Rethinking Patent Law's Presumption of Validity

Intellectual Property and Patents

Article Snapshot


Mark Lemley and Doug Lichtman


60 Stanford Law Review 45, 2007


Courts defer too readily to the Patent Office’s original determinations on patent protection.

Policy Relevance

By deferring so heavily to the Patent Office, current practice lets large numbers of dubious patents survive litigation. That in turn imposes an implicit tax on legitimate business and research endeavors.

Main Points

  • The current presumption of patent validity is neither required by the Patent Act nor justified by any public policy or economic argument.


  • A reduced presumption would still leave the Patent Office with ample authority to evaluate patents, and still allow the Patent Office to create a paper trail that would influence litigation outcomes.


  • The Patent Office should not be heavily deferred to, however, because:


  • At the time patents are first evaluated, there is little information available about prior art, proper claim scope, and other key issues.  By contrast, much more information is available years later when patent cases are litigated.


  • At the time of evaluation, the process also is not and cannot be meaningfully adversarial.  Litigation assuredly is.


  • Lastly, at the time of initial patent evaluation, the Patent Office is swamped with applications; courts, by contrast, focus on that small percentage of patents that turn out to actually matter.

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