Getting Patent Preemption Right
24 Pages Posted: 27 Feb 2019
Date Written: January 7, 2017
This symposium Essay tackles a single doctrinal conundrum at the Intellectual Property and Federalism interface: what standard should courts use to assess whether a state law that weakens federal patent rights is preempted by federal patent law? The Federal Circuit has held that the proper standard is statutory preemption, and specifically “implied conflict” preemption. This analysis requires assessing whether a particular state law interferes with the “purposes and objectives” of the Patent Act. If a court decides the state law interferes with patent law’s goals, it is preempted; otherwise, it is not preempted.
My view is that the Federal Circuit has it wrong. The source of preemption when a state passes a law that weakens a federal patent right is the Intellectual Property Clause itself. This analysis does not look to Congressional intent to preempt state law. Rather, it asks whether the state has excessively burdened the exclusive right “secured” by Congress pursuant to Article I, Section 8, Clause 8, by imposing a compliance cost on patentees that is unreasonably high in comparison to the gravity and scope of the problem the state seeks to address. If, after hearing the evidence, a court finds the state law imposes unreasonably high compliance costs on patentees, the law is preempted by the Intellectual Property Clause; otherwise, the law is not preempted by the Intellectual Property Clause.
In this Essay, I explain the issue of patent preemption and how it arises in patent law and practice. I define “state anti-patent laws” and distinguish them from state patent laws or state “patent-like” rights such as trade secrets. I describe how courts should determine preemption in this context, drawing both on logic and on how courts did so historically. I then lay out the Federal Circuit’s current approach to preemption of state anti-patent laws and show how it is flawed. I hypothesize that the Federal Circuit’s erroneous conception of the preemptive effect of federal patent law on state anti-patent laws helps explain why the Federal Circuit has turned to “Petitioning Immunity” under the First Amendment in order to protect patentees from state law liability. I end by concluding that when addressing state anti-patent laws, as opposed to state patent-like rights, courts should return to the correct preemption standard based on the Intellectual Property Clause.
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