Guest Post by Emil J. Ali and David E. Boundy: Executive Orders 13891 and 13892: changes we can expect at the USPTO

Guest Post by Emil J. Ali and David E. Boundy.  Emil J. Ali is a partner at Carr Butterfield, LLC, and David Boundy is a partner at Cambridge Technology Law.  More detail about the authors is provided at the end of the post.

On October 9, 2019, the White House issued two executive orders, Promoting the Rule of Law Through Improved Agency Guidance Documents, (E.O. 13891), reprinted at 84 Fed. Reg. 55235 (Oct. 15, 2019), and Promoting the Rule of Law Through Transparency and Fairness in Civil Administrative Enforcement and Adjudication (E.O. 13892), reprinted at 84 Fed. Reg. 55239 (Oct. 15, 2019). Both Executive Orders are generally directed to requiring federal agencies to “act transparently and fairly with respect to all affected parties … when engaged in civil administrative enforcement or adjudication.” E.O. 13892 goes on to explain that individuals should not be subject to enforcement actions without “prior public notice of both the enforcing agency’s jurisdiction over particular conduct and the legal standards applicable to that conduct.”

Executive Orders 13891 and 13892—in General

For the most part, Executive Orders 13891 and 13892 are simple reminders and restatements of long-standing requirements of the Administrative Procedure Act (APA). For example, E.O. 13891 § 1 and E.O. 13892 § 3 remind agencies that they may not enforce “rules” against the public unless those rules are promulgated as “regulations,” in full compliance with the APA and similar laws. E.O. 13892 § 3 and § 4 remind agencies that the APA allows agencies to use sub-regulatory guidance documents to “articulate the agency’s understanding” of other law, or announce tentative positions, but may not apply those soft-edged understandings as if they were hard-edged enforcement standards, unless the agency has followed certain procedures required by the APA. E.O. 13891 and 13892 each state that agencies have sometimes inappropriately exerted authority, without following statutorily-required procedures.

In addition, Executive Orders 13891 and 13892 go above statute to add a few additional requirements for fairness and transparency.  These above-statutory requirements ask agencies to give notice of all their sub-regulatory guidance documents. Covered guidance documents are defined to include anything to which the agency intends to give prospective effect, that is promulgated without the formality of “regulation” (E.O. 13291 § 2(b)). That class includes the Manual of Patent Examining Procedure, the Patent Trial and Appeal Board’s Trial Practice Guide, and the Manual of Trademark Examining Procedure, and likely includes decisions of the Patent Trial and Appeal Board, Trademark Trial and Appeal Board, and OED on which the agency intends to rely for future effect, including ones the USPTO considers “precedential.” (These decisions are excluded from coverage to the extent they decide past issues in specific cases, E.O. 13892 § 2(c)(iv); they’re covered only to the extent an agency relies on them for future effect.) For example, E.O. 13892 requires agencies to “afford regulated parties the safeguards described in this order, above and beyond those that the courts have interpreted the Due Process Clause of the Fifth Amendment to the Constitution to impose” (emphasis added). E.O. 13892 explains that agencies, like the USPTO, must work to “foster greater private-sector cooperation in enforcement, promote information sharing with the private sector, and establish predictable outcomes for private conduct.”

Among the new requirements added by Executive Orders 13891 and 13892 to promote transparency and predictability are the following:

  • Each agency must list all its sub-regulatory guidance documents in one consolidated database of its web site, which must be indexed and searchable. The public should be able to rely on two sources, the Federal Register and one web page, rather than being in a sports bar confronted with twenty screens following twelve simultaneous games. Agencies should avoid relying on guidance documents that pop up without prior notice, or confound the public with fragmented guidance flowing through dozens of web pages, the Official Gazette, the Federal Register, several manuals and guides that are updated without statutorily-required notice, several email lists, web widgets, and the like.
  • After the Office of Management and Budget issues further implementing guidance, agencies will have a year to purge guidance documents of invalidly-promulgated requirements. We expect that, by the end of 2020, MPEP §§ 714.14, 802.01, 819, 1207.04, the 2015 rewrite of MPEP § 601.05(a), and Ex parte Quayle, among others, will be reviewed. They must either be repromulgated as regulation with full cost-benefit analysis, or else dropped.
  • The orders set additional procedures to promulgate, and provide ongoing periodic review, of various sub-regulatory guidance documents.

The Orders then return to statutory underpinnings, and require agencies to apply them in a consistent and predictable fashion.

“Unfair surprise”

“When an agency takes an administrative enforcement action, engages in adjudication, or otherwise makes a determination that has legal consequence for a person, it may apply only standards of conduct that have been publicly stated in a manner that would not cause unfair surprise.” E.O. 13892 § 4. Anyone that has ever phoned the USPTO and been told that words on a page don’t mean what the words look like they mean will be reassured that that is never supposed to happen again after October 9, 2019.

Moreover, the definitions section of E.O. 12892 highlights the breadth of what it means for an Agency’s position to be an “unfair surprise,” as discussed in Christopher v. SmithKline Beecham Corp., 567 U.S. 142 (2012). In Christopher, the Supreme Court noted that agencies are required to provide fair warning regarding the conduct that a regulation requires or prohibits and can’t rely on principles of judicial interpretation to save an unfairly-vague rule or give it enforceable “teeth” ex post. See 567 U.S. at 156. E.O. 13892 explains that agencies “must avoid unfair surprise not only when it imposes penalties but also whenever it adjudges past conduct to have violated the law.” E.O. 13892 appears to be a step in the right direction to help inform practitioners (and others) about the practical implications of otherwise innocuous conduct.

When an agency states a position in sub-regulatory guidance, the law has long recognized that the agency may not stand on that guidance as the last word; rather, the agency must entertain alternative positions. “Interpretive rules do not have the force and effect of law and are not accorded that weight in the adjudicatory process.” Perez v. Mortgage Bankers Ass’n., 135 S.Ct. 1199, 1204 (2015). E.O. 13892 § 6 requires the agency to give an aggrieved person an opportunity to be heard to contest an agency guidance position, and give a written decision that articulates a basis for its action.

Example: the Office of Enrollment and Discipline

The Office of Enrollment and Discipline (OED) may be considered as one example office within the USPTO, which may have to retool to comport its conduct to the new Executive Orders. Simply reading 37 C.F.R. Part 11 and the Final Orders issued by  OED does little to instruct practitioners of the practical standards applied by OED, or implications of practitioners’ conduct. While OED appears to attempt to provide helpful guidance to practitioners into Final Orders, much of this guidance is after the USPTO has already disciplined others, who themselves likely were not aware of the ramifications of their own acts, omissions, or mistakes. While OED may inform individual practitioners that their response to a Request for Information is an opportunity under 5 U.S.C. § 558(c) to demonstrate compliance with the USPTO Rules of Professional Conduct, OED often finds that compliance to be “too little too late,” leaving practitioners subject to discipline.

Of course, many practitioners claim they either never heard of OED because they practice only in trademark law, or they were not properly informed that their conduct, including outside of patent and trademark law, implicated OED’s interpretation of the USPTO Rules of Professional Conduct. Many practitioners, on first hearing of an OED position asserted against them in a Request for Information and Evidence (the typical “first knock at the door” from OED), complain of unfair surprise, because the USPTO does not give practitioners fair advance notice of its standards. That is truly a fair criticism, often not understood by OED.

Case in point—OED’s “publication” of decisions does not comport with legal requirements set by the APA, at least if the agency intends to rely on these past decisions as precedent for future decisions. 5 U.S.C. § 552(a)(1) and (2) (and now E.O.s 13891 and 13892) require agencies to publish their adjudicatory decisions in the Federal Register, and/or provide useful indexing on their websites (depending on the level of future reliance the agency intends to apply to its own past decisions). Admittedly, OED does publish its decisions on its website and in the Official Gazette, but only those who know where to look can find them, and they aren’t “indexed” as required by law. Truly, it is troubling to see the “enforcement arm” of the USPTO, which has the power to end careers, exercise discretion without careful observance of statutory due process. Furthermore, many such practitioners are caught in the reciprocal discipline web, as we described in an earlier post on Mr. Ali’s blog, which could result in double disbarment by the USPTO.

Implementation for the USPTO

The USPTO faces a scramble to clean up decades of noncompliance with law. With very few exceptions, Executive Orders 13891 and 13892 are simply restatements of principles that have been in effect for decades, under the Administrative Procedure Act (in effect since 1948), Regulatory Flexibility Act (since a large statutory amendment in 1996), Paperwork Reduction Act (1995), Executive Order 12866 (1992), prior Executive Orders 13258 and 13422 (which were in effect until 2009, and significantly overlap with E.O. 13891), and the Bulletin on Agency Good Guidance Practices, 72 Fed. Reg. 3432 (2007). The USPTO has on occasion expressed overt hostility to Presidential authority. For example, in 2011, one of the USPTO’s senior-most officials plainly refused to implement one of these predecessor orders of the President of the United States.[i] Because of these decades of what appears to be noncompliance, what should be a straightforward addition to various pages of the USPTO’s website may require a ground-up rebuild of the USPTO’s compliance/regulatory function, and review of the entirety of the USPTO’s regulatory corpus.

Long-standing statutory requirements that might now be implemented because of the two Orders, and corrective action we may expect from the USPTO, include:

  • Agencies must observe requirements of the Paperwork Reduction Act (E.O. 13892 § 8(b)) and Regulatory Flexibility Act (E.O. 13892 § 10), two statutes of which the USPTO has been particularly dismissive. For example, the Regulatory Flexibility Act requires agencies to avoid imposing costs on small entities. The USPTO’s analyses have historically only considered the effect on small entity applicants, and ignored to effects on small entity law firms. The USPTO’s Paperwork Reduction Act filings fail to reflect the regulations that define scope of coverage, e.g., 5 C.F.R. § 1320.3(b)(1) and (c)(4)(i). The USPTO should, by new regulation that restates existing law for guidance of USPTO staff, require staff to perform required cost-benefit analyses.
  • PTAB decisions, to be “precedential” or otherwise relied on, must be published in the Federal Register. 5 U.S.C. § 552(a)(1); E.O. 13892 § 3. In winter 2018-19, when one of the Vice Chief APJ’s was answering Q&A questions at a conference, one of the authors, Mr. Boundy asked why the PTAB did not publish its precedential decisions as required by statute. The answer was “Mr. Boundy, aren’t you elevating form over substance?” Mr. Boundy pointed out that the requirement was statutory. Mr. Boundy indicated several similar anecdotes in his brief to the Federal Circuit in Facebook v. Windy City. We have now had nearly a year to see how much weight statutes carry with the PTAB, if a reminder comes from a member of the public. Perhaps a reminder coming from the President will be more effective.
  • O. 13891 § 4 requires all agencies to promulgate regulations governing promulgation and amendment of guidance documents. One of the key requirements required by E.O. 13891 is that the agency must inform all its employees that guidance documents do not bind the public. See also E.O. 13892 § 3. That’s always been the law; now the USPTO will be obligated to inform and train its examiners and petitions decision-makers that they are not to cite the MPEP in any manner adverse to applicants. (The USPTO may use guidance to give tentative resolutions of ambiguity, but not to create new obligations or attenuate rights.) One of our recent articles, Agency Bad Guidance Practices at the Patent and Trademark Office: a Billion Dollar Problem, laid out the magnitude of the problem.  Another recent article, The PTAB is Not an Article III Court, Part 3, spelled out a good first draft of the necessary regulations.

Practical implementation for the public

Some practical implications for practitioners are immediately clear, as the White House reminds parties of rights they’ve had under statute and regulation for decades. Others will become clearer over time, as the Office of Management and Budget issues implementing guidance, as the USPTO implements the Orders and guidance, and as OED and the rest of the USPTO issue decisions. Practitioners should review forthcoming regulations and notices published in the Federal Register. For example, going back to our case study with OED, the office may propose procedures under this Executive Order, which discusses self-reporting, voluntary information setting, and other actions related to practitioners. Of course, those practitioners currently facing OED proceedings may benefit from this Executive Order by offering an explanation that the public was not properly put on notice of OED’s newfound interpretations of its rules.

We hope to see the USPTO create a dialogue with stakeholders of all shapes and sizes, and institute a new commitment to the rule of law, with predictable compliance with statutes, regulations, and Executive Orders. We’re available to help in any way we can. Director Iancu, you know where to find us.

 

[i] Then-Acting Associate Commissioner for Patent Examination Policy Robert Bahr, Decision on Petition, 10/113,841 (Jul. 14, 2011) at pages 19-20, refusing to implement the Bulletin for Agency Good Guidance Practices, OMB Bulletin 07-02 (Jan. 18, 2007), reprinted in 72 Fed. Reg. 3432-40 (Jan. 25, 2007). The Bulletin carries the same binding effect against agencies as an executive order.

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Emil J. Ali is a partner at Carr Butterfield, LLC where his practice includes advising and representing intellectual property attorneys in ethics investigations and litigation matters before the Office of Enrollment and Discipline (OED), as well as various state bars. Mr. Ali also provides conflicts and compliance advice to various law firms and in-house departments regarding managing effective compliance policies, and transitioning intellectual property professionals.

Mr. Ali is active in several intellectual property and ethics associations, and serves as the Vice-Chair of the ABA-IPL Ethics & Professional Responsibility Committee as well as being part of the Oregon State Bar Unlawful Practice of Law Committee. In addition to being a Registered Patent Attorney, Mr. Ali is admitted to practice in California, the District of Columbia, and Oregon. Emil writes about intellectual property legal ethics and OED procedure at www.oedethicslaw.com/blog.

David Boundy is a partner at Cambridge Technology Law. Mr. Boundy practices at the intersection of patent and administrative law, and consults with other firms on court and administrative agency proceedings, including PTAB trials and appeals. In 2007–09, Mr. Boundy led teams that successfully urged the Office of Management and Budget to withhold approval of the USPTO’s continuations, 5/25 claims, information disclosure statements, and appeal regulations under the Paperwork Reduction Act. In 2018, the Court of Appeals for the Federal Circuit asked Mr. Boundy to lead a panel of eminent administrative law academics and the President’s chief regulatory oversight officer in a program at the court’s Judicial Conference on administrative law issues. Judge Plager recommended Mr. Boundy’s article published in ABA Landslide, The PTAB is Not an Article III Court, Part 1: A Primer on Federal Agency Rulemaking, to the patent bar. Another recent article, The PTAB is Not an Article III Court, Part 3: Precedential and Informative Opinions explains the role of sub-regulatory guidance. He may be reached at DBoundy@CambridgeTechLaw.com.

 

181 thoughts on “Guest Post by Emil J. Ali and David E. Boundy: Executive Orders 13891 and 13892: changes we can expect at the USPTO

  1. 11

    There’s at least two aspects of this post that are going to live on for quite a while. The first is Boundy invoking his beloved Perznit R-@-pey McCreamsicle as a threat to compel someone to (LOL) “obey the law”. That’s both sad … and sadly predictable. Own it, lil Davey!

    The even more hilarious moment is when Davey — a rich white bald swamp denizen — bonds with his fellow rich bald white patent huffer and inventor of nothing, good ol Gil Hyatt. Davey’s tiny barely perceivable conscience is SHOCKED to the core (or so he claims) by the treatment of his fellow rich baldie.

    Well boo hoo flippin hoo, Davey. Look in the mirror, you p-i-g. Ask yourself if your “conscience” needs a little adjusting perhaps.

    1. 11.1

      And yes I will be rubbing your nose in this repeatedly until you demonstrate some evidence of an actual human “conscience”, Davey.

    2. 11.2

      Down below an attorney suggests that there is no “just” solution for the delay in examining Gil Hyatt’s cr-ap patent applications, should anything result in a patent.

      Of course there’s a “just” solution. The solution is to render them unenforceable so the public doesn’t have to pay a dime for them. This is just because Hyatt already profited enormously from previous patents that were granted to him improvidently and which he didn’t deserve.

      Only a rich white bald guy would go to such lengths to defend the flimsy concept that Gil Hyatt has been treated “unjustly” by the US patent system.

      Seriously, dude: check yourself occasionally. Step out of the lily white guilted bubble and mingle with normal people who aren’t invested in your b.s.

      1. 11.2.1

        Dear MM —

        I assume you’re responding to 5.2.1.1.3 et seq.

        Read more carefully. The sentence to which you’re responding has the word “if” in bold italic, and the qualifier “(I can’t evaluate whether there’s any likelihood of that, but history suggests that the probability is very low.)”

        Applicants have laws they’re supposed to follow. Hyatt doesn’t. The penalty for not following those laws is that no patents issue.

        Agencies have laws they’re supposed to follow. The PTO doesn’t. The PTO has sovereign immunity, so the only penalty is an irritating applicant. All that the PTO’s breach of law is accomplishing is giving Hyatt a sense of injustice. So he sues. And from what I can see, he’s right on procedure. But as I wrote, “procedural issues, alone, won’t get you a patent.”

        If there are laws that govern the facts, great, let’s use them. But prosecution laches doesn’t apply when it’s the agency‘s delay. If the PTO had just examined his applications in regular order, the applications would all be finito by now, and we wouldn’t have a problem to solve. But we don’t cure one injustice by making up new laws out of thin air after the fact.

        David

        1. 11.2.1.1

          I’m not making up any facts (though I may be mistaken). The key fact as I understand it is that Hyatt made a ton of money — money that came out of other people’s pockets — by pretending to have invented something that he didn’t actually invent. Outside of the legal universe, Hyatt is a scientific nobody. He’s a historical footnote in the computing world, by virtue of his profitable abuse of the patent system.

          My point is that there is nothing “unjust” about nullifying his existing patent portfolio in view of the history we are presented with, including Hyatt’s behavior.

          There is something very unjust about a patent system which functions basically like a lottery for wealthy charlatans, even when the “correct procedures” are followed (“correct” depending on how close you look, and depending on whether “correct” includes pretending that you were yesterday and pretending that logical algorithms have “structure” as that term was understood for eons). And that’s pretty much what we’ve had for decades in the so-called computing arts, at least.

          Blind devotion to “procedure” is not a guaranteed path to justice. Not even close. That’s especially true when the rules are continually being rewritten by totally self-interested entities whose last concern on earth is justice for all.

          1. 11.2.1.1.1

            “…that you were born yesterday…”

          2. 11.2.1.1.2

            Dear MM —

            I have no opinion on Hyatt’s old patent. I’ve never looked at it. I was an engineer in the 1980s. I remember seeing the news roll by in Electronics News, but didn’t pay attention to it then or now. So I have expressed no opinions on them here (or anywhere else, as far as I know).

            But I did take an interest in his applications currently pending. There I do have opinions. They’re bilateral, as I laid out.

            MM writes “Blind devotion to ‘procedure’ is not a guaranteed path to justice. Not even close.” But in a legal system that lacks an omniscient knower of all fact and justice, procedure is the best we’ve got. In fact, it’s the only thing we’ve got. The only way a legal system can work is with predictable rules, asking the right questions, and thinking about the answers, and giving parties and reviewing tribunals an opportunity to correct errors. That’s what the procedural law accomplishes.

            Justice Jackson described it this way:

            Procedural fairness, if not all that originally was meant by due process of law, is at least what it most uncompromisingly requires. Procedural due process is more elemental and less flexible than substantive due process. It yields less to the times, varies less with conditions, and defers much less to legislative judgment. Insofar as it is technical law, it must be a specialized responsibility within the competence of the judiciary on which they do not bend before political branches of the Government, as they should on matters of policy which compromise substantive law.

            If it be conceded that in some way [that the agency could take the action it did], does it matter what the procedure is? Only the untaught layman or the charlatan lawyer can answer that procedures matter not. Procedural fairness and regularity are of the indispensable essence of liberty. Severe substantive laws can be endured if they are fairly and impartially applied. Indeed, if put to the choice, one might well prefer to live under Soviet substantive law applied in good faith by our common-law procedures than under our substantive law enforced by Soviet procedural practices. Let it not be overlooked that due process of law is not for the sole benefit of an accused. It is the best insurance for the Government itself against those blunders which leave lasting stains on a system of justice but which are bound to occur on ex parte consideration

            Shaughnessy v. United States ex rel Mezei, 345 U.S. 206, 224–25 (1953) (Jackson, J., dissenting)

            And Justice Frankfurter:

            The safeguards of “due process of law” and “the equal protection of the laws” summarize the history of freedom of English-speaking peoples running back to Magna Carta and reflected in the constitutional development of our people. The history of American freedom is, in no small measure, the history of procedure.

            Malinski v. New York, 324 U.S. 401, 414 (1945) (Frankfurter, J., concurring)

            It is procedural due process that is our fundamental guarantee of fairness, our protection against arbitrary, capricious, and unreasonable government action.

            Board of Regents of State Colleges v. Roth, 408 US 564, 589–92 (1972) (Marshall, J. dissenting).

            So yes, I think procedure is very important.

            1. 11.2.1.1.2.2

              Nobody is arguing that procedure isn’t “important”.

              The point is that slavishly following protocols doesn’t guarantee a just result in any given case, nor does it guarantee justice generally. That’s not really debatable. Sometimes the unfairness is baked into the rules, you know. That’s why we rely on human beings to make the final call, and not computers.

              1. 11.2.1.1.2.2.1

                slavishly following protocols doesn’t guarantee a just result in any given case, nor does it guarantee justice generally

                No one is arguing anything about “slavishly” except you Malcolm.

                That’s called a strawman, by the way.

                What Dave is talking about (and the Sir Thomas More makes clear as being NOT a new concept) is called the Rule of Law.

                Certainly different than the “Rule of Malcolm’s Feelings” which is what you operate under.

  2. 10

    So let’s visit a particular point that still seems to be eluding understanding — in a direct context in which the point is presented.

    The point (with the “attempted” word of distinction being emphasized):

    “1.2 Business to be transacted in writing.

    All business with the Patent and Trademark Office should be transacted in writing. [… ] The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. [… ]”

    Somehow, a strawman from my shifty historical pseudonym’d friend has taken root and the emphasis (FROM Shifty, not me) is being made to “All business within the Patent and Trademark Office should be transacted in writing.”

    The REASON why this is a strawman (and I recommend all – including sleeping giants – to refresh your memory of what that term means), is that I have NEVER indicated an emphasis on business that is purely WITHIN the patent office.

    This is where actually paying attention to context matters.

    The context:

    See the indications to SAWS and SAWS-like AND the second half of the PROVIDED provision of 37 CFR 1.2: The action of the Patent and Trademark Office will be based exclusively on the written record in the Office.

    What pray-tell (and this is probably the easiest softball question of all time) is the ACTION that provides the context for my point?

    Here, let me help: the ACTION is the examination of the applicant’s attempt at receiving a patent.

    When the ACTION — in the context of that examination — is NOT based on the written record — AS IS THE CASE with SAWS and SAWS-like mechanisms — you do (and quite in fact MUST) have the Office violating 37 CFR 1.2.

    So my friends (observant, non-observant, and especially those purposefully trying to obfuscate), ANY nit-picking between “with” and “within” is simply OFF-POINT from my comments, as my comments simply are not geared to THOSE items “within” that are not affecting the examination of applications, that by mechanism of 37 CFR 1.2, MUST be based ONLY on the written record.

    The Office is entirely free to organize picnics for its employees or most any other “within” types of things and such simply never had anything to do with my comments.

    1. 10.1

      Context? LOL. Backpedal much? Yet again you show that mental-illness ability to look reality (your comments at 5, 5.1.1.1.1, and 5.1.1.1.1.4.2) straight in the face and deny its existence. No one is fooled.

      1. 10.1.1

        No backpedal whatsoever.

        I know that you do not like to be constrained to context, but that is what it is.

        1. 10.1.1.1

          Nobody knows what that is supposed to mean. Respond to the merits.

          1. 10.1.1.1.1

            Asked and answered – more gamery from you Shifty.

            1. 10.1.1.1.1.1

              You changed the “context” in post 9 and you are also wrong in that “context.” Do you have anything else? Aside from the usual?

              1. 10.1.1.1.1.1.1

                I changed NO context in post 9 and I cannot be “wrong” in explaining the context in which I made my comments.

                YOU may not like the fact that your attempted gamery/obfuscation/goal-post moving does NOT end up with you obtaining a “gotcha” moment, but that (as usual) is a YOU problem.

                1. But your own designated expert also said you are wrong. In both the old and the new “context.” So, do you have anything else? Aside from the usual?

                2. Did I say “easily” mislead?

                  A: no.

                  Maybe you should check out the idiom of “even a giant sleeps.”

              2. 10.1.1.1.1.1.2

                Nobody but you is “misled.” You erred in taking a single sentence in 37 cfr 1.2 out of context. Now respond to the merits or just do the usual.

                1. I did not err – for the very context that I provided.

                  You have provided no merits to which I have not responded. Your attempted putdown of “or just do the usual” presupposes a state that does not exist.

                  Sorry Shifty, but again, there is NO “gotcha” moment for you here.

    2. 10.2

      Looks like Nutty McNutcase is having a slow Sunday.

    3. 10.3

      Dear anon —

      No.

      Think about it. When you’re with your girlfriend/boyfriend/spouse, one set of rules governs what actually comes out of your mouth “with” her/him. An entirely different set of rules governs communications “within” your cranium.

      As an imperfect analogy, to a degree, a similar principle differentiates “agency action” from internal deliberation.

      That’s why § 706(1) provides for “agency action unlawfully withheld or unreasonably delayed” — there is no “action” to be reviewed under § 706(2).

      There are exceptions, but your analysis is not the rule.

      David

    4. 10.4

      Dear anon @ 9 —

      Now i see a little more clearly, and can give a more precise diagnosis of your error.

      Your understanding of the definition of “agency action” is incorrect.

      David

      1. 10.4.1

        Anon says he is formulating a response. Be afraid. It will be devastating.

        1. 10.4.1.1

          Anon says he is formulating a response

          Again, your gamery is evident (much like your post at October 28, 2019 at 8:46 pm in which you attempted the spin of “easily misled” as some type of accusation against Dave’s expertise.

          It will be devastating

          Meh, that you are so easily devastated is rather besides the point.

      2. 10.4.2

        David,

        You are still missing the context of my post.

        Perhaps you are the one misapplying “agency action” to be something that I am not talking about.

        Also – in addition to a more careful reading of the above, see posts 5.1.2.1.1 and 5.1.2.1.1.1.

        I invite you to see through the smoke screen and dust-kicking (quite along the lines of clarity that permeate the efforts of the larger — yet distinct — post).

        1. 10.4.2.1

          Dear anon —

          I was responding to your post @ 10, specifically the “The context” section.

          That’s exactly where your understanding of the word “action” is incorrect.

          David

          1. 10.4.2.1.1

            Sorry David – not seeing it. My understanding of “action” is perfectly fine — and in context, is simply more limited.

            At post 10, my use of “action” is NOT the sum entirety of possible actions of the Office — and such would be an error on the part of the person trying to impart that meaning.

            I clearly delineate the action as being of the subset of actions involved with the examination of an application.

            This does NOT entail Office ACTION — for example — of training its employees on how to examine eligibility and what a practical application means in the general sense. You move from that general sense to an “as applied” case of within the examination of an application, and you better be sure that the second half of 37 CFR 1.2 applies.

            Of course, this too is reflected in my original post at 5, more particularly my follow-up at 5.1.1.1.1, the unnumbered** post at October 25, 2019 at 12:12 pm, 5.1.2.1, as well as the two additional posts I reference immediately above.

            ** I do hope that by now you realize that A. Lincoln, S. Morse, and Thomas Pain are all pseudonyms of the same person, and that this person has been “caught” previously trying to engage in distractions merely to force the other person to hit the (artificial) Count Limit editorial control. This person has NO ‘good faith’ in their gamery.

            1. 10.4.2.1.1.1

              Dear anon —

              You asked your question and directed me to the exact “context” you wanted me to look at, and a few other posts. I did. Pointing me to the same things I’ve already read doesn’t help — I try to extend the courtesy of reading and thinking before I reply. I sometimes misread, but to help me past that you have to point to something.

              You didn’t give me any additional facts or reason to see things differently.

              The answer remains the same. Your understanding of the word “action” is incorrect.

              You’re one dumb message from my “ignore” list. If you want me to respond, then engage brain before hitting “post.”

              David

            2. 10.4.2.1.1.2

              anon —

              I’ve been searching my case library for a good example of a case that considers the definition of “action.” I can’t find one. The best of the bad examples is the Elm 3DS Innovations v Lee “declaration of federal holiday because we can’t keep our computers up” case from 2016. That’s not truly relevant, but it’s the closest analogy I can find without a paying client.

              David

              1. 10.4.2.1.1.2.1

                I appreciate both your searching and your interaction, Dave, but the items I have provided already show that I am not using “Action” to its fullest extent — and this is the context that needs to be appreciated.

                It is NOT that my use is in error. My use — for the context — of a limited extent of what “Action” means — shows neither error nor misunderstanding of the word.

                As I have noted: others are attempting to misconstrue my message out of context and sweep in ALL of the term “Action.”

                You fell for that “trick.”

                To come to this from a different angle, let’s try this:

                Do you remember when the SAWS story first broke? At first, the Office (and examiner pundits on the blogs) attempted denial. Then, they attempted the “there is no difference” even though applicants were clearly being treated differently. The problem of course is that this “reasoning” swallows the reason why one would attempt to have SAWS in the first place.

                Do you “buy” the logic that the Office put forth when SAWS came into the sun light?

                Do you think that an applicant — with the context of prosecution of his application — and THOSE actions thereof really have had their prosecution based on the written record?

                The problem is NOT defining “action” here.

                I fully “get” that the entire reach of what “Action” means includes those things that are beyond the individual prosecution for an applicant. But such does not mean that a subset of the full set of “Action” is excused from the reach of prosecution based on the written record. Where, as with SAWS, prosecution is revealed to be based on ongoings unseen and unknowable to the applicant, you have prosecution based on more than the written record.

                Why do you think that SAWS was such a debacle for the Office? Do you really think that they pulled the plug only because they had performed some self-reflection and decided that that particular program was not efficient and for that reason should have been retired? Do you really think that the program would have been retired had it not been uncovered?

                Come now, your own writings do not support a certain set of answers to these questions.

                1. I just found a case that’s a bit more relevant, Disabled American Veterans v Sec’y of Vet’s Affairs, 859 F3d 1072 (Fed. Cir. 2017).

                  I will not be replying to you again for some time.

                2. anon —

                  Against my better judgement…

                  No. “Agency action” is a defined term. (“Action” alone has no meaning.) If you want to communicate, you have to use the language everyone else speaks. Ask the first Gen 5 cell station how many useful conversations it had that day. The Humpty Dumpty view, “Words mean what I say they mean,” renders communication attempts pointless.

                  The definition of “agency action” is much narrower than you’re trying to attribute. The distinction between “with” and “within” is a good first approximation. Whether something is an “agency action” or not determines lots of things — coverage of laws, remedy, path of review, etc.

                  Start a conversation within the bounds of rational, normal-jargon-in-the-art discourse, and I’ll resume. Continue defining your own little single-speaker language with definitions known only to yourself, it’s pointless to continue.

                  David

                3. You continue to take a single sentence appearing in 37 cfr 1.2 out of context and attribute to it requirements that it simply does not have.

                4. No shifty, I have done no such thing.

                  Your attempted smokescreen of trying to take MY comment out of context just won’t fly.

                  If you want to try to make a point that a subset of Actions of the Office are excluded by 37 CFR 1.2, then YOU need a whole lot more than what you have attempted here.

                5. Dave,

                  The definition of “agency action” is much narrower than you’re trying to attribute

                  That’s pretty funny, given as I am already using a narrow subset — as I have clearly laid out.

                  This is just not a “Humpty Dumpty” situation — leastwise from me.

                6. The only authority you cite for all your nonsense is a single sentence in a Federal regulation that is taken out of context. We can do the math.

              2. 10.4.2.1.1.2.2

                You keep on saying taken out of context with nothing to show that such IS taken out of context.

                Not compelling, Shifty.

                That you think that you can do the math when you cannot even get the context that I have provided to you right simply is not inspiring any confidence in your views.

                Listen, You have purposefully tried to obfuscate a rather simple and direct point, and have done everything EXCEPT actually address the point. Further, I can point to several other lines of conversation on this blog from which any meaningful conversation from you is totally absent.

                Do you REALLY think that SAWS was not a shadow program? Do you REALLY “buy” the feeble excuse given by the Office when that shadow program was finally NOT denied to exist, and stopped (under a severe public backlash)?

                1. “Start a conversation within the bounds of rational, normal-jargon-in-the-art discourse, and I’ll resume. Continue defining your own little single-speaker language with definitions known only to yourself, it’s pointless to continue.”

                  Your designated expert nailed it.

                2. My designated expert remains a giant asleep.

                  He nailed nothing because he thinks that I am using the term “action” more extensively (thanks to your misdirection) when I am actually doing the opposite: limiting the use of the term in the given context.

                  You really should not “jump” to agree with something just because that item is in agreement with your attempted “gotcha.”

                3. anon —

                  This time, Morse/Lincoln/GodAlmightyHimself or whatever name he’s using has the better end of this one. I am not asleep. I read your own framing of the question, and responded to it. It’s dead wrong.

                  SAWS is as illegal as a $19 bill, but not for the reasons you propose. The existence of SAWS is not “agency action.” The remedies available are not those you suggest.

                  You are an incredibly sloppy writer, reader, and thinker (I regret that when you agree with me it’s no better than random chance). Perhaps Morse/Lincoln/et al is even worse. But two wrongs don’t make a right; two idiots don’t make a genius.

                  Either stop or back up, take a deep breath, pull your heels up out of the error you’ve dug them into, and think practically.

                  David

                4. anon —

                  I am reading this again, mouth agape at the absurdity. What’s the matter with the following sentences? If you can redefine the word “action” as you propose, why can’t you just adopt any other word? Why is your sentence any better than any of the following as an alternative?

                  …he thinks that I am using the term “Boeing 747” more extensively (thanks to your misdirection) when I am actually doing the opposite: limiting the use of the term in the given context.

                  …he thinks that I am using the term “ thiopurine S-methyltransferase” more extensively … when I am actually doing the opposite: limiting the use of the term in the given context.

                  …he thinks that I am using the term “quid pro quo” more extensively … when I am actually doing the opposite: limiting the use of the term in the given context.

                  …he thinks that I am using the term “obstruction of justice” more extensively … when I am actually doing the opposite: limiting the use of the term in the given context.

                  In the law, words are the only tools we’ve got, and each has a precise meaning. When you invent a private single-speaker language in which a word means what you decide it means “in your given context” on the spur of your moment, but that conflicts with the definition everyone else understands, you’re just spouting gibberish.

                  “Agency action” has meaning. SAWS ain’t it.

                  Stop.

                  David

                5. David,

                  The fact that you have done so much good for a strong patent system makes it easy to forgive you for your missteps here (and your ego in those missteps).

                  The giant still sleeps.

                  (maybe answer some of the direct questions as to what SAWS is to see what you are not currently seeing)

                6. “I am reading this again, mouth agape at the absurdity.”

                  We do that a lot.

                  And by the way, “You are an incredibly sloppy writer, reader, and thinker.”

                7. The “sloppiness” is not from me.

                  Clearly, this is a jesting rhetorical question.

                  Maybe you should try to do more than parrot what others have said. Maybe find some funny gifs.

                8. Before you wake the “sleeping giant” (who is more awake than you, just mouth agape at the absurdity), you need to know what an agency action is. An agency action includes the whole or a part of an agency rule, order, license, sanction, relief, or the equivalent or denial thereof, or failure to act.

                  BTW, you are an incredibly sloppy writer.

                9. Ah, I was going to let you have the last word (or two). But since you seem lonely, let me respond and point out that you have — yet again — moved the goalposts a bit and attempt to misplay the word “action” outside of the very specific context of my comments.

                  You seem to want a universal use of the word wherein the actual context is merely a subset of that universe.

                10. There are no goalposts, Snowflake. A rational person would not cling, yet again, to your “context” fail. You are an incredibly sloppy thinker.

                11. That you think context is a “fail” says FAR more about you than any post that I could provide.

                  Clean up when you are done self-flagellating.

                12. When you’ve been exposed by your own designated expert your snide little comebacks ring hollow, don’t they?

                  BTW, you are an incredibly sloppy thinker.

                13. not exposed (for reasons already given)
                  no ringing hollow (self-evident)

                  and your self-flagellation continues.

                  As noted, clean up after yourself when you are done.

                14. My, Shifty, are you lonely again?

                  Let me know when you actually want to discuss the merits of something, as I have already laid the beat down on you for a shear number of posts thread (do you need a link or a reminder tally?)

                15. Ah, merits. At long last. An agency action includes the whole or a part of an agency rule, order, license, sanction, relief, or the equivalent or denial thereof, or failure to act.

                16. “laid the beat down on you for a shear number of posts”

                  I did not know that was a contest. You win. But, maybe brush by the merits every now and again, Snowflake?

    5. 10.5

      An agency action includes the whole or a part of an agency rule, order, license, sanction, relief, or the equivalent or denial thereof, or failure to act. But anon knows nothing about administrative law. From what I can parse from his word salad, he believes that deliberations within the Office must form part of the “written record” referenced in 37 cfr 1.2, based solely on the language of 37 cfr 1.2.

      1. 10.5.1

        But of course he will deny that, because, word salad.

        1. 10.5.1.1

          Word salad is hardly understanding the context of my comment.

          Maybe if you grasped that lesson you would not have dropped out of law school.

          1. 10.5.1.1.1

            No defense of your made up stuff about 37 cfr 1.2? What a surprise. Anything else?

            1. 10.5.1.1.1.1

              I don’t NEED a defense — there is nothing there that is made up.

              Perhaps you might think about explaining that second part of 37 CFR 1.2.

              What do you think that that is all about?

              1. 10.5.1.1.1.1.1

                I have no idea. You do not respond to the merits.

                1. More gamery from you Shifty, as it is you that has refused to recognize the merits here in the form of the context of my comments.

  3. 9

    This responds to too many threads below not to start a new one.

    First, Mr. Boundy premises his legal argument on “anecdotes” regarding alleged conversations with “a number of” senior USPTO officials whom (he asserts) “claim to be exempt from the administrative law that provides predictability for the rest of the government.” I have reason to doubt such conversations actually occurred, unless one characterizes Mr. Boundy’s personal views regarding administrative law as superior to the interpretations of that law by the Supreme Court, the D.C. Circuit, and the Department of Justice on behalf of the USPTO and “the rest of the government.”

    Second, before one relies on Mr. Boundy’s “legal” analyses, one should recognize that when “[i]n 2018, the Court of Appeals for the Federal Circuit asked Mr. Boundy to lead a panel of eminent administrative law academics and the President’s chief regulatory oversight officer in a program at the court’s Judicial Conference on administrative law issues,” those academics and officer repeatedly informed Mr. Boundy that his interpretations of administrative law were incorrect.

    Third, many here are blaming the USPTO for alleged delays in examination of Mr. Hyatt’s patent applications. Those applications (and their file histories) are unpublished under 35 USC 122, so the allocation of blame must await such publication. One should not rely solely on Mr. Hyatt’s self-serving public statements while the USPTO remains muzzled by statute.

    Fourth, it is hardly a “GIVEN” that “‘SAWS’ was admitted to by the Patent Office as [a] ‘shadow’ program[],” and, even if there were such an admission, it would not violate 37 CFR 1.2 as A. Lincoln points out.

    Fifth, the Paperwork Reduction Act applies only to citizens, not their lawyers. For example, Mr. Trump cannot claim poverty by hiring a small-entity lawyer to represent him. Nor can a large entity claim small-entity status by hiring a small-entity lawyer.

    There is much more that is wrong here, but I have better things to do.

    1. 9.1

      An interesting post — for a number of reasons including the rather long delay in being published.

      Cur, you are welcome to your opinions, but without (substantially) more, your opinions suffer from the very same thing that you would accuse others of: lack of validating support.

      Your own “say-so” simply is NOT compelling (in pretty much every single one of your points).

    2. 9.2

      Dear Curmudgeon—

      1. One of the conversations are footnoted in the article. Another is an oral Q&A in a public conference. I checked with a federal judge that was present, did he/she hear the same thing I did. He/she confirmed.

      2. academics repeatedly informed Mr. Boundy that his interpretations of administrative law were incorrect.

      The anecdote I recall went like this—

      Q: What are the upcoming future trends in Chevron?

      A DEB: I have two predictions based on emerging trends. First, a “rule” will be held ineligible for Chevron deference if it isn’t first valid as an APA rule, issued with whatever level of procedure is required for the given class of rule. Chevron is a standard of review, not an expanded grant of rulemaking authority. Second, there’s an emerging trend that for Chevron interpretions without a grant of rulemaking authority and rulemaking procedure, Chevron deference only applies if there’s an active ambiguity.

      A [Prof X]: There’s no holding to that effect.

      A DEB: Correct. But the question was “what are upcoming future trends?” The question asks for a prediction of the future, not past holdings.

      A year later, whattaya know. Kisor v. Wilkie confirmed both my predictions—except the Supreme Court called it “genuine ambiguity” rather than “active ambiguity.”

      Do you have a different recollection? I’m capable of being wrong, but I don’t recall it in the context you mention.

      3.Many of Mr. Hyatt’s file histories were published after Hyatt v Lee link to cafc.uscourts.gov I found several with a PTO suspension of prosecution for over ten years, despite Mr. Hyatt’s several request for a bona fide action. It’s been four years since I looked at this, details aren’t fresh. I’m no taking public statements, I’m opining based on the PTO’s own written record.

      I trust this resolves your concerns about the issues involving me.

      David

    3. 9.3

      Dear Paul @ October 29, 2019 at 8:58 am :

      I can’t answer a question without something specific to read. Can you send a copy of whatever paper you’re asking about?

      As a general matter, there are areas where the APA and Mandamus Act could overlap.

      I haven’t thought about the 6-year statute of limitations deeply as it applies to a mandamus action.

    4. 9.4

      Dear Curmudgeon:

      Fifth, the Paperwork Reduction Act applies only to citizens, not their lawyers. For example, Mr. Trump cannot claim poverty by hiring a small-entity lawyer to represent him. Nor can a large entity claim small-entity status by hiring a small-entity lawyer.

      I think you’re confusing Paperwork Reduction Act and Regulatory Flexibility Act?

      If an agency creates a rule whose direct effect is impact on lawyers, it doesn’t matter who the lawyers’ clients are. For example, the current fee-setting rule proposes to impose burdens on attorneys for CLE requirements, and for the form of patent applications that imposes great malpractice risk on the lawyers, not on clients. Those two rules are intended to regulate lawyers, not clients.

      What would be the theory for exempting that impact from the statute? I don’t know of any such carveout, but I’m always open to learning something new.

      David

    5. 9.5

      Dear Curmudgeon —

      5. a further response that may clarify your understanding —

      Remember the 2007-08 appeal rule? OMB quashed it, because of costs on attorneys cognizeable under Paperwork Reduction Act, link to uspto.gov

      David

    6. 9.6

      Dear Curmudgeon –

      Sorry, I made a couple errors. Please delete 9.2 to 9.5, and replace with this.

      1. First, Mr. Boundy premises his legal argument on “anecdotes” regarding alleged conversations with “a number of” senior USPTO officials whom (he asserts) “claim to be exempt from the administrative law that provides predictability for the rest of the government.” I have reason to doubt such conversations actually occurred.

      Your statement is more than a little odd. Our legal arguments have nothing to do with what any PTO person said. All the relevant law originates outside the PTO.

      One of the conversations is footnoted in the article.

      Another is toward the end of the article, an oral Q&A in a public conference. A federal judge heard the interaction, and when I asked, confirmed that we had heard the same thing and were interpreting the Vice Chief APJ’s remarks the same way.

      If you have any basis for doubt, I’d be interested in your showing.

      2. Second … academics repeatedly informed Mr. Boundy that his interpretations of administrative law were incorrect.

      I was the moderator of the panel, so I said very little. I think the only statement I made was the one answer that I gave to a question. I recall it went like this—

      Q: What are the upcoming future trends in Chevron?

      A DEB:I have two predictions based on emerging trends. First, a “rule” will be held ineligible for Chevron or Auer deference if it isn’t first valid as an APA rule, issued with whatever level of procedure is required for the given class of rule. Chevron is a standard of review, not an expanded grant of rulemaking authority. Second, there’s an emerging trend that for Chevron or Auer interpretions without a grant of rulemaking authority and rulemaking procedure, Chevron deference only applies if there’s an active ambiguity.

      A [Prof X]: There’s no holding to that effect.

      A DEB: Correct. But the question was “what are upcoming future trends?” The question asks for a prediction of the future, not past holdings.

      Fourteen months later, lo and behold, Kisor v. Wilkie link to supremecourt.gov confirmed both my predictions (for Auer)—except the Supreme Court called it “genuine ambiguity” rather than my term, “active ambiguity.”

      Do you have a different recollection? I’m capable of being wrong, but I don’t recall it in the context you mention.

      3.Third … One should not rely solely on Mr. Hyatt’s self-serving public statements while the USPTO remains muzzled by statute.

      Your facts are incorrect. Many of Mr. Hyatt’s file histories were published after Hyatt v Lee link to cafc.uscourts.gov I found several with a PTO suspension of prosecution for over ten years. It’s been four years since I looked at this, so the details aren’t fresh. But my views are based on my recollection of the PTO’s own written record, not any statement by Mr. Hyatt.

      5.Fifth, the Paperwork Reduction Act applies only to citizens, not their lawyers. For example, Mr. Trump cannot claim poverty by hiring a small-entity lawyer to represent him. Nor can a large entity claim small-entity status by hiring a small-entity lawyer.

      I think you’re confusing Paperwork Reduction Act and Regulatory Flexibility Act? I think your statement is incorrect in both cases.

      If an agency creates a rule whose direct effect is impact on lawyers, it doesn’t matter who the lawyers’ clients are. Both statutes apply. For example, remember the 2007-08 appeal rule? OMB quashed it, because of costs on attorneys under the Paperwork Reduction Act, link to uspto.gov

      Today, the current fee-setting rule proposes to impose burdens on attorneys for CLE requirements, and for the form of patent applications that imposes great malpractice risk on the lawyers, not on clients. Those two rules are intended to regulate lawyers, not clients.

      What would be the theory for exempting those costs and impacts? Under either statute? I don’t know of any such carveout, but I’m always open to learning something new.

      I trust this resolves your concerns about the issues involving me. Thank you for your interest.

      David

  4. 8

    When you’ve got an obsession with a white whale, everything looks like a harpoon. (See the petition mentioned in the footnote.)

    1. 8.1

      Apotu,

      I really do not know how to take your comment. You seem to be implying that a certain party is “over the top” and seeing “ghosts” everywhere (a la Sam Darnold), but I really am not sure who this person is that you are thinking is over the top.

    2. 8.2

      Dear Apotu —

      Administrative law is like any other legal tool. You can only use it if you understand it exists, and you can only win with it if you understand it well enough to use it well with judgement.

      Just this week, a potential client approached me for a consult. I turned it down — the underlying facts just weren’t there.

      On the other hand, when used with judgement, administrative law turns loser cases into winners, or turns small first-base wins into home runs. Several examples are explained in the articles on my SSRN page, link to ssrn.com

      The reason I write these articles is to teach others, and hopefully to suggest to the PTO that some internal reforms are warranted.

      David

      1. 8.2.1

        The reason I write these articles is to teach others, and hopefully to suggest to the PTO that some internal reforms are warranted.

        My hope is that with Iancu that your (continued) suggestions finally start taking root.

  5. 7

    Since this came from the White House the right questions to ask are:

    1. How does this benefit Trump and his family personally?

    2. How does this benefit Trump’s uberich friends?

    3. How does this cause honest government to become further politicized?

    4. How does this benefit Putin and his plan to ph*k the United States?

    1. 7.1

      NOiP,

      Why the Malcolm impersonation?

      You are so much better than that.

    2. 7.2

      Good grief, just as I was thinking no one could object to rules for more transparency and certainty from the Administrative State – you get this from NOiP. The TDS, obviously, creates some serious cognitive distortions.

  6. 6

    Wow. Just wow.

    Much for stake holders to unpack and apply in the months and years to come.

    Will be interesting to see whether — or to what degree — the Patent Office gets behind these executive orders.

    Thanks David and Emil for keeping this gov agency on its toes.

  7. 5

    As I started into the article (caveat: I stopped to post this question)< I had to wonder:

    GIVEN that "SAWS" was admitted to by the Patent Office as being merely one of such "shadow" programs at the time that the Patent Office was forced to admit its existence and took the choice of discontinuing that particular program, do these new Executive Orders FORCE the Office to “act transparently” as to ALL OTHER shadow “quality” programs — that happen by the by to already violate the rule of 37 CFR 1.2:

    1.2 Business to be transacted in writing.

    All business with the Patent and Trademark Office should be transacted in writing. [… ] The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. [… ]

    1. 5.1

      Here’s what anon is referencing when he says the office has admitted to other “shadow programs”.

      “The Sensitive Application Warning System (SAWS) program is one of many practical, internal efforts that the USPTO has in place to ensure that only the highest quality patents are issued by the Agency.”

      link to uspto.gov

      Would those who thinks anon’s characterization is fair please speak up?

      1. 5.1.1

        Of course, he goes off the rails with 37 CFR 1.2: “All business _with_ the Patent and Trademark Office should be transacted in writing.” Wannabe U.S. lawyers apparently do not understand the difference between the words “with” and “within.”

        1. 5.1.1.1

          Notice how he goes straight to the ad hominem and makes no effort to defend the substance of his allegation. What a bore.

          1. 5.1.1.1.1

            LOL – as if your post was not the exact thing that you Accuse Others of….

            Not sure why you want to emulate that Malcolm trait when it clearly does not work for him.

            But please – why don’t you explain your strawman of the difference between “with” and “within” as if that matters to the examination of applications and the nature of SAWS and its counterparts.

            You have my full attention.

            1. 5.1.1.1.1.1

              And the nature of SAWS and its counterparts?

              But you said “ALL OTHER shadow ‘quality’ programs — that happen by the by to already violate the rule of 37 CFR 1.2:”

              Your emphasis — “ALL OTHER.” Nobody can make sense of your posts, including you. Sad. But everybody noticed (of course) that you again avoided defending the substance of your allegation.

            2. 5.1.1.1.1.2

              ?

            3. 5.1.1.1.1.3

              There’s a U.S. LSAP prep course I can still get you into if you’re still interested. Email me privately.

            4. 5.1.1.1.1.4

              But be careful. This one can count!

              1. 5.1.1.1.1.4.1

                Congrats Shifty – your game has worked and several of my comments have been caught in the Count Filter.

              2. 5.1.1.1.1.4.2

                Lots of mindlessness from you shifty, but notably NOT:

                But please – why don’t you explain your strawman of the difference between “with” and “within” as if that matters to the examination of applications and the nature of SAWS and its counterparts.

                1. Your comments caught in “Count Filter?” No. A few of your mindless ad hominems were deleted. That should happen more.

                  Everybody notices that you have had multiple opportunities to defend your assertion about 37 CFR 1.2 and have not. I’ll let your designated expert explain to you why you are wrong:

                  “anon —

                  The law makes all kinds of distinctions between deliberative intra-agency communications vs. decisional communications ex-agency. Mr. Lincoln’s got you there.”

                2. Sorry Shifty but you are simply wrong on the deletion versus count filter.

                  It’s bizarre of you to assert otherwise, but hey, “bizarre” seems to be one of your aims.

                3. Mr. Boundy’s point – while true in and of itself – does not bear on the point at hand and the context of SAWS and SAWS-like mechanisms.

                  In other words, even giants sleep, and Dave did not grasp the context of our conversation.

                  I certainly was not taking about nonshadow items that affect the prosecution on the merits of applications (for which, CLEARLY, the ‘in writing’ notion applies).

                  It is less a “did not defend” and more a “need not defend” (when the proper context is understood).

                4. Proper context? You funny. Does it make you dizzy to spin like that when you’re cornered? And yet, _still_ no defense of your assertion about 37 CFR 1.2. And there never will be, of course, so . . . Bye.

                5. Not concerned and no spin.

                  Your characterizations — as typical — are off.

                  And the funny thing about this is that you continue to NOT see the “defense’ already provided.

                  So “Bye” is probably in your best interests, because anything else from you is just not helping you.

                  (this is not the first time and most definitely won’t be the last time in which your shenanigans just don’t take hold)

                6. No troubles at all.

                  Your sense of “cornered” is — of course — off.

                  But that’s nothing new, now is it.

                7. Rather than idioms, how about:

                  But please – why don’t you explain your strawman of the difference between “with” and “within” as if that matters to the examination of applications and the nature of SAWS and its counterparts.

                8. Dear anon @ 5.1.1.1.1 and 5.1.1.1.1.4.2 October 25, 2019 at 8:50 am

                  Please see my note to you at 5.2. “With” and “within” are completely different. In five seconds, I can think of several different laws that treat them completely differently — FOIA, applicability of 5 U.S.C. § 554, 555, 556, 557, discover ability under Camp v Pitts and Overton Park, …

                  David

                9. Points addressed? LOL. Deliberations within the Office need not form part of the “written record” referenced in 37 cfr 1.2.

                10. Shifty,

                  YOUR strawman of “within” is indeed answered above at post 9.

                  Move the goalposts back to what I have been actually discussing all along.

                11. You are projecting — and apparently unaware of it at boot.

                  Self-flagellating to the max.

                  Clean up after yourself when you are done.

            5. 5.1.1.1.1.5

              Now that I have your full attention, your own designated expert also said you are wrong. In both the old and the new “context.” So, do you have anything else? Aside from the usual?s

              1. 5.1.1.1.1.5.1

                Posting twice in error won’t make it right.

                Try reading my posts as I note that even the giant still sleeps.

      2. 5.1.2

        Do you really think Ben that one of many — and ALL in the shadows — is somehow an “unfair” characterization?

        Really?

        1. 5.1.2.1

          … by the way, I am looking forward to that complete list on a single web page.

          What are the chances that any such list will contain things that ONLY Office insiders know about (and that even applicants so affected by these programs have never had any inkling that they were being so affected?)

          1. 5.1.2.1.1

            … by the way, for the cognitively challenged, the notion of “shadow” is indicative of program workings NOT on the written record and to which an applicant cannot respond to (e.g., challenge) during prosecution.

            If one cares to apply any critical thinking to the attempted spin from the Office ON the SAWS debacle, one can easily pierce the deceptions. The Office attempted to pass off the presence of SAWS as “nothing different than any other application would receive in the form of substantive examination” BUT if that were true at all, then the very existence of SAWS would not be necessary, and the program would never have existed.

            The plain truth is that there ARE shadows in the workings of the Office.

            One should wonder about those throwing flak at others who cheer on transparency — especially in the case of prosecution of applications (to which the CFR section I aptly provided is certainly key.

            But instead of any sense of remorse over clear shadow work, we have Office workers (Ben and my shifty historical pseudonymed friend) taking shots at what amounts to Sunshine (and proclaiming that the Earth is flat).

            1. 5.1.2.1.1.1

              … and let’s not forget the context here that it has been the Office that proudly proclaimed “Quality” as Reject Reject Reject.

              Have people already forgotten about that Office presentation boasting of the allowance cliff that (inexplicably) dove down to what? a low 30% at its bottom?

              1. 5.1.2.1.1.1.1

                …interestingly, this series of posts has escaped Shifty’s attention.

                Hmmmm.

      3. 5.1.3

        I think it’s fair. The PTO was/is/will always be conducting more than one shadow program. There are also AU’s, and whole TC’s, that are doing their own shadow programs. TC 3600 is without a doubt conducting a shadow program directed at cases they don’t want to issue despite being reversed by the PTAB.

        None of this is news to people who practice.

        During the days of “second pair of eyes” I had numerous examiners tell me they thought the claims were allowable, but “they” wouldn’t allow him/her to allow them. I would ask “Who are ‘they’?” and be told, “Can’t tell you that.” I would ask “Can I speak to ‘them’?” and be told “No.”

        I hardly think that Andy Faile and Richard Hjerpe and Greg Morse are just “rogue examiners.” None of them are intelligent enough on their own to be doing what they did and are still doing. They’re clearly following orders. The PTO has wised up enough after the NTP reexam not to put those orders in writing. It’s still a shadow program,

        1. 5.1.3.1

          None of this is news to people who practice

          But apparently — to Office folk like Ben and our shifting historical pseudonymed friend — this is not only news, it is the “you must be wearing a tinfoil hat” type of news.

        2. 5.1.3.2

          “During the days of “second pair of eyes” I had numerous examiners tell me they thought the claims were allowable, but “they” wouldn’t allow him/her to allow them. I would ask “Who are ‘they’?” and be told, “Can’t tell you that.” I would ask “Can I speak to ‘them’?” and be told “No.””

          And you still haven’t called a TC director and eventually the undersecretary about this? After a couple of suck instances? You don’t even have to sully the name/case/application of one of your clients to do so if you have several that this is happening to. Just call about an ongoing happening, being repeated in several apps.

          “None of them are intelligent enough on their own to be doing what they did and are still doing. They’re clearly following orders. The PTO has wised up enough after the NTP reexam not to put those orders in writing. It’s still a shadow program,”

          I think you might be confusing incompetence with malevolence. and/or confusing them taking their responsibility to not issue invalid patents seriously.

          “I hardly think that Andy Faile and Richard Hjerpe and Greg Morse are just “rogue examiners.””

          They’re obviously not.

        3. 5.1.3.3

          “During the days of “second pair of eyes” I had numerous examiners tell me they thought the claims were allowable, but “they” wouldn’t allow him/her to allow them. I would ask “Who are ‘they’?” and be told, “Can’t tell you that.” I would ask “Can I speak to ‘them’?” and be told “No.””

          And you still haven’t called a TC director and eventually the undersecretary about this? After a couple of such instances? You don’t even have to sully the name/case/application of one of your clients to do so if you have several that this is happening to. Just call about an ongoing happening, being repeated in several apps.

          “None of them are intelligent enough on their own to be doing what they did and are still doing. They’re clearly following orders. The PTO has wised up enough after the NTP reexam not to put those orders in writing. It’s still a shadow program,”

          I think you might be confusing incompetence with malevolence. and/or confusing them taking their responsibility to not issue invalid patents seriously.

          “I hardly think that Andy Faile and Richard Hjerpe and Greg Morse are just “rogue examiners.””

          They’re obviously not.

          1. 5.1.3.3.1

            “And you still haven’t called a TC director and eventually the undersecretary about this?”

            Lulz.

            Any time you think you can do better at this than me feel free to try.

    2. 5.2

      anon —

      The law makes all kinds of distinctions between deliberative intra-agency communications vs. decisional communications ex-agency. Mr. Lincoln’s got you there.

      But you’ve got the better of it on another point (and Ben the worse) — when those internal communications start to affect regulated parties, and the entire purpose of the internal communications is to coordinate agency nonperformance of the function it’s charged with, and to not apply the otherwise-uniform procedures and standards the agency is required to apply, then things go a little differently. That happens so infrequently that I don’t know the law in that area very well.

      Before this summer, I knew of only one example, and I’m not involved in any of those cases. Since August, the SAWS folks at the PTO must be feeling less lonely.

      David

      1. 5.2.1

        I’m not sure what views you’re ascribing to me Mr. Boundy. I simply asked who here thought anon’s characterization of the PTO’s statement above (in 5.1) was fair. anon has previosly asserted that this statement is an admission of other “SAWS-like” programs. Do you believe it is reasonable or fair to characterize the PTO’s statement as an admission of either “shadow” or “SAWS-like” programs? In the absence of further comment, it sure sounds like you think it is a fair characterization.

        1. 5.2.1.1

          Dear Ben —

          I’m sorry, I apologize. I misattributed something to you. The problem with responding to multiple posts, some of which have scrolled off the top of the screen. My error.

          Yes, I know that there are other secret SAWS-like programs — it used to be “second set of eyes,” now it’s the procedures improvised especially for one applicant by the “screw Gil Hyatt” examining group. I have no doubt there are more. The PTO is required to publish “the nature and requirements of all formal and informal procedures available,” 5 U.S.C. § 552(a)(1)(B). The PTO is no more eager to publish all procedures than the “three amigos” of the Ukraine shadow diplomatic corps.

          1. 5.2.1.1.1

            Well I applaud your willingness to wear a tinfoil hat under your real name.

            1. 5.2.1.1.1.1

              What would constitute not wearing a “tin foil” hat, Ben?

              Super-clenched tight eyes? Complete disregard for plain evidence? An unwavering penchant for upvoting Malcolm?

            2. 5.2.1.1.1.2

              Do Mr. Boundy’s remarks suggest a tinfoil hat to you? Interesting. I cannot agree.

              Fool me once, shame on you, but fool me twice, shame on me. The revelation of SAWS has undermined the PTO’s credibility to deny the existence of such programs.

              It is of little moment that I have no evidence of any such ongoing effort. One could say the same thing of SAWS until the day it was revealed. Many of us in this field simply do not trust the PTO to be as transparent as the administrative law requires, and I do not think that this lack of trust is at all “tin-foil hat”ish, in view of the recent past.

              1. 5.2.1.1.1.2.1

                And why would Iancu allow these SAWS-like program to stay secret? Is he in on it or do only deepstate cabals within the PTO know of these programs?

                1. If you were career staff, and you’d be running roughshod over the law, how eager would you be to tell the new boss what’s been going on?

                2. I tried to answer that question in response to your 5.2.1.1.2 below, but that answer is still caught in the filter.

                3. “If you were career staff, and you’d be running roughshod over the law, how eager would you be to tell the new boss what’s been going on?”

                  I’m not exactly a fan of Iancu but I doubt he and his political staff are so incompetent that a SAWS-like program could be run within the PTO without them finding out.

                  In any case, we should expect some rising Junior Deputy Assistant Commissioner who isn’t responsible for the past sins to bring a SAWS-like program to Iancu in order to gain his favor.

                  “Three can keep a secret if two are dead.”

          2. 5.2.1.1.2

            My response was a bit overly curt. Sorry.

            If you wouldn’t mind explaining, how do you reconcile the supposed existance of additional SAWS-like programs and 20+ months of a plainly pro-patentee PTO director? Even if there was some reaspn he couldn’t unilaterally terminate such programs, he could have an aid leak documentation.

            1. 5.2.1.1.2.1

              …supposed existence?

              Ben, stop trying to promulgate that the earth is flat.

            2. 5.2.1.1.2.2

              [H]ow do you reconcile the supposed existance of additional SAWS-like programs and 20+ months of a plainly pro-patentee PTO director?

              For one thing, I am not quite with you in characterizing Dir. Iancu as “plainly pro-patentee.” I agree that his subject matter eligibility policies serve to push applications to grant that probably would not survive a subject-matter eligibility challenge. On the other hand, if you just look at total grant numbers, Iancu does not really stand out in any meaningful way from the last three Kappos or Lee.

              Finally, setting aside Iancu specifically and thinking of the administration writ large, it seems to me that the motto of this administration could be taken from the late Brazilian dictator, Getulio Vargas, who famously declared “for our friends, anything; for our enemies, the law.”

              If—years from now—it were to turn out that the PTO had slow-walked applications for companies that made trouble for the administration, I would not be the least bit surprised. We need real-time administrative transparency to make that sort of abuse impossible. Calls for more transparency are at least as relevant in the Iancu era as they were under Lee, or Kappos, or Dudas, etc.

            3. 5.2.1.1.2.3

              “I am not quite with you in characterizing Dir. Iancu as “plainly pro-patentee.” … if you just look at total grant numbers, Iancu does not really stand out in any meaningful way from the last three Kappos or Lee.”

              Placing a director on the “patentee favorability” scale based on grant numbers seems unwise to me because of how many other factors play into those grant numbers. In any case, his direct influence on eligibility guidance should be weighted much higher.

              “Calls for more transparency are at least as relevant in the Iancu era as they were under Lee, or Kappos, or Dudas, etc.”

              I hope I am not giving the impression that I am against these EOs or greater transparancy. I think that’s fine.

              I think that concluding from the available evidence (or lack there of) and the current leadership of the office, that there actually are “SAWS-like” programs at the office is not a reasonable position.

              It is not conspiracy thinking to think that there could be another SAWS. I would agree with that. It IS conspiracy thinking to think there already is another SAWS.

              1. 5.2.1.1.2.3.1

                could be…
                already is…

                Ben,

                Your logic is astounding (and not in a good way).

          3. 5.2.1.1.3

            Dave, this is NOT to excuse the PTO delayed handling of long-pending Hyatt applications. But since ordinarily-assigned examiners were naturally refusing to ruin their job records by taking hundreds of extra hours to properly examine [much less check for 112 support] his literally thousands of new claims being added to his old applications, the PTO had little choice but to assign them to examiners not under regular examiner time and quota pressures.
            [If that had been done with Lemelson patent applications literally billions in litigation costs could have been avoided.]

            1. 5.2.1.1.3.1

              That’s a pretty strawman Paul (no one is arguing about number of examiners to examine large claim sets — so the point you bring up only to knock down has zero bearing on the discussion here).

              1. 5.2.1.1.3.1.1

                Actually, it does. There is presumably no executive order, administrative law or regulation preventing the PTO Director from re-assigning long pending applications from examiners not timely examining them to examiners who will and are better qualified to do so. Just as another example, all reissue applications are now assigned to CPU examiners.

            2. 5.2.1.1.3.2

              Dear Paul —

              I didn’t complain about the segregation of examiners into the “screw Gil Hyatt” examining group. I agree, the internal time budgeting is a necessary reaction to an applicant that’s totally out of band. But the PTO’s internal accounting and accountability here isn’t the issue.

              I complained about the externally-facing suspension of due process, the make-up-the-rules-as-we-go procedures, that are invented by the “screw Gil Hyatt” examining group. When the file histories first became public I spent a few hours looking at them — it was beyond shocking to the conscience.

              There’s no reason the PTO can’t get where it needs to go by just examining Hyatt’s applications under the normal rules that apply to everyone else. And if Hyatt responded by playing by the same rules as everyone else, some of them will issue, and justice will be served all around. (I can’t evaluate whether there’s any likelihood of that, but history suggests that the probability is very low.)

              Except for the 20 year delay that the PTO created. That’s a problem with no just solution.

              1. 5.2.1.1.3.2.1

                Thanks Dave, I have not seen the Hyatt file histories you have seen. But if they really do show “the externally-facing suspension of due process, the make-up-the-rules-as-we-go procedures, that are invented by the ‘screw Gil Hyatt’ examining group” [versus earlier PTO stonewalling conduct before that special group] which you indicate, then where are the successful Hyatt Board and Fed. Cir. appeals or APA suit decisions supporting that alleged PTO missconduct?

                1. Several are still pending.

                  Mr. Hyatt has been as injudicious in choosing issues in court as at the PTO. The 2018 MPEP 1207.04 case could have been an easy winner had it been presented on APA grounds, and sought middle-ground relief. But instead he swung for the fences on a statutory construction, only months before Kisor v Wilkie changed the standard for agency deference.

                  Too bad.

                2. Dear Paul @ 5.2.1.1.3.2.1

                  That’s the wrong question, isn’t it. Hyatt has strong procedural gripes. On procedural issues, he’s won a number of cases —

                  — Hyatt v Kappos at the SUpreme Court

                  — a number of decisions in various district courts on procedural issues.

                  But procedural issues can’t go to the Board, and thus can’t go to the Federal Circuit on appeal. And procedural issues, alone, won’t get you a patent — all they can do is guarantee a fair examination, and if the claims aren’t patentable, a fair explanation. That’s all Hyatt is entitled to.

                3. Dear Paul @ 5.2.1.1.3.2.1 —

                  Sorry, the more I think about this, the more I realize it’s the wrong question.

                  The examiners sat on his applications for years — over a decade. He can’t get to the Board if there’s no office action….

                  Also, the PTO has been relying illegally on guidance to abrogate the statutory/regulatory right to appeal and path that guarantees progress through the agency. So he can’t get to the Board.

                  David

                4. Thanks again Dave for the additional notes below. But Hyatt v Kappos at the Supreme Court only applied to those applications he did appeal and it only obtained his right to a 35 USC 145 civil action, which I assume he lost? In view of the great potential economic impact of issuances of the thousands of Hyatt claims I find it very strange not to have heard further in any patent blogs about that OR what you indicate are several D.C. Hyatt decisions? [I am only aware of a settlement [not a decision] in one D.C. suit in his favor?] If Hyatt has been denied either office actions [or appeals of twice rejected claims] in applications pending for many years then his failure to file an APA suit for many years is his own fault, as your comment seems to suggest? [Or choice, since these applications are so old that extended prosecution is extending patent term].

                5. Well, it does look like Lemelson might finally get some judicial relief from Judge Ellis in Gilbert P. Hyatt v. USPTO and Iancu (E.D. Va. 2018), even though Hyatt filed it as a “Mandamus Action Complaint” rather than under the APA, since it has now at least made it to a hearing on evidence.

                6. Dave, if the below quote is true, then Hyatt’s [pro se?] long delayed legal relief efforts really do include self-inflicted legal problems as you suggest? And, may explain why Gilbert P. Hyatt v. USPTO and Iancu (E.D. Va. 2018), was filed as a “Mandamus Action Complaint” rather than under the APA?
                  What do you think about using mandamus rather than [timely] using the APA against alleged PTO stonewalling, in general?
                  “The APA does not contain a specific statute of limitations, but courts have held that a six-year statute of limitation is applicable..”

                7. Dear Paul @ October 29, 2019 at 8:58 am :

                  I can’t answer a question without something specific to read. Can you send a copy of whatever paper you’re asking about?

                  As a general matter, there are areas where the APA and Mandamus Act could overlap — specifically in areas of compelling agency action where the agency is slow-walking or dead stopped.

                  I haven’t thought about the 6-year statute of limitations deeply as it applies to a specific mandamus action.

                  David

      2. 5.2.2

        The PTOs illegal non-performance with respect to eligibility and 112 are so transparent, I guess, that we shouldn’t be concerned.

        Or maybe it’s just the fact that the public is paying the massive cost of that non-performance that makes Boundy so glib.

        Who ends up “regulated” by “PTO non-performance” when it comes to not applying 101 and 112?

        Answer: everybody. But hey, Rich Whitey is getting richer and the libs are “losing” so what else matters? At least Justice Kennedy is sleeping well.

        1. 5.2.2.1

          … Whitey?

  8. 4

    Invoking the David Boundy Employment Act to force the PTO to examine the fiscal impact of its Rulemaking on … law firms?

    Gotta love it when the truth leaks out.

    1. 4.1

      What point do you think that you are making with such a snarky comment?

      (other than you excel at being an @$$hat…?)

      1. 4.1.1

        Look, at least according to David Boundy, the David Boundy Employment Act exists to force the PTO to spend *more* money and create *more* paper so David Boundy can be satisfied that his law firm’s “additional expenses” are “justified” (as if those costs won’t be passed along, and as if the point of the Act was to make life easier for LOL attorneys LOL).

        By the way, on which page of this missive are Fraud Iancu’s illegal 101 guidelines and the enormous costs they will place on the public addressed by Boundy? It must be in there somewhere, right? Because Boundy is super concerned about the PTO not following the law. Right?

  9. 3

    Hey David, what do think of the “President” anyway? Reasonable guy? Someone to emulate? Thoughtful? Honest? A respectable leader? Law-abiding?

    Tell everyone. After all, you just invoked his (LOL) “authority” here, just like legions of faux news inhaling obedient brownshirts do every day.

    Share your thoughts. Who did you vote for anyway in 2016 and why?

    1. 3.1

      What the F has this to do with patent law?

      Malcolm – your innuendo (brownshirts? really?) needs to find an appropriate forum.

      A patent law blog is NOT that forum.

      1. 3.1.1

        I didn’t bring the President up in a threat to the PTO, Bildo. That was Boundy, or this other guy whose name I’m not bothering to remember for the moment.

        1. 3.1.1.1

          … because transparency is a threat to the PTO?

          Your cognitive dissonance is screaming through.

  10. 2

    Thank you for such a substantive review of applicability of the two new agency practices Executive Orders to the PTO.

    [I did wonder if “E.O. 13892 requires agencies to “afford regulated parties the safeguards described in this order, above and beyond* those that the courts have interpreted the Due Process Clause of the Fifth Amendment to the Constitution to impose” does not in itself violate another of these requirements with the ambiguity of “above and beyond”?]

    Are you going to also publish practical advice on how to legally challenge the indicated improper PTO practices?

    1. 2.1

      Dear Paul —

      Agencies always have the discretion to ratchet due process up. But almost never to ratchet down. The E.O.’s are part of that ratcheting up, and that sentence is merely a note that such up-ratchets exist.

      David

  11. 1

    “Perhaps a reminder coming from the President…”

    LOL

    A threat from the current President? Regarding following the “Rule of Law”?

    That’s funny stuff, in a sick, warped kind of way that nobody should get used to. Not even in Missouri.

    1. 1.1

      …does remind me of you.

      Yet again.

      (there is ZERO coincidence there, by the way)

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