Rule 36 Decisions at the Federal Circuit: Statutory Authority

47 Pages Posted: 21 Feb 2017 Last revised: 8 Oct 2019

Date Written: February 19, 2017


Recent commentary has questioned the validity of the Federal Circuit's use of Rule 36 affirmances in deciding appeals from the U.S. Patent and Trademark office. One article in particular posits that 35 U.S.C. 144 and 15 U.S.C. 1071(a)(4) require the Federal Circuit to write an opinion in every appeal from the Federal Circuit and therefore the court's use of Rule 36 affirmances, particularly with appeals of cases from the America Invents Act, is improper.

The present article presents a reasoned counterpoint to that argument. A complete analysis of the statutory text, the legislative history, the historical context of the statutes, and other considerations, including other applicable Federal Rules of Appellate Procedure, the delegation of authority under the Rules Enabling Act, and traditional deference afforded the judiciary in how it applies procedural rules, supports the conclusion that Rule 36 affirmances are entirely within the authority and discretion of the court. A contrary conclusion would rest on a slender reed of statutory text and would create a rare situation — perhaps the only instance — in which Congress has directly dictated procedure for the federal courts of appeal since the enactment of the Rules Enabling Act.

To be clear, the question of what the Federal Circuit is permitted to do under the controlling statutes and rules is distinct from the normative question of what the court should do. Part 2 of this Article (forthcoming) explores the reasons for the substantial increase in Rule 36 affirmances, assesses the costs and benefits of Rule 36 affirmances, and examines possible alternatives to Rule 36 affirmances.

Keywords: Patent, Federal Rule, Rule 36, Rules Enabling Act, America Invents Act, Appeals, Appellate, Trademark, PTO

Suggested Citation

Dowd, Matthew J, Rule 36 Decisions at the Federal Circuit: Statutory Authority (February 19, 2017). Available at SSRN: or

Matthew J Dowd (Contact Author)

Dowd Scheffel PLLC ( email )

1717 Pennsylvania Avenue NW
Suite 1025
Washington, DC 20006
United States

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