Edited by Daniel R. Cahoy and Lynda J. Oswald
Chapter 2: Administrative patent levers in the software, biotechnology and clean technology industries
With the recent passage of the America Invents Act (AIA), the US patent system has undergone a transformative realignment. Numerous significant changes have been made as a result of this legislation; among the most significant are the implementation of a first-to-file system, fee-setting authority at the United States Patent and Trademark Office (PTO) and several changes involving post-grant review proceedings (Leahy-Smith America Invents Act, 2011). Many questions remain, however, regarding how these statutory changes will impact patentees, innovators and society. Scholars have been called upon to address these significant, largely open questions. One particular question relates to the rulemaking authority that has been statutorily delegated to the PTO. As recognized by scholars, a power struggle has been waged between the PTO and the Court of Appeals for the Federal Circuit (CAFC), a specialized appellate court with exclusive jurisdiction over patent cases decided by the federal district courts. This struggle relates to the CAFC granting the PTO limited or no deference and limiting the PTO’s ability to engage in substantive and policy-oriented rulemaking. The CAFC has on various occasions held that the PTO is limited solely to procedural rulemaking and that any rulemaking that extends beyond this function is beyond the PTO’s delegated administrative authority (Orozco, 2012; Tran, 2012b).
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