PRELIMINARY OUTLINE FOR COURSE:
Advanced Topics In Intellectual Property Law;
The Law Of Federal Agencies
In The Patent And Trademark System
Adjunct Professor James Toupin
Spring 20121
WEEK 1: Outline Of Course And Introduction To Law Underlying Governance Of US Patent And
Trademark Office, US International Trade Commission
a. Readings: Reinvention's Next Steps: Governing in a Balanced Budget World,
http://govinfo.library.unt.edu/npr/library/papers/bkgrd/balbud.html
b. 19 USC 1330-1, 1335
c. 35 USC 1-6, 41-42
WEEK 2: Constitutional Issues in Formation and Funding
a. Figueroa v. US, 466 F. 3d 1023 (Fed. Cir. 2006)
b. Free Enterprise Fund Public Company Accounting Oversight Board, 130 S.Ct. 3138
(2010), section V of majority opinion
b. John F. Duffy, Are Administrative Patent Judges Constitutional?, 2007 Patently-O
Patent L.J. 21 (2007) http://www.patentlyo.com/lawjournal/files/Duffy.BPAI.pdf
WEEK 3: Mechanisms for Administration Oversight of Agency Practices and Agency Goal-setting
a. Department of Commerce Departmental Organization Order 10-14
http://www.osec.doc.gov/opog/dmp/doos/doo10_14.html (individual students to read
different brief provisions referenced explicitly or implicitly in the order.)
WEEK 4: The Scope of Agency Rulemaking Authority
a. Tafas v. Doll, 559 F.3d 1345 (2009) (different students to also read and address different
cases discussedwithin opinion)
WEEK 5: Burdens of Coming Forward at the USPTO and Inequitable Conduct
a. In re Oetiker., 977 F.2d 1443 (Fed. Cir. 1992)
WEEK 6: Legislative Development of New Proceedings
a. Sections 3(h) (derived patents), 3(k) (“Statute of Limitations”), 6, 7, 12 of Leahy-Smith
America Invents Act of 1911
1
This outline reflects the planned subjects and readings for the course as envisioned December
1, 2011.
WEEK 7: Analysis of America Invents Act proposed rules (if published as scheduled)
WEEK 8: Review of First-Level Decisions within Agencies
a.
b.
c.
d.
5 USC 554, 556, 557, 558
19 USC 1337
In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994)
Galleon, S.A. v. Havana Club, S.A. , Decision on Motion Under the Government in
the Sunshine Act, Item 63 of TTABVue Docket Listing, 1/2/1/2003, Cancellation
92024108, http://ttabvue.uspto.gov/ttabvue/v?pno=92024108&pty=CAN&eno=93
e. In re Jung, 637 F.3d 1356 (Fed. Cir. 2011)
f. In re Leithem, --- F.3d ----, 2011 WL 4351585 (Fed. Cir. 2011)
WEEK 9: Judicial Review of Agency Action: Fact-Finding
a. Dickinson v. Zurko, 527 U.S. 150 (1999)
b. In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000)
c. Hyatt v. Kappos, 625 F.3d 1320 (Fed. Cir. 2010), transcript of Supreme Court oral
argument as available
WEEK 10: Judicial Review of Agency Action: Substance
a. Enercon GmbH v. International Trade Com'n, 151 F.3d 1376-1385 (Fed. Cir. 1998)
b. Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956 (Fed. Cir. 2002)
WEEK 11: International Agreements as a Source of Agency Process: Border Measures
a. United States – Section 337 of the Tariff Act of 1930, GATT panel report (1989)
http://www.worldtradelaw.net/reports/gattpanels/sec337.pdf
WEEK 12: International Agreements as a Source of Agency Process: Application Processes
WEEK 13: Student Presentations
WEEK 14: Student Presentations
WEEK 13: Student Presentations
ADVANCED TOPICS IN INTELLECTUAL PROPERTY LAW:
THE LAW OF FEDERAL AGENCIES
IN THE PATENT AND TRADEMARK SYSTEM
Adjunct Professor James Toupin
Spring 2012
COURSE GUIDELINES
1. Course Concept and Objectives
This seminar, which surveys how the federal administrative law affects the patent and
trademark system, is an occasion for students to write a research paper about a topic broadly
related to the subject of the seminar.
2. Course Requirements and Grading
This class is a seminar, which means you have the opportunity and the obligation to
engage in independent research on a topic of your choice related to the intersection of the law of
federal agencies and intellectual property law, subject to the instructor’s approval. Each student
will also be asked to initiate discussion in the seminar of at least one assigned reading or specific
topic. Your grade will be based primarily (70%) on the quality of the research paper you write
for this class (more on the paper in a moment). In addition, you will make an oral presentation on
your topic. Your presentation and class participation count together for 30% of your grade.
3. Research Paper
The text of your research paper (excluding footnotes) should be at least 25 pages long
(double-spaced, 12 point Times) and should include substantial citations to not less than 25
unique sources.
Your research is important so that you understand what has been written about your
topic, but ultimately you must take a position and defend it in your paper. It is not sufficient to
describe the state of the law in a given area. Rather, you should articulate and defend a thesis,
identifying and refuting the strongest arguments against your position. The paper should
resemble a law review article, although on a smaller scale. You may write about any topic of
your choice.
4. Personal Meetings and Drafts
Students should discuss their choice of paper topic with the instructor. He can be reached
at jamestoupin@hotmail.com and is happy to make an appointment to meet with each student.
Some of the topics discussed in this list could be divided into multiple papers. Some of the topis
in the exemplary list below will be discussed in class; others will not. Since part of the learning
of the class as a whole will arise from the student presentations of their papaers, students are
encouraged to choose topics that have not been covered in class or to use approaches to their
topics that substantially expand beyond class discussion. It will be helpful both to the instructor
and to the student to discuss the planned scope of papers early.
First drafts are due to be delivered to the instructor by the Friday before spring break.
Students should at that time set up an appointment to meet with the instructor in the week after
spring break. Students will present their topics orally to the class the weeks of April 9, 16, and
23. The final paper is due to the instructor April 27. No extensions will be granted.
5. Suggested Topics
This is a non-exclusive list, provided only to give an idea of the range of topics that
might be appropriate. There are a myriad of other potential topics.
1.
In 1999, the US Patent and Trademark Office was reinstituted with a quasiindependent status within the Department of Commerce. Reorganizing the
PTO had originated in part with the Clinton administration’s espousal of
performance based organizations. See, e.g.,
http://govinfo.library.unt.edu/npr/library/news/2502.html Write an analysis of
the nature of the agency reorganization and to what extent, if any, it supports or
fails to support the theory of performance based organizations.
2.
Statutes creating positions such as the Chief Human Officer, Chief Financial
officer, and the Chief Information Officer in federal departments vest
responsibilities in officials appointed by and reporting to department heads,
making no provision for those responsibilities to be handled by performance
based organizations such as the USPTO. Can the assignment of responsiblities
in such government-wide statutes be reconciled with the specific delegation to
the Director of the PTO for the management of the Office? How should they
be?
3.
The National Academy of Sciences has proposed reorganizing the USPTO as a
government corporation subject to the Government Corporations Act and
exempting the PTO’s budget from the Congressional appropriations process.
National Academy of Sciences, “Restructuring the Patent and Trademark
Office” (February 2003). The 2011 Congress gave the PTO greater authority
over fees (the pricing of its services), instituting a process for review of its
proposals in that regard, but did not make it a government corporation or
remove it from the appropriations process. Analyze the differences between
the NAS proposal and Congressional solution and discuss which approach is
superior.
4.
The traditional policy rationale for making the fee revenues of agencies like the
USPTO available to them through annual appropriations is the need for
Congressional oversight through ‘the power of the purse’. A paper could
analyze the exercise of that power through appropriations acts over a number of
years and evaluate the effectiveness of Congressional direction.
5.
Proposals have been made to create a separate agency for handling trademark
registration, or alternatively, to unite the Copyright Office with the patent and
trademark operations in a single agency. Analyze one of these proposals and
6.
7.
8.
9.
10.
consider whether either of these reorganization proposals would be superior to
the current situation.
The 1999 Act made administrative patent and administrative trademark judges
subject to appointment by the Director of the USPTO. Following criticisms
that appointment by a subcabinet officer violated the Appointments Clause of
the Constitution, Congress made APJs and ATJs subject to appointment by the
Secretary of Commerce on proposal by the USPTO Director and took action to
reappoint sitting administrative judges and affirm the validity of decisions they
had rendered. Were the Appointments Clause qualms well-founded, do they
apply also to patent examiners and trademark examining attorneys (if not, why
not) and, if the constitutional objections are well-taken, are efforts to validate
past decisions well-based?
In addressing problems with the pendency of patent applications, some have
suggested that the problem is partly caused by the rate of turnover among
patent examiners and have suggested that examiners should gain pay rates
above the standard federal pay scale. A paper might analyze to what extent
examiner turnover is a cause of pendency problems, to what extent flexibilities
available under current law to pay examiners at a higher rate, whether the PTO
has adequately availed itself of such flexibilities, and whether changes in the
law should be proposed.
Under the General Agreements on Tariffs and Trade, an international arbitral
panel held that the United States’ system for excluding infringing imports
under 19 U.S.C. § 1337 violated treaty obligations. In the Uruguay Round
Agreements Act, which implemented the agreements founding the World Trade
Organization as the successor to the GATT, the United States amended section
337 to address these objections. Whether the revised system complies with
treaty obligatons has not been tested; if it were, would the current provisions be
upheld?
Under current precedents and rules, absent a specific inquiry from the examiner, a
patent applicant is only under an obligation to present to the USPTO material
information known to those assisting in the application. Under the George W.
Bush Administration, the USPTO made several proposals to establish
conditions under which applicants would have obligations to search prior art
and report the result of such searches to the Office. A paper might consider
whether the current system is optimally efficient, whether any change in the
applicant’s responsibility to search and present prior art would be improve the
quality or efficiency of patent examination, and whether current law should be
interpreted to permit a change in the obligation.
The USPTO has for several years been entering into patent prosecution highway
agreeements with other patent examination offices in order to try to gain some
efficiencies through work sharing when parallel applications for the same
invention have been filed in multiple offices. A number of possible paper topics
suggest themselves. For example, these programs prioritize applications in the
program that have been given initial examination in the counterpart office.
Does it pose policy or legal problems for the Office thus to favor the
prosecution of international over applications only filed domestically? Other
11.
12.
13.
14.
15.
approaches might be based on information sought from the Office, for example,
what internal studies has the agency performed bearing on the effect of the
program on the efficiency or quality of examination by US examiners?
In 2003, the US adhered to the Protocol Relating to the Madrid Agreement
Concerning the International Registration of Marks (Madrid Protocol),
designed to streamline the filing of trademark registration applications in other
countries based on a home country registration. A paper might evaluate how
the Protocol has been used by US trademark owners in order to consider
whether certain constraints in the system should be altered. For example, if a
US registration is cancelled within five years, registrations obtained in other
countries through the Madrid system based on that registration also fall. Has
this possibility discouraged use of the Madrid Protocol procedure, or does the
fact that the US, unlike other countries, does substantive examination before
registering a mark, encourage US owners to use the system?
In the Bose case, the Federal Circuit constrained the basis on which a trademark
registration could be cancelled due to allegations of fraud. Critics of the
decision have argued that the decision undermines the use-based nature of US
trademark registration, and the USPTO has proposed changing its rules to
provide for more extensive submission of specimens supporting claims of
trademark use. Is the proposed USPTO procedural change a proper or
sufficient response?
In Hyatt v. Kappos, the Supreme Court has granted a petition for writ of certiorari
to review the Federal Circuit’s decision that in a district court action
challenging the rejection of a patent application, the applicant could introduce
new evidence regardless of whether it was available at the time of examination.
It also held that, where evidence has not changed between examination and
court suit, the PTO is entitled to deference. Judges of the Federal Circuit
dissented from both holdings. A paper might address the law and policy
applicable to either of these holdings. More broadly, a paper might address the
legislative question of whether the option, rarely exercised, of civil action
review of ex parte applications is warranted or, if warranted as to some issues,
should be available for all.
In Conservolite, Inc. v. Widmayer, 21 F.3d 1098, 30 USPQ2d 1626 (Fed. Cir.
1994), the Federal Circuit held that, in general, parties to a civil action
challenging the outcome of an interference could not raise issues in district
court not raised below. In contrast, in Aktieselskabet af 21. November 2001 v.
Fame Jeans, Inc., 86 USPQ2d 1527 (D.C. Cir. 2008), the D.C. Circuit held that
in a civil action challenging a decision of the Trademark Trial and Appeal
Board in an opposition, new issues could be raised without limitation, noting a
possible conflict with an earlier decision of the Second Circuit. Is the
introduction of new issues in appeals from opposition proceedings warranted,
under the statutory language? Is it sound as a matter of policy?
The USPTO is in the process of developing rules to govern new proceedings that
will be instituted under the America Invents Act – including post-grant review,
inter partes review, expanded reissue and derivation proceedings. Papers might
address administrative procedure issues that may arise in the implementation of
16.
17.
these new proceedings. For instance, the standards that the Patent Trial and
Appeal Board are to apply in instituting otherwise similar post-grant and interpartes review proceedings are different. How should these differences affect
the Board’s consideration of petitions? The Act makes decisions of the Board
not to institute post-grant or inter partes review proceedings not subject to
appeal; can decisions not to institute proceedings be made subject to review
under the Administrative Procedure Act?
The new patent act’s provision for post-grant review and inter partes review
makes those proceedings subject to time limits. In contrast, no time limits
apply to trademark opposition or cancellation proceedings. In those
proceedings, the Trademark Trial and Appeal Board routinely grants repeated
extensions of time to accommodate settlement discussions. As reflected in
discussions at Trademark Public Adviory Committee meetings, this practice
has become controversial. What factors should affect whether the Trademark
Trial and Appeal Board puts limits on time extensions and what, if any, limits
would be most appropriate?
Though the course will focus on the US Patent and Trademark Office and, to a
lesser extent, the US International Trade Commission, other federal agencies,
of course, also execute legal mandates in the intellectual property system. A
new office now exists, for example, within the White House concerning IP
enforcement, and the Justice Department has responsibilities for criminal
enforcement. The Copyright Office, of course, operates programs under several
administrative law mandates – e.g., as a registration system, as a rate-setting
body. Papers addressng issues of legal control of agency processes concerning
any IP subject area would be welcome.