Posted by: bridget | 5 March 2007

Patently Absurd

The US Patent and Trademark Office will soon publish pending patent applications online and solicit help from the general public in evaluating the inventions. The theory is that most federal agencies allow public comment, so the PTO should follow suit. This might be remotely logical if the patent office (specifically, exempting trademarks) were a normal federal agency; however, there is a strong constitutional basis for the patent office and no basis for other federal agencies.

Art. I, Sec. 8, cl. 8 instructs Congress to create a patent office: “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” The American Inventors Protection Act and the Patent Cooperation Treaty provide that inventions will be published eighteen months after the effective filing date. Inventors may request publication before that date; however, an inventor who wishes his invention to remain a secret prior to grant of patent rights has an eighteen-month window. There are statutory and treaty protections against the scheme advanced by the Patent and Trademark Office.

Administrative agencies are a different breed. They have notice-and-comment rulemaking because the agencies are, essentially, unconstitutional. Congress has delegated it legislative authority to these agencies; the crumbs given back to the public, in exchange for being deprived of the right to elect our lawmakers, is that it can comment on rules (i.e. laws and regulations) before they are passed. The Administrative Procedure Act, Sec. 553(c), mandates notice-and-comment rulemaking; the US Patent Act has no corresponding provision. As one is general and the othe specific to the PTO, it can be inferred that Congress never intended the PTO to engage in notice-and-comment “rulemaking” for determination of patent rights.

Administrative agencies have, inter alia, the function of making binding law, while the patent office confers a property right upon individuals – hence the rulemaking part of notice-and-comment rulemaking. The new proposal is akin to notice-and-comment adjudication, which is the closest analog to the granting of a patent. Amici briefs have been popular in adjudication; however, Sec. 554, 556, and 557 of the APA do not provide for notice-and-comment adjudication.

The idea that this scheme is necessary because the PTO is understaffed is simply ridiculous. If the workload is too heavy, the PTO should hire more attorney-engineers to research the technology. Specialised attorneys would also solve another PTO problem: lack of expertise. If the agency admits that it lacks expertise to make decisions, farms out that responsibility to the general public, and makes its decision to confer or deny a patent on the same, then any person denied a patent, or any inventor whose rival so obtained, will have wonderful grounds on which to sue. (Mind you, this pachyderm isn’t complaining about the potential for employment.)

Edit – additional info: Sabrina Safrin, a guest blogger at Volokh, has a great post up about defensive patenting – i.e. property rights beget more property rights.



  1. Our patent process, while imperfect, is one of the things that makes this country so great. Having the right incentives and protections in place for entrepreneurial ideas is critical.

    Hiring more people to staff it properly is one of the few areas I’d be glad to pay higher taxes for (though just cutting out a few “bridges to nowhere” would free up all the cash the patent office would need).

  2. Hi Neil,

    Yes, I would also gladly pay more taxes to improve the patent office. I’m just worried that a lot of people will consider maintaining their inventions as trade secrets if it becomes difficult to not publish the applications. (Once upon a time, the application was only published upon grant of patent.)

    One would think, though, that the filing fees and maintenance fees from patent owners would be enough – after all, if the Patent Office has a record number of applications, then it should also have a record revenue.

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