The Eleventh Auer: The Effect of Kisor v. Wilkie on Rulemaking Procedures at the U.S. Patent and Trademark Office

Abstract

Courts have long deferred to an agency’s interpretation of an ambiguous rule or statute, in light of the agency’s relevant technical expertise. But some judges prefer to keep legal interpretations in Article III courts, and deferring often involves relying on an agency’s interpretation of a genuinely ambiguous statute — the oft-discussed Chevron deference doctrine. This Article analyzes the more nuanced Auer deference, where a court defers to an agency’s interpretation of its own ambiguous rule or regulation. Recently, the Supreme Court took and decided Kisor v. Wilkie, which dramatically modified the Auer doctrine. While Kisor appealed a claim for veteran’s benefits that implicated the courts’ ability to review Department of Veterans Affairs (VA) findings, the Court took it up to answer a bigger question: Should Auer be overruled?

They did not overrule it — but just barely — dramatically limiting the times and ways in which courts will defer. Kisor will have far-reaching effects on all agencies. This Article discusses just one: the United States Patent and Trademark Office (USPTO). Like other agencies, the USPTO issues rules, regulations, and guidance and has adjudicators — here Administrative Patent Judges (APJs) — who preside over disputes at the Patent Trial and Appeal Board (PTAB). But the USPTO is unique in that, in granting patents, it grants hundreds of thousands of legal causes of action annually, namely the ability to exclude others from making, using, or selling a patented invention, many leading to dispute.

Keywords: Patent, Administrative Law, Deference, Auer, Kisor, Chevron, USPTO, PTAB, Rulemaking, TPG, Trial Practice Guide, IPR