Joseph Scott Miller—Substance, Procedure, and the Divided Patent Power

How should the Federal Circuit determine whether a Patent Office rule is within the agency’s statutory authority? The court has traditionally held that the Patent Office has the authority to issue procedural rules but not substantive ones. See, e.g., Tafas v. Doll. However, the court has struggled to identify a suitable test to define the boundary between procedural and substantive rules. Id. Professor Joseph Scott Miller (University of Georgia School of Law) proposes in Substance, Procedure, and the Divided Patent Power, 63 Admin. L. Rev. 31 (2011), that the court use a “sorting standard” modeled after the framework courts use in interpreting the Rules Enabling Act (REA).

After identifying historical support for the substantive/procedural distinction, Professor Miller addresses the challenges the Federal Circuit has faced in attempting to distinguish procedural rules from substantive ones. Substance and procedure are distinct in theory, yet interrelated in practice. Some rules can easily be classified as substantive or procedural. However, other rules could conceivably be classified as either. When considering these “twilight cases,” Professor Miller argues that the best model for sorting procedural from substantive rules is the framework courts use in interpreting the REA. The REA permits the federal judiciary to prescribe rules of evidence and procedure, which Professor Miller argues is similar to the rulemaking authority granted to the Patent Office in the Patent Act. If a rule can reasonably be classified as procedural, despite incidental effects on substantive rights, it is valid under the REA. In advocating that a similar model should govern the Patent Office, Professor Miller suggests that courts should give deference to the Patent Office and a rule should be held valid under § 2(b)(2)(A) of the Patent Act if it is reasonably necessary for the establishment or preservation of the integrity of the patent examination process.

Professor Miller argues that courts should not use the Administrative Procedure Act (APA) or the Rules of Decision Act (RDA) as models for interpreting whether a Patent Office rule is valid. The purpose of the APA’s procedure/substance distinction—to protect the public’s right to participate in rulemaking—fails to match the purpose of the distinction in the Patent Act—to preserve the division of responsibility put in place by Congress. Similarly, the focus of the RDA is to prevent forum-shopping; obtaining a U.S. patent offers no opportunity for forum-shopping.

Professor Miller’s persuasive article was published before Congress enacted the America Invents Act. The recent reforms undoubtedly expand the scope of the Patent Office’s authority, but it is unclear how the Federal Circuit will interpret the Patent Office’s authority. See Sarah Tran, Patent Powers, 25 Harv. L. J. & Tech. 595 (2012) (arguing that the Patent Office’s new powers appear to include the power to set substantive standards for patent law). If the Federal Circuit continues to embrace the procedure/substance distinction for some of the Patent Office’s powers, the framework provided by the REA could improve the efficiency and consistency of the court’s decisions.

Drafted by Derik Sanders (dtsanders@smu.edu), a 2014 Juris Doctor Candidate at SMU Dedman School of Law and research assistant to Professor Sarah Tran.