Rule 36 Decisions at the Federal Circuit: Statutory Authority

Matthew J. Dowd · 21 Vand. J. Ent. & Tech. 857

Abstract

Recent commentary has questioned the validity of the US Court of Appeals for the Federal Circuit’s use of Rule 36 affirmances in deciding appeals from the US Patent and Trademark Office (USPTO). One article in particular posits that 35 U.S.C. § 144 and 15 U.S.C. § 1071(a)(4) require the Federal Circuit to write an opinion in every appeal from the USPTO and therefore the court’s use of Rule 36 affirmances, particularly with appeals of cases from the America Invents Act, is improper. This Article presents a reasoned counterpoint to that argument. A complete analysis of the statutory text, the legislative history, the historical context of the statutes, and other considerations, including other applicable Federal Rules of Appellate Procedure, the delegation of authority under the Rules Enabling Act, and traditional deference afforded the judiciary in how it applies procedural rules, support the conclusion that Rule 36 affirmances are entirely within the authority and discretion of the court. A contrary conclusion would rest on a slender reed of statutory text and would create a rare situation—perhaps the only instance—in which Congress has directly dictated procedure for the federal courts of appeal since the enactment of the Rules Enabling Act.