Policy Workshop Registration

Revisiting the USPTO’s Rulemaking Authority after
Cuozzo and City of Arlington

Taking place via WebEx on
Friday, September 10, 2021
2pm-4pm ET


Policy Workshop Hosted by the Amicus Committee of The Naples Roundtable

Confirmed speakers/panelists

Arti Rai,
Duke University School of Law
Nicholas Matich,
McKool Smith (former Acting General Counsel USPTO)
Sapna Kumar,
University of Houston Law Center
Saurabh Vishnubhakat,
Texas A&M University School of Law

Moderator

Andrew Baluch Smith Baluch LLP
Amicus Committee Chair, The Naples Roundtable

Questions to be debated

  • After City of Arlington, will the USPTO’s interpretation of 35 U.S.C. § 2(b)(2)(A) be owed Chevron deference?
  • After Cuozzo, will the Federal Circuit continue to interpret § 2(b)(2)(A) as being limited to “procedural”—as distinct from “substantive”—rules?
  • How should § 2(b)(2)(A) be interpreted?
  • What new rules might the Biden Administration offer to test the scope of § 2(b)(2)(A)?

Background

Congress has empowered the U.S. Patent & Trademark Office to “establish regulations, not inconsistent with law, which … shall govern the conduct of proceedings in the Office.”  35 U.S.C. § 2(b)(2)(A).  The scope of this rulemaking authority has been hotly contested.  For its part, the USPTO has taken the position that this statutory provision does not categorically limit the agency’s rulemaking authority to “procedural” (as distinct from “substantive”) rules and, further, that the agency’s interpretation of this provision is entitled to Chevron deference.  The Federal Circuit rejected both these arguments in Tafas v. Doll (Fed. Cir. 2009), holding instead that no deference is owed to the USPTO’s interpretation of § 2(b)(2)(A), which the court held to contain a “procedural” limit on the USPTO’s rulemaking authority.  Since then, the U.S. Supreme Court has issued two rulings that may call Tafas into question.  First, in City of Arlington v. FCC (2013), the Supreme Court held that an agency’s interpretation of a statutory ambiguity that concerns the scope of its regulatory authority is entitled to Chevron deference.  Second, in Cuozzo Speed Technologies v. Lee (2016), the Supreme Court noted, albeit in passing, that § 2(b)(2)(A) “does not clearly contain the [Federal] Circuit’s claimed limitation,” i.e., being “limited to procedural rules.”  In light of these intervening Supreme Court decisions, the Naples Roundtable will examine and debate what impact, if any, these decisions have on the USPTO’s § 2(b)(2)(A) rulemaking authority post-Tafas.

Invitations are non-transferable

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