This Article analyzes some of the recent rules, guidance documents, policy-based administrative decisions, and rulemaking procedures used by the United States Patent and Trademark Office (USPTO), and concludes that the USPTO is improperly promulgating substantive rules sub rosa via, inter alia, updates to the Trial Practice Guide (TPG), an ostensibly nonbinding document that controls many broad substantive and procedural aspects of the Patent Trial and Appeal Board (PTAB), and in doing so, avoids appellate, Congressional, and stakeholder review of such decisions.
Part I will review the established law of administrative agencies’ rulemaking authority and procedures, specifically reviewing formal rulemaking, “informal” notice and comment rulemaking, guidance documents, and policy statements.8 Part II will talk about the three recent Supreme Court challenges to the AIA. It will introduce the TPG and how it has been and continues to be updated by the USPTO piecemeal and through the Federal Register without any public notice or comment, or much stakeholder input in general.9 Part III will analyze whether there is a requirement for various updates to the TPG to be held out to the public for notice and comment and other input, and whether any of it has (or should have) the force and effect of law. This Article will also analyze USPTO compliance with Congressional safeguards and Executive Orders.10 Part III will also demonstrate that the rules presented in these guidance documents are given precedential treatment––by both the USPTO and the courts––and are thus noncompliant with the relevant APA requirements. In Part IV, this Article will explain possible consequences of that unlawful promulgation and offer recommendations for how to appropriately comply and not run afoul of due process notice and comment concerns. Part V will briefly conclude.
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Andrew Dietrick & Jonathan Stroud,
Rules to Bind You: Problems with the USPTO’S PTAB Rulemaking Procedures,
N.M. L. Rev.
Available at: https://digitalrepository.unm.edu/nmlr/vol51/iss2/6