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April 01, 2024 Perspective

Extraordinary Opportunity in Extraordinary Times

Steven P. Caltrider

©2024. Published in Landslide, Vol. 16, No. 3, March/April 2024, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

The founding fathers recognized the importance of intellectual property (IP) by enshrining in the U.S. Constitution the power for Congress “[t]o 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.” James Madison in Federalist No. 43 provided the compelling rationale for the inclusion of IP among the enumerated powers when he noted:

The utility of this power will scarcely be questioned. The copyright of authors has been solemnly adjudged, in Great Britain, to be a right of common law. The right to useful inventions seems with equal reason to belong to the inventors. The public good fully coincides in both cases with the claims of individuals.

Both the constitutional text of “their respective Writings and Discoveries” and the reference in the Federalist papers that useful inventions have equal reason “to belong to the inventors” are a reminder that writings and discoveries start with, and are the property of, the inventor. The government’s role to promote the progress of science and the useful arts and thereby advance the public good is to execute what some have described as the grand bargain of the patent system. In exchange for disclosure of an enabling description of the invention, inventors secure exclusivity for a limited time.

James Madison and the other founding fathers were prescient in their understanding that protecting the writings and discoveries of authors and inventors would be the means to unimaginable prosperity in the new country. Who could have foreseen the outpouring of innovation, including from names that now represent iconic brands or companies such as Deere, Ford, Edison, Tesla, Bell, Wozniak, Jobs, Birdseye, Gillette, and Disney? As noted by the Maurice Stans, who served as secretary of commerce from 1969 to 1972:

The patent system has been closely linked to our development from a small, struggling, agricultural nation to the foremost industrial society with the highest standard of living in the world. Much of the history of the country’s economic growth could be written from the files of the U.S. Patent Office, an agency of the United States Department of Commerce charged with furthering the Nation’s economic development and technological advancement. A glimpse at the past and the present of our patent system tells us much about how it can serve our future.

This is not just an exercise in nostalgia. The promise of IP to support American economic prosperity remains as strong today as it was in 1790 through the 20th century. Breakthroughs—from artificial intelligence (AI) to gene editing—are prominent and numerous in this unprecedented era of innovation. We are in extraordinary and exciting times. It is the responsibility of us as practitioners, leaders in the field, litigators, and those who engage the system as inventors, investors, or alleged infringers not only to work within the IP system but also to improve the system to make it more accessible, predictable, and effective in promoting the progress of science and the useful arts.

Improving the IP System

Notably, the Constitution uses the word “securing” rather than “granting” or “providing.” This is an acknowledgment that the government is protecting the work or invention of the author or inventor. The invention or work is not given or somehow bequeathed by the government. It is the author’s or inventor’s ingenuity to create or discover and as such their property to do with what they see fit. The bargain to prompt disclosure (and investment to develop commercially) for the public good is the provision of a limited time of exclusivity. This promise only works when “securing” is not contingent or anything less than the confidence that the word “securing” conveys. This places the reliability and durability of the IP right as the foundation or core of the grand bargain.

As I previously shared, the Section commissioned a task force to study improving the durability and reliability of the patent right. This task force was charged to study and address the most vexing issues confronting the patent system in a manner to drive consensus on policy:

  1. Continuation practice. Continuation patents have become the modern version of “submarine” patents from the era before patent application publication. Continuation practice has been flagged by the U.S. Patent and Trademark Office (USPTO), Congress, and critics of the patent system.
  2. Inequitable conduct. Does the nonstatutory defense act as a barrier to procuring reliable and durable patents?
  3. Transparency. Should “secret prior art,” i.e., prior art that is not publicly available, be finally eliminated?
  4. Obviousness-type double patenting (OTDP). Does OTDP serve any policy purpose in a patent system that provides a term of 20 years from filing?
  5. Incorrect inventorship. Should inventorship, including misjoinder and failing to name a human inventor, be eliminated as a ground of invalidity, and should 35 U.S.C. § 262 be amended to require accounting to unnamed inventors later found to be inventors?
  6. Functional claiming. How do you provide a reasonable scope of patent protection while meeting the disclosure requirements underlying the bargain?

The task force and the accompanying webinar series, “The Chair’s Townhall: Planning a Better Patent System,” are intended to advance the dialog, build consensus, and ultimately propose concrete solutions to improve the patent system. I hope you will participate in these webinars and join the discussion to help build the needed consensus to improve the IP system.

IP protection was integral to the prosperity of the United States in the 19th and 20th centuries. It remains integral to American competitiveness in the 21st century. James Madison could not begin to imagine the innovation that would lead to American prosperity but understood a strong IP system was necessary for America to realize its potential. We too cannot foresee how the promise of AI, human understanding of biology, and other advances will create the 21st century breakthroughs, but we also know a strong IP system is the proven means to unlock this potential. Of course, the system will never be perfect. Patent examination before the USPTO is inherently limited by time and resources. But, it can be better. The law can be more predictable and transparent and provide inventors and investors more confidence that the patent right will be reliable and durable. The Section is leading the discussion to achieve a better patent system. Please join us.

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    Steven P. Caltrider

    Dana-Farber Cancer Institute

    Steven P. Caltrider is chair of the ABA Section of Intellectual Property Law. He is vice president and chief IP counsel of the Dana-Farber Cancer Institute and retired vice president and general patent counsel for Eli Lilly and Company.