IP Watchdog: Kappos Legacy and PTO-Academia Relations, by Robert Merges
This post originally appeared in IP Watchdog on July 28, 2014.
We are far enough removed now from the Kappos Administration at the PTO (2009-2013) that we can assess it with some perspective. In this spirit, I was thinking recently about the history of PTO-academia relations. And I concluded that Dave Kappos made a major contribution in this area, which has so far been mostly overlooked.
Dave Kappos did more for PTO-academic relations than any other Commissioner or Director in the history of the Office. This is a true statement, but hardly does credit to his real contributions in this area. That’s for the simple reason that very few former leaders of the Patent Office had much if anything to do with academics. The bar was so low in fact that had Dave been merely cordial and refrained from open derision of academics and their research, he might well have set a new standard with only that.
He did much more, of course. Director Kappos actively sought out academic researchers. He brought them into formal roles in the PTO. In the process he gave them not only offices and titles, but something much more elusive, much more valuable. He gave them (us, to be honest) respect. That’s a legacy that has been overlooked by other constituents in the patent world, but it will certainly not be overlooked by academics.
The Very Old Days
Before fully celebrating Dave’s personal academic glasnost movement, it is worthwhile to consider exactly why the bar was set so low when he came on the scene. The answer goes back to the trustbusting days of the 1930s and early 1940s. More particularly, it goes back to the role of academics in the antitrust agencies that targeted the anticompetitive effects of patents.
I will get to that part of the story in a moment. First, it is important to see that things were not always this way. There was a time when academics participated actively in debates over patent doctrine. This was the late nineteenth century. The highwater mark of this earlier period was the publication of Professor William Robinson’s two-volume treatise Patent Law in 1890. At this stage, it is safe to say that patent law was no different in this respect than other legal fields. Robinson’s treatise seems to have sprung from the same taproot as the more widely-known Corbin and Williston volumes on contract law, or John Norton Pomeroy’s 1876 treatise on Remedies.
The (Bad) Old Days: The Shadow of Antitrust
Though no more major treatises appeared after Robinson, academics and the patent world seemed to be on mostly cordial terms between roughly 1900 and 1930. The major law reviews published articles relating to patents, while practitioners developed their own distinctive semi-academic outlets, most importantly the Journal of the Patent Office Society (JPOS).
This all changed when the Roosevelt Administration pushed hard for greater antitrust enforcement in the late 1930s and early 1940s. In fact, the big freeze that came to exist between academia and the patent world seems to originate from the hiring of Professor Thurman Arnold of Yale Law School by the Antitrust Division of the Justice Department in 1942. Arnold signaled his views on the patent system in an article in The Atlantic in 1942. The patent system, according to Arnold, was the “principal smoke screen,” under which companies operated to restrict competition and monopolize industries. Arnold made it a goal of the Division to smash industrial cartels one after another, in part through weakening the patent system on which (he was convinced) they relied.
In many ways relations between the chief patent institutions – the CCPA/early CAFC, PTO, patent bar, etc. – froze into place in the 1950s and changed very little in the ensuing thirty years. With the singular exception of Don Chisum’s treatise (first edition, 1978) and a few brave souls like Marty Adelman (whose Patent Perspectives and academic writings sought to bridge the academic-patent world gap), academic research made little impact in the major institutions of the patent system.
Dave Kappos employed more academics in one term as Director of the Patent Office than – as far as I can tell – all the other previous Commissioners and Directors combined. One key to this was the establishment of the Office of Chief Economist at the PTO in March of 2010, and the appointment of Stuart Graham to the position of first Chief Economist in the history of the PTO. Here is what the PTO says about the function of the office:
The Chief Economist is responsible for advising the Under Secretary and the Administrator for External Affairs on the economic implications of policies and programs affecting the United States intellectual property system. The Chief Economist initiates and oversees groundbreaking economic analysis in the field on the topics of intellectual property protection and enforcement.
Serious research on patent law by professional academic economists goes back to at least the 1930s. Yet it was not until 2010 that anyone at the PTO thought it might be helpful to create an office whose job it is to help apply all this thinking to the actual everyday operation of the patent system.
Fortunately for the PTO, and the patent community generally, the choice of Stuart Graham as the first person to lead this office was inspired. Stu has bona fide economics chops (disclaimer: I was on his Ph.D. committee at Berkeley and had him in some of my classes). But much more importantly, he has a knack for understanding how to apply economic analysis to practical problems of patent policy. To take just one instance, his background work on how to use patent office fees to affect prosecution behavior reflects a close familiarity with the academic work in this area. Academics for many years (most prominently Mark Schankerman of the London School of Economics) had wondered why no patent office had tried to use fees as an active “policy lever.” Stuart’s work in this area promises to open the door to all sorts of important policy innovation, and so indirectly is an important part of the policy legacy that Dave Kappos leaves at the PTO.
Did I mention that this position is an office, and not just a person? The Chief Economist has a staff, composed of other economists. At least one person who has served on the staff did so on a leave of absence from a PhD graduate program in economics (Galen Hancock, also of Berkeley).
Dave’s next move was to hire Arti Rai of Duke Law School in October 2009 to run the external affairs/policy group in the PTO – a natural place for an academic, yet a move that was still more or less unprecedented. Arti Rai served as a human bridge between the academic world and the inner workings of the PTO. She brought a knowledge of the academic literature and academic approaches to policy when she turned to work on the America Invents Act and on international treaty issues related to patent law. Arti only served into late 2010, but the fact that she was appointed to this important position speaks volumes about Dave’s commitment to and interest in the academic perspective on patent law.
Not all academics have the time and commitment to take a multi-year leave from their jobs and go to work full-time at the PTO. The Kappos administration recognized this, but wanted to tap into more academic expertise anyway. This they have done, in two separate ways. First, the PTO created a part-time position for Justin Hughes of Cardozo Law School, though in this instance “part-time” might be a bit misleading. From his position as Senior Advisor to the Undersecretary of Commerce, Professor Hughes was the chief negotiator for the U.S. to the Beijing Treaty on Audiovisual Performances, which meant that he was juggling law school duties while matching wits with senior diplomats from around the world.
The PTO also established the Thomas Alva Edison Visiting Scholars and Professionals Program in February of 2012. Under this program, academics work for shorter periods (e.g., six months, full-time) on a variety of projects at the PTO. So far, Jay Thomas of Georgetown, Jay Kesan of Illinois, and my own colleague Peter Menell from Berkeley have taken advantage of the new program. Each has deep expertise in areas where academic research bears closely on important public policy questions.
Everyone knows academics have their foibles. Sitting as we do at a high remove from the hurley-burley, and the daily discipline of patent prosecution and litigation, we do have a tendency to become abstract and impractical sometimes. But many of us care deeply about the patent system; we believe in it (why dedicate ourselves to its study if we don’t?), and sincerely want to make it better if we can. We also have some situational advantages that can’t be overlooked: the luxury to dig deep, go back to basics, and think freely about things, unencumbered by immediate deadlines and client interests. Frankly speaking when it came to policymaking, this resource was mostly wasted for many years. Dave Kappos’ greatest legacy in this area is that he put an end to that. Through his active recruitment of academics, and his insistence that academic thinking enter into the policy discussion in an active way, he ended the long era of chilly PTO-academic relations. Those who follow him now have only to bask in the sunshine that comes with being recognized and respected. And, to truly honor his legacy, we should also get to work, applying what we know to the many pressing problems the patent system faces.
To read the complete article with footnotes, please visit the IP Watchdog website here.