Exceptional, After All and After Oil States: Judicial Review and the Patent System

43 Pages Posted: 3 May 2019 Last revised: 30 Sep 2019

See all articles by Michael Greve

Michael Greve

American Enterprise Institute (AEI); George Mason University - Antonin Scalia Law School, Faculty

Date Written: May 1, 2019


The U.S. Supreme Court’s seminal 2018 decision in Oil States Energy Servs., LLC v. Greene’s Energy Group, LLC appears to mark the end of “patent exceptionalism”—that is, the notion that patent law and administration (should) remain at variance with the precepts of general administrative law. The petitioners contended that invention patents are “private rights” that, under the Constitution, can be canceled only by Article III courts, not administratively. The Court’s unequivocal rejection of that position removed a lingering constitutional cloud over the Patent and Trademark Office’s administrative patent review and reexamination procedures under the 2011 America Invents Act.

However, the statutory judicial review regime of the Patent Act still departs from general administrative law. Parallel to an APA-conforming provision for appellate judicial review, the Patent Act permits disappointed patent applicants to contest adverse administrative decisions by way of an original, de novo action in U.S. district court. The relevant provision, Section 145 of the Patent Act, is wholly incompatible with administrative-law precepts of appellate (deferential, on-the-record) judicial review. Dating all the way back to the 1836 Patent Act, it is a statutory remnant of Marbury’s near-forgotten world of private rights and separated powers.

This Article chronicles the strange survival of Section 145 and explores its present-day, post-
Oil States implications. As a practical matter, the rarely used Section 145 may offer a means of “gold-plating” patents: an administrative revocation of a “Section 145” patent would amount to a constitutionally prohibited executive revision of a final judicial decision. As a doctrinal matter, the Supreme Court has clearly recognized the “exceptional” nature of Section 145. The Oil States decision, read on its own but especially in the context of the Supreme Court’s broader administrative and patent law jurisprudence, affirms that position. Patent law will remain exceptional after all—just not for reasons grounded in property law and theory, but in a statutory and administrative-law sense.

Keywords: Patent Act, Patent Law, Patent Exceptionalism, Administrative Law, Administrative Procedure Act, Federal Circuit, America Invents Act, Judicial Review, Oil States Energy, Kappos v. Hyatt, Bill in Equity, Section 145, Plaut v. Spendthrift Farms

JEL Classification: K11, K19, K23, K39, O34

Suggested Citation

Greve, Michael, Exceptional, After All and After Oil States: Judicial Review and the Patent System (May 1, 2019). Boston University Journal of Science and Technology Law, Forthcoming, George Mason Legal Studies Research Paper No. LS 19-04, Available at SSRN: https://ssrn.com/abstract=3381076 or http://dx.doi.org/10.2139/ssrn.3381076

Michael Greve (Contact Author)

American Enterprise Institute (AEI) ( email )

1150 17th Street, N.W.
Washington, DC 20036
United States

George Mason University - Antonin Scalia Law School, Faculty

Do you have a job opening that you would like to promote on SSRN?

Paper statistics

Abstract Views
PlumX Metrics