Taking Action Against the new Ex Parte Appeal Rules

On October 8, 2008, the PTO invited public comments on the potential paperwork burden caused by the new Ex parte Appeal Rules (73 Fed. Reg. 32937-32977, June 10, 2008).[Request for comment]. Economist Dr. Richard B. Belzer is working to push the Office of Management and Budget (OMB) to reject the rules – in part by arguing that they will be unduly burdensome. Any comments that come in response to this Information Collection Request (ICR) will be sent directly to the OMB.

The following comes from Dr. Belzer via David Boundy:

WHAT YOU NEED TO DO Obtain the documentation from the PTO. The first thing to do is send an email request to the PTO asking for a copy of the relevant documents: To:                       Susan.Fawcett@uspto.gov Subject Line:        0651–00xx Board of Patent Appeals and Interferences (BPAI) Actions copy request Message Body:    Please send by reply email a copy of this ICR and the Supporting Statement. Please include a bcc to me (rbbelzer [at] post.harvard.edu) so that I can count how many requests are sent to the PTO as a result of this alert. You should receive at least two documents (we are awaiting our copies).  The text of the ICR will contain summary information. By regulation, the Supporting Statement must include objectively supported estimates of burden, and these estimates must be transparent and easy for you to reproduce to see how they did it. Submit a public comment to OMB. For the next 30 days, OMB will be accepting public comment on the paperwork and recordkeeping burdens associated with the Appeal Rule. By law, OMB has 60 days to either approve or disapprove the ICR. That deadline will run out very close to December 10, 2008, effective date of the Appeal Rule. For that reason, it is imperative that public comments be submitted as early as possible. Do not wait until Day 29 to decide to do this. It is essential that OMB hear from you. The more thoughtful, reasoned, and documented public comments OMB receives, the better. Usually, OMB does not receive any public comments at all, and in these cases it is OMB is compelled by necessity to assume that what the agency provided is valid and reliable. Your job is to make sure OMB gets higher quality information. Public comments on the ICR should be sent as soon as possible, and must be sent by November 7, 2008, via email to: Nicholas A. Fraser Desk Officer for USPTO Office of Information and Regulatory Affairs Office of Management and Budget Nicholas_A._Fraser@omb.eop.gov What to include in your public comment. Public comments to OMB should address the following issues: Has the PTO provided an objectively-based estimate of the number of hours it will take to comply with the Appeal Rule? Historically, the Patent Office has severely underestimated the number of hours, and has failed to provide any analytical transparency into the sources or methods employed. Often, the PTO's burden estimates consist of mere "judgment" or "belief." Has the PTO provided an objectively-based estimate of the opportunity cost of each of these hours? Historically, the Patent Office has significantly understated the hourly cost of attorney time, and assumed that tasks normally performed by attorneys can be performed by lower-cost paralegals and administrative staff instead. Has the PTO provided an objectively-based estimate of the number of applications expected to be appealed?  There is considerable controversy about how many appeals should be expected. For purposes of public comment on this ICR, the Continuations Rule, currently enjoined by the District Court in Tafas v. Dudas but now under appeal, should be assumed to apply. Do not assume that Tafas will be upheld.  You are entitled to take the PTO at its word, that issues formerly resolved through continuations must now be resolved through appeal. Did PTO contact you for assistance or information to help them estimate the burden associated with the Ex parte Appeal Rule? By law and regulation, the PTO is required to consult with those who would bear the burden of complying with information collection requirements. They do not have to consult with all of you, but they do have to consult with some of you. Statements from the organizations that logically should have been consulted (e.g., AIPLA, ABA-IP, IPO, NAPP) stating that they were not consulted would be especially helpful. Which elements of the Ex Parte Appeal Rule require you to submit information that the PTO already has in its possession, albeit in another form? It is against the law for OMB to approve the collection of duplicative information. Thus, most contents of the appendix required by current and proposed 37 C.F.R. § 41.37(t) are simply illegal. Are there any other provisions that you believe are duplicative?   I'd very much appreciate your help ensuring that OMB receives a rich set of highly informative public comments. I would like to make sure that comments are submitted by a variety of entities (organizations, firms, large, small, from a variety of technological areas), and I can help you target your efforts to be informative without being tendentious. A series of conference calls may be scheduled to assist you. To indicate interest in participating, please contact me by email at rbbelzer [at] post.harvard.edu or by phone at 703-780-1850. Richard B. Belzer

APPENDIX: DEFINITION OF "BURDEN" 5 C.F.R. 1320.3(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) Developing, acquiring, installing, and utilizing technology and systems for the purpose of collecting, validating, and verifying information; (iii) Developing, acquiring, installing, and utilizing technology and systems for the purpose of processing and maintaining information; (iv) Developing, acquiring, installing, and utilizing technology and systems for the purpose of 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.

Comments

[Hello?]

Fight the inevitable! To battlestations! Man your posts!

[lol machine]

Hello? states "Fight the inevitable!"

The Appeal rules seems just as 'inevitable" as the Continuation rules...

[Hello?]

What? You mean it will take a major corporation standing up to them and spending big $ combined with a willful lol interpretation of statute by the courts to overturn them?

You're probably right. Then a modified version will be passed a year later anyway and I'm right.

[peach]

The Federal Paperwork Reduction Act appears to create an agency (Office of Information and Regulatory Affairs) that is supposed to work with other agencies to reduce burdensome paperwork. The new appeal rules do appear to add burdensome paperwork that will add little additional benefit and maybe more opportunities for mistakes. (Maybe this law was really just intended to make the gov't online, though?) Anyway, the Director of this agency could be asked to review the rules proposed by the PTO.

Here is the Act:
http://www.archives.gov/federal-register/laws/paperwork-reduction/3501.html

[David Boundy]

Hello is about 10% right.

A modified version of some appeal rule will, of course, emerge at some point in the future. That's about all that is correct.

A Paperwork Reduction Act review occurs within the executive branch, not the courts. The cost is much lower than a litigation.

Also, from this point forward, the PTO will be accountable to the White House to show that its rules are cost-effective. This morning's Notice is one of several recent events that shows that the White House has caught a strong smell of rat, and attitude of defiance toward the law, coming from the PTO. Recent events suggest that the PTO has been told that it may no longer simply ignore the procedural law governing rulemaking simply for the PTO's convenience. The PTO may no longer provide cost estimates that are made up out of thin air, with no objective support, that the Office itself acknowledges to be tiny fractions of the actual cost.

Yes, there will be future proposed rules, both appeal and elsewhere, but they will be balanced to minimize costs for all parties. I can't yet say this with certainty, but I strongly suspect that the White House has told PTO that *all* future rulemakings will require full-blown regulatory analyses, because the White House has found that PTO's certifications of cost burden are not credible.

The PTO's reign of terror is over (assuming that good comment letters are written to OMB - I don't want to discourage anyone!)

[JohnDarling]

"Hello is about 10% right."

That's about 10% more than e6k, er I mean Hello?, has ever been.

Do I detect improvement?

LOL

[Hello?]

"Recent events suggest that the PTO has been told that it may no longer simply ignore the procedural law governing rulemaking simply for the PTO's convenience. The PTO may no longer provide cost estimates that are made up out of thin air, with no objective support, that the Office itself acknowledges to be tiny fractions of the actual cost."

Which recent events? The request for comment? That sure does provide support for your big "ooo they're on to them now!" theory.

If being 10% right is the same as being 100% right then yes, you're right that I'm 10% right.

[AllSeeingEye]

Hello? Congratulations, you have become the most annoying poster on Patently-O.

Actually, the Appeal Rules are really not so bad. Am I missing something here? The only strange thing is that they prevent new arguments and new evidence from being raised in the Appeal. But that's actually not a bad thing. Forces the applicant to get their act together during prosecution and properly narrow the issues BEFORE appeal.

Also there is some talk about requiring a 116 submission before an appeal can be filed. Frankly, that makes sense too.

[Just Visiting]

"Actually, the Appeal Rules are really not so bad. Am I missing something here? The only strange thing is that they prevent new arguments and new evidence from being raised in the Appeal."

I don't believe the rules prohibit new arguments from applicants. The applicant has to either explicitly indicate that an argument is new or point out where the argument was raised before.

The rules even acknowledge situations where new arguments are unavoidable but does not limiting the use of them to those situations.

Could you elaborate on the benefit of requiring a 116 submission before appeal? That doesn't make any sense to me.

[Lowly]

The burdensome part of the new appeal rules is having to rehash every point the examiner made that you're contending and give pinpoint cites, having to cite to where you made arguments before, etc.

It seems the appeal board can't be bothered to read the case file, so they want the applicant to have to spoon feed the entire record to them.

Ridiculous.

[EG]

ASE,

These Appeal Rules simply exalt form over substance, and do nothing to address why so many appeals are being made (namely, "bad" rejections). They are also part and parcel of the whole Rules package scheme (continuation-claim limitation Rules, IDS Rules, and Markush Rules) by the current USPTO hierarchy which is misguided, poorly thought out, improperly enacted, and extremely costly.

The big problem with these Appeal Rules is the 30 page limit on briefs which can be a real challenge if you have, as I and others have, so many "bad" rejections to address. Providing the "petition route" as the way to increase the page length of the brief is "illusory" (have you ever had a petition acted on by the USPTO promptly, or say in less than 6 months?). And if you don't argue the point in the brief, then it is deemed "waived", so there's a real impetus to argue each and every valid point. Perhaps the most annoying aspect of these Appeal Rules is that there's still no contervailing requirement on the Examiner's Answer.

That's my beef with these Appeal Rules in a nutshell.

[Less]

From Ms. Fawcett

The ICR has been submitted to the OMB and is expected to be publicly available within 24 hours on the web at the Federal Information Collection Review page at RegInfo.gov.

Once loaded to the RegInfo.gov site, you may access the full submission. Please go to http://www.reginfo.gov/public/do/PRAMain and search under “currently under review.” You will search the Department of Commerce list for the various “PTO” submissions under review. You can also perform an advanced search for the agency and sub-agency search, and select the status “Received in OIRA”.

If you are interested in obtaining a paper copy of the submission posted to the www.RegInfo.gov site, I can mail you a printed copy. To request a printed copy, please provide me with your physical mailing address.

If you are still interested in an electronic copy through e-mail, let me know. Be advised that it could take 2-3 business days to process your request.

Thank you very much.

[mark]

"The big problem with these Appeal Rules is the 30 page limit on briefs which can be a real challenge if you have, as I and others have, so many "bad" rejections to address."

Yes. You'll note that this page limit applies only to the Grounds of Rejection, Statement of Facts, and Argument sections of the brief, but the font must be 14 point, including block quotes and footnotes; the text, with certain exceptions must be double spaced, and block quotes indented; and arguments relating to separate grounds of rejection or separate claim groups must be placed under their own subheading. All of this limits actual amount of space for real substantive argument. Additionally, all of those required cross-references by page and line in the record waste precious space for making real arguments, and unless we're very careful may break up those arguments into so many fragments that we risk the board members not understanding them.

The real hidden purpose of the new rules may be to give the PTO examiner a big advantage in winning his/her arguments. The rule (41.39) for the Examiner's Answer is just seven lines long and doesn't make any similar demands upon the Examiner - no page limits, no requirements as to form, no detailed description of required content - simply, respond to the Appeal Brief however the Examiner wishes.

[mark]

Oh, I forgot to mention that 14 point, double spaced, is 36% less space than the 12 point, line and a half, that most of us have been used to using in our submissions. Equivalently, 30 new pages equals just 19 former pages.

[Hypocrisy!]

"It seems the appeal board can't be bothered to read the case file, so they want the applicant to have to spoon feed the entire record to them."

Ahhhhh my eyes! THE HYPOCRISY! Please Mr. examiner, point out each and every limitation in the claim for me from the reference, I can't be bothered to read and understand it myself. But no no no Mr. board, I don't want to point out to you what arguments were made where! Ridiculous irony indeed!

I was just waiting for someone to say something like that Lowly. I can always depend on you to show the off the worst attributes of those in your profession's behavior.

[AllSeeingEye]

Don't get me wrong, I'm not celebrating the Appeal Rules, but they are, by far, less onerous than the notorious "other" rules package the PTO tried to shove down everyone's throat.

The message is to more vigorously prosecute your case during open prosecution. While many Examiners are in the annoying habit of not really reading the references or the claims until after final, some applicants share the blame with milquetoast prosecution. I know some prosecutors who are loathe to write more than a few lines of argument and then only as a direct response to what the Examiner has noted. Applicant's (representative) must "take charge" of prosecution early and vigorously and pro-actively treat all the issues as best as possible as early as possible in prosecution. The aim of appeal is to rule on a narrow issue, not to provide a substitute for a proper examination.

[AllSeeingEye]

At present, an applicant can file a notice of appeal for any claim that has been twice rejected. Therefore, in many cases, you can file an appeal before final rejection. In the comments in the Federal Register it was noted that there may be amendments to the appeal rules that further require 1) a final rejection; and 2) an after final submission that was denied entry.

[The Most Dangerous Branch]

DC, I wish you had a permanent forum where we could rant about the USPTO. Things are so bad right now there. I honestly think that if I saw Jon Dudas on the street I would walk up to him and spit in his face.

[e6k]

"The Most Dangerous Branch"

And don't you forget it!

[David Boundy]

Hypocracy! -

That's called "burden of proof" or "burden of coming forward." It's not hypocracy, it's the law.

I've noticed that the PTO has a general problem with that concept.

[Less]

Ok, so after jumping through some hoops I get to this page:

http://www.reginfo.gov/public/do/PRAViewICR?ref_nbr=200809-0651-003

Which includes a link to this page:

http://www.reginfo.gov/public/do/PRAViewIC?ref_nbr=200809-0651-003&icID=186705

Mr. Belzer, where do we begin our attack?

[e6k]

"That's called "burden of proof" or "burden of coming forward." It's not hypocracy, it's the law.

I've noticed that the PTO has a general problem with that concept."

Orly, is that what item to item matching is? I guess that when you used to get a rejection in the 70's we never, ever, met the "burden" of proof.

FYI It's hand holding pure and simple. Brought on by your QQ.

[BentwaterBlitzers]

The rules are EXTREMELY BURDENSOME !!!

On a currently pending appeal, I had a run in with a group that acted like the new rules had already been adopted, and I had to go back and pointedly argue that they couldn't require the items, yet....

One of the most time consuming items is the COMPLETE MAPPING OF TERMS (as the term was used by the PTO in my case on appeal) - but the requirement to identify WHERE in the SPEC and WHERE in the drawing EACH AND EVERY TERM in EACH AND EVERY CLAIM ON APPEAL is found....... that basically needs a software engine for compliance on any economic basis... and while there are "deposition" software engines that can be adapted, there are no current IP engines for this that I've seen... and certainly none for the drawings, after the fact, if not taken from the drawing program directly. This effort will double (or more) the cost of appeals for many small firms - and thus for independent inventors and small companies.

[BentwaterBlitzers]

And the requirement for 14 point type is nothing but simple "IN YOUR FACE" abuse of power by the PTO - to cripple the ability of appellants to make their case... ...so the PTO will allow fewer cases... ... and many meritorious inventions will be denied US patents (even though they may STILL get them in Canada or Europe or elsewhere!!!)

[e6k]

IT'S A SLAP IN THE FACE!!!!!!!!!!111111111

[curious]

Has anyone taken a look at current appeal briefs to determine whether they would make the page limit if they were rewritten to comply with the proposed new rules?

Dennis, that would be an interesting study for some of your ambitious law students.

[curious]

Dennis,

were AIPLA, ABA-IP, IPO, NAPP consulted? Please find out and post for us.

Thanks

[T]

Bentwater -

I have been "required" to present the claim diagram in the "summary" section of briefs for about 2 years now.

I generally provide it by pasting the claims into the summary section and then, after the preamble and after each indented element parenthetically provide a list of figures, reference numerals and paragraph ranges liberally selected from around spots in the spec where the related reference numerals are found. For particularly important elements I might provide the parentheticals right after the particular item, within and indented claim element.

It is a pain, but it feels like it might actually help the board see the light....and usually results in the final rejection being withdrawn (when the examiner actually reads at least the referenced portions of the spec)

[AllSeeingEye]

The new Appeal Rules while appearing burdensome, will probably not drastically affect those who file appeal briefs regularly and, as T noted, reflect practices which many have already embraced.

[T]

NotQuiteAllseeing:

Unfortunately, The new appeal rules to far more than that and just because I have gotten used to a particular pseudo requirement, does not mean that it is not burdensome. The page limit and font size requirements combined with the requirements to point to where arguments have been previously made, lists of facts, lists or citations are all ridiculously burdensome and should not be required and the combination of these rules with the "arguments not made are waived" is simply unfair.

The applicant should be able to include a one sentence request in the notice of appeal that the board review the record as it stands.

Once the board has read through the gibberish in a few office actions, maybe the reforms the pto implements will be more internal than ex.

Optionally, if the applicant feels a summary would be helpful to the board, the applicant should be able to submit one in whatever format the applicant thinks most clearly presents the applicants case.

If the board is confused by something, it should be able to ask the applicant questions.

[peach]

Does anyone know how these new rules compare to the rules for an appeal of a BPAI rejection before the CAFC?

[SF]

AllSeeingEye wrote, "The message is to more vigorously prosecute your case during open prosecution ... some applicants share the blame with milquetoast prosecution. I know some prosecutors who are loathe to write more than a few lines of argument and then only as a direct response to what the Examiner has noted. Applicant's (representative) must "take charge" of prosecution early and vigorously and pro-actively treat all the issues as best as possible as early as possible in prosecution. The aim of appeal is to rule on a narrow issue, not to provide a substitute for a proper examination."

Great comment. When practicing before today's "reject, reject, reject" USPTO, a series of minimal amendments with no explanation is a sure-fire recipe for stagnant prosecution that leads to fruitless RCEs. Then, when on appeal, they finally decide to argue the case and (SURPRISE!) they see success on the merits.