Patent Law

OMB Review of Appeal Rules Times Out

By Stephen Albainy-Jenei

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.

The PTO published a notice in the Federal Register inviting public comments on paperwork burdens associated with the Ex parte Appeal Rule.  The Information Collection Rule requires that the USPTO to develop and disseminate ?an objectively supported estimate of burden.?  Since by law OMB has 60 days to either approve or disapprove the ICR, that deadline is now.

According to David Boundy, not 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.

The PTO has never submitted an ICR addressing appeals.  ICR 0651-0031 includes a single reference to the filing of a routine form announcing the intent to appeal, which the PTO estimates requires 12 minutes to prepare and submit.  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

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.

Also see:  Unhappy with the Ex parte Appeal Rule? Speak Now.

Full post as published by Patent Baristas on December 08, 2008 (boomark / email).