Duke Law Journal AdLaw Symposium: Is Intellectual Property Law Administrative Law? (AdLaw Bridge Series)

by Chris Walker — Friday, May 27, 2016@chris_j_walker

As I blogged about back in February, Duke Law Journal‘s annual administrative law symposium this year is titled Intellectual Property Exceptionalism in Administrative Law. Video of February’s live symposium is available here. It was a terrific event, and draft papers were very thought provoking.

Those papers were published earlier this month, and full issue is available here. In addition to a terrific foreword entitled Patent Exceptionalism with Presidential Advice and Consent by former Chief Administrative Patent Judge (and Duke Law alum) James Donald Smith, there are four main contributions to the symposium issue.

Here are the details (titles, authors, and abstracts) for each piece:

Administrative Power in the Era of Patent Stare Decisis
Stuart Minor Benjamin & Arti K. Rai
The elaborate adjudicatory proceedings set up by the America Invents Act of 2011 (AIA) have thrust the U.S. Patent and Trademark Office (PTO) squarely into the patent-litigation process. The AIA proceedings, conducted by the newly formed PTO Patent Trial and Appeal Board (PTAB), are now a formidable competitor to district court litigation. The executive branch has further enhanced PTO and PTAB power by vigorously asserting the agency’s prerogatives with respect to certain aspects of these proceedings. Despite the formality of the AIA proceedings, the agency’s lawyers have steered clear of asking forChevrondeference on legal issues decided in these proceedings. Although the executive branch’s caution may reflect the unusual institutional structure of the PTAB, PTAB decisionmaking could be structured in a manner that should, under conventional administrative law principles, meritChevrondeference. In all likelihood, the chief roadblock toChevronis not formal administrative law but specific challenges within the patent regime. Many judges on the Court of Appeals for the Federal Circuit, which reviews all appeals from PTO decisions, have long been reluctant to apply conventional administrative law. Perhaps more surprisingly, the Supreme Court’s recent decisionmaking in the area has emphasized its own earlier cases (including cases predating the Administrative Procedure Act) and stare decisis over conventional administrative law. Given potentially hostile courts, the costs of the PTO leadership expending the political capital necessary to embed the PTO more fully into the administrative state may exceed the benefits. At best, in those cases where stare decisis is not implicated or is on the agency’s side, the PTO may be able to exercise indirect influence on the Court through the Office of the Solicitor General.

Patent Office Cohorts
Michael D. Frakes & Melissa F. Wasserman
Concerns regarding low-quality patents and inconsistent decisions prompted Congress to enact the first major patent reform act in over sixty years and likewise spurred the Supreme Court to take a renewed interest in substantive patent law. Because little compelling empirical evidence exists as to what features affect the patent office’s granting behavior, policymakers have been trying to fix the patent system without understanding the root causes of its dysfunction.

This Article aims to fill at least part of this gap by examining one factor that may affect patent examiners’ grant rates throughout their tenures: the year in which they were hired by the U.S. Patent and Trademark Office (PTO). An examiner may develop a general examination “style” in the critical early stages of her career that persists even in the face of changes in application quality or patent allowance culture at the agency. To the extent initial hiring environments influence a newly hired examiner’s practice style, variations in such initial conditions suggest examiners of different hiring cohorts may follow distinct, enduring pathways with their examination practices. Consistent with this prediction, we find strong evidence that the year an examiner was hired has a lasting effect on her granting patterns over the course of her career. Moreover, we find that the variation in the granting patterns of different PTO cohorts aligns with observed fluctuations in the initial conditions faced by such cohorts. By documenting the existence of cohort effects and by demonstrating the importance of initial environments in explaining certain long-term outcomes, this analysis holds various implications for patent policy and the administrative state more generally.

Working Without Chevron:The PTO as Prime Mover
John M. Golden
Through a proliferation of post-issuance administrative proceedings, the U.S. Patent and Trademark Office (PTO) has become a major player in the fate of patents after their initial examination and grant. In combination with the PTO’s more traditional roles in initial examination and general guidance, new post-issuance proceedings enable the PTO to help steer the development of substantive patent law even without general provision of high-levelChevrondeference for the agency’s interpretations of substantive aspects of the U.S. Patent Act. Contrary to some commentators’ suggestions, congressional authorization for new post-issuance proceedings does not appear to have included an implicit delegation of interpretive authority generally warrantingChevrondeference on such matters. But the PTO can still accomplish much with lower-level deference and the advantages that its common “first mover” position provides.

CBA at the PTO
Jonathan S. Masur
What are the costs and benefits of patent laws? While Congress and the courts are often able to evade this difficult question, there is one institutional actor that is not only well-advised but also required to consider costs and benefits: the Patent and Trademark Office, which—as an administrative agency—is required by executive order to conduct cost-benefit analysis of all economically significant regulations. Yet the agency’s efforts have been less than satisfactory. In its cost-benefit analysis, the PTO overlooks crucial functional considerations, misunderstands basic precepts of patent economics, and resists quantification when quantification is required. In combination, these shortcomings suggest that the PTO has not correctly measured the social costs and benefits of the rules it creates, in part because it has adopted an overly limited view of the welfare effects of intellectual property and the agency’s own role in promoting or discouraging IP. In other instances, the PTO has promulgated rules that will likely have tremendous economic significance without recognizing their importance or conducting a cost-benefit analysis. These errors cast doubt on whether the PTO’s regulations will increase or diminish social welfare. Before the PTO is granted any additional substantive authority, reform will be necessary.

I also penned a short response to the Benjamin/Rai and Golden contributions entitled Chevron Deference and Patent Exceptionalism. The essay, which was published in the law journal’s online companion, can be downloaded here. Here’s the abstract:

The Duke Law Journal’s Forty-Sixth Annual Administrative Law Symposium addresses the timely and important topic of patent exceptionalism. Administrative law exceptionalism — the misperception that a particular regulatory field is so different from the rest of the regulatory state that general administrative law principles do not apply — is by no means unique to patent law. Scholars, attorneys, and agency officials in various regulatory fields ranging from immigration to tax have sought, contrary to the Supreme Court’s general guidance, “to carve out an approach to administrative review good for [the regulatory field’s] law only.”  This Essay focuses on one of the main debates from the Symposium: whether courts should apply Chevron deference to interpretations of substantive patent law advanced by the U.S. Patent and Trademark Office (PTO). Part I frames the debate about whether Chevron deference should apply, contrasting the positions taken by Stuart Benjamin and Arti Rai on the one hand, and John Golden on the other. After agreeing with Professors Benjamin and Rai that certain PTO interpretations of substantive patent law are probably eligible for Chevron deference, Part II outlines how a stronger case could be made for why it is worth the PTO’s time and energy to seek Chevron deference from the Supreme Court. Among other reasons, the PTO and its U.S. Department of Justice lawyers should request such deference to weaken the Federal Circuit’s control over substantive patent law and reverse an era of patent stare decisis. The Essay concludes by urging patent law scholars to play a more active role in urging courts to abandon patent exceptionalism.

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About Chris Walker

Christopher Walker is a law professor at The Ohio State University Moritz College of Law. Prior to joining the law faculty, Professor Walker clerked for Justice Anthony Kennedy of the U.S. Supreme Court and worked on the Civil Appellate Staff at the U.S. Department of Justice. His publications have appeared in the Michigan Law Review, Minnesota Law Review, Stanford Law Review, and University of Pennsylvania Law Review, among others. Outside the law school, he serves as one of forty Public Members of the Administrative Conference of the United States and on the Governing Council for the American Bar Association’s Section on Administrative Law and Regulatory Practice. He blogs regularly at the Yale Journal on Regulation.

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