Premysler v. Lehman Thomas G. Field, Jr.* In Federal District Court,[1] Premysler, pro se,[2] advanced several bases for reversing a Patent and Trademark Office (PTO) decision refusing him permission to sit for a patent exam. In part,[3] he asserted that changes in the General Requirements bulletin (GRB) between 1990 and 1993 had to be promulgated in accordance with APA requirements -- a matter discussed at some length in a coterminous article.[4] The fundamental basis for Premysler's grievance is not clear from the District Court's opinion, but Judge Rader states that after being refused permission to sit in 1990 Premysler took steps to qualify. Imagine his chagrin, after he thought he was ready, to learn that:[5] Although... [he] now met the standards for the October 1990 exam, he did not meet the April 1993 standards. .... The April 1993 criteria excluded the combination of courses and a long apprenticeship available in the 1990 General Requirements. Yet, he did not prevail. The reason is that he was not, as Burke and I had urged improper,[6] ultimately rejected on the basis of: You don't fit any criteria specified in the GRB! While the Director of the Office of Enrollment and Discipline (OED) took that tack, the Commissioner rejected that as a reason but agreed with the result:[7] The Commissioner characterized the General Requirements as merely an interpretation of the agency's regulations, not a definitive statement as to the prerequisites for the examination. Thus, GRB changes were found exempt from APA rulemaking requirements. The District Court used the "general statements of policy" exemption,[8] but the Circuit Court (more consistently with language quoted above) used the "interpretative rule" exemption.[9] Either court could have also used what amounts to an ad hoc exemption. Both decisions reflect the prevailing view that agencies can resolve, in individual adjudications, legal questions posed in appplying a statute (or regulation).[10] This makes a great deal of sense because issues of first impression can, and probably do, arise in virtually every case. Agencies must be able to resolve them without resort to notice and comment rule making -- notwithstanding that resolution will of necessity be applied retrospectively.[11] However, Premysler does not raise matters of first impression. Petitioner relied on 1990 GRB requirements (as well as OED's evaluation of their application to him) -- and made efforts to comply. Yet, in 1993, OED rejected him on new grounds. That would strike many as unfair. However, because the Commissioner did consider his experience (apparently not required by the 1993 GRB), this satisfied the courts. In any event, Premysler would have had a serious problem. Every APA challenge must deal with the proposition that "due account shall be taken of the rule of prejudicial error."[12] Thus, even had OED's reasons been accepted, Premysler would need to show "prejudice" -- an exceedingly difficult proposition. Even if substantial effort and expense were devoted to vesting an expectancy,[13] it is hard to see how Premysler was worse off. Indeed, he surely benefitted from education and experience acquired between 1990 and 1993, regardless of its exam-qualifying utility.[14] It is, thus, difficult to imagine a challenge, short of one challenging refusal to entertain a § 553(e) rulemaking petition, that could succeed .[15] Yet, the PTO's failure to use § 553 rule making to flesh out its clearly substantive GRB requirements violates the APA scheme -- particularly because they are de facto, if not de jure, "rules". Applicants take them at face value. Few would invest time and expense (assuming that OED sticks to its guns) to petition the Commissioner. Because of that, if nothing else, a thorough public airing of issues concerning who may sit for the exam is long overdue.[16] * After being published in 36 IDEA 341 (1996), this article was substantially revised in 1998. [1] 33 U.S.P.Q.2d 1859 (D.D.C. 1994), aff'd 37 U.S.P.Q.2d 1057 (Fed. Cir. 1995). [2] In a Suggestion for Rehearing... kindly provided by the party, he insists that the case is not pro se. The attorney is denominated "Alex Premysler." [3] On cross-motions for summary judgment the Court rejected most claims with little discussion. The rulemaking challenge is the only matter of concern here. [4] Michelle Burke & Thomas Field, Promulgating Requirements for Admission..., 36 IDEA 145 (1995). [5] 37 U.S.P.Q.2d, at 1059. [6] Supra note 4. [7] 33 U.S.P.Q.2d, at 1860 (Further, the Commissioner did consider his experience but found it wanting.). [8] 33 U.S.P.Q.2d, at 1861; see also supra note 4, at 153. [9] 37 U.S.P.Q.2d, at 1059-60; see also supra note 4, at 152. [10] Doing so may be called "ad hoc rule making". [11] See, e.g., SEC v. Chenery (II), 332 U.S. 194 (1947). [12] 5 U.S.C. § 706. See also, Bowen v. Georgetown University Hospital, 488 U.S. 204, 208 (1988) ("Retroactivity is not favored in the law."). Compare e.g., Fressola v. Manbeck, 36 U.S.P.Q.2d 1211 (D.D.C. 1995), another recent decision rejecting a challenge to the PTO based on 5 U.S.C. Sec. 553. In that case, not only was the rule clearly exempt, but also no basis whatsoever was advanced for a claim of prejudice. Thus, it is highly unlikely that relief would have been afforded on any other basis, e.g., that the rule should have been published in the C.F.R. as arguably required by 44 U.S.C. Sec. 1510. (The offending rule, of which Freesola had ample notice, was published only in the Manual of Patent Examining Procedure.) [13] The District Court held specifically that Premysler had no property interest, 33 U.S.P.Q.2d, at 1862-63, but the Federal Circuit seems not to have been asked to address that issue. [14] Compare Jerri's Ceramics, discussed in Burke's and my article, supra note 4. [15] Even that could present problems. See, e.g., Heckler v. Chaney, 470 U.S. 821 (1985) (regulatory discretion); but see American Horse Protection Ass'n, Inc. v. Lyng (D.C. Cir. 1987) (considering what amounted to a § 553(e) petition). [16] Particularly in view of the PTO's inconsistent approach to most rules (explicitly exempt as procedural); see supra note 4, at note 61. Minor revisions May 15, 2005 URL: http://www.piercelaw.edu/tfield/premys.htm

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