Recent Patent Law Scholarship Roundup

By Jason Rantanen

Paul J. Heald and Susannah Chapman, Veggie Tales: Pernicious Myths About Patents, Innovation and Crop Diversity in the Twentieth Century:
Who is correct: the ethnobotanists, with their belief that patents destroyed plant diversity in the twentieth century, or the economists, with their belief that patent law is essential to increasing plant diversity through innovation?  Based on a novel empirical analysis of vegetable crops and apples, Paul Heald and Susanna Chapman conclude that both are wrong: crop diversity has not declined since 1900; it has held steady or even increased.  And patents have played at most a minor role in innovation of new varieties of vegetables and apples.  While the authors' conclusions are not unassailable, they are surprising and thought provoking, and the paper is worth reading by anyone interested in patent policy, crop diversity, or even just the subject of where our food comes from.

One area in which I disagree with the paper's conclusions is in the interpretation of the data about the role patents play in the development of new varieties.  In support of their conclusion that patents played an insignificant role role in incentivizing the creation of new types of apples, the authors point to data suggesting that patented varieties comprised only 10% of the varieties of apple stock available in 2004 but not in 1900 (i.e.: "new" varieties).  Yet, 10% may be a significant figure in terms of marginal incentives, especially in an area where non-patent mechanisms are also likely operating to  encourage invention and where the cost of engaging in inventive activity may be relatively low.  Hobby gardeners, for example, may be producing a significant amount of new diversity in this area.  In addition, the 10% figure is based a whole that includes imported varities and newly identified historic varieties; when limited to new varieties due to innovation alone, the figure would be closer to 22% based on the reported data.

The complete article is available via ssrn here.

Sarah Tran, Patent Powers
Much has been said about the Leahy-Smith America Invents Act, but little intensive scholarly analysis has yet appeared.  Professor Tran engages in such an analysis with respect to a specific aspect of the AIA: the way in which it transforms the Patent and Trademark Office's rulemaking authority and how those changes affect the traditional power dynamic between courts and the PTO.  The PTO's new powers, Professor Tran concludes, "conflict irreconcilably with the Federal Circuit’s traditional view of PTO authority," and "require[] that the Agency engage in complex, policy-based decisions that may carry profound implications for inventors, patent law practitioners, and society at large."  Draft at 6.  To resolve this conflict, she proposes an analytical framework to delineate the proper extent of the PTO's authority under the AIA, one that shifts greater substantive rulemaking authority to the patent office. 

Professor Tran's current draft is available via ssrn here.  The article includes an extensive chart setting out each of the PTO's new rulemaking powers under the AIA. 


8 thoughts on “Recent Patent Law Scholarship Roundup

  1. 7

    Thanks for sharing your insights, Ned! I particularly like your final statements about stepping into a brave new world. That’s a very useful way of looking at the changes.


  2. 6

    Ned, I think it is more plausable that Congress was simply passing the buck to the PTO to resolve the operational details of new PTO systems and the verbal ambiguities in their statutes. Especially the novel systems stuck into the AIA very late in the game with little consideration or detail – the ex parte “supplimental examination” to launder IC and the inter partes non-technical business methods reexamination.

  3. 5

    American Intellectual Property Law Education Foundation – Sidney B. Williams Jr. Scholarship

    Sponsored by the American Intellectual Property Law Education Foundation, the Sidney B. Williams Jr. Scholarship addresses the need to increase the number of minority intellectual property attorneys and to bring these attorneys to the attention of firms and corporations as candidates for employment. The $10,000 Law Scholarships will be awarded to minority students developing a career in intellectual property law. The Thurgood Marshall College Fund is assisting the Foundation by administering the application and selection process.

  4. 4

    Sarah, you are quite welcome.

    Regarding who decides, you might also want to refer to Graham v. John Deere and its discussion of the origins of US patent law.

    Initially, Congress gave the executive branch the discretion to decide the level of inventiveness that merited a patent. Jefferson thought that a bad idea, and asked that the executive be taken out of that responsibility and that the courts develop the substantive law, include what was required for invention. That turned into a centuries-wide endeavor that included defining the subject matter of patents (non 101) and obviousness (now 103). Consistent with Jefferson’s plan, Congress never gave the PTO substantive rulemaking authority again.

    Still, when the PTO passed Rule 56, the courts treated the rule substantively. A violation of the rule would be treated as unclean hands in court. Therasense ended that nonsense.

    Good secondary authority on all of the above are Curtis on Patents, Walker on Patents, Frederico’s articles about the original patent acts published in the JPTOS in the ’30s.

    To some extent, granting the PTO any substantive authority is a risk Congress has not taken since 1790. We are stepping into a brave new world here.

  5. 3

    Dear Mr. Heller and Publius:

    Thank you for taking the time to look at my draft article. It’s very much in a work-in-progress, so I appreciate getting as much feedback on it as I can. That said, I disagree with Publius’ characterization of my arguments. My article does not suggest that the PTO has “general rulemaking authority for all various and sundry subjects related to patents.” Quite the contrary, I acknowledge the fact that Congress has only given the PTO specific rulemaking powers and has not given the PTO authority to set many patent standards, such as the standards for novelty and obviousness. However, the AIA requires the PTO to set some patent law standards, which conflicts with the Federal Circuit’s traditional view of the Agency as limited to procedural rulemaking.

    If anyone would like to discuss my article with me in greater depth, please feel free to email me at

    Sarah Tran

  6. 2

    It appears that Ms. Tran does not understand the crucial role of an enabling act in defining the permissible scope of agency rulemaking.

    In short, the PTO has been enabled by Congress to make rules governing the conduct of proceedings in the Office (35 USC 2)and for other specific subjects as enabled in the AIA. The PTO does not, and never has had, general rulemaking authority for all various and sundry subjects related to patents. That is not because the Federal Circuit has “arrogated” the power to interpret the patent law – it is because Congress has never granted the PTO such authority through a general enabling act.

  7. 1

    Regarding the PTO’s ability to enact substantive rules, one only has to recall all the havoc caused everyone when it issued Rule 56.

    Then we have the example of the Rules Package.

    We really need to keep the PTO out of substance as much as we are able. Unfortunately, Kappos apparently has Obama’s ear, and that is why the PTO got so much new substantive authority in the new act.

    Wrongheaded in the extreme.

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