Dear editor,

Your blog at http://www.patentbaristas.com/archives/2008/12/05/new-uspto-patent-appeal-procedures-still-on-for-december-10-2008/#respond has a quote from an OMB spokesperson who was asked about the appeal rule’s review:

The Paperwork Reduction Act gives OMB 60 days to review agency information collections. While every effort is made to conclude reviews within this time-frame occasionally reviews take longer in order to gather and analyze the necessary data to make an informed decision.”

This predictive statement is perplexing, given the time that was still left for the conclusion of the 60-day period. OMB is known to typically conclude its reviews on the last day. If the ordinary OMB practice is to conclude by 60 days, why should a public statement focus predictively on the extraordinary when there is another week to go? What the spokesperson did not tell you is that failure to act within 60 days has the same effect as approval.

As the comments widely show, the USPTO violated the PRA and none of OMB’s regulations permit it to proceed with information collection unless it starts all over with proper public notice and comment. The USPTO may believe that its ICR falls somehow within any one of the three subsections of OMB’s PRA regulations. But in all three of such paths, OMB’s failure to complete the ICR review within 60 days would permit it to say that it approved nothing but the result would be a temporary collection authority under a control number that the OMB must provide to the USPTO:

5 C.F.R 1320.10(c): “If OMB fails to notify the agency of its approval, instruction to make substantive or material change, or disapproval within the 60-day period, the agency may request, and OMB shall assign without further delay, an OMB control number that shall be valid for not more than one year“.

5 C.F.R 1320.11(i): “If OMB approves the collection of information or if it has not acted upon the submission within the time limits of this section, the agency may request, and OMB shall assign an OMB control number“.

5 C.F.R 1320.12(b)(2): “The agency may continue to conduct or sponsor the collection of information while the submission is pending at OMB. In the case of a collection of information not previously approved, approval shall be granted for such period, which shall not exceed 60 days, unless extended by the Director for an additional 60 days, and an OMB control number assigned“.

5 C.F.R 1320.12(e)(2): “If OMB fails to notify the agency of its approval, instruction to make substantive or material change, or disapproval within the 60-day period, the agency may request, and OMB shall assign without further delay, an OMB control number that shall be valid for not more than one year“.

If OMB takes the “comfortable” position of not acting at all by December 10 and issuing a control number to USPTO anyway, OMB would not be on the record of approving the ICR. USPTO will get their temporary 60-day clearance, and off they go with the new rule. OMB’s action at a later date would be too late and therefore of less import and out of public focus.

It is important for your readers to know that this ICR review by OMB is not a regulatory review by OMB of the appeal rules. The appeal rules were concealed from OMB’s regulatory review in 2007 through their designation as “insignificant” by USPTO. This ICR approval request is for paperwork burdens associated with the appeal rules. The USPTO violated the PRA by not submitting this ICR for review during the 2007 rulemaking process. OMB’s disapproval of this ICR would not mean that the appeal rules are not in effect. Rather, it would only mean that USPTO would not be able to enforce the imposition of particular burdens by the appeal briefs and reply briefs on the public. In this case, it would be up to the USPTO to recognize that under such circumstances, it should withdraw the rules to avoid confusion and avoid making illegal decisions of holding briefs non-compliant.

If your readers are unaware of the details above, fewer flags would be raised on December 10 in the event of no action by OMB, as most in the patent bar may think that nothing has happened yet and that they should just wait for OMB’s later action of disapproval. In that event, it should be clear that OMB will have actually approved the collection temporarily and that no later action can repeal the rule.

Best regards,

Ron Katznelson

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