The Demise of Chevron and Its (Limited) Effect at the USPTO
Last week the Supreme Court issued an opinion in Loper Bright Enterprises v. Raimondo, 22-451 (June 28, 2024), announcing the death of the Chevron doctrine, under which courts deferred to executive agency interpretations when resolving ambiguities in the interpretation of federal statutes. The decision, while having wide-ranging effect in other fields of federal administrative law, is not expected to result in a significant change in patent and trademark law.
The Chevron doctrine has its origin in a 1984 case, Chevron v. Nat. Res. Def. Council, 467 U.S. 837, where the Court announced a rule whereby an agency interpretation of an ambiguity in a federal statute would be given deference by the courts, as long as the position of the agency charged with interpretation of the statute was rational or reasonable. The rule had been narrowed in subsequent cases and had begun to be effectively ignored by the Supreme Court in recent years. The Loper Bright decision marked the final death knell of the doctrine, with Justice Gorsuch writing in his concurring opinion that in Loper Bright, “the Court places a tombstone on Chevron no one can miss.” Going forward, courts will interpretate ambiguities in statutory law without providing any particular deference to agency interpretations.
The impact on the demise of the Chevon on patent and trademark law will be limited by the USPTO’s lack of authority to issue authoritative interpretations of substantive patent law. The USPTO’s rulemaking power is limited to procedural rules that “govern the conduct of proceedings in the Office,” 35 USC 2(b)(2)(A), as opposed to substantive rules. See Merck v. Kessler, 80 F.3d 1543, 1550 (Fed. Cir. 1996) (stating that the USPTO’s rulemaking authority “does not grant the Commissioner the authority to issue substantive rules”). As stated in Merck, because the procedural rules that the USPTO has the power to issue do not have the “force and effect of law,” Chevron deference does not apply to them. Merck, 80 F.3d at 1550.
Nonetheless, Chevron deference has on occasion made its way into Supreme Court and Federal Circuit cases involving the USPTO, where the interpretation at issue involved the USPTO’s procedural rules. See, e.g., Cuozzo Speed Tech. v. Lee, 136 S. Ct. 2131 (2016) (applying Chevron deference to the USPTO’s policy of using the “broadest reasonable interpretation” of claims when considering whether to institute inter partes review); Intra-Cellular Therapies v. Iancu, 938 F.3d 1371 (Fed. Cir. 2019) (applying Chevron deference to the USPTO’s determination of applicant delay for purposes of patent term adjustment); Cooper Techs. v. Dudas, 536 F.3d 1330, 1337 (Fed. Cir. 2008) (“Because the Patent Office is specifically charged with administering statutory provisions relating to ‘the conduct of proceedings in the Office,’ … we give Chevron deference to its interpretations of those provisions.”). But these cases were rare, and the issues involved in them were relatively minor, as opposed to questions involving weightier issues such as those directly bearing on the patentability of claims.
Thus, as the federal judiciary enters the new post-Chevron era, the effect in patent and trademark law should be minor, if there is any noticeable effect at all.At Renner Otto, the oldest intellectual property firm in Cleveland, we specialize in assisting our clients as they develop efficient Intellectual Property strategies that are tailored to their business’s needs. Our attorneys are knowledgeable on a wide range of domestic and international IP issues, and we partner with Firms around the world to better serve our clients.
Someone from the Renner Otto team would be happy to discuss this topic or any related Intellectual Property matters.