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In Medicines Co. v. Hospira, Inc., 827 F.3d 1363 (Fed. Cir. 2016) (en banc), the United States filed an amicus brief, signed by the U.S. Patent and Trademark Office's (PTO) Solicitor and attorneys in the Department of Justice, in support of the plaintiff-appellant. Among other things, the government argued that secret sales should not trigger the on-sale bar within the meaning of § 102 of the Patent Act applying to patents governed by the regime prior to the Leahy-Smith America Invents Act. While government amicus filings in patent infringement cases are not uncommon, this brief is notable because it explicitly disavowed case law that is both binding on the PTO and unfavorable to patent applicants. In fact, the government acknowledged that the Manual of Patent Examining Procedure “reflects decisions of this Court and other courts concluding that the on-sale bar applies to secret as well as public sales,” but *320 argued that “those decisions are incorrect.” Put simply, the government does not like a controlling rule that makes it easier for PTO examiners to reject patent claims.

In this Essay, I ask what should happen if the PTO's disagreement with binding law that disfavors patent applicants became developed not in an amicus brief filed in a litigated case, but in the course of an appeal of a rejection of an inventor's desired claims during ex parte patent prosecution. Can the PTO Director join the disappointed applicant in urging the Court of Appeals for the Federal Circuit to convene en banc to change its precedent, or even support the applicant's petition for a writ of certiorari in the Supreme Court? I argue that such a move would be neither unreasonable nor unprecedented for an agency, and that the PTO should probably make it more often. To be sure, PTO decisions to take the applicant's side could generate concerns about capture, effects on third parties, and the preservation of an adversarial presentation of issues for adjudication. Nonetheless, as I show in this Essay, these challenges are not insurmountable. More importantly, the Director's well-considered conclusion, reached in consultation with other players in the Executive Branch, that a panel of the Federal Circuit decided a case incorrectly might be quite valuable to decision-makers even when the rule in question happens to be contested during an applicant's appeal of a rejection of his or her claims. Indeed, in addition to its amicus filings, the PTO has repeatedly taken active stances on important questions of patent law as a party challenging the Federal Circuit's pro-patentee decisions in the Supreme Court. I argue that, given the PTO's demonstrated willingness and capacity to develop well-articulated positions on legal issues and its role as a steward of the public interest, the government might also consider abandoning anti-applicant positions when challenges to the PTO's claim rejections reach the highest levels of appeal.

GW Paper Series

GWU Law School Public Law Research Paper No. 2017-51; GWU Legal Studies Research Paper No. 2017-51

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