Feb. 19, 2020 - In a talk based on a forthcoming article titled Defective Patent Deference, Berkeley Law School professor Tejas Narechania discussed the Supreme Court’s preference to defer to the Office of the Solicitor General on patent issues, and argued that it should instead pay closer attention to the views and practices of the Patent Office.
Narechania’s presentation was part of the University of Houston Law Center Spring 2020 External Workshop Series. It was held in the Hendricks Heritage Room.
“It’s primarily about who is and who should be responsible for making patent policy in the executive branch,” Narechania said. “Unlike its counterparts like the EPA or the FCC, the Patent Office isn’t really thought of as a rule-making agency or as a policy-making agency.
“Instead, the Patent Office is perceived as more of a functionary: it reviews patent applications, grants them or not.”
Narechania argued that this view of the Patent Office is why the Office of the Solicitor General, which oversees and practices government litigation in the Supreme Court, receives deference from courts on patent matters.
“Is it appropriate for the Court to defer to the executive branch?” I think the answer is no, and the reason is that policy is being made at the Solicitor General’s office in a litigation context,” he said.
Narechania explained that the Office of the Solicitor General and the Patent Office sometimes possess disparate opinions on patentability, and although the latter has more expertise, its input is seldom heeded.
“The Patent Office is comparatively more expert, the Patent Office’s political leadership can be held to account because the director can be removed by the president, and the patent office can use regular administrative process to make these calls,” he said.
Although he is in favor of seeing the Patent Office gain more power, Narechania believes the Solicitor General’s office would still be instrumental in providing assistance for litigated affairs.
“In my view, the better option is a Patent Office that looks more like its counterparts across the administrative state,” he said.
Narechania indicated that his optimal Patent Office would be, “one that makes policy decisions by way of regular administrative process: it writes rules, it opens them up to comment, it finalizes those rules, it has regular adjudicatory proceedings, and then it defends those decisions with the Solicitor General’s help before the judiciary.
“If we take deference to the executive branch as given, then I think we have to think about what our best option is inside that branch. I think the best choice is the Patent Office.”