An Administrative Law View of the PTAB's 'Ordinary Meaning' Rule

Abstract

The Patent and Trademark Office recently changed its claim construction rule for AIA PTAB trial proceedings from a “broadest reasonable interpretation” standard to an “ordinary meaning” standard. The procedures that the PTO used to implement this change raise a number of issues under the Administrative Procedure Act and other authorities that govern rulemaking. Just like any other federal agency promulgating any other rule, the ordinary-meaning rule is governed by various laws, including statutes, regulations from the Executive Office of the President, and executive orders and implementing directives issued by various parts of the executive branch. These laws are intended to guide and assist agencies toward genuine reasoned decision-making that takes account of various public interests, including cost-benefit and economic effect balances for regulated entities. When an agency neglects these laws, the relevant public interest concerns get less consideration than Congress intended, public confidence in the agency’s commitment to the rule of law is eroded, and the rule becomes vulnerable to being invalidated on judicial review. The May 2018 ordinary-meaning Notice of Proposed Rulemaking and the October final rule notice contain many “anomalies” that suggest that neglect, and expose the “ordinary meaning” rule to invalidation.

Keywords: patent law, Patent and Trademark Office, administrative law, rulemaking, Patent Trial and Appeal Board, Administrative Procedure Act, Regulatory Flexibility Act, Paperwork Reduction Act