By
Donald Zuhn --
The
U.S. Patent and Trademark Office recently published a notice in the Federal
Register inviting public comment regarding the Requirements for Patent
Applications Containing Nucleotide Sequence and/or Amino Acid Sequence
Disclosures (74 Fed. Reg. 40163). David Boundy, the Vice President of
Intellectual Property for Cantor Fitzgerald L.P. and one of the architects of
the campaigns against the USPTO's claims and continuations, IDS, Markush, and appeals rules packages,
brought the six-week-old notice to our attention. Earlier today, we had an opportunity to discuss the sequence
listing notice with Mr. Boundy, Dr. Richard Belzer (a former civil service
staff economist in the Office of Information and Regulatory Affairs within the
OMB and another architect of the aforementioned campaigns), and Stephen
Albainy-Jenei (author of the Patent
Barristas weblog). While Mr.
Boundy and Dr. Belzer agreed that the sequence listing notice was fairly
noncontroversial, they wanted to remind patent practitioners about the
importance of providing comments, if for no other reason then to let the Patent
Office know that the patent community was paying attention.
As
for the notice itself, it briefly describes the ways in which a sequence
listing may be submitted to the USPTO (i.e., in paper form, on electronic
media, or via the EFS-Web) and the types of statements that may be required
depending on the form of the submission.
In the notice, the Office also proposes adding a new sequence
listing-related form -- a Request for Transfer of a Computer Readable Form
Under 37 CFR 1.821(e) (PTO/SB/93) -- to be used when the computer-readable form
(CRF) of an application's sequence listing is identical to the CRF of a
sequence listing submitted in another application.
The
part of the notice most likely to trigger comment concerns the USPTO's
paperwork burden calculations. The
notice estimates that it will take the public approximately 6 to 80 minutes to
gather the necessary information, prepare the Request for Transfer form or a
sequence listing, and submit either to the USPTO (see second table below).
Dr. Belzer and Mr. Boundy note that by law, these estimates are required
to be objectively supported (i.e.,
not based on guesswork or the opinion of agency staff), and they must include
everything in the expansive list given at 5 C.F.R. § 1320.3(b)(1):
(b)(1) Burden means the total time, effort, or financial resources expended by persons
to generate, maintain, retain, or disclose or provide information to or for a
Federal agency, including:
(i) Reviewing
instructions;
(ii)[-(iv)] Developing, acquiring, installing, and utilizing technology and systems for the
purpose of collecting, validating, verifying [, processing, maintaining,
disclosing and providing] information;
(v) Adjusting the
existing ways to comply with any previously applicable instructions and
requirements;
(vi) Training
personnel to be able to respond to a collection of information;
(vii) Searching data
sources;
(viii) Completing
and reviewing the collection of information; and
(ix) Transmitting,
or otherwise disclosing the information.
less
the time that would be expended on managing the information in the usual and
customary course of business.
Mr.
Boundy has also provided us with the table of estimates that the USPTO gave in
2006:
which
can be compared with the USPTO's current estimates (he notes that the time
required to request and assemble the information, format it, burn it onto a CD,
and retain all records for the life of the application and patent has dropped
from one hour to 15 minutes):
Members
of the public wishing to comment on the accuracy of the agency's estimate of
the burden (including hours and cost) of the proposed collection of information
are encouraged to do so. The
notice also invites comment regarding whether the proposed collection of
information is necessary for the proper performance of the functions of the
agency; ways to enhance the quality, utility, and clarity of the information to
be collected; and ways to minimize the burden of the collection of information
on respondents. Written
comments can be submitted by e-mail to [email protected] (include
A0651-0024 [email protected] in the subject line of the message), by facsimile to 571-273-0112
(marked to the attention of Susan K. Fawcett), by mail to Susan K. Fawcett,
Records Officer, Office of the Chief
Information Officer, Administrative Management Group, United States Patent and
Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, or using the
Federal Rulemaking Portal at www.regulations.gov, Docket ID: PTO-P-2009-0035
(link). All comments must be submitted on or
before October 13, 2009.
Mr. Boundy predicted that patent practitioners could expect to
see more of these types of notices as the Patent Office begins to revise many
of its old rulemaking habits -- habits that helped lead to the demise of the
claims and continuations, IDS, Markush,
and appeals rules packages. Dr.
Belzer noted that the USPTO must comply with these Paperwork Reduction Act
procedures in order to obtain a valid OMB Control Number, and that without that
number, it could not compel anyone to provide the demanded information. He also noted that the USPTO had historically
complied as minimally as possible with these statutory requirements, and in
some cases had not complied at all.
In Dr. Belzer's opinion, this was made possible by the fact that few
members of the public understand the Paperwork Reduction Act and fewer still
are willing to engage in the public comment process. It is Mr. Boundy's and Dr. Belzer's hope that the events of
the past two years have changed the patent community's willingness to engage in
a constructive and timely manner.
They also stressed that the new USPTO administration appears to be very
interested in working with members of the patent community to improve all
aspects of the examination process. Thus, participating now is the best way to
ensure that the patent community's interests and concerns are known and
understood as early in the process as possible, thereby making serious
controversies unlikely in the future.
Patent Docs
thanks Mr. Boundy and Dr. Belzer for their helpful comments and suggestions
regarding today's article.
I just read that monstrosity and I came away with one thought.
Did Boundy ever take himself a new picture?
Posted by: 6 | September 25, 2009 at 02:18 PM