By Donald Zuhn --
Earlier this month, the Federal Circuit, in Mikkilineni v. Stoll, affirmed a decision of the District Court for the Eastern District of Virginia dismissing Mikkilineni's challenge of the U.S. Patent and Trademark Office's Interim Patent Subject Matter Eligibility Examination Instructions ("Interim Guidelines").
Plaintiff-Appellant M. R. Mikkilineni filed an application claiming "a method to fall-asleep by learning to use the process-algorithm in the brain [to] transform brain-neurons into a differentphysical state and produce melatonin and serotonin . . . without the use of drugs." Mikkilineni's claims were rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter, the Examiner explaining that the rejection was mandated under the Office's Interim Guidelines. One day after responding to the Examiner's non-final rejection, Mikkilineni filed suit against the Commissioner of Patents, alleging that the Patent Office violated 5 U.S.C. § 553(b)-(c) of the Administrative Procedure Act ("APA") by failing to provide notice and an opportunity to comment with respect to the Interim Guidelines. The District Court granted the Patent Office's motion to dismiss under Federal Rules of Civil Procedure 12(b)(1) and (6).
On appeal, Mikkilineni argued that the Interim Guidelines constituted substantive rules that were improperly promulgated without notice and comment rulemaking, and that the Office improperly rejected his application. In an opinion issued per curiam, the panel noted that under § 553 of the APA, "substantive" rules require notice and comment and "interpretative" rules do not. The panel also noted that "[a] rule is 'substantive' where it causes a change in existing law or policy that affects individual rights and obligations and 'interpretive' where it 'merely clarifies or explains existing law or regulations.'" While Mikkilineni contended that the Interim Guidelines were substantive rules because they substantively deprived him of his rights by requiring the Examiner to reject his claims under § 101, the panel found this argument to be without merit, explaining that the Office's notice requesting comments regarding the Interim Guidelines stated that the Interim Guidelines were interpretive guidance based on the Office's current understanding of the law, "do not constitute substantive rule making and hence do not have the force and effect of law," and that "[r]ejections are and will continue to be based upon the substantive law." The panel therefore concluded that the Interim Guidelines are interpretive, rather than substantive, and were thus exempt from the notice and comment requirements of § 553 of the APA. (Interestingly, the panel did not rely on the fact that the Patent Office appears to have subjected the Interim Guidelines to notice and comment rulemaking.)
With regard to Mikkilineni's second argument (that the Patent Office improperly rejected his application), the panel observed that the District Court's dismissal was proper because the Court did not have jurisdiction to review the Examiner's non-final rejection. The panel noted that when Mikkilineni receives a final rejection from the Office, he can appeal the rejection to the Board, and only after receiving a Board decision affirming that final rejection will he be able to seek judicial review.
Mikkilineni v. Stoll (Fed. Cir. 2010)
Panel: Circuit Judges Gajarsa, Linn, and Dyk
Per curiam opinion