The PTAB Is Not an Article III Court, Part 3: Precedential and Informative Opinions
Forthcoming, AIPLA Quarterly Journal (Winter 2019)
99 Pages Posted: 2 Nov 2018 Last revised: 7 Mar 2019
Date Written: October 1, 2018
When the Patent Trial and Appeal Board (PTAB) designates a decision as “precedential,” “informative,” “representative,” or “routine,” what is the legal effect? What does the PTO officially state the effect to be? How does the PTAB actually treat these decisions? What effect is permitted under the administrative law? These questions should all have the same answer. Differences arise when the PTAB operates outside the authority of the Patent Act, Administrative Procedure Act, and related administrative law statutes. Applicants, PTAB trial participants, and the PTAB itself should understand the limits of the PTAB’s authority, and available recourse when the PTAB exceeds its authority.
Section II pulls together the various laws that govern agency rulemaking and adjudication, and assembles them to explain the role of and limits on an agency’s common law rulemaking-by-adjudication. Section III looks a little deeper, applying the general legal concepts of section II in the specific context of the PTAB and its Standard Operating Procedures, to set out a definition of the PTAB’s authority. Section IV looks at a number of specific example PTAB decisions through those lenses, to analyze where the PTAB is acting within its authority and for the public interest, and where otherwise. Finally, Section V concludes with recommendations for the patent bar, for the PTO, and for the PTAB. What tools do lawyers have to guide the PTAB to better decision-making, and appeal from bad decision-making?
Keywords: patent law, administrative law, PTAB, Chevron deference, Auer deference
Suggested Citation: Suggested Citation