The Government’s Fire Dispatcher: The Solicitor General in Patent Law

Abstract

In Consumer Watchdog v. Wisconsin Alumni Research Foundation, the Court of Appeals for the Federal Circuit (Federal Circuit) ordered the Patent and Trademark Office (PTO) and the United States, represented by the Department of Justice (DOJ), to submit separate briefs to the court unless they could agree to a joint position. In issuing this unusual order, the court anticipated that the views of the PTO and DOJ might differ because of the agencies' disagreement over the proper standard of patent eligibility. In Association for Molecular Pathology v. Myriad Genetics, Inc., decided earlier that year, the DOJ argued that isolated genomic DNA (gDNA) was not patent-eligible, contradicting the PTO's longtime practice of granting patents to applications claiming gDNA inventions. Solicitor General (SG) Neal Katyal made an unprecedented appearance before the Federal Circuit to explain this position. In response, the PTO refused to sign the DOJ's brief.