Substance, Procedure, and the Divided Patent Power

47 Pages Posted: 29 Mar 2010 Last revised: 3 Oct 2015

Date Written: March 25, 2010


The Patent Office has the power to issue rules that “shall govern the conduct of proceedings in the Office,” 35 U.S.C. § 2(b)(2), but not the power to issue substantive rules. It has been this way since 1870, when Congress first granted the Office this regulatory power, in nearly these same words. Just how broad is this grant? How should a reviewing court determine whether a challenged Patent Office rule is procedural (and thus valid) or substantive (and thus invalid)? It is remarkable that in 2010, 140 years after Congress gave the Patent Office this power, the proper sorting standard is as unclear as it has ever been. This paper provides the best answer. The key is realizing that the proper route to the answer is to model it after the Rules Enabling Act analysis for testing the validity of Federal Rules of Procedure, not the Administrative Procedure Act analysis for requiring notice-and-comment rulemaking or the Rules of Decision Act analysis for hewing to state substantive law in diversity cases. In brief, a Patent Office rule that incidentally affects applicants’ substantive rights does not violate § 2(b)(2) of the Patent Act if the rule is reasonably necessary to establish or preserve the fair and effective patent examination process that the Office’s rules must organize.

Keywords: Patent Act, Patent Office, Rules Enabling Act, Rules of Decision Act, Administrative Procedure Act

Suggested Citation

Miller, Joseph Scott, Substance, Procedure, and the Divided Patent Power (March 25, 2010). Lewis & Clark Law School Legal Studies Research Paper No. 2010-13; Administrative Law Review, Vol. 63, 2010; Lewis & Clark Law School Legal Studies Research Paper No. 2010-13. Available at SSRN: or

Joseph Scott Miller (Contact Author)

University of Georgia School of Law ( email )

225 Herty Drive
Athens, GA 30602
United States
706-542-5191 (Phone)
706-542-5556 (Fax)

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