Has the USPTO just been given freedom from notice-and-comment requirements?

On February 13, 2024 a three-judge panel of the Court of Appeals for the Federal Circuit rendered an opinion that preserves the USPTO’s requirement that every trademark applicant reveal to the USPTO where the applicant sleeps at night.  If that had been the sole consequence, that would have been bad enough, in my view.  (I have made no secret of my view that the USPTO’s notice-and-comment activity for the “where you sleep at night?” requirement failed to give any notice at all, let alone enough notice to comply with the Administrative Procedure Act.)

The opinion, unfortunately, is likely to have consequences going far beyond merely preserving the requirement that trademark applicants reveal where they sleep at night.  The opinion is likely to embolden the USPTO, going forward, with the notion that almost nothing that the USPTO does in the future would need any ADA notice-and-comment activity.  Here is the part of the opinion that worries me: 

Here, the new rule requires additional information about applicants, i.e., their domicile address. Requiring different or additional information from applicants regarding their addresses merely “alter[s] the manner in which the [applicants] present themselves . . . to the agency.” Id. at 326 (emphasis added). It does not alter the substantive standards by which the USPTO evaluates trademark applications, e.g., a mark’s use in commerce or distinctiveness. The USPTO’s requirement for applicants to provide a domicile address under 37 C.F.R. §§ 2.32(a)(2) and 2.189 is therefore a procedural rule that is excepted from notice-and-comment rulemaking.


The procedural exception to notice-and-comment rulemaking under § 553(b) therefore applies to the domicile address requirement.

Having found the challenged rules within the procedural exception to notice-and-comment rulemaking, we need not address Chestek’s argument that the proposed rule failed to provide sufficient notice of the domicile address requirement.

(slip at 8, 9.)   There are many times in recent years when it seemed to me that the USPTO was already trying to push the boundaries of the APA to get things it wants without having to honor the concerns of the patent community. Two recent areas include forcing the still-inadequate Patent Center system upon the filing community while having shut down EFS-Web and PAIR, and imposing the $400 non-DOCX penalty despite vociferous opposition from the filing community.

I fear that this ruling by the Federal Circuit panel will embolden the USPTO to skip even a pretense of Administrative Procedure Act compliance as it forces more bad things upon the patent community, going forward. The USPTO will, I fear, decide that the only things it needs to get notice-and-comment on are things like “substantive standards by which the USPTO evaluates [patent and trademark] applications” and that everything else — DOCX, Patent Center, fee setting, everything else — can be considered merely “procedural” and thus can be changed at will and without advance notice.

What, if anything, can the patent community do about this?  Please post a comment below.

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