Has the Court of Appeals for the
Federal Circuit stripped the Patent Office of its administrative power? Professor Sapna Kumar’s article, The Accidental Agency (forthcoming Florida Law Review), explains how the Federal Circuit
has essentially become the head of an executive agency. By interpreting the Administrative
Procedure Act (“APA”) narrowly, disregarding Supreme Court precedent, and interpreting more
appellate issues as questions of law, the Federal Circuit has become the de
facto administrator of the Patent Act.
The Federal Circuit has not
assumed this substantive rule making authority by chance. The Article does an excellent job of
explaining the historical factors that have led to the Federal Circuit’s unique
power over patent law. Professor Kumar steps through the development of the
APA, highlighting how the Statute established uniform standards of review for
agency actions. Overtime, the APA became
valued for instituting uniformity in the treatment of agencies, evolving into a
tool for limiting judicial interference of agency authority. But major changes to patent law would
undermine the APA’s effectiveness.
The Patent Act of 1952 failed to
grant the Patent Office explicit substantive rule making authority. Consequently, the Court of Customs and Patent
Appeals (“CCPA”) took the opportunity to make key choices regarding the Statute’s
implementation, shifting power and opporunities to receive deference away from the Patent Office.
Notably, when the Federal Circuit was created, it adopted the CCPA’s caselaw,
as well as its non-deferential approach to Patent Office decisions.
The Federal Circuit continues to find
new ways to grant little deference to the Patent Office. By construing mixed questions of fact and
law, such as claim construction, as pure questions of law, the Court is able to
review agency decisions de novo. Professor Kumar contends that by construing mixed
questions as pure law, the Federal Circuit acts more like the head of an agency
than like an Article III court. By
expanding the use of de novo review, the Federal Circuit substitutes its own
judgment for that of the Patent Office, taking for itself power that Congress
properly delegated to the executive branch.
Recent Supreme Court rulings have
checked the Federal Circuit’s substantive rule making authority. Cases like ebay, Medimmune, KSR, and Bilski illustrate the Supreme Court’s reluctance to endorse mandatory,
bright line rules. Professor Kumar
argues that this uneasiness with judicial substantive rule making can be
attributed to several factors: (1) Article III judges are less accountable to
public dissatisfaction; (2) there is limited means for public influence when
creating new guidelines; and (3) the Federal Circuit has limited resources to
guide it in creating new bright line rules.
Ultimately, the Federal Circuit
has had to balance its mandate to unify patent law with its role as an
appellate court. But if power shifts away from the Federal Circuit, is the Patent
Office ready to assume more responsibility? The America Invents Act granted the
Patent Office substantial discretion to prioritize applications and weed out
low quality patents using new or refined processes such as the post-grant
review, inter partes review, and supplemental examination. See Sarah Tran, Policy Tailors and the Rookie Regulator, (March 2012) (forthcoming UC Davis Law
Review, 2012-2013) (arguing that the PTO is well positioned to tailor patent
policy to the varying needs of different industries and that the agency should
not be underappreciated as an institution capable of implementing sound policy
initiatives). Unfortunately, the patent
reform legislation side stepped the issue of Federal Circuit deference to
Patent Office decisions. Therefore, the Supreme Court will likely be active in
regulating the relationship between the Federal Circuit and the Patent Office.
Posted by Bryan Parrish (bparrish@smu.edu), a registered
patent agent, research assistant to Sarah Tran, and a 2014
Juris Doctor candidate at SMU Dedman School of Law.
