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INTELLECTUAL
PROPERTY AND
INFORMATION LAW IN
THE ADMINISTRATIVE
STATE
INTRODUCTION
Sapna Kumar*
When the Administrative Procedure Act (APA) passed
unanimously in 1946, it looked, from the surface, to be a “happy
accord.”1 After years of inconsistencies in agency powers and
judicial review, Congress had at last created a uniform system
that cut across all types of agencies. But as George Shepherd
recognized, the APA is more accurately described as a “fierce
compromise;” one that legislators supported merely because “it
was better than no bill.”2
While the idea of unification was gradually accepted in most
substantive areas of the law, deep skepticism remained in others.
During early attempts to pass the APA, patent and trademark
3
groups constantly sought exemptions and continued to do so
*
1.
Assistant Professor, University of Houston Law Center.
Walter Gellhorn, The Administrative Procedure Act: The Beginnings, 72 VA.
L. REV . 219, 232 (1986).
2.
George B. Shepherd, Fierce Compromise: The Administrative Procedure Act
Emerges from New Deal Politics, NW . U. L. REV. 1557, 1560 (1996).
3.
See id. at 1577 & n.75 (noting that representatives from the Patent and
Trademark Section of the American Bar Association testified against the creation of a
new administrative court in 1936); id. at 1618 tbl.1 (noting that the Patent Office,
Trademark Office, Federal Trade Commission, and many other agencies obtained an
exemption under the failed Walter-Logan Bill); id. at 1638 (noting that the Patent
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when unification became a forgone conclusion.4 Long after the
APA’s passage, the U.S. Court of Appeals for the Federal Circuit
resisted administrative law uniformity with regard to patents.5
Scholars continue to explore what the proper role of agencies
is in intellectual property and information law. Although this
conversation now has many voices,6 it began with only a handful
of scholars who broke new ground in an uncharted area of law.
The 2013 Houston Law Review Symposium Issue, Intellectual
Property and Information Law in the Administrative State,
brings five of these scholars together: Arti Rai, John Golden,
John Duffy, Adam Candeub, and Christopher Yoo. This Issue is
the result of an ongoing collaboration between the Review and
the University of Houston Law Center’s Institute for Intellectual
Property & Information Law (IPIL).
Professor Arti Rai has focused on the intersection of patent
law and administrative law for more than a decade, emphasizing
what the patent system can learn from administrative law and
how to promote innovation through agencies. Her current work
for the Symposium, Improving (Software) Patent Quality
Through the Administrative Process, examines how the PTO can
use key provisions in § 112 of the Patent Act to shape the scope of
software and other patents.7 Professor Rai further builds off of
Professor Melissa Wasserman’s work, observing that the PTO
may be able to obtain strong deference for its interpretations of
the Patent Act under the Chevron doctrine.8
Professor John Golden’s patent research has explored issues
of administrative law and federal courts. In Proliferating Patents
Office was the only agency to seek an exemption under the failed McCarran-Sumners
Bill).
4. See id. at 1638.
5. See In re Comiskey, 554 F.3d 967, 969, 971, 973–75 (Fed. Cir. 2009) (affirming
the decision of the PTO on different grounds, notwithstanding Supreme Court precedent
to the contrary); In re Zurko, 142 F.3d 1447, 1449–59 (Fed. Cir. 1998) (holding that the
standards of review in the Administrative Procedure Act do not apply to patent decisions
from the PTO), rev’d, Dickinson v. Zurko, 527 U.S. 150 (1999).
6. See, e.g., Kali N. Murray, The Cooperation of Many Minds: Domestic Patent
Reform in a Heterogeneous Regime, 48 IDEA 289 (2008); Sarah Tran, Policy Tailors and
the Patent Office, 46 U.C. DAVIS L. REV. 487 (2012); Melissa F. Wasserman, The Changing
Guard of Patent Law: Chevron Deference for the PTO, 54 WM. & MARY L. REV. 1959
(2013); Ryan Vacca, Acting Like an Administrative Agency: The Federal Circuit En Banc,
76 MO. L. REV. 733 (2011); see also Sapna Kumar, The Accidental Agency?, 65 FLA. L. REV.
229 (2013).
7. Arti K. Rai, Improving (Software) Patent Quality Through the Administrative
Process, 51 HOUS. L. REV. 503, 519–33 (2013).
8. Id. at 540–43 (discussing Chevron U.S.A. Inc. v. Natural Res. Def. Council, Inc.,
467 U.S. 837 (1984)).
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and Patent Law’s “Cost Disease”, he examines the claim that the
patent system is in crisis and argues that while the system is not
as dire as some argue, it is under substantial strain.9 Professor
Golden argues that the patent system must adapt, and he makes
three key proposals for the PTO:
(1) greater international work-sharing arrangements that
might provide a relatively immediate, albeit perhaps only
temporarily satisfactory, response to the internationalization
of patent applications flowing into the USPTO; (2) greater
privatization of functions of assessing patents’ or patent
applications’ validity and proper scope; and (3) greater use of
rulemaking or other means of ‘partially automating’ processes
10
of individual examination.
Professor John Duffy has explored the intersection of public
law and intellectual property for the past fifteen years. His
Symposium article, The Inequities of Inequitable Conduct: A
Case Study of Judicial Control of Administrative Process,
examines patent law’s inequitable conduct doctrine, and he
maintains that the most serious theoretical problem for the
doctrine lies in the institutional relationship between the
Federal Circuit and the PTO.11 Professor Duffy then examines
how the doctrine can be reconciled with modern administrative
law.12
Professor Adam Candeub is an expert in telecommunications
and information law. In Transparency in the Administrative
State, he proposes taking a broad view of what constitutes
13
transparency. Professor Candeub flips the idea of widespread
government surveillance on its head, arguing for widespread
surveillance of the government to allow for greater public
14
accountability.
Professor Christopher Yoo has examined the regulation of
information law for the past decade. His contribution to the
Symposium, Is There a Role for Common Carriage in an
Internet-Based World?, discusses the ongoing debate on whether
9. John M. Golden, Proliferating Patents and Patent Law’s “Cost Disease”, 51
HOUS. L. REV. 455, 476–83 (2013).
10. Id. at 460.
11. John F. Duffy, The Inequities of Inequitable Conduct: A Case Study of Judicial
Control of Administrative Process, 51 HOUS. L. REV. 417, 420 (2013).
12. Id. at 450–54.
13. Adam Candeub, Transparency in the Administrative State, 51 HOUS. L. REV.
385, 386–90 (2013).
14. Id. at 411–16.
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common carriage is appropriate for the Internet.15 Professor Yoo
synthesizes existing scholarship on the weaknesses of this type of
regulation, and he further discusses its historical shortcomings.
He concludes by advising caution in utilizing a common carrier
approach to Internet regulation.16
Junior researchers like myself now stand upon the shoulders
of these giants. It is therefore with great respect that I introduce
the 2013 Symposium Issue of the Houston Law Review.
15. Christopher S. Yoo, Is There a Role for Common Carriage in an Internet-Based
World?, 51 HOUS. L. REV. 545 (2013).
16. Id. at 608.