In this episode of the podcast, we discuss the decision in Apple v. Squires in which the United States Court of Appeals for the Federal Circuit affirmed that the Patent and Trademark Office (PTO) is not required to use formal notice-and-comment rulemaking when issuing instructions for denying patent reviews. The dispute centered on the NHK-Fintiv factors, which guide the Patent Trial and Appeal Board in deciding whether to decline inter partes review when parallel district court litigation is pending. The court determined these instructions are general statements of policy rather than substantive rules because they do not bind the PTO Director, who retains ultimate discretionary authority. Furthermore, the ruling emphasizes that petitioners have no statutory right to the institution of a review, leaving their legal obligations unchanged if a petition is denied. Ultimately, because the guidelines do not carry the force and effect of law, they are exempt from the rigorous procedural requirements of the Administrative Procedure Act.
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