This is a guest post by Ben Picozzi, a J.D. Candidate at Yale Law School.
Is the U.S. Patent and Trademark Office (PTO) entitled to Chevron deference? Does this matter? Many commentators believe that courts’ failure to grant Chevron deference to the PTO’s interpretations of substantive patent law renders it powerless as a policymaking institution. As previously discussed on this blog, Arti Rai and Melissa Wasserman have argued that the America Invents Act (AIA) changes this by granting adjudicatory or rulemaking authority to the PTO over substantive questions of patent law, including the standards of patentability, and consequently interpretive authority.
John Golden argues that this emphasis on Chevron is misguided in his recent Essay, The USPTO’s Soft Power: Who Needs Chevron Deference?. Golden argues that these the PTO is unlikely to succeed in acquiring this interpretive authority from courts. The Supreme Court generally requires Congress to clearly express its intent to fundamentally alter a regulatory scheme. (“[Congress] does not . . . hide elephants in mouseholes.”) Not only does the AIA’s language not meet this requirement, but Congressional drafters eliminated a proposed provision granting general rulemaking authority.
Nevertheless, Golden argues, the PTO can and does guide substantive patent law even without substantive interpretive authority. The Federal Circuit and other courts have acknowledged that the agency’s substantive interpretations may be persuasive, although not controlling. Golden cites the Federal Circuit’s recognition of the Utility Examination Guidelines in Fisher and Enzo as examples of the PTO's success in influencing substantive patent law.
Golden’s arguments seem counterintuitive given that, at present, the Supreme Court—not the PTO—appears to be driving change in substantive patent law, especially with respect to subject-matter eligibility. The PTO recently issued its post-Myriad Guidelines and will likely need to issue additional Guidelines after the Court decides Alice Corp. v. CLS Bank. And in Bilski and Comiskey, the PTO asked the Court and the Federal Circuit respectively for judicial “guidance.” However, Golden’s conclusion is relatively modest. He challenges the assumption that the PTO is powerless. Although the PTO can persuade the courts, it will not always be able to do so.
The PTO’s persuasive power is perhaps more limited than Golden acknowledges. Whether the PTO can guide substantive patent law—with or without Chevron deference—depends significantly on the PTO’s ability to control patent policy within the government. As Arti Rai has argued, the PTO is one of many executive branch actors who influence patent policy. The increasing influence of non-PTO actors in is evident in the DOJ’s position in Myriad, which disavowed the PTO’s Guidelines. (The OSTP and the NEC’s leadership in the Administration’s patent initiatives exemplifies non-PTO actors’ influence over other aspects of patent policy.) Furthermore, the PTO’s institutional power affects the agency’s ability to persuade judges sensitive to the executive branch politics. Bryson’s Myriad dissent argued that the DOJ’s disavowal of PTO’s position “substantially undermined” the deference to which the policy was entitled. Justice Ginsburg made a similar suggestion during oral arguments.
Notwithstanding this limitation, Golden’s soft power analogy is provocative precisely because it invites readers to consider the dimensions of interpretive influence that go beyond formal doctrines of authority and deference. That it does not decide the resulting conversation, as hopefully this blog post shows, is a strength—not a weakness.