The Changing Guard of Patent Law: Chevron Deference for the PTO

By Wasserman, Melissa F. | William and Mary Law Review, May 2013 | Go to article overview
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The Changing Guard of Patent Law: Chevron Deference for the PTO


Wasserman, Melissa F., William and Mary Law Review


Whereas Congress has increasingly turned to administrative agencies to regulate complex technical areas, the patent system has remarkably remained an outlier. In the patent arena, the judiciary--not a federal agency--is perceived to be the most important expositor of substantive patent law standards. Yet, as the criticism toward the patent system has grown, so too have the challenges to this unusual power dynamic. The calls for institutional reform culminated in late 2011 with the enactment of the historic Leahy-Smith America Invents Act (AIA). Although scholars have recognized that the AIA bestows a glut of new powers upon the United States Patent and Trademark Office (PTO), this Article contends that commentators have failed to recognize the extent to which the AIA alters the fundamental power dynamic between the judiciary and the PTO. By anointing the PTO as the primary interpreter of the core patentability standards, this Article posits that the AIA rejects over two hundred years of court dominance in patent policy.

Although the patent system has traditionally suffered from a lack of serious engagement with administrative law, applying administrative law principles to the AIA has tremendous implications for the roles of patent institutions and, as this Article argues, results in a normatively desirable outcome. The AIA, by making the PTO the primary expositor of the core provisions of the Patent Act, ushers the patent system into the modern administrative era--which has long recognized the deficiencies associated with judge-driven policy. Moreover, the incorporation of administrative law principles into the patent system has substantial implications for administrative law itself. As this Article attempts to reconcile the distinctive features of patent administration with existing administrative law jurisprudence, it provides insight into a prolonged circuit split on the proper approach to determining the triggering provisions for formal adjudication, as well as when a grant of formal adjudicatory authority carries with it the ability to speak with the force of law.

TABLE OF CONTENTS

INTRODUCTION

I.  CHEVRON AND THE HISTORICAL LACK OF
    JUDICIAL DEFERENCE TO THE PTO
    A. Strong Judicial Deference and the
       Supreme Court
    B. The Historical Lack of Deference Paid to the
       PTO's Legal Decisions
II. POSTGRANT REVIEW AND ADMINISTRATIVE LAW
    A. Formality and the Postgrant Review
       Proceedings
       1. Opposing Presumptions
       2. The Chevron Approach
    B. Force-of-Law Prerequisite
       1. Too Big to Delegate
       2. Is the Lack of Substantive Rule Making Fatal?
       3. Creation of the Federal Circuit
    C. Rejecting the Dominant Chevron Approach
III. NORMATIVE CASE FOR DEFERENCE: COMPARATIVE
    INSTITUTIONAL ANALYSIS
    A. Expertise
    B. Capture and Institutional Bias
CONCLUSION

INTRODUCTION

The modern administrative state is built on the premise that administrative bodies, as a result of their focus, manpower, and proficiency, will reach more effective decisions than their counterparts in the judiciary or legislature. (1) Thus, it is hardly surprising that Congress has increasingly chosen to delegate broad law-making authority to administrative agencies. (2) Today, administrative institutions assume primary interpretative authority over federal statutes that regulate fields ranging from the environment, to pharmaceutical drugs, to telecommunications. Yet, the patent system has remarkably remained an outlier, even though it shares the same technocratic attributes as legal arenas that are overwhelmingly dominated by agency policy making.

Although the Patent Act defines the patentability standards in broad and vague language, the United States Patent and Trademark Office (PTO or Agency) lacks robust substantive rulemaking authority (3) and receives no judicial deference for its legal interpretations of the Patent Act. (4) As a result, the United States Court of Appeals for the Federal Circuit (Federal Circuit), which is vested with near-exclusive jurisdiction over patent appeals, is largely perceived to be "the most important expositor of the substantive law of patents in the United States.

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The Changing Guard of Patent Law: Chevron Deference for the PTO
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