On June 10, 2008, the USPTO published new Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals (73 Fed. Reg. 32937-32977, June 10, 2008; Final Rule). The new rules apply to all appeals in which an appeal brief is filed on or after December 10, 2008.
However, before these rules can go into effect, the PTO must obtain clearance from the Office of Management and Budget under the Paperwork Reduction Act. The PTO published two notices in the Federal Register inviting public comments on paperwork burdens associated with the Ex parte Appeal Rule. The notice that was required no later than the Notice of Proposed Rulemaking (that is, July 31, 2007), was published on June 9, 2008, 73 Fed. Reg. 32559, and the notice that was required to be published at least 60 days before the final rule notice (that is, April 10, 2008) was published on October 10, 2008, at 73 Fed. Reg. 58973. The bottom line? Time’s up.
The Paperwork Reduction Act (44 U.S.C. § 3501-3519) and implementing regulations (5 C.F.R. §§ 1320.1-1320.18) require that the USPTO to submit to OMB an “Information Collection Request” or ICR, basically a paperwork “invoice” that an agency proposes to give the public. An ICR must include “an objectively supported estimate of burden” The Act and Regulations set out timelines for agency publication and submission to OMB, public comment, and OMB evaluation. By law OMB has 60 days to either approve or disapprove the ICR, that deadline is now.
According to one of David Boundy’s letters to OMB, the PTO did not give a lot of consideration was given to public comments on the published rules:
The public comments in reply to the so-called 60-day notice dated June 9, 2008, suggested a number of ways in which burdens could be reduced or practical utility improved. The PTO paid no attention whatsoever to these comments in preparing the final rule. How do you know? The PTO could not have given them any attention because it promulgated the final rule on June 10, 2008 — one day after seeking public comment. The final rule went on display at the Office of the Federal Register the same day the request for comment was published.
Letters by Dr. Richard Belzer describe the PTO’s pervasive failure to follow the most basic requirements of rulemaking procedure –
- illegally splitting paperwork accounting for appeals off from the rest of patent processing, apparently in order to avoid accounting for burdens of the Continuations and Claims rules
- falsified certifications
- omitting filings
- giving the public one day for a comment period
- circumventing OMB’s ability to oversee a crucial rule making
- mischaracterizing the procedural stage of filings, in order to cover up previous breaches
- failing to break out burdens of the 2004-vintage rules from burdens of the new 2008 rules, apparently in an attempt to cover up the new burdens
- requiring illegal “duplicative” submissions of information that the PTO already has
- failing to include required information in the Notice of Proposed Rulemaking and the final rule notice
It’s truly ironic to see this magnitude and character of legal breach in a procedural rulemaking originating with the Board of Patent Appeals, whose members are required to be “persons of competent legal knowledge.”
Several public comment letters estimate the burdens of the appeal rule:
- A number of burdens – some several hundred million dollars per year – were simply ignored by the PTO (Boundy letter 2; Hoover Letter)
- The burdens for which the PTO did provide estimates are remarkably understated (Belzer 2, Intellectual Ventures, Katznelson, Stein Letter)
- The PTO’s errors stem from simple – but concerted and repeated – failures to follow procedural law (Belzer 1, Boundy letter 1, Boundy letter 2, Boundy letter 3, and Boundy letter 4, Katznelson)
- The need for the appeal rule arises largely from the PTO’s failure to implement procedural law during ordinary examination, and the burden for the PTO’s bad housekeeping should not be shifted to the public (Boundy letter 2 , Katznelson)
In the 28 year history of the Paperwork Reduction Act, the PTO has never before submitted an ICR addressing appeals. The Information Collection that governs post-filing “patent processing,” ICR 0651-0031 only covers the Notice of Appeal form and the Request for Oral Hearing. The 50-100 hours of substantive work for an appeal have never been disclosed to or approved by OMB.
Get ready for an additional workload the USPTO admits could be an extra $250 million per year in burden (although the PTO states it “determined” that the modifications it proposed to make to the existing appeal rules were “not significant for purposes of Executive Order 12866”). See the USPTO Appeal Checklist here.
While the public comments to the OMB are not yet available on the web site, we’ve posted some of them here:
- Boundy letter 1 – reversal on ‘new ground’ in examiner’s answer burden of proof 081110 2330 FINAL 1.pdf
- Boundy letter 2 re PTO failure to consider alternatives 081113 FINAL.1.pdf
- Boundy letter 3 – falsified certifications 081113 FINAL.pdf
- Boundy letter 4 re ambiguity in change ‘new ground of rejection’ FINAL.pdf
- Comments by Intellectual Ventures
- Comments by Katznelson-Appeal-ICR-Comments -Nov-17-2.pdf
- Kelmachter Letter (Practicing Attorney)
- Roberts Letter (Practicing Attorney)
- Stein Letter (Practicing Attorney)
- Belzer Comment Letter to OMB
- Belzer Burden Estimates of Info Collection
- Allen Hoover Letter to OMB
In the meantime, see the Comments on July 2007 Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals. The rules under the USPTO Paperwork Reduction Act page are here.
If you have comments or if you have prepared an appeal brief for submission under the new rules and have found the preparation to be onerous, please relate your experiences to David Boundy, Vice President of Intellectual Property for Cantor Fitzgerald L.P.