An Uncomfortable Fit? Intellectual Property Policy and the Administrative State

Article excerpt

The Southeastern Association of Law Schools ("SEALS") panel was conducted August 4, 2009, as part of SEALS' day-long Intellectual Property Workshop in West Palm Beach, Florida. Kali Murray ([dagger]) moderated the panel, which included Sapna Kumar, * Jason Mazzone, ** Hannibal Travis, *** and Jasmine Abdel-khalik. ****

KALI MURRAY:

I would like to welcome you to our panel today, An Uncomfortable Fit?: Intellectual Property Policy and the Administrative State. This panel responds to the considerable scholarship (including some conducted by the folks at this roundtable) on the increasing integration of administrative law into intellectual property policy.

Intellectual property is in a really interesting place right now when it comes to administrative law. We are moving from simple registration and examination procedures to a more complex policy context. This policy context involves multiple stakeholders that seek to advance their causes at multiple administrative sites. This process is complicated even further because the primary administrative agencies in this area, the United States Copyright Office ("Copyright Office") and United States Patent and Trademark Office ("USPTO"), have yet to be comfortably incorporated into the modern administrative regime.

In examining these issues, this round table will discuss the following topics. Each of us will take some time to describe current administrative practices and then take a shorter period of time to look at the normative consequences of this move. This panel is unique as we use an interdisciplinary perspective focused on intellectual property in administrative law. We will conclude with a question and answer session.

One of the primary reasons why I am excited about this panel is who is joining me today. This is my dream team of panelists on the subject of administrative law and intellectual property law. Joining me first to talk about patent law is Professor Sapna Kumar, who will be joining the University of Houston Law School this fall. Professor Jason Mazzone is a professor of law at Brooklyn Law School. He specializes in constitutional law and intellectual property law. Professor Hannibal Travis is an associate professor at Florida International University College of Law. Professor Travis works mainly in the areas of Internet law, intellectual property, and antitrust. Finally, we have Professor Jasmine Abdel-khalik, who is currently at the University of Missouri at Kansas City. She teaches, researches, and writes in the area of intellectual property law, specifically in trademark, unfair competition, and business torts.

We are first going to address the current landscape of administrative law and intellectual property practice. I thought it was important to do this from an interdisciplinary perspective so that we can see the connections between and differences among the respective fields.

The panel has "anointed" me to talk first about these issues. I have been asked to talk about administrative law and the USPTO. This is a particularly fraught issue right now in patent law because of the infamous case Tafas v. Kappos, (1) which looks at a series of rules issued by the USPTO that placed a limit on the number of continuation applications that can be filed by a patentee. (2) Other elements of the rule were at stake in Tafas, but the one that caused the most controversy is the limit placed on continuation applications.

A key element of Tafas is the Federal Circuit's examination of the scope of the USPTO authority under Section 2 of the Patent Act. Section 2, the key grant of the USPTO's governing authority, states that "[t]he Office ... may establish regulations, not inconsistent with law, which ... shall govern the conduct of proceedings in the Office." (3) There are two administrative deference issues related to that language. The first deference issue is whether or not the USPTO should be offered deference when it is judging the scope of its rule making authority under the Administrative Procedure Act. …