The PTAB is Not an Article III Court, Part 1: A Primer on Federal Agency Rule Making

What rules may the United States Patent and Trademark Office (USPTO) promulgate? What procedures must the agency follow when it promulgates a rule? What effect do various rules have? Some are binding against the public, some are only hortatory Some require extensive rule making procedure some can be promulgated with the stroke of a pen. Some are unilateral in binding only agency employees but not the public. And some are simply invalid. How is agency rule making power different than an Article ill court's? Administrative law expertise is becoming more and more important to successful representation of clients in intellectual property matters. This article gives an overview of the basic framework of agency rule making. In particular, I provide a table that classifies agency rules-this table simplifies and clarifies a great deal of overly complicated discussion in the standard administrative law treatises. This table and its discussion describe the choices and tradeoffs that agencies face in their rule making decisions, and the opportunities that those choices create for parties before the agency. Expertise in administrative law and agency rule making can guide agency tribunals to favorable decisions, and present compelling arguments to courts after unfavorable decisions.