Posts Tagged: "paperwork reduction act"

Today, the Federal Register published a final interim rule submitted by the U.S. Patent and Trademark Office (USPTO) that will eliminate provisions within the agency’s rules of practice establishing a voluntary program for certifying the completion of continuing legal education (CLE) credits by registered patent practitioners and those granted limited recognition to practice in patent matters before the USPTO. The elimination of the voluntary CLE program follows a series of criticisms raised over the agency’s lack of compliance with federal administrative law statutes meant to objectively quantify the burden of agency rulemaking on stakeholders.

In an amicus brief filed with the U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday, September 16, David E. Boundy is backing Chestek PLLC’s appeal asking the CAFC to vacate a Trademark Trial and Appeal Board (TTAB) judgment that upheld an examiner’s refusal of the mark CHESTEK LEGAL for failure to comply with the U.S. Patent and Trademark Office’s (USPTO’s) “domicile address requirement.” This requirement originates from the USPTO’s proposed rule issued on February 15, 2019, and subsequent final rule published on July 2, 2019. The changes were ostensibly intended to crack down on fraudulent trademark filings, which have posed a significant problem for the Office in recent years, by requiring that foreign applicants engage U.S. counsel.

In Part I, I introduced the USPTO’s unpublished guidance document for signatures on powers of attorney, and the incompatibility of that guidance with state law, regulation, and the USPTO’s published guidance. Multiple laws should have caught the problems and led to a corrected document. Today, we’ll look at the USPTO’s pattern of ignoring those laws in multiple rounds of review under the Paperwork Reduction Act.

On May 20, the U.S. Court of Appeals for the Ninth Circuit affirmed the decision of the United States District Court for the District of Nevada, holding that requests for information by the United States Patent and Trademark Office (USPTO) to an individual are exempt from the Paperwork Reduction Act (PRA). Gilbert P. Hyatt is the named inventor on hundreds of inter-related patent applications that encompass over 100,000 claims. See Generally Hyatt v. U.S. Pat. & Trademark Off., 797 F.3d 1377 (Fed Cir. 2015). Both Hyatt and the American Association for Equitable Treatment (AAET) contend that patent applicants should not have to comply with certain USPTO rules because, they allege, the USPTO is violating the PRA.

In February 2019, the U.S. Patent and Trademark Office (USPTO) instituted a rulemaking with the goal of reducing the number of fraudulent or inaccurate trademark applications. USPTO data shows that there has been a significant increase in applications from China, and many of those applications appear to be fraudulent or inaccurate. The USPTO therefore proposed new rules designed to address the problem. The Notice of Proposed Rulemaking (NPRM) stated that the new rules would add a requirement that applicants, registrants, or parties to a Trademark Trial and Appeal Board proceeding who are not domiciled in the United States be represented by a U.S. attorney in good standing. The USPTO received comments on the new rules and published the final rules on July 2, 2019. Nothing about the rulemaking seemed out of the ordinary. However, the shoe dropped with the publication of a new Examination Guide 4-19 on August 2. Not only did foreign applicants need to have lawyers, according to the guide, but every applicant and registrant had to provide a physical street address for the application, regardless of whether they were represented.