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.
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.
And yes I will be rubbing your nose in this repeatedly until you demonstrate some evidence of an actual human “conscience”, Davey.
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.
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
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.
“…that you were born yesterday…”
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.
…Dave, ask him about Sir Thomas More
link to youtube.com
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.
“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.
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.
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.
No backpedal whatsoever.
I know that you do not like to be constrained to context, but that is what it is.
Nobody knows what that is supposed to mean. Respond to the merits.
Asked and answered – more gamery from you Shifty.
You changed the “context” in post 9 and you are also wrong in that “context.” Do you have anything else? Aside from the usual?
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.
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?
My “own expert” is still being mislead by your gamery.
I do not need anything else.
You’re saying your expert is easily mislead . . . but still an expert? Explain.
Did I say “easily” mislead?
A: no.
Maybe you should check out the idiom of “even a giant sleeps.”
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.
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.
Looks like Nutty McNutcase is having a slow Sunday.
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
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
Anon says he is formulating a response. Be afraid. It will be devastating.
“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.
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).
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
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.
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
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
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.
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.
No prob – appreciate the inputs that you have shared.
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
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.
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.
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.
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.
Shifty – see below at 10.4.2.1.1.2.2 for your reply.
Dear Anon—
Sorry, first time posted to wrong place. Try again.
Let’s translate this into things familiar to third graders, and see if we can get you to read carefully and think carefully.
Start by thinking of two Venn diagrams. One is two nested circles, a subset relationship. The other is two separate circles, two disjoint sets.
When A is within set B, with circle A nested inside circle B, all the properties of B apply to A. Item A usually has additional facts, and those additional facts about A warrant “context” refinement of the way we think about A relative to B, but B applies.
When A and B are disjoint, there’s no amount of “context” for A that makes B applicable to A.
SAWS is not “agency action.” We’re not in the “two nested circles, subset” picture. We’re in the “two separate circles” picture. Why?
Let’s start with B, the definition of “agency action.”
“Agency action” requires that the agency act with externally-visible effect: an adjudication in a specific case, a final rule, etc. Agency internal deliberation isn’t “agency action.” A Notice of Proposed Rulemaking usually isn’t “agency action” because it’s just preliminary, it doesn’t create any agency authority to act (but terminating an NPRM can be “agency action”). Agency employee policies would be agency action vis-à-vis the affected employees, but not vis-à-vis a member of the public.
That’s a definition you don’t get to change. Any disagreement up to this point?
Now let’s look at B. You explained the essential property of SAWS yourself @ 5:
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…
You accurately characterize SAWS as a “shadow program,” and elsewhere you note that SAW has no implementing CFR regulation. SAWS existed for many many years before anyone even knew of its existence. An invisible “shadow” isn’t “agency action.”
What about the Office Actions issued under the influence of SAWS? They’re “agency action” and may be challenged through the ordinary paths. But the existence of SAWS doesn’t have any first-order effect on availability or path of review. There are second-order effects: SAWS is “bad faith” that may change the nature of discovery, evidence, and award if attorney fees for agency bad faith, and may trigger review by the Inspector General. But to first order, the existence of SAWS does nothing to change the legal footing for the agency action itself or challenge to it.
What about the PTO’s refusal to issue Office Actions for ten years because of SAWS? That’s not “agency action” either. It’s agency action “unlawfully withheld or unreasonably delayed” which has its own path of review.
SAWS is not “agency action” under the relevant definition of “agency action.” We’re in the “two disjoint circles” picture. No amount of “context” will make the law governing “agency action” applicable to SAWS as a program. The only way you can write what you’ve written above is if you insist you have some ability to ignore the established legal definition of the term “agency action.”
David
Example —
Suppose that the PTO formulated a policy:
For any inventor represented by an attorney whose initials are “D.B.” when we decide petitions, we will invent rules out of thin air. When the attorney cites Supreme Court cases, we’ll respond “Oh that case arose out of the State Department. It doesn’t apply to the PTO.” When the attorney frames an argument around a breach of a specific law, we will respond by pointing out another law that we didn’t breach, and we’ll argue that since we didn’t break the second law, we won’t grant relief under the first law actually complained of. If the attorney’s initials are D.B., we will enforce MPEP guidance against D.B.’s client as if the MPEP had force of law, but when our staff breaches a provision of the MPEP, we’ll argue that the MPEP is only “guidelines.” We will rewrite D.B.’s arguments into strawman alternatives that are easy to deny, and claim that the difference between the issue actually raised and the strawman issue we decide is “artful pleading.”
Suppose such a policy existed. Signed off by the Deputy Commissioner for Examination Policy. Distributed by email to every member of the patent examination staff. Easy to prove existence of this.
But no one ever acted on it.
Shadow program? Yes. Agency action? No. Any cause of action? No. Illegal? As long as no one acts on it, no.
It’s only “agency action” that can be illegal. Agency employees are allowed to be dumb, disingenuous, even corrupt, in their internal discussions (the agency can act based on internal self-governance, but the public has no cause of action). Only “agency action” can be expressed in externally-visible form with impact on a member of the public is illegal.
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)?
“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.
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.”
You also have avoided any answers to the direct questions on SAWS.
Funny that…
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
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
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)
You are an incredibly sloppy writer, reader, and thinker. Your expert sees just fine.
The giant still sleeps.
“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.”
Did I mention that the giant still sleeps?
Yes, three notes up. You are an incredibly sloppy reader.
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.
You are an incredibly sloppy writer.
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.
Snowflake?
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.
There are no goalposts, Snowflake. A rational person would not cling, yet again, to your “context” fail. You are an incredibly sloppy thinker.
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.
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.
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.
“That you think context is a ‘fail'”
You are an incredibly sloppy reader.
“for reasons already given”
ok. Cite?
Snowflake ?
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?)
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.
“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?
Oh, the smack down was on the merits as well since you had zero.
Just like immediately above, as your attempt there is NOT on the merits but is instead on your gamery already exposed: you are trying to take my comment out of context. Such self-flagellating won’t get you far, son.
No idea what it is you are trying to say. You are an incredibly sloppy writer.
Snowflake ?