Regulating Patents

Jonathan S. Masur

Over the past several decades, the Federal Circuit has been roundly criticized for creating overly formal doctrines that ill serve the interests of innovators and consumers alike. Scholars have suggested doctrinal corrections of all types, but the Federal Circuit's performance appears, if anything, to be worsening. It is time to consider institutional solutions, rather than doctrinal ones. It makes little sense that the development of substantive patent law remains predominantly in the hands of the courts, while responsibility for other complex regulatory fields such as environmental or securities law has been delegated to expert agencies. Congress should remedy this anomaly and endow the Patent and Trademark Office with substantive rule-making authority. Such a change could produce significant benefits for patent law. A properly empowered PTO could bring expertise and institutional resources to bear on complex questions of patent policy to a degree unthinkable within the federal courts. In addition, the patent office currently produces enormous quantities of useful information but has no reliable mechanism for transmitting that information to the Federal Circuit, in part because the Federal Circuit does not have the proper incentives to accept and utilize that information. Substantive rule-making power would allow the PTO to utilize its substantial informational resources in crafting intelligent patent policy, and would permit the agency to design rules that respond to particular technological developments in specific fields. Where Federal Circuit hegemony has failed to generate sensible patent policy, intervention by the PTO may yet succeed.