Extraordinary Opportunity in Extraordinary Times

• Date: 01 March 2024
• Author: Steven P. Caltrider

PERSPECTIVE

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 t. The bargain

to prompt disclosure (and investment to

develop commercially) for the public good

is the provision of a limited time of exclu-

sivity. This promise only works when

“securing” is not contingent or anything

less than the condence that the word

“securing” conveys. This places the reli-

ability 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 improv-

ing the durability and reliability of the

patent right.7 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. Continua-

tion patents have become the modern

version of “submarine” patents from

the era before patent application

publication. Continuation practice

has been agged 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 nally eliminated?

4.

Obviousness-type double patenting

T

he founding fathers recognized the

importance of intellectual prop-

erty (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 Discov-

eries.”

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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.2

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.

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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.

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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 understand-

ing 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, Birds-

eye, 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 les of the U.S. Patent Ofce, 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.5

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 articial

intelligence (AI) to gene editing—are prom-

inent 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 eld,

litigators, and those who engage the system

as inventors, investors, or alleged infring-

ers 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.6

Steven P. Caltrider

Extraordinary Opportunity in

Extraordinary Times

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. He can

be reached at stevenp_caltrider@dfci.

harvard.edu. (Continued on page 60)

Published in Landslide, Volume 16, Number 3, 2024. © 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.

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