue that the PTO is more likely to be captured. This Essay argues that the capture story has significant limits, particularly in key cases where PTO decision making has been influenced by other executive-branch decision makers. Meanwhile, exclusive reliance on ex post judicial development can yield a one-way ratchet towards the expansion of patent protection. When courts expand patent rights, they generally do not have to worry about retroactive effect. By contrast, courts face legitimate concerns about retroactive effect when they are called upon to curtail such rights. More frequent ex ante intervention by the executive branch, facilitated by the recent grant of postgrant review authority in the America Invents Act, would avoid these problems without precluding ex post development and adaptation.

Keywords: patents, executive branch, validity, ex ante

JEL Classification: K20, K40