Should the patent office open its internal guidelines to the public?

Anyone following policy issues around technological innovation has noticed the power and scope of patents expanding over time. For instance, most people are aware of the Supreme Court’s decision to allow the patenting of genes. Computer experts are more concerned about the decisions to patent software. Many forces contribute to the expanding reach of the patent system over time, and to understand them better I recommend a thoughtful, readable summary by law professor Melissa F. Wasserman.

Wasserman argues that the patent office, the appeals court that reviews its decisions, and even Congress have incentives to keep expanding patents. Her anecdotes strike home and her reasoning is lucid, although of course we lack experimental methods for testing her hypotheses. (That is, we can’t prove that patent examiners or courts were biased by looking at statistics.) I think you’ll find her article quite readable, with most of fussy legal language relegated to the footnotes. (I heard about the article thanks to an email from Harvard Law School’s Petrie-Flom Center for Health Law Policy Biotechnology and Bioethics.)

As a simple example of the bias toward extending patents, consider that nobody ever appeals a patent examiner’s decision to grant a patent, but aggrieved applicants often appeal decisions to deny a patent. And defending the decision to deny a patent costs the patent office a lot of money, which it can’t make up from fees. Because the appeals court hears of dubious decisions only when a patent it denied, it has no opportunity to say, “Woah there, stop expanding the patent system.”

But it gets even worse. Wasserman offers several subtle reasons why having a denial reversed hurts the patent office, whereas it hardly ever suffers if a patent is successfully challenged years later.

One of the most interesting observations in the paper–which Wasserman makes briefly in passing, on page 14–is that the administrators of the patent office provide guidance to examiners in a number of internal memos that are never exposed to the public. Here is a cause for open government advocates: show us the memos that contain criteria for approving or denying patents!

Wasserman is not unsympathetic to the patent office. On the contrary, she takes raises the question above the usual cries of “poor, overworked examiners” or “corporate-friendly, biased judges” and finds systemic reasons for today’s patent bloat. These range from making it easier to challenge a patent right at the start to overhauling the funding of the patent office so it gets the support it needs both for approving and denying patents.

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