Under well-settled patent law, the decision regarding whether to grant or deny a patent turns on technical fact-finding. Recommendations made in recent patent system reform reports issued by the Federal Trade Commission (FTC) and the National Academy of Sciences (NAS) could have a substantial impact on which patent institution has power over fact-finding. The FTC's approach to power allocation is relatively explicit: the USPTO's factual findings should be accorded a low level of deference when made in the context of an ordinary patent grant; significant deference when made in the context of a patent denial; and perhaps the highest level of deference when in a post-grant review. While the NAS study does not focus as explicitly on how courts should treat USPTO fact-finding, its recommendations also have significant implications for power allocation. In this Essay, I argue that, in their areas of overlap, both the FTC and NAS reports properly account for the fact-finding competence - or lack thereof - of the USPTO. Where the reports diverge, however, the FTC report may do a better job of accurately diagnosing, and suggesting remedies for, the relevant fact-finding problem.
Arti K. Rai, Allocating Power Over Fact-Finding in the Patent System, 19 Berkeley Technology Law Journal 907-922 (2004)