Administrative Power in the Era of Patent Stare Decisis

37 Pages Posted: 26 Apr 2016 Last revised: 6 Jun 2016

See all articles by Stuart Minor Benjamin

Stuart Minor Benjamin

Duke University School of Law

Arti K. Rai

Duke University School of Law; Duke Innovation & Entrepreneurship Initiative

Date Written: April 20, 2016


The elaborate adjudicatory proceedings set up by the America Invents Act of 2011 (AIA) have thrust the U.S. Patent and Trademark Office (PTO) squarely into the patent-litigation process. The AIA proceedings, conducted by the newly formed PTO Patent Trial and Appeal Board (PTAB), are now a formidable competitor to district court litigation, and a case addressing PTO rulemaking relevant to the proceedings, Cuozzo v. Lee, has reached the Supreme Court.

Despite the formality of the AIA proceedings, the agency's lawyers have steered clear of asking for Chevron deference on legal issues decided in these proceedings. Although the executive branch's caution may reflect the unusual institutional structure of the PTAB, PTAB decisionmaking could be structured in a manner that should, under conventional administrative law principles, merit Chevron deference. In all likelihood, the chief roadblock to Chevron is not formal administrative law but specific challenges within the patent regime.

Many judges on the Court of Appeals for the Federal Circuit, which reviews all appeals from PTO decisions, have long been reluctant to apply conventional administrative law. Perhaps more surprisingly, the Supreme Court's recent decisionmaking in the area has emphasized its own earlier cases (including cases predating the Administrative Procedure Act) and stare decisis over conventional administrative law. Given potentially hostile courts, the costs of the PTO leadership expending the political capital necessary to embed the PTO more fully into the administrative state may exceed the benefits. However, in those cases where stare decisis is not implicated or is on the agency's side, the PTO may be able to exercise indirect influence through the Office of the Solicitor General.

Keywords: Patents, Administrative Law, Chevron, Stare Decisis

Suggested Citation

Benjamin, Stuart Minor and Rai, Arti Kaur, Administrative Power in the Era of Patent Stare Decisis (April 20, 2016). Duke Law Journal, Vol.65, Forthcoming, Duke Law School Public Law & Legal Theory Series No. 2016-25, Available at SSRN:

Stuart Minor Benjamin (Contact Author)

Duke University School of Law ( email )

210 Science Drive
Box 90362
Durham, NC 27708
United States
919-613-7275 (Phone)
919-613-7231 (Fax)

Arti Kaur Rai

Duke University School of Law ( email )

210 Science Drive
Box 90362
Durham, NC 27708
United States

Duke Innovation & Entrepreneurship Initiative ( email )

215 Morris St., Suite 300
Durham, NC 27701
United States

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