PTO Announces No IDS or Markush Rules During Bush Administration

    By Kevin E. Noonan --

The American Intellectual Property Lawyers Association (AIPLA) reported today that two of the pending U.S. Patent and Trademark Office rules packages, regarding changes in the rules governing Information Disclosure Statements ("the IDS rules") and claims encompassing multiple alternative embodiments ("the Markush rules") will not be published as final rules (and thus, will not go into effect) before the end of the Bush administration.  This outcome was announced by Margaret Focarino (at right), Deputy PTO Commissioner for Patent Operations, during her appearance before the AIPLA Committee on Patent-Relations with the USPTO.

The proposed IDS rules would have changed the rules of practice to require "additional disclosure" (in the form of the dreaded Patentability Justification Document (PJD); see "More on Second Letter to OMB Criticizing the IDS Rule") for applicants submitting more than 20 documents, any English-language document over 25 pages in length, or any foreign language document.  The requirements for PJDs making them excessively burdensome included requirements that they:  "(1) identify the feature, showings or teachings that caused a document to be cited; (2) include a representative portion of the document where those features, showings or teachings may be found; and (3) correlate the features, showings or teachings to related claim or specification language."  In addition to the excess burden, these requirements raised the specter of inevitable accusations of inequitable conduct against applicants or their representatives forced to submit them.  These rules were published in the Federal Register for public comment on July 10, 2006 (71 Fed. Reg. 38808).

The Markush rules would require an applicant to limit claims to a "single invention" for claims reciting distinct embodiments in the alternative.  These rules were complementary to the now-enjoined continuation and claims rules, since one purpose of the Markush rules was to prevent applicants from "circumvent[ing the rules] that limit the number of claims that may be asserted by presenting a single claim that sets forth multiple independent and distinct inventions in the alternative."  The rules would require an applicant to limit such claims to a single invention, defined as one "where all the species encompassed by the claim:  (i) share a substantial feature essential for a common utility, or (ii) are prima facie obvious over one another.  These rules were published for public comment on August 10, 2007 (72 Fed. Reg. 44992).

In making her announcement, Deputy Commissioner Focarino referenced the memorandum issuing from the Office of Management and Budget on May 9, 2008 that "regulations to be finalized in this Administration should be proposed no later than June 1, 2008, and final regulations should be issued no later than November 1, 2008" (see "Maybe It's Finally Time They Went Home").  This memorandum came from President Bush's Chief of Staff, Joshua Bolton (at left), who wrote:

We need to continue this principled approach to regulation [balancing the need for regulation with the peoples' right to be allowed to make their own decisions] as we sprint to the finish, and resist the historical tendency of administrations to increase regulatory activity in their final months.

Mr. Bolton directed agencies, including the Patent Office, that "[e]xcept in extraordinary circumstances," any regulations to be promulgated by the Bush Administration must be proposed no later than June 1st and implemented no later than November 1st.  In addition, Mr. Bolton affirmed that "[i]n identifying priorities and establishing schedules, agencies should provide adequate time for necessary analysis, interagency consultation, robust public comment, and a careful evaluation of and response to those comments."

This decision does not preclude the Office from publishing either of these rules after January 20, 2009, however.  With the change of administration, the current occupant of the Director's chair, Jon Dudas, will leave the Patent Office, perhaps to be replaced (in the interim or longer) by current Patent Office officials.  That individual could decide to publish the "final" version of the rules at any time thereafter.  But any such attempt to implement these rules would need to overcome the impediment presented by the Paperwork Reduction Act (PRA) and approval from the OMB.  For yet another set of rules, relating to rules of practice before the Board of Patent Appeals and Interferences, the Patent Office has not complied with the PRA and those rules have not gone into effect.  The period for public comment to the Office of Management and Budget on the administrative and paperwork burdens of those rules remains open until November 10, 2008.

Patent Docs thanks Hal Wegner for alerting us to the AIPLA notice and David Boundy for reminding us of continuing efforts to force the Patent Office to comply with the PRA rules.

For information on this and other related topics, please see:

• "Maybe It's Finally Time They Went Home," May 28, 2008
• "Lunch with Commissioner Doll," May 13, 2008
• "USPTO Posts Comments on New Rules for Alternative Claiming," April 23, 2008
• "You Can't Fight the USPTO -- or Can You?" March 11, 2008
• "Patent Office Publishes Notice Regarding Impact of Proposed Markush Claims Rules on Small Entities," March 10, 2008
• "Federal Register Notice Regarding Markush Claims to Publish on Monday, March 10, 2008," March 7, 2008
• "OMB Receives Additional Submission Regarding PTO Rules Packages," February 21, 2008
• "The OMB Isn't Listening, Either", December 11, 2007
• "IP Australia Lifts Requirement to Submit Documentary Searches," October 25, 2007
• "More on Second Letter to OMB Criticizing the IDS Rule," October 24, 2007
• "OMB Receives Second Letter Criticizing Proposed IDS Rule," October 23, 2007
• "Cantor Fitzgerald VP Criticizes IDS Rule in Letter to OMB," October 18, 2007
• "Patent Office Proposes New Rules for Alternative Claiming," August 12, 2007

Comments

[EG]

Kevin,

We could hope that these IDS and Markush Group Rules would simply fade away into oblivion. But as David Boundy points out, that's a faint hope. Meanwhile, more important issues like properly managing and training the Examining Corps are neglected by the current administration; I'm not hopeful (yet) that this will change with next administration.