U.S. Supreme Court Administrative Law Decisions Raise Questions for U.S. Patent and Trademark Office Proceedings | Wilson Sonsini Goodrich & Rosati
Last week, the U.S. Supreme Court decided two important administrative law cases that are expected to increase judicial authority over agency adjudications and rulemaking. In Securities & Exchange Commission v. Jarkesy (decided June 27), the Court held that when the U.S. Securities and Exchange Commission (SEC) seeks civil penalties for securities fraud, the defendant is entitled to a jury trial. In Loper Bright Enterprises v. Raimondo (decided June 28), the Court held that courts should not defer to an agency statutory interpretation. While each ruling might have significant effects on some agencies, their effect on the United States Patent and Trademark Office (USPTO) should be much more limited because, generally, USPTO regulatory authorities are much more limited and because USPTO’s primary reviewing court, the U.S. Court of Appeals for the Federal Circuit, is a specialized court that does not defer to USPTO on legal questions.
Jarkesy raised the question of whether the SEC can both seek and adjudicate a civil penalty against a defendant accused of securities fraud when the defendant seeks a jury trial under the Seventh Amendment to the Constitution. This question might be compared to an earlier case, Oil States Energy Services v. Greene’s Energy Group, 584 U.S. 325 (2018), questioning whether USPTO could cancel a patent claim without providing a jury trial under the Seventh Amendment. The Court came to opposite conclusions by somewhat different paths. In Oil States, the Court explained that a patent is a “public right” or government benefit (rather than a private right), so the Seventh Amendment does not apply. Conversely, in Jarkesy, the Court started with a presumption that the Seventh Amendment would apply unless securities fraud fell within the public-rights exception. The Court concluded it did not because securities fraud—despite being a statutory creation—is akin to traditional private-right causes of action. While Oil States—a case actually reviewing USPTO action—continues to be good law, the difference in approach might suggest room for further development that could yet affect USPTO proceedings.
Jarkesy itself should have little direct effect on USPTO operations because USPTO generally focuses on public-right activities (determining patent and trademark rights) rather than enforcing private rights. Two areas of USPTO authority might provide exceptions that bear watching. USPTO administers an office that actively registers and disciplines patent practitioners, while it also disciplines trademark attorneys for misconduct in USPTO trademark cases. Some discipline (suspension or disbarment) arguably affects the defendant’s livelihood property interest, which might be enough to trigger Jarkesy’s concerns. USPTO also has sanction authority for abuse of its proceedings, which USPTO has interpreted to include imposing compensatory expenses (e.g., 37 C.F.R. §42.12(b)(6)). This authority is very rarely invoked, usually involves an adversarial party other than the government, and arises out of managing a proceeding rather than being the focus of the proceeding; nevertheless, to the extent it involves taking actual property (rather than a government benefit) from the accused, it too might be said to trigger Jarkesy’s requirement for a right to a jury trial.
Loper Bright raised the question of what deference courts owe to an agency interpreting a statute within its area of expertise. For four decades, following Chevron v. Natural Resources Defense Council, 467 U.S. 837 (1984), courts have deferred to an agency if Congress had delegated authority to the agency in the matter, the statute in question was ambiguous, and the agency statutory construction was reasonable. The degree to which courts deferred to agencies has been variable because the Chevron test itself is flexible, and more recently because critics have successfully persuaded courts (including the Supreme Court) to hedge its application. While Chevron deference is based in part on comity between co-equal branches of government (the Executive and Judicial branches), some stakeholders came to see it as an abdication of the courts’ obligation to say what the law is. Indeed, the Supreme Court ultimately rejected Chevron deference as inconsistent with the Administrative Procedure Act, which the Court reads as reserving legal questions—including constitutional and statutory interpretation—to the courts. In Loper Bright, the Court remanded the case for reconsideration because the court of appeals had improperly relied on Chevron in reaching its decision. The Court noted, however, that earlier precedential decisions that relied on Chevron were not automatically overruled, which maintains some stability for existing administrative law. Agencies that have previously relied heavily on Chevron and related deference doctrines will, however, face challenges.
USPTO is rarely such an agency for two reasons. First, USPTO’s substantive rulemaking authority is limited. Congress has given USPTO substantive authority to create standards for enrolling and disciplining patent attorneys, but otherwise has limited USPTO rulemaking to procedural rules. In practice, procedural rules rarely test statutory boundaries. Second, USPTO adjudication is primarily reviewed directly (or via appeals from district courts) by the Federal Circuit. The Federal Circuit was created as a specialized court with a mandate to make patent law more uniform. Consequently, the Federal Circuit has always had its own expertise and mandate regarding patent law interpretation, and consequently little need to defer to USPTO on substantive patent (or trademark) law. The Federal Circuit will simply continue deciding legal questions without deference. As noted above, however, even where the Federal Circuit has relied on Chevron, those decisions remain good law.
In sum, Loper Bright and Jarkesy may prove to be highly consequential for some federal agencies. However, the limited power that Congress delegated to USPTO, and the unusually significant role the Federal Circuit plays in reviewing USPTO decisions, leaves little scope for change stemming from these Supreme Court decisions.
