Scientific and technological innovations are forcing the inadequacies of patent law into the spotlight. Robin Feldman explains why patents are causing so much trouble. She urges lawmakers to focus on crafting rules that anticipate future bargaining, not on the impossible task of assigning precise boundaries to rights when an invention is new.

The creation in 1982 of the United States Court of Appeals for the Federal Circuit represents the first significant appellate consolidation of a particular area of law in American history. Evaluating the Federal Circuit experiment is highly important to understanding, and perhaps improving upon, the institutional design of the federal judiciary. The Federal Circuit was grounded in a congressional desire for greater uniformity in the application of patent law. In patent law, as in other areas of the law, uniformity is a virtue. But uniformity is not the only virtue and centralization has its costs. The issue of centralization versus decentralization manifests itself in numerous areas of law, politics, economics and business. This article draws upon that literature and argues that the time is ripe to rethink the Federal Circuit experiment and the fixation on uniformity that gave rise to the experiment. The criticisms currently levied against the Federal Circuit - that it maintains excessive insularity, is subject to path dependency in its case law, and produces inadequately nuanced jurisprudence - can be traced back ultimately to the court's chief structural limitation: The court lacks the benefit of sister-circuit jurisprudence that would engender a healthy competition of rationales and provide a mechanism for testing legal innovations. Accordingly, the article proposes that in addition to the Federal Circuit, at least one, and perhaps two or three, extant circuit courts should have jurisdiction to hear appeals relating to patent law. This proposal represents a shift in strategy from one dominated by the pursuit of uniformity, to one where competition and diversity are equally important. As the literature from many other areas suggests, a choice between centralized and decentralized institutions cannot and should not be made with a polar solution. The issue is one of optimization. In 1982 Congress decided that the optimal number of federal appellate courts deciding patent cases was fewer than thirteen; we suggest that the optimal number may also be greater than one.

The United States Patent and Trademark Office is tasked with the job of reading patent applications and determining which ones qualify for patent protection. It is a Herculean task, and the Patent Office pursues it subject to enormous informational and budgetary constraints. Nonetheless, under current law, courts are bound to defer to the Patent Office's decisions regarding patent validity. In this Article, we argue for reform. Deference to previous decision-makers is appropriate in instances where those previous decisions have a high likelihood of accuracy, and the patent system should endeavor to create processes that fit this mold. But granting significant deference to the initial process of patent review is indefensible and counter-productive. Patents should be vulnerable to challenge until and unless they are significantly evaluated in an information-rich environment. At that point, they will have earned and therefore should be accorded a presumption of validity. Such an approach would better serve the patent's systems long-run incentive goals, and it would give patent applicants better incentives to file for genuine inventions but leave their more obvious and incremental accomplishments outside the patent system's purview. Here, we therefore suggest the creation of a two-tier system of patent validity, with patents that are subject to intensive scrutiny accorded a strong presumption of validity, while untested patents are left to be evaluated more fully in court.

Intellectual property law is built on constitutional foundations and is underpinned by the twin freedoms of freedom of expression and freedom of economic enterprise. In this thoughtful evaluation, Gustavo Ghidini offers up a reconstruction of the core features of each intellectual property paradigm, including patents, copyright, and trademarks, suggesting measures for reform to allow intellectual property to become socially beneficial for all.

This Article argues that administrative law doctrines should not apply to judicial review of the patent system. The dynamics of patent law derive not from public law regulation, but rather from the private law doctrines of contract, property, and tort. A patent is akin to a unilateral contract offer by the government. An inventor who files a patent claim is claiming acceptance of the offer. If the offeror-government agrees, the patent must issue, with the property right of the patent given as consideration. An applicant that challenges the denial of a patent application is essentially bringing a breach of contract action, and a patent infringement suit is a type of tort claim. Based on this insight, the Article argues that administrative law doctrines such as Chevron and the Administrative Procedure Act should not apply within patent law, and that such doctrines pose a serious threat to the proper functioning of the patent system.

As reflected in the Federal Circuit's fractured opinion in CLS Bank v. Alice Corp., there is no greater confusion in contemporary patent law than that surrounding the scope of patent eligibility limitations. This Supreme Court amicus brief in that case traces the roots of the court-made doctrines excluding patents on laws of nature, physical phenomena, and abstract ideas. It argues that a test of inventive application neither serves the underlying purposes of the patent system nor comports with the process of modern technological advance. As a result of advances in scientific understanding and methods over the past 150 years, many if not most inventions today explicate, manipulate, and control physical, chemical, biological, and digital phenomena at elemental, molecular, algorithmic, and systemic levels. Doctrines that treat conventional application of even newly discovered computer algorithms, molecular pathways, and chemical synthesis as unpatentable threaten to exclude much of the inventive thrust of modern research. Mayo's requirement for unconventional application shifts scientists' efforts from the valuable scientific and technological advances that society seeks toward surmounting an amorphous test of non-obvious implementation. Specific and practical application, in conjunction with the technological arts limitation explicated in Justice Stevens's concurrence in Bilski, would better serve as the test for patent eligibility in the modern scientific and technological age. Particularly in light of past experience, setting inventive application as the test for patent eligibility threatens to undermine invention incentives, hamper patent prosecution, and greatly complicate patent litigation. While recognizing that the problems posed by patents on software and other computer-implemented inventions are real, this brief contends that patent eligibility doctrines beyond requiring specific application and categorical exclusion of business methods and other non-technological processes are poorly suited to address those concerns. It therefore concludes that the Supreme Court should turn away from the Funk Brothers/Flook/Mayo paradigm, and instead focus on elucidating the statutory requirements of patentability. By clarifying the constitutional and jurisprudential foundation for subject matter exclusions, the Court can promote legislative and administrative solutions that more directly address the evolving needs of the patent system.

Patent law is bogged down in the minutia of claims construction. Claim construction is central to every patent dispute, but it has not provided the hoped-for certainty or notice to competitors. Quite the contrary: disputes about the importance of inventions and the scope of patents have been replaced by labyrinthine wrangling over words written by lawyers. The flaws of claim construction result largely from the problems attending quot;peripheral claims,quot; that is, claims that purport to set the outermost boundaries of patent rights. In this paper, we argue that the way for the patent system to move ahead may be by looking behind, to the practice of quot;central claimingquot; that was prevalent before 1870, and which was used in many countries through the late twentieth century. Rather than relying on the illusion of peripheral quot;fence posts,quot; patent law may do better to once again look to stability of central quot;sign posts.quot; We examine the failure of peripheral claiming, the benefits of central claiming, and several hybrid measures that might be adopted, either in the process of moving from fence-posting to sign-posting, or as improvements over the current system that still stop short of fully adopting central claiming.