Formal But Forgiving: A New Approach to Patent Assignments

Posted by Social Science Research Network

Formal But Forgiving: A New Approach to Patent Assignments -Karen Sandrik (Willamette University – College of Law)

ABSTRACT: This Article contributes to an emerging literature and jurisprudence regarding what role other legal regimes should play in the development of patent law. Some scholars argue that common law systems should be purged from patent law, while others argue that patent law is already too specialized and devoid of generalist law. Further, the Supreme Court has recently struggled deciding patent cases that require consideration or application of other legal regimes, such as contract law, the Bayh-Dole Act, and antitrust law.

This Article argues that scholars and courts have not yet appreciated the interrelatedness of the tension between defining the scope of patent law and the Federal Circuit’s adjudicative rule formalism. The Federal Circuit’s bright-line, rigid rules are designed to promote certainty, but when those rules are paired with a movement away from a generalist approach to law that is not supported by all of the judges sitting on the Federal Circuit, the result is the opposite of certainty. These interrelated concerns within patent law are perhaps most apparent when contract law and patent law combine to create patent licensing law. The Federal Circuit has created its own contract law so that it does not need to consider state contract law, but it is applying this law inconsistently.

This Article demonstrates that state contract law teaches it is both possible and beneficial to have a more nuanced approach to formalism than is currently employed by the Federal Circuit. It further provides a framework for the interpretation of patent assignments, showing how patent licensing law can better allow for differences in the sophistication of both the parties and the assignment itself. This new understanding of formalism will promote sharing of technology and collaboration among inventors and companies, and, overall, greater certainty in patent licensing law.