Court’s Decision May Change US Patent And Trademark Office Administrative Rulemaking Procedures

Dennis Crouch, writing for PatentlyO, says that the Federal Circuit’s seemingly innocuous In re Chestek decision earlier this month contains language that could let the US Patent and Trademark Office (USPTO) sidestep administrative rulemaking procedures for any new requirements it imposes, as long as they are deemed “procedural” in nature.  

He also says that the Federal Circuit appears to deem any rulemaking procedural, so long as does not affect the substantive patent or trademark standards.

“Of course, the USPTO generally does not have substantive rulemaking authority regarding the patent standards, and so everything is procedure,” says Crouch.

At issue in Chestek were 2019 amendments to trademark regulations requiring applicants to provide their domicile address, defined as their permanent legal residence or principal place of business. A mailing address is insufficient.

The law firm run by Pamela Chestek, a trademark boutique, challenged the domicile address rule, arguing that its imposition didn’t comply with the notice and comment requirements of the Administrative Procedure Act.

Chestek also applied to register the mark CHESTEK LEGAL but refused to include her personal home address, for privacy reasons. The USPTO refused to register her mark based on her failure to comply with the domicile rule. She appealed to the Federal Circuit.

The Federal Circuit ruled for the USPTO. It said that the domicile address rule was clearly procedural in nature rather than substantive, and thus was exempted from APA notice and comment strictures.

Crouch argues that the logic of the Chestek case sets up the USPTO to potentially make more “procedural changes” without meaningful external input or following the traditional notice-and-comment approach.