Session 5: Institutions II
Moderator: Alfred C. Yen
F. Scott Kieff, “Pragmatism, Perspectives, and Trade: Intellectual Property, Antitrust, and International Trade as Mostly Private Law”: These fields are inherently blends of private and public law, so let’s try pragmatically enbracing diverse perspective. Private law features do and should dominate. Explicit goals: improving dynamic efficiency through increased commercialization and competition: shared, achievable goals. Welcome other perspectives, goals, mechanisms, as long as they’re explicit. Mitigating the efficiency and fairness eroding effects of public choice and strengthen the opportunity for democratic review.
By design, executive branch agencies are supposed to be responsive to politics—PTO, DOJ; courts are designed to be less responsive. FTC is more responsive than ITC, which is more like courts. Patent validity, infringement, remedy, antitrust are the issues; there’s an inherent tension that causes each side to engage in aggressive self-discipline when presenting arguments when all four buckets are on the table at the same time—at the infringement stage, plaintiff claims everything but then at the validity stage that makes it cover prior art; also might give it market power. That means that ITC gets massive benefit in decisionmaking ability coming from aggressive self-discipline parties have when they argue before us—they have a tiger by the tail.
Where only validity or antitrust is on the table, you get massive overclaiming; there’s no tension which is necessary to create limits. ITC is a lot cheaper to run than DOJ, FTC. The amount of money you have to invest in getting decisionmaking right is less if the private actors have self-discipline.
Commentator: Michael B. Abramowicz: Patents as a way to encourage private coordination around inventive products; Kieff argues that b/c these areas of law encourage contracting, they should be and mostly are private law. To the extent we move toward public law end, that can threaten the coordination function of law and thus threaten commercialization. There’s lots of ways to think about what public/private law means. Kieff thinks of private law as mostly involving interpretations of documents written by private parties; public law is more interpretations of statutes. He sees patent law as primarily private. Tend to think of them as more public than he does.
What would patent law look like if it were more private? Sichelman’s commercialization system w/relatively little discretion? Maybe patent should be more of a registration system, where we rely on litigation rather than examination. Fee-shifting to reduce abuse. Now: private parties draft patents, but that’s heavily constrained by the law. In the end, there’s a fair degree of gov’t discretion at PTO and in courts.
Mosseff: Samsung v. Apple: parties went through the process, relied on the experts; then they went up to the President and got a different result through lobbying.
Kieff: Yes, sensitive to that; that was explicitly not appellate review, but political.
R. Polk Wagner, “The Private Design of the Patent Law”: Patent law can be understood as private law in its commitment to fostering private interactions. We want to promote certain kinds of activity/generation of certain information. The value of calling that a patent is that it allows private actors to build on that/transact around it/understand it in a useful way. If all we wanted was incentives/information, you could do that a lot of different ways—prizes, direct gov’t regulation—and we do, but we have this thing called a patent, whose very idea is classically private.
Other thing that’s important is how much the patent system seems to be designed to generate information that is intended to be shared. The patent prosecution process is structured to have you record who you worked with, what you consulted, etc. A lot of what goes on in prosecution directly affects scope and validity of patent as well as its future uses, so it’s a private process as well. Inventorship/ownership rules are also interesting from a private law perspective though they seem regulatory/have clear policy goals. Contribute to an invention = inventor; seems non-malleable, except that the definition of the invention is very malleable. What is and what isn’t defined as prior art is a set of rules clearly designed to foster the way people interact around innovation. Determines whether you research or create your own; how much you have to search and where. Determines what researchers will publish or not, where you publish, who you talk to—private behaviors shaped, though not directed, by patent rules.
Finally, invalidity as a defense. Raises the stakes of litigation; entire prosecution process can be redone, which interacts w/ forcing people to behave themselves in the prosecution process & take consistent positions in the later infringement proceeding. Operates independently of defendant culpability, which is an interesting feature. You can infringe w/o liability!
These features might not seem private in nature but they can be seen as such. Big question: now what? We don’t know what we’re optimizing so we have the same debates over & again. Can we use the lens of private law to get us out of some of these debates that just go straight to policy?
Commentator: Kali Murray: Patent as having the ability to disrupt, undermine various social relationships, just as property law can disrupt in real/personal property—disruption of the commons and use rights there. 19th C.: Populists hated patents, not b/c they disrupted market relationships but b/c they disrupted social relationships in specific communities. Use rights over farming implements, for example. Private law was used to structure a critique of patents too. Now, state AGs are once again getting involved in patent laws b/c patent laws are again disrupting social relationships we think are important. Not necessarily about inventor’s relationship to employment contract or licensing, but about how patent itself can disrupt a social world. This helps us see how private law is/can be about public debates linked to governance.
Standing for third parties’ declaratory judgments: if patents harm parties’ relationships, such as researchers who are hampered in their research, she wants to provide standing to them. If patent has in its goals and aims an attention to private relationships, then the argument for standing is stronger.
Sichelman: Lots of public law, like securities, functions to encourage private interactions. So the definition of private law needs to be different. Compare: You petition the state for the invention; you could treat that like criminal law, where the DA brings an action on behalf of the victim. Torts is private parties; criminal law is public law. So there needs to be more specificity in what constitutes private law.
Wagner: I am conceiving the design of the patent system as involving private enforcement. If state were enforcing, it’d be different, and the doctrines wouldn’t necessarily be the same. The prosecution process as information-forcing mechanism: if it was just a version of criminal law, you wouldn’t have that set of rules, or they wouldn’t have the teeth that they do b/c people would not enforce themselves. Private parties now have to use that info to make critical decisions on a day to day basis. As long as it’s private enforcement and not state, all of these doctrines are linked to private relationships, different than pure public law. But part of this is that we don’t exactly know the scope of private law or even if that definition ultimately matters much.