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Transformations in
USPTO Policymaking
The America Invents Act of 2011 (AIA) did not just change
U.S. patent law—the AIA changed the U.S. Patent and
Trademark Ofce’s (USPTO’s) policymaking powers as
well. In particular, the creation of the Patent Trial and Appeal
Board (PTAB or the Board) set the stage for the USPTO to decide
more issues of patentability in an inter partes context, imple-
ment rules for the Board’s proceedings, designate Board decisions
as precedential or informative, create the Precedential Opinion
Panel, and much more. Questions about the scope of the USPTO’s
policymaking authority have percolated over the past decade.
For example, does the Board’s reliance on precedential deci-
sions violate the Administrative Procedure Act (APA), such that
those decisions should be promulgated through rulemaking? And
although the U.S. Supreme Court has answered some of these ques-
tions, many remain. Here, we explore the USPTO’s policymaking
history and recent policymaking examples.
Evolution of the USPTO’s Policymaking Powers
Basic Principles of Policymaking
Policymaking is a broad way of classifying how administrative
agencies implement their objectives and goals (or policies). Under
the APA, agencies can typically engage in three forms of poli-
cymaking: promulgating rules, conducting adjudications, and
William C. Neer,
Ryan V. McDonnell,
and Tom Irving
issuing guidance documents (also referred to as policy state-
ments).
1
Rulemaking is a quasi-legislative process that creates
a rule or regulation and is designed to provide the public notice
of a new policy.
2
Notice-and-comment rulemaking and formal
rulemaking are two forms of legislative rulemaking that result
in “rules,” which can have the effect of law.
3
Adjudications are
proceedings, similar to trials, where administrative law judges
decide whether a party violates a statute or regulation.
4
Deci-
sions from these adjudications are usually only binding on the
participating parties.
5
Guidance documents encompass almost all
other statements of policy that an agency issues, describing how
an agency interprets or executes a rule or statute.6 Which type of
policymaking an agency uses depends on which powers Congress
provided the agency.7
Brief History of the USPTO’s Policymaking Powers
The USPTO has a complicated policymaking history. Despite
patents predating the founding of the nation, Congress debatably
did not establish an ofcial patent ofce until approximately 1836.
8
Then for the next 120 years, the patent ofce was only respon-
sible for examining patents.9 It was not until 1952 that Congress
established the USPTO as we know it today.10 This was also when
Congress gave the agency its rst taste at policymaking—the
authority to promulgate rules regarding examination of patents
and regulation of patent practitioners.
11
Slowly but surely, Congress
continued to grant the USPTO various policymaking powers.12
The USPTO’s rulemaking authority remained unquestioned
until the late 1980s and early 1990s in Animal Legal Defense Fund
v. Quigg.
13
The USPTO published a notice that dened nonhu-
man organisms (e.g., animals) as patentable subject matter under
35 U.S.C. § 101.14 Stakeholders—largely animal rights advocacy
groups—sued the USPTO, alleging that the notice constituted
a rule and that the USPTO failed to abide by the notice-and-
comment procedures outlined in the APA.15 The Federal Circuit
held that the USPTO did not violate the APA because the notice
William C. Neer was an associate at Finnegan, Henderson,
Farabow, Garrett & Dunner, LLP when this article was drafted.
He focuses his practice on patent litigation and client
counseling. Ryan V. McDonnell is an associate at Finnegan,
Henderson, Farabow, Garrett & Dunner, LLP, where he
focuses his practice on patent litigation. He can be reached
at ryan.mcdonnell@finnegan.com. Tom Irving is a partner at
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, where
he focuses his practice on patent prosecution and client
counseling. He can be reached at tom.irving@finnegan.com.
Published in Landslide, Volume 15, Number 3, 2023. © 2023 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion
thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the
American Bar Association.
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