by Dennis Crouch
The Federal Circuit’s recent decision in Chestek v. Vidal opened the door to extensive USPTO rulemaking that entirely avoids the notice and comment process required by the Administrative Procedure Act (APA). In re Chestek PLLC, 92 F.4th 1105 (Fed. Cir. 2024). Chestek has now filed her petition for writ of certiorari to the U.S. Supreme Court asking: Whether the PTO is exempt from notice-and-comment requirements when exercising its rulemaking power under 35 U.S.C. § 2(b)(2).
The case stems from a new USPTO requirement that trademark applicants provide their domicile address with all applications. Citing privacy concerns as well as seeking a test-case on behalf of clients, Pamela Chestek provided only her law firm mailing address when registering her mark CHESTEK LEGAL. The USPTO refused to register the trademark because her lack of a domicile address. At that point Chestek sued — arguing that the USPTO’s domicile address requirement is invalid because it was promulgated without the notice-and-comment procedures required by the APA. The Federal Circuit affirmed, holding that the USPTO’s rulemaking authority is exempt from the APA’s notice-and-comment requirements.
The reasoning here is fairly simple:
- In most regards, the USPTO’s rulemaking authority is procedural not substantive. This authority stems from 35 U.S.C. § 2(b)(2), which permits the office to “establish regulations, not inconsistent with the law, which — (A) shall govern the conduct of proceedings in the Office.”
- Section 2(b)(2) requires that any regulations “be made in accordance with section 553 of title 5.” This is the APA requirement for notice and comment.
- However, the APA’s Section 553 includes a key caveat: the notice requirement “does not apply— to interpretative rules, general statements of policy, or rules of agency organization, procedure, or practice.” Section 553(b)(A). Thus, following the rules of 553 does not always require notice and comment.
- Taking these three as premises, the result is that there is almost no USPTO rulemaking that requires the agency to follow the notice and comment requirements. QED.
In its decision, Federal Circuit found that the domicile address requirement is a procedural rule that does not alter the substantive rights of trademark applicants. The court emphasized that the requirement does not change the standards for trademark registration but merely specifies the information that must be provided in an application. As a result, the court concluded that the USPTO acted within its statutory authority and was not required to follow the APA’s notice-and-comment procedures when implementing the domicile address rule. The logic of Chestek could allow the USPTO to impose all sorts of burdensome “procedural” requirements without any public input or deliberation. See Dennis Crouch, The Sky’s the Limit: How Chestek Frees the USPTO, Patently-O (Feb. 21, 2024).
The petition makes a key argument against my simple logical conclusion: The Patent Act expressly requires the Agency to follow the notice-and-comment provision, but the Federal Circuit entirely undermined that provision rendering it entirely meaningless. This interpretation violates the cardinal rule against treating statutory language as meaningless. The petition also highlights the policy benefits of notice-and-comment procedures that serve as a check on agency power. The benefits of public participation and reasoned deliberation that the APA is meant to ensure are “especially valuable” for the patent and trademark systems, “where even minor changes to the agency’s approach can impact millions of people and billions of dollars in ways that are not always easy for regulators to anticipate.” quoting Azar v. Allina Health Servs., 587 U.S. 566 (2019) (requiring HHS to undertake notice-and-comment rulemaking under Medicare Act before it changed formula for calculating hospital payments).
An interesting twist in the debate is the Supreme Court’s decision in Cuozzo Speed Technologies, LLC v. Lee, 579 U.S. 261 (2016). Cuozzo held that the AIA grants the USPTO authority to issue regulations governing inter partes review (IPR) proceedings, including the authority to require the Patent Trial and Appeal Board (PTAB) to apply the broadest reasonable interpretation (BRI) standard when construing patent claims in IPRs. In its decision, the Supreme Court applied the Chevron framework, concluding that the statute grants the USPTO leeway to enact rules that are reasonable in light of the text, nature, and purpose of the statute. The Court particularly rejected the argument that the USPTO’s rulemaking authority in this situation is limited to procedural rules. The USPTO’s authority in Cuozzo was derived from 35 U.S.C. § 316(a)(4) – a separate rulemaking authority from Section 2(b) discussed above. The Supreme Court particularly distinguished the two – noting that 2(b) is expressly “limited to procedural rules” while Section 316(a) is not so limited. (emphasis in Cuozzo).
Some background on how the language (“shall be made in accordance with section 553 of title 5”) got into 35 USC 2(b)(2)(B).
In HR 1907 as passed by the House on August 3, 1999:
(1) 35 USC 2(b)(2)(B) stated: “shall be made after notice and opportunity for full participation by interested public and private parties”; and
(2) 35 USC 3(a)(2)(B) stated that the Director: “shall consult with the respective Public Advisory Committee before . . . changing or proposing to change . . . patent or trademark regulations, as the case may be”.
These provisions were both changed in HR 1907 as reported with an amendment in the Senate such that:
(1) 35 USC 2(b)(2)(B) stated: “shall be made in accordance with section 553 of title 5”; and
(2) 35 USC 3(a)(2)(B) stated that the Director: “shall consult with the respective Public Advisory Committee before . . . changing or proposing to change . . . patent or trademark regulations which are subject to the requirement to provide notice and opportunity for public comment under section 553 of title 5, as the case may be”.
Ultimately, the provisions of HR 1907 as reported in the Senate (at least these provisions) were included in S. 1948, which was one of a number of bills enacted into law (by incorporated) in Division B of Public Law 106-113.
One may ask why 35 USC 2(b)(2) needs a reference to 5 USC 553, as USPTO rulemakings would need to “be made in accordance with” 5 USC 553 regardless of whether this is stated in 35 USC 2(b)(2). The likely “real” answer is that nature abhors a vacuum: the “shall be made after notice and opportunity for full participation by interested public and private parties” in the House version of 35 USC 2(b)(2)(B) that was removed by the Senate needed a replacement and the best replacement was simply a cross-reference to 5 USC 553. An alternative explanation is that it indicates that the USPTO is to use the “informal” rulemaking procedures of 5 USC 553 (including its exceptions to notice-and-comment), rather than the formal rulemaking procedures of 5 USC 556 or the negotiated rulemaking procedures of 5 USC 561 et seq.
I do not think the “QED” is that simple. The PTO has sources of rulemaking authority other than 35 USC 2(b)(2), and 5 USC 553 has more requirements than just notice and comment (notice and comment is 5 USC 553(b)). Thus, the reference to 5 USC 553 in 35 USC 2(b)(2) is not meaningless. Conversely, 35 USC 3(a)(2) states that the USPTO (Director) “shall consult with the respective Public Advisory Committee before . . . changing or proposing to change . . . patent or trademark regulations which are subject to the requirement to provide notice and opportunity for public comment under section 553 of title 5.” If all USPTO regulations are subject to notice and comment, then the “which are subject to the requirement to provide notice and opportunity for public comment under section 553 of title 5” phrase violates the “no meaningless language” rule.
Thanks Bob!
Nice add!
He might value your opinion, Snowflake, if you tell him Boundy concluded you are an incredibly sloppy reader, writer, and thinker.
Thank$ for your choice.
Yes i chose to remind you of your Boundy debacle you are welcome.
We’ve covered this, so your €hoice provides me €oin.
Snowflake has no idea that Bob knows Dave. Leave the snowflake alone, lest he questions why after all this time he’s still posting Internet tough guy stuff from his mom’s basement and still not well paid at all.
Looks like you need another reminder about cyber-stalking, as the only reasonable take of your posts here are pure harassment.
(you are still running at a +98% of your posts to or about me)
We’ve kept the statistics as to when you think people are talking about you but the conversation has nothing to do with you, Snowflake.
We’ll add your “sci fi” debacle to your “cyberstalking” debacle. Are you done with your “sci fi” debacle or do you have more?
Snowflake still hasn’t given us that killer cite that shut the imaginary examiner down who made that rejection in that imaginary prosecution so we don’t think he’s done yet with this his latest (aka sci fi) debacle.
Direct falsification now…
You’ve tried this before in attempts to copy my creations and that has never worked for you.
(and again, you are using the word “debacle,” but it is apparent that you do not know what that word means)
falsification you live in your mother’s attic over the garage not in the basement? Use your words.
And you are doubling down with a false choice fallacy.
Isn’t this thread a little early for your games?
Sure. Now provide us that killer cite that shut the imaginary examiner down who made that rejection in that imaginary prosecution in what has come to be known as your “sci fi” debacle.
Snowflake, in the US all patent attorneys know about the Blue Book. That would be a good place to start.
None of that addresses your 0bsess10n with me.
Sorry, but there be no “gotchas” for you (again).
Not a cite, Snowflake. Study the Blue Book and apply to a US law school.
Your games are getting stale.
Cite us your killer authority that establishes science fiction literature cannot be cited as a reference in US patent prosecution then we will stop pointing out all of your past and present debacles.
You lean too heavily on your desire for a citation.
“You lean too heavily on your desire for a citation.”
Always a winning argument on appeal, Snowflake.
[what a maroon]
You are in the wrong forum.
(do you really need a court case dealing with common sense?)
Sorry, Snowflake. I apologize about a patent law query. I thought this was a forum relating to patent law.
Carry on with whatever it is you do.
You missed again – this is a blog, not a court.
Unsubscribe.
But how would Snowflake make a living?
If he moved to the US he could learn to ask would you like fries with that.
Are you even trying?
You seem to be just mailing it in.
we understand your frustration, Snowflake. Not everybody is cut out for patent law. But pretend away.
No frustration on my part – it makes no difference to me that you are barely trying anymore.
Nobody is fooled, Snowflake.
Now show us the pouty face.
Thank$$ for your €hoi€es.
Another admission?
You cannot make this stuff up.
It’s up to you, Snowflake. Whether we have to close comments on you yet again.
Just an FYI, openAI’s youtube channel is dropping insane new AI stuff. INSANITY LEVEL. Unless it’s all just demos that are “faked” this is crazy tier. Though not unpredictable considering what we had a minute ago. Not to mention their AI is now predictably the hottest sounding woman alive.
link to youtube.com
“ their AI is now predictably the hottest sounding woman alive”
Sounds like it’s time to update the software on your blow up doll, 6! Congrats.
I wish, my only blow up dolls are for my pet. They don’t have any sound system with software. But I am thinking about making some AI gf sounding software to either sell directly, or else let streamers sell themselves (similar to Amouranth’s current thing she has already, but why not kick it up a notch and make it available to more streamers?). It’ll obv be better than most bio gfs in the world as we’ll put the secret sauce in: “She’ll always be on your side!”. I don’t know why it doesn’t exist already. Probably just around the corner. I’m sure people are filing patents on that “tech” right now.
A method comprising:
Recording a streamed audio/visual recording,
Sampling first voice samples from the streamed audio/visual recording,
Creating a collection of the first voice samples,
Generating a synthetic voice sample from the collection of the first voice samples,
Emitting the synthetic voice sample,
wherein the synthetic voice sample emitted is on an epistomological side of a user.
NOVEL AND NONOBVIOUS!
Also mm bro, how you feelin bout big joe bro?
link to youtube.com
The Sprint Left folk here refuse to tell anyone what their positions are on the Israel/Hamas fiasco.
Maybe the script was lost in the mail? Eaten by the dog?
so now you are pretending your latest debacle just did not happen?
Thank$$ for your €hoi€es.
6’s blow up doll is from Canada. You wouldn’t know her.
Somewhat funny as I almost did get with an old college friend who was from Canada and wanted to marry me up. Fun story time. She flunked out of signals and systems class or she’d be an EE w me and the gang. We literally studied together before the test that tanked her EE path. Still feel bad about letting her fail that test. Originally her fam is from Afghanistan, fled there back in the 80’s during the commie kerfuffle, she calls herself “Persian” lolol, I still think that’s to avoid just saying she’s Afghan. Anywho, she finally married up Bob the white dude that works at home depot (lelz, she was pissed and remains so) and finally had a daughter. N changed her ethnic name to “Sarah”. lol. Also funny, we did a fake wedding ceremony w me and her for some reason or other on the 4th floor of the girl’s dorms. Still can’t remember why tho.
6 wins.
Meh, you – on the other hand – do not.
Again.
So an admission that 6 wins.
Snowflake is evolving!!
6 has been trained (it has taken years, but he has changed).
You on the other hand appear unable to learn, and your 0bsess10n with wanting so desperately to have a ‘gotcha’ moment that is just not there really must be maddening for you.
A double admission!!
Are you transitioning to a new word?
I remember when domain names were first being registered and you had to provide your actual name and mailing address if you wanted a domain name.
True. Today; while you can “get away with” not using your real name for domain registrations (though you’re not supposed to); at least for the TLDs you’d better include both a valid physical (mailing) address + accurate e-mail address or you risk your registrar cancelling your registration.
Under ICANN rules, they’re required to send out yearly notices for each domain saying as much.
Thankfully under the EU’s GDPR, the majority of U.S. registrars (who have elected to follow the EU (to cover themselves for registrants from the EU)) do not make such data public.
Which the spamsters and other ne’re do wells of course hate.
It should be clear that the new authority for the explicit AIA item is tightly constrained (the Office remains bound by the Tafas decision).
sure ok. but what of your latest debacle as if it didn’t really happen?
Again, you use the word “debacle,” but it is clear that you do not know what that word means (even if you can find it in a dictionary, you cannot apply it correctly).
You just cannot win.