USPTO Removes Rule Changes

ACTION: Final rule.

The United States Patent and Trademark Office (Office) published a final rule in the Federal Register in August of 2007 to revise the rules of practice for patent cases pertaining to continuing applications and requests for continued examination practices, and for the examination of claims in patent applications (Claims and Continuations Final Rule). The Office is revising the rules of practice in this final rule to remove the changes in the Claims and Continuations Final Rule from the Code of Federal Regulations.

…

The changes in the Claims and Continuations Final Rule were added to the Code of Federal Regulations, but have been the subject of litigation since August of 2007 and have never taken effect. … The changes in the Claims and Continuations Final Rule addressed the Office's patent application pendency and quality issues, but did so with provisions that were objectionable to a large segment of the patent user community. In addition, the circumstances have changed since the Office published the Claims and Continuations Final Rule in August of 2007, and the Office is now considering other initiatives that would garner more of a consensus with the patent user community to address the challenges it currently faces. Thus, the Office has decided that it is no longer interested in pursuing the changes in the Claims and Continuations Final Rule that were the subject of the District Court's decision in Tafas. Therefore, the Office is revising the rules of practice in title 37 of the Code of Federal Regulations for patent cases to remove the changes in the Claims and Continuations Final Rule from the Code of Federal Regulations.

See 74 FR 52686

Comments

[LeMieux]

Kappos 1; Scorched-Earth "Reformers" 0

[Tazistanjen@gmail.com]

Good news.

[Elfin Magin]

But they haven't removed those "Flagged for 5/25" artifacts from the transaction histories on PAIR.

[Just Visiting]

'haven't removed those "Flagged for 5/25" artifacts'

Wouldn't that be about as useful as retracting a district court decision?

[jguay]

How about those crazy IDS rules? Remember how bad those are?

[Table of Authorities]

or the new BPAI rules?

[LeMieux]

How about the appeal rules, you know, with the brief formatting requirements and everything? They were originally supposed to go into effect in December.

[David Boundy]

IDS Rules - The White House "directed" the PTO to withdraw the IDS rules, along with the Continuations and Claims rules, sometime between the last week of January 2008 and no later than April 25, 2008 (yes, 2008, not 2009) -

http://www.reginfo.gov/public/do/PRAViewDocument?ref_nbr=200707-0651-005
http://www.reginfo.gov/public/do/DownloadDocument?documentID=44055&version=4

I believe that to implement the IDS rules, the PTO will have to start over at square one, fully complying with the Paperwork Reduction Act, Administrative Procedure Act, and Executive Order 12,866, including a number of steps that PTO "forgot," or else sidestepped by giving absurdly low estimates of private sector burden and economic effect to OMB.

I do not have special insight into the fate of the Appeal rules, but given PTO's multiple breaches of procedural law and rather absurd estimates of private sector costs, it seems certain that the Appeal rules are in basically the same state - PTO has no absolute bar against restarting the rule making process, but PTO will have to start over again at square one, correcting its procedural errors and giving cost estimates that have some objective support.

The PTO made a number of errors in its filings with the Office of Management and Budget on all five rules, and I have seen some evidence in recent PTO rule making notices that OMB has now put PTO on a very short leash.

[jguay]

Thanks David. I sincerely appreciate the efforts that you and Ron Katznelson have put into these things.

[West Coast Guy]

Here's the link to the provisions in the Federal Register:

http://frwebgate1.access.gpo.gov/cgi-bin/PDFgate.cgi?WAISdocID=55645222381+4+2+0&WAISaction=retrieve

[patent leather]

@David Boundy,

So are you saying that the OMB killed the claims & continuations rules back in early 2008? So why wasn't the Tafas litigation withdrawn/rendered moot then? If Judge Cacheris hadn't enjoined the rules, do you think the OMB still would have killed them?

Many thanks for all of your hard work.

[David Boundy]

Patent Leather -

"Why wasn't the Tafas litigation withdrawn?" You'll have to ask Jim Toupin, GC of the PTO. According to documents produced in the Tafas litigation, the rule making was under his oversight, and he argued at the Federal Circuit, so it would seem he was closely involved in the Tafas litigation as well.

Based on the information I have, OMB *had* effectively killed them about two months before Cacheris did. I can see the documents directly, but date information is a little fuzzy. Based on what I can see, I have good confidence that the direction from OMB to PTO to remove them from approval occurred January 25 2008 +/- a week.

[Gena777]

This is the latest item in a string of encouraging moves early in the Kappos era. Let's hope such good news continues for those of us in the world of patent litigation.

[Noise above Law]

Just read the Tafas motion for denying vacatur.

Available at IPWatchdog:
http://www.ipwatchdog.com/2009/10/19/tafas-objects-to-vacatur-in-claims-and-continuations-appeal/id=6731/

Also realized just how quiet this thread is, given how vociferous the skirt and track shoe crowd was on how "right" the continuation rules package was.

[Noise above Law]

Also available at Patent Docs:
http://www.patentdocs.org/2009/10/dr-tafas-files-reply-to-usptogsk-motion-to-dismiss-appeal-and-vacate-district-court-judgment.html

Malcolm, since you love to bookmark things, can you supply your list of bookmarks holding the triumph of the Rules?

[6]

"Also realized just how quiet this thread is, given how vociferous the skirt and track shoe crowd was on how "right" the continuation rules package was."

What're we going to do? Medical science hasn't progressed to the point that we can just grow a pair of balls for the guy leading the charge.

[Noise above Law]

What a nice gift in my mailbox today – the BNA’s Patent, Trademark and Copyright Journal Volume 78, Number 1938.

Why look here, some coverage of the October 15th AIPLA conference with the new Lord and overseer of the minions 6 and Malcolm. Let’s see what Lord Kappos has to say:

…“dysfunctional’ that there was no penalty for rejecting application claims while there was a penalty for allowing claims that a superior examiner subsequently determines should not have been allowed.
- Why this is exactly the patent bar’s complaint against Type II errors that Malcolm refuses to acknowledge. Dysfunctional indeed.

Recent court decision re the over rigorous standard in trademarks concerning fraud was a positive development. The previous administration had too broad an interpretation of fraud on the agency. (paraphrased)
- I wonder if this mandate will effect the patent side.

“we clearly need to make a point that we’re not going to insult any part of our constituency”
- Regarding an unpleasant interaction an applicant's representative had with an examiner –and asking if customer service training was going to be part of examiner training – PRICELESS. 6 and Malcolm will have to start learning how to sing different tunes here at the Trainwreck.

And finally:

“I welcome your feedback; it’s really important that we get this right to serve you, the IP community.”
- Wow the Office wants to serve us, the IP community. No wonder 6 has been in such a foul mood – his man-crush x-leader Dudas has been replaced with someone who keeps on agreeing with the patent bar.