USPTO News: Patent Office to Publish Notice Delaying New Appeals Rules

    By Christopher P. Singer --

In a Notice to be published in tomorrow's Federal Register, the U.S. Patent and Trademark Office announced that the new rules relating to Practice before the Board of Patent Appeals and Interferences in Ex Parte Appeals (Appeal rules) will not take effect on December 10, 2008, as originally scheduled.

The primary reason for the delay, according to the Notice, is that the Office of Management and Budget (OMB) has not yet had a chance to complete its review of all the information submitted in response to the information collection under the Paperwork Reduction Act (PRA).  As previously reported by Patent Docs, the public must be afforded an opportunity to submit comments directed to the burden impact of any proposed rule change to the OMB under the PRA.  The OMB uses the information provided by the agency advancing the rule change as well as the comments provided by the public and assesses the ultimate burden impact of the proposed rule changes.  This helps to insure that any rule changes advanced by a particular governmental agency are not unduly burdensome on the public.

Patent Docs will monitor the status of the Appeal rules and provide an update as appropriate.

For additional information regarding this topic, please see:

• "More on Ex parte Appeal Rule," October 10, 2008
• "Patent Office Posts Comments on New Appeals Rules," September 11, 2008
• "More on USPTO Rulemaking Practices,"July 21, 2008
• "USPTO Rulemaking Practices Being Called into Question (Again)," July 20, 2008
• "New Appeals Rules Published," June 10, 2008
• "Patent Office to Publish New Appeals Rules on Tuesday," June 9, 2008

Comments

[EG]

Chris,

Thanks much for getting this information out. There are quite a few of us here sweating bullets about how (and if) we needed to deal with these new appeal rules. And I frankly hope OMB trounces these new appeal rules. The new appeal brief requirements, in many areas, exalt form completely over substance. For example, the Statement of Facts section is very poorly explained, without even an example of what one of these sections looks like. I wouldn't be bothered at all if these new appeal rules simply "died." The worst we have to live with in the current appeal rules is the Summary of Claimed Subject Matter section, which, after many years of sorting out, is starting to become understandable as to what complies.

[Chris Singer]

EG - This is the kind of item I like to report about! Perhaps this OMB delay will continue to be the same kind of limbo for the Appeals rules as it was/has been for the IDS and Markush rules. Maybe the delay is driven in part by an interest in the upcoming CAFC decision on Appeal of Tafas v. Dudas? Maybe we will be fortunate enough to maintain status quo until the next administration gets put in place, allowing us all to take a collective breath before the PTO reloads with rule changes (or the Congress gets to reform).

Thanks for the comment.

[Les]

Dr. Belzer is to be congratulated for spear heading a campaign (on this blog and elsewhere I believe) to get people to submit comments to OMB.

EG: I have now received a decision on appeal (completely wrong decision I might add) that appears to be following the format of the new rules in reverse. It includes a list if alleged facts, out of context. Then the reasons for decision section makes reference to those facts like this: (FF.27) throughout its remarks. This makes the argument completely incomprehensible, and, I would argue, appears to have lead to their wrong headed conclusions.

[Ron Katznelson]

Chris,

Many of the comments during the last 30 days that led to OMB's decision are now posted on http://patentbaristas.com/

Apparently, OMB delay was indeed in the plans. Fortunately, it appears that what I feared could have happened in case of an OMB delay did not. The "delay in OMB review" outcome we see today is consistent with OMB's disapproval of the ICR as it was submitted. OMB simply gave the USPTO a face-saving option of delaying the rules on its own so that OMB would not have to be on record as publicly disapproving the ICR at this time.

This outcome was probably known to USPTO on November 20th when it issued its Federal Register notice "clarification" on the "applicability" of both rules. In this "clarification", the USPTO is essentially inviting parties to submit appeals under the new rules, even though these rules are not in effect. See http://www.uspto.gov/main/homepagenews/2008nov20.htm

It is important that practitioners not follow USPTO's invitation to use the new rules' option when filing an appeal and that they make clear in their transmittal that the appeal is filed under the 2004 rules. Because the public record on the extent of paperwork burdens imposed by the new appeal rules is incomplete, this is important for three reasons:

(a) The USPTO will likely use the fact that some filings are made under the new rules to later argue that the public does not really care much which rules are used - thereby making a false point about lack of incremental burdens.

(b) It is also clear that appeal cases that would be most negatively impacted by the new rules would naturally be filed under the old rules and therefore the voluntary filings under the new rules would be heavily biased towards the simple and short cases. The USPTO will most likely use their "junk science" methods to characterize the ensemble of appeals filed under the new rules based on this voluntary highly biased population. This will enable the USPTO to falsely characterize all appeals if filed under the new rules.

(c) It is unlikely that the new appeal rules will survive proper OMB PRA review. As numerous comments show, certain features of the new rules would have to be withdrawn or modified substantially. Therefore, practitioners' "learning curve benefits" from attempting to follow rules that may never survive are doubtfull at best.

My recommendations above would not have been made had I not experienced the clearly intentional USPTO deviations from procedures of law and its attempts to use "junk science" to support its rulemaking actions in the last two years. Appellants should therefore ignore USPTO's new appeal rules and use only the rules that are currently in effect - the 2004 rules, the rules they are familiar with.

Ron Katznelson

[Chris Singer]

Ron, Thanks for the informative comment and your suggestions for reasons why practitioners should not accept the PTO's "invitation" to file Appeals under the new rules.

In looking for updates to the rules status yesterday, I noticed the the OMB had not assigned a control number to the ICR for these rules. I didn't really know what to make of that, if anything. However, after reading your comment, I checked back at the reginfo.gov site, and noticed that of the ~50 ICRs under review, only 3 have no OMB control number assigned. Maybe that means something, or maybe that means nothing...

The PTO also provides links to the public comments it receives under the PRA (http://www.uspto.gov/main/homepagenews/2008sep03.htm). Reading these comments really makes one (me at least) appreciate the job that people like you and David Boundy are doing on behalf of US practitioners and applicants.

[David Boundy]

Chris -

A "control number" is a number that an agency must display anytime an agency wants to collect information from the public.

After an agency follows the proper procedures and files a request for OMB's permission to collect information from the public (called an "information collection request" or ICR), and OMB approves the ICR, OMB's approval is signified by issuing a "control number."

Thus, the absence of a "control number" signifies that OMB has not yet approved the ICR, and the agency is not permitted to collect the information.

Here is the relevant statute:

44 U.S.C. § 3512. Public protection

(a) Notwithstanding any other provision of law, no person shall be subject to any penalty for failing to comply with a collection of information that is subject to this subchapter if--

(1) the collection of information does not display a valid control number assigned by the Director in accordance with this subchapter; or

(2) the agency fails to inform the person who is to respond to the collection of information that such person is not required to respond to the collection of information unless it displays a valid control number.

(b) The protection provided by this section may be raised in the form of a complete defense, bar, or otherwise at any time during the agency administrative process or judicial action applicable thereto.

I agree with Ron - the PTO's failures to comply with statute are so numerous and so glaring and so bald (and so in contrast to PTO's compliance those same laws when promulgating less-controversial rules, including several instances of self-correction of screw-ups) that the failures during the Appeal Rule can only have been intentional. For example, in the Notice of Proposed Rulemaking, the PTO stated that it knew it was required to make a filing with OMB, but refused to do so.

For a list of pure procedural breaches (omitted filings, late filings, clearly falsified data, etc.), see Rick Belzer's letter at

http://www.patentbaristas.com/wp/wp-content/uploads/2008/12/081014-0651-00xx-comment-to-omb.pdf

[NIPRA anonymous]

Well, it's 6:30 am EST on Dec. 10, and still no apparent notice of the delay posted on the USPTO web site... but the Federal Register notice has been published, so the delay in the implementation of the appeal rules is apparently official:

http://edocket.access.gpo.gov/2008/pdf/E8-29297.pdf

(The PTO wouldn't be ballsy enough not to post the announcement on its web site, would it??)

[Chris Singer]

NIPRA - While one could argue that it would be responsible for the PTO to report the delay to the public, it has little motivation to make that announcement. This goes directly to Ron's points in his comment above about the motivation behind the PTO announcing that it would "still accept" Appeal Briefs in the new format, before the rule changes take effect. The longer the PTO delays reporting on the delay of effect of the Appeal rule changes, the more it just reinforces Ron's cautionary points.

[Ron Katznelson]

The USPTO now has an announcement on its home page.

It also states:

"In the interim, the USPTO will continue to accept appeal briefs in either the current format, or the new format as outlined in the final rule." It points to a link that contains the final rule not in effect, but not to the current rule that IS IN EFECT.

As I explained in my comment above, for the benefit of all patent applicants, practitioners should NOT file new appeals under the "final rule" because (a) it is most likely NOT the final rule and (b) it would create a biased "statistical" record that the USPTO may misuse to frustrate our future objective burden analysis. At a minimum, it is highly likely that OMB review would result in USPTO submission of a “corrected” ICR. When we next engage on a “corrected” ICR, we will have to repeat critical analytical work that went into our prior comments (see references to such analysis in Section 2 of my comments at http://www.patentbaristas.com/wp/wp-content/uploads/2008/12/katznelson-appeal-icr-comments-nov-17-2.pdf ).. The last thing we need is to contend with “informal surveys” that the USPTO may provide based on a biased population of briefs filed under the new rules.