USPTO and ITC Rulemaking and Adjudicatory Decisions After the Demise of Chevron Deference
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE webinar will analyze likely effects of Loper Bright Enterprises v. Raimondo on the USPTO's unusual rulemaking practices, including PTAB and TTAB precedential decisions and binding provisions in the MPEP and TMEP. What rules are no longer enforceable, and how others are likely to change? For both the USPTO and ITC, what new opportunities permit challenges to agency rules and decisions, both during intra-agency proceedings and in court?
Outline
- Brief history of court review of agency interpretations of statute under Chevron and Skidmore v. Swift & Co.
- Loper Bright Enterprises v. Raimondo (U.S. 2024): what changes, what stays the same?
- Impact on USPTO rulemaking and adjudication
- Impact on ITC rulemaking and adjudication
- Effect on future legislation and agency rulemaking
- Practitioner takeaways
Benefits
The panel will review these and other important considerations:
- After Loper Bright, what agency rules are dead letters? When are intra-agency and judicial challenge of regulations or sub-regulatory guidance more viable or attractive? When not? Why?
- How does Loper Bright affect best practices for patent and trademark prosecution, post-grant practice, and ITC trials?
- What should we watch for in notices of proposed rulemaking?
- What rules are especially vulnerable to challenge? Under what circumstances can the PTAB continue to treat its precedential decisions as binding? When can the USPTO treat the MPEP and similar sub-regulatory guidance as binding? What are the interactions between Loper Bright and other recent Supreme Court decisions that open avenues of relief otherwise barred? Who benefits? Who loses?
- Is it time for a portfolio review, and what should you tell your clients?
- Congress will be busy re-legislating statutes for high-visibility and high-impact agencies and areas of law such as EPA, OSHA, and the antitrust agencies. What about agencies that won't get onto the legislative calendar for a decade? How will non-specialist courts interpret statutes that govern highly technical issues?
Faculty
David Boundy
Partner
Potomac Law Group
Mr. Boundy is recognized as an authority in administrative law as it applies to the U.S. Patent and Trademark Office,... | Read More
Mr. Boundy is recognized as an authority in administrative law as it applies to the U.S. Patent and Trademark Office, and using administrative law as an alternative approach to obtain beneficial results from the PTO, particularly in Federal Circuit appeals from IPRs and PGRs. His expertise was recognized by the U.S. Court of Appeals for the Federal Circuit when the court invited Mr. Boundy to chair a panel on Chevron and Auer deference at the 2018 Federal Circuit Judicial Conference. Mr. Boundy also advises clients in strategic development of IP as an integrated asset of the business, and synergizing IP with legal, R&D, finance, and marketing. He has represented and counseled inventors, investors, startups, and established companies in IP matters. The scope of representation includes patent prosecution, licensing, counseling to avoid litigation, opinions, financing and public offering transactions, due diligence, acquisitions, and spinoffs.
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Ethan Plail
Attorney
White & Case
Mr. Plail has represented many of the country's leading life sciences and high technology companies in their most... | Read More
Mr. Plail has represented many of the country's leading life sciences and high technology companies in their most important IP and commercial disputes. He has extensive experience with Section 337 investigations before the ITC, post-grant and inter partes review proceedings before the USPTO, and patent litigation before Federal District Courts. With a background in chemical engineering, Mr. Plail has represented clients in industries ranging from oil refining, biotech, and medical devices to artificial intelligence, computer software and hardware, cellular and wireless devices and networks, semiconductors, and consumer products. Mr. Plail has experience with all stages of litigation, including pre-suit investigations, fact and expert discovery, pre-trial submissions, trials, post-trial briefings, and appeals.
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Christopher Suarez
Partner
Steptoe
As an intellectual property litigator, Mr. Suarez focuses his practice on patent, copyright, and trade secret trials... | Read More
As an intellectual property litigator, Mr. Suarez focuses his practice on patent, copyright, and trade secret trials and appeals before every level of the U.S. court system, including federal district courts, U.S. courts of appeals, the U.S. Supreme Court, the U.S. Patent Trial and Appeal Board, and other administrative tribunals. Aside from litigation, Mr. Suarez provides counseling at the intersection of IP and emerging technology. He has written and spoken extensively on topics at the intersection of the Internet of Things and AI, and helps his clients navigate the challenges and opportunities with those technologies. To that end, Mr. Suarez assists clients with developing their IP policies and procedures—including their efforts to balance patent, trade secret, and copyright protections in the context of AI and IoT technology.
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