John M. Golden

89 Texas L. Rev. 1041

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In this Article, Professor Golden argues that Congress should expand the USPTO’s rulemaking authority so that it encompasses substantive questions of subject-matter eligibility.  This proposal would explicitly split “interpretive authority over substantive patent law between the USPTO and the federal judiciary,” which would “further hybridize patent law’s legal regime and break from a common paradigm under which primary interpretive authority of the substance of a statutory regime lies either wholly with the courts or wholly with an administrative agency.”

Golden first describes the already hybrid nature of U.S. patent law’s legal regime.  Next, he presents the case for giving the USPTO binding interpretive authority over subject-matter eligibility as a means toward patent law’s commonly accepted utilitarian ends.  He does this by describing the nature of subject-matter inquiries and developing mathematical models that help justify their continued use as patentability filters.

Golden then argues that the generally categorical nature of questions of subject-matter eligibility suggests that they are especially appropriate for agency rulemaking, an argument which is bolstered by an analysis of comparative institutional competence.  Golden finds a lack of judicial facility for resolving such problems.  Moreover, Congress lacks the sustained interest, time, and knowledge to resolve subject-matter eligibility’s bounds.  The USPTO thus appears to be the best potential institutional candidate, having both the expertise and the incentive to deal with the issue.

However, as an administrative agency the USPTO is also vulnerable to concerns of capture and bias.  But Golden argues that such concerns are not as great as is often contended and they can be further diluted through additional institutional reforms.  Indeed, Golden points out that the USPTO already has an established record of developing nonbinding but influential interpretive rules on matters of substance.  Granting the USPTO primary interpretive authority over subject-matter eligibility issues might allow it to clear doctrinal tangles generated by the courts.  The recent U.S. Supreme Court decision in Bilski v. Kappos, writes Golden,does not indicate otherwise.