Academic journal article Iowa Law Review

Administering Patent Law

Academic journal article Iowa Law Review

Administering Patent Law

Article excerpt

I. An Introduction to the Symposium Issue

The United States Patent and Trademark Office ("USPTO") is one of the oldest administrative agencies in the country, tracing its origins back to the original three-member Patent Commission created by Congress in 1790.1 The USPTO's existence, practices, and enabling statutes long predate the expansion of federal administrative agencies beginning in the 1880s, the Administrative Procedure Act of 1946 ("APA"), and the developments in federal administrative law over the past several decades.2 Although nominally a part of the Department of Commerce, patent law-and the USPTO-largely seemed to play by its own rulebook.3

All that has changed in recent years. Administrative law-the constitutional, statutory, and precedent-based body of law relating to the procedures, authority, and judicial review of administrative agencies-is now a central component of patent law.4 It is nearly impossible to contextualize many recent and impending changes in patent law without a thorough understanding of how they relate to administrative law.5 Together, administrative law-based challenges to USPTO actions, the effects of the 2011 America Invents Act, and the Supreme Court's increased interest in patent law have created a new era of uncertainty and opportunity.

Even as its influence on the USPTO waxes, modern administrative law's underlying principles have come into question. Courts and scholars are questioning foundational beliefs of post-APA law, challenging the constitutionality of administrative judge independence, deference to agency interpretations of law, and the existing balance between due process, technical expertise, and political accountability.6

No one understands this dynamic as well as the scholars who stand with one foot in patent law and the other in administrative law. These scholars have studied, written, testified, and participated in the change to a new era of administering patent law. On October 5, 2018, the Iowa Law Review and the Iowa Innovation, Business and Law Center brought together an extraordinary group of these scholars to provide their insights into the USPTO's historical relationship with administrative law, its place in the modem administrative state, and its future evolution.

This Issue of the Iowa Law Review contains the written contributions of these scholars, with ideas as diverse as the balance of power between court and agency,7 the role of estoppel in administrative inter partes review ("IPR") procedures,8 constitutional restrictions on administrative innovations at the USPTO,9 and the effects of competing visions of what a patent is on institutional design of the USPTO's administrative function.10 Other contributors offer empirical scholarship providing information about changes in examiner behavior in response to review,11 the emergence of an elite patent bar,12 and the types of prior art considered in IPR.13 Perhaps the most far-looking contributions are Professor Colleen Chien's proposal for administrative experiments14 and Professor Arti Rai's discussion of artificial intelligence in the patent office.15

II. Judicial Review Metrics to Frame the Discussion

As one way of framing this discussion, this Essay provides some jurisprudential context for the USPTO: specifically, to situate the Patent Trial and Appeal Board ("PTAB") with respect to its primary reviewing Article III court, the Court of Appeals for the Federal Circuit. The following data draws primarily from The Compendium of Federal Circuit Decisions ("Compendium"), a comprehensive database of all documents in appeals arising from the USPTO and District Courts released on the Federal Circuit's website, to provide useful and relevant quantitative data about the court's review of the PTAB.16 Details about the construction and contents of the Compendium can be found in an earlier article, The Landscape of Modern Patent Appeals.17

A.The Shift from Review of District Courts to Review of an Administrative A gency

A starting point that is dramatic, yet surprising to no one, is the tremendous increase in appeals to the Federal Circuit arising from the USPTO. …

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