Private Law & IP, Institutions II

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
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
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.

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