"The Federal Circuit heard oral argument today in Apple Inc. v. Squires, 24-1864, a long-running challenge to the USPTO's Fintiv discretionary denial framework. Apple, Cisco, Google, and Intel argue that the NHK-Fintiv rule should have been adopted through notice-and-comment rulemaking under the Administrative Procedure Act (APA) rather than through precedential Board designations."
"The case presents a narrow but consequential question: when the Director instructs the PTAB how to exercise delegated institution authority, does that instruction constitute a "substantive rule" requiring APA procedures, or merely a "general statement of policy" that the agency may adopt without public input?"
"This is an important case, but some amount of practical obsolescence based upon the dramatic 2025 changes to institution practice. Still, as I explain at the end of the post, a strong win for the government could have a much larger impact on how the USPTO operates within the Federal regulatory framework."
The Federal Circuit heard oral argument in Apple Inc. v. Squires over the USPTO's Fintiv discretionary denial framework. Major technology companies contend that the NHK-Fintiv rule required notice-and-comment rulemaking under the Administrative Procedure Act rather than adoption through precedential Board designations. The principal legal question asks whether Director instructions to the PTAB amount to a substantive rule that triggers APA procedures or instead constitute a general statement of policy exempt from notice-and-comment. The judicial panel examined whether a Board-only binding rule requires notice-and-comment when the Director can freely deviate from it. The matter faces practical obsolescence because of significant 2025 changes to institution practice, but a government victory could expand agency regulatory authority.
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