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The Great Balancing Act: The Effect of the America Invents Act on the Division of Power Between the Patent and Trademark Office and the Federal Circuit

Posted by on Friday, January 15, 2016 in Notes, Volume 69, Volume 69, Number 1.

The Great Balancing Act: The Effect of the America Invents Act on the Division of Power Between the Patent and Trademark Office and the Federal Circuit


The United States Constitution grants Congress broad authority to issue patents and effect patent policy, and Congress primarily delegates this authority to two actors: the United States Patent and Trademark Office (“PTO”), and the semi-specialized Federal Circuit. For nearly two centuries, the judiciary has dominated substantive interpretation of the patent statute and driven patent policy, while the PTO fulfills its duties of regulating patent applications and grants. Scholars have challenged this legal hybrid regime as antithetical to traditional administrative law principles that, where Congress intends, provide judicial deference to agencies’ substantive interpretations of their governing statutes. The PTO necessarily interprets the patent statutes to make daily patentability decisions, but the judiciary consistently declines to grant the agency judicial deference to these substantive interpretations. Accordingly, scholars and practitioners called on Congress to grant the PTO substantive rulemaking authority, thus assuring high-level Chevron deference to the agency.

The America Invents Act of 2011 (“AIA”) provided the most substantial overhaul to the patent system, but failed to empower the PTO with substantive rulemaking authority. Nevertheless, the AIA equipped the PTO with a host of new powers, most notably the creation of the Patent Trial and Appeal Board (“PTAB”) to review post-grant challenges to patent validity. Many scholars cite the adjudicatory nature of the PTAB proceedings as evidence of Congress’s intent that the PTAB review patents with force-of-law power, thus warranting Chevron deference to its interpretations of substantive patent law. This Note respectfully disagrees and argues that, in enacting the AIA, Congress did not intend to upend the longstanding system of patent policymaking to effectively designate the PTO as the primary interpreter of the Patent Act. Considering the overlapping distribution of patent authority among the judiciary and several agencies, automatic Chevron deference remains a poor fit for patent policymaking. Instead, this Note proposes that a more flexible approach, such as Skidmore deference to PTO interpretations, is necessary to honor Congress’s complex and intentional design of the patent institution. This approach will more fully effect the appropriate and intended balance of powers in patent policymaking.


J.D. Candidate, 2016, Vanderbilt University Law School; M.A., 2012, The Ohio State University; A.B., 2010, Duke University. I am incredibly grateful to Professor Sean Seymore for sparking my interest in patent law and for his feedback throughout the process; Deans Lisa Bressman and Kevin Stack for inspiring my passion in administrative law and for providing needed challenges to my ideas; Professor Tracey George for guiding my early research efforts and for her continuing support; the past and present editors of the Vanderbilt Law Review for their collegiality and thorough feedback; and, most importantly, my family members for their love, encouragement, support, and sacrifices that enabled me to attend law school.