An uncomfortable fit? Intellectual property policy and the administrative state.

Position:2009 Southeastern Association of Law Schools Panel Discussion - Discussion

The Southeastern Association of Law Schools ("SEALS") panel was conducted August 4, 2009, as part of SEALS' day-long Intellectual Property Workshop in West Palm Beach, Florida. Kali Murray ([dagger]) moderated the panel, which included Sapna Kumar, * Jason Mazzone, ** Hannibal Travis, *** and Jasmine Abdel-khalik. ****


I would like to welcome you to our panel today, An Uncomfortable Fit?: Intellectual Property Policy and the Administrative State. This panel responds to the considerable scholarship (including some conducted by the folks at this roundtable) on the increasing integration of administrative law into intellectual property policy.

Intellectual property is in a really interesting place right now when it comes to administrative law. We are moving from simple registration and examination procedures to a more complex policy context. This policy context involves multiple stakeholders that seek to advance their causes at multiple administrative sites. This process is complicated even further because the primary administrative agencies in this area, the United States Copyright Office ("Copyright Office") and United States Patent and Trademark Office ("USPTO"), have yet to be comfortably incorporated into the modern administrative regime.

In examining these issues, this round table will discuss the following topics. Each of us will take some time to describe current administrative practices and then take a shorter period of time to look at the normative consequences of this move. This panel is unique as we use an interdisciplinary perspective focused on intellectual property in administrative law. We will conclude with a question and answer session.

One of the primary reasons why I am excited about this panel is who is joining me today. This is my dream team of panelists on the subject of administrative law and intellectual property law. Joining me first to talk about patent law is Professor Sapna Kumar, who will be joining the University of Houston Law School this fall. Professor Jason Mazzone is a professor of law at Brooklyn Law School. He specializes in constitutional law and intellectual property law. Professor Hannibal Travis is an associate professor at Florida International University College of Law. Professor Travis works mainly in the areas of Internet law, intellectual property, and antitrust. Finally, we have Professor Jasmine Abdel-khalik, who is currently at the University of Missouri at Kansas City. She teaches, researches, and writes in the area of intellectual property law, specifically in trademark, unfair competition, and business torts.

We are first going to address the current landscape of administrative law and intellectual property practice. I thought it was important to do this from an interdisciplinary perspective so that we can see the connections between and differences among the respective fields.

The panel has "anointed" me to talk first about these issues. I have been asked to talk about administrative law and the USPTO. This is a particularly fraught issue right now in patent law because of the infamous case Tafas v. Kappos, (1) which looks at a series of rules issued by the USPTO that placed a limit on the number of continuation applications that can be filed by a patentee. (2) Other elements of the rule were at stake in Tafas, but the one that caused the most controversy is the limit placed on continuation applications.

A key element of Tafas is the Federal Circuit's examination of the scope of the USPTO authority under Section 2 of the Patent Act. Section 2, the key grant of the USPTO's governing authority, states that "[t]he Office ... may establish regulations, not inconsistent with law, which ... shall govern the conduct of proceedings in the Office." (3) There are two administrative deference issues related to that language. The first deference issue is whether or not the USPTO should be offered deference when it is judging the scope of its rule making authority under the Administrative Procedure Act. (4) The second deference issue is whether or not the USPTO should be afforded a particular deference to the rule making that it undertook related to continuation practices.

Tafas has been a really interesting moment in patent administrative law because the case demonstrates the fairly significant limitations that the Patent Act of 1952 has placed on administrative procedure and administrative action. As I have studied why so much conflict exists over Section 2, I have become very interested in what happened in the 1930s and 1940s in patent law around its incorporation into the administrative state.

If you look at the history of Section 2 you see that Section 2 and a number of the innovations that we see in the patent law, such as whether or not to have a centralized judiciary, were the subject of active debate pretty much from 1929 to 1946. In particular, when we look at the legislative history of Section 2, what we see is that they actually had alternative ways to define the USPTO's authority and decided not to undertake those paths. Instead, the intact language of Section 2 comes from the revisions to the Patent Act in the 1870s. So, when given a range of choices about how to define the authority of the USPTO, the patent drafters of the Patent Act of 1952 selected the narrowest choice after a very long debate about the scope and authority of administrative actors. This has had real consequence as we decided whether to give the USPTO more authority in this area. (5)

The debate over Section 2 indicates a larger discomfort with what I call politics in the Patent Act. We see this in limits placed both on competitor standing and on third party standing to raise issues under the Patent Act. We see this in doctrines concerning fraudulent misconduct where you could have had a statutory patent fault standard, but the Patent Act of 1952 leaves it instead to equitable considerations by the court. It turns out that in every decision as it relates to sort of significant politics of intellectual property law, the Patent Act of 1952 picks a constrained choice.

So, we have now developed dysfunctional politics of patent law in this area because of that particular constraint. This causes real problems in the overall administrative contours of the patent regime. In particular, this causes two problems. First, other administrative agencies are now applying patent law so we have a Patent Act that is fundamentally out of sync with the agencies' enumerated powers. Second, the USPTO was actually granted more significant administrative powers (6) and that has fundamental consequences because the USPTO's actual authority is now compromised to undertake its broadened role in the patent regime. (7)

Now I am going to turn it over to Sapna to discuss the other patent agency.


I am going to discuss administrative law issues involving the International Trade Commission ("ITC"). Over the past decade, the ITC has emerged as the forum of choice for inventors whose patents have been infringed by imported goods. What makes this agency so interesting is that it makes decisions regarding patent validity and infringement in accordance with its own organic statute, Section 337 of the Tariff Act. (8) Section 337 gives the ITC discretion to block goods from entering the country that "infringe a valid and enforceable United States patent...." (9) What constitutes a "valid and enforceable" patent is undefined in the statute, however, and Section 337 contains no textual cross-reference to the Patent Act. (10) Congress has recognized that the ITC interprets patents for its own purposes for some areas of patent law, so that the ITC can protect U.S. companies from unfair competition. For example, the Senate Report for the Trade Act of 1974 states that when considering the validity of patents, the ITC "would also consider the evolution of patent law doctrines, including defenses based upon antitrust and equitable principles, and the public policy of promoting 'free competition,' in the determination of violations of the statute." (11)

This raises the question of what kind of deference the Federal Circuit should give to the ITC, given that it engages in formal adjudication. Practitioners have generally assumed that the Patent Act applies to the ITC. This perception was challenged by the Federal Circuit's decision in Kinik v. International Trade Commission. (12) In that case, the ITC had determined that defenses available to patent infringers under Section 271(g) of the Patent Act could not be used in the ITC. In an opinion authored by Judge Newman, the court granted Chevron (13) deference to the ITC, concluding that the agency was interpreting its organic statute in determining that Section 271(g) of the Patent Act does not apply to Section 337 proceedings. Although this portion of the opinion was dictum, it led to outrage in the patent community. (14)

A few years later, the Federal Circuit decided Amgen v. International Trade Commission, in which it affirmed the ITC's decision that Section 271(e)(1) of the Patent Act does apply in ITC proceedings. (15) Although this decision, like Kinik, was authored by Judge Newman, the court did not consider the applicability of Chevron. Thus, it is unclear at this time how much deference the ITC is entitled to for patent-related decisions. Is the ITC eligible for Chevron deference when it is deciding whether a patent is valid? Does granting deference make sense, given that both the agency and the reviewing court are experts?

On one hand, the ITC acts under an ambiguous organic statute that gives it broad discretion to make decisions about patent law in order to protect U.S. companies from foreign unfair competition. From this perspective, granting Chevron deference to the ITC makes sense because the agency is deciding on a case-by-case basis what constitutes a valid and enforceable patent. But from a patent law perspective, deference is...

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