First Things, First: A Principled Approach to Patent Administrative Law

Abstract

The relevance of administrative law to patent law has been reinforced by the recent controversy in Tafas v. Dudas. This Essay examines two issues. First, this Essay, using the controversy over continuation practices at the heart of Tafas v. Dudas, examines the impact of patent exceptionalism on the development of patent administrative law. In particular, this Essay explores the way in which the Federal Circuit's opinion in Merck v. Kessler can be used to (temporarily) resolve tensions in how Section 2 of the Patent Act is interpreted with respect to substantive rulemaking. Second, this Essay attempts to outline a series of "first principles" that may be useful in resolving the underlying tensions over agency decision-making in this area. This Essay contemplates two useful principles that might clarify how to resolve controversies over agency decision-making in patent law. First, the USPTO's must be reconciled with standard administrative doctrine. The term "reconciled" is used deliberately to refer to the process of accommodating the unique demands of patent law to the administrative state. This is particularly important in light of the increased range of agency decision-making contemplated by recent patent reform efforts. Second, any process of reconciliation must recognize and account for the impact of third party participation that will arise from stronger administrative action. Outlining these "first principles" takes on significant importance given the potentially "re-defining" moment associated with current patent reform.

Keywords: patent law, administrative law, tafas, patent exceptionalism, federal circuit, patent act

JEL Classification: K2, K19, K23