The Ex Parte Appeal Rule which was set to go into effect December 10, 2008 is officially DELAYED.  The Rules will not go into effect tomorrow as originally posted.  A notice to be published in tomorrow’s Federal Register reads as follows:

The proposed information collection request is currently under consideration for approval by OMB.  The review by OMB has not been completed.  Therefore, the effective and applicability dates of the BPAI final rule 2008 will not be December 10, 2008.  The Office will notify the public when the revised effective and applicability dates are set.  In the subsequent notification, the Office will provide at least a 30-day time period before the BPAI final rule 2008 becomes effective.

The outcome is likely the result of OMB disapproval of the ICR as it was submitted.  It is possible that the 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.

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 here.

Tomorrow’s notice reaffirms the notice from November 30, that briefs may be filed under either the new rules or the old rules.  Prudent patent attorneys will need to consider the estoppel and inequitable conduct effects of complying with the new rules.

Our advice for the moment is that practitioners should not follow USPTO’s invitation to use the new rules’ option when filing an appeal and that practitioners make perfectly clear in their transmittal that the appeal is being filed under the 2004 rules.  Because the public record on the extent of burdens imposed by the new appeal rules is incomplete, Ron Katznelson believes that 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 doubtful at best.

According to Ron Katznelson:

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.

Today’s result is likely due to the tireless efforts of David Boundy, Vice President of Intellectual Property for Cantor Fitzgerald L.P., Rick Belzer of Regulatory Checkbook and Ron Katznelson, of Bi-Level Technologies. Furthermore, the Office has posted a list of questions and answers on the USPTO Web site regarding the implementation of the BPAI final rule 2008.  These questions and answers will be revised accordingly.

The “day ahead” display of the notice to be published tomorrow is available here.

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