Tag Archives: notice-and-comment

Government Opposition to Chestek’s Cert Petition

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by Dennis Crouch

The U.S. Solicitor General has filed the Government's opposition to Chestek PLLC's petition for a writ of certiorari in a case challenging the USPTO's authority to implement certain procedural rules without notice-and-comment rulemaking. The case has has significant implications for the agency's regulatory powers. In particular, the Federal Circuit's decision frees the agency so that it most situations it can conduct rulemaking without any notice-and-comment.  Chestek offers some similarities to another APA case pending at the Federal Circuit, Apple v. Vidal, that similarly questions whether the FINTIV discretionary denial rules should have gone through notice-and-comment. 

If you recall, this case center's on the USPTO's attempt to address trademark fraud.  One approach that the agency has taken is to require trademark applicants to provide their domicile address (defined as their permanent legal residence or principal place of business) rather than just a mailing address.  84 Fed. Reg. 31,498 (July 2, 2019).   The agency found that many of the fraudulent filing were from foreign applicants using a U.S. mailing address. This requirement is designed to help weed those out.  Chestek refused to provide her home address to the USPTO because of privacy concerns, leading the USPTO to reject her trademark application.

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Democracy on Trial: Chestek and the Future of USPTO Accountability

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by Dennis Crouch

The pending petition for certiorari in Chestek v. Vidal focuses on the extend that the APA requires the USPTO to follow notice-and-comment requirements when promulgating regulations under 35 U.S.C. § 2(b)(2). In its decision below, the Federal Circuit held that the USPTO is exempt from these requirements because the types of rules it is authorized to issue under Section 2(b)(2) are procedural in nature, and the APA excuses "rules of agency ... procedure" from the requirements.  There are two ways that the Federal Circuit potentially erred:

  1. The TM applicant home-address requirement being challenged here is not the type of procedural rule exempted under the APA; and
  2. Even if it is procedural, the particular requirements of the Patent Act's section 2(b)(2) requires following the notice and comment requirements.

The Federal Circuit agreed that 35 U.S.C. § 2(b)(2) requires USPTO regulations to be "made in accordance with" the APA -- but disagreed that this requires notice-and-comment for all new regulations. The court concluded that the APA inherently includes an exception for procedural requirements and so the USPTO was not required to follow notice-and-comment rulemaking when promulgating the trademark applicant home-address rule, because the court deemed it to be a procedural rather than substantive rule exempt from those APA requirements.

Five amicus briefs were recently filed in support of the petitioner, arguing that Supreme Court review is warranted to correct the Federal Circuit's erroneous decision, arguing that the Federal Circuit's interpretation of Section 2(b)(2) is flawed and undermines important principles of administrative law.

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How Chestek Impacts USPTO’s Rulemaking Authority and the Push to Restore

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by Dennis Crouch

The Federal Circuit's recent decision in Chestek v. Vidal opened the door to extensive USPTO rulemaking that entirely avoids the notice and comment process required by the Administrative Procedure Act (APA). In re Chestek PLLC, 92 F.4th 1105 (Fed. Cir. 2024).  Chestek has now filed her petition for writ of certiorari to the U.S. Supreme Court asking: Whether the PTO is exempt from notice-and-comment requirements when exercising its rulemaking power under 35 U.S.C. § 2(b)(2).

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