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.