Regulatory Transactions

From: Patent Docs

By David Boundy

The Patent Office recently requested comment on the paperwork that applicants submit during post-filing, pre-allowance patent prosecution (Patent Processing (Updating), 77 Fed. Reg. 16813, Mar. 22, 2012). This is a highly significant opportunity to seek reform of problematic PTO regulations, one that only comes once every three years. This comment period gives the public access to an oversight officer outside the PTO whose job is to help reduce costs and unnecessary paperwork burden associated with PTO regulations or MPEP guidance. The PTO has invited the public to challenge long-standing rules, and to seek reform.

The Paperwork Reduction Act is one of the key administrative law statutes that governs PTO rule making, along with the Administrative Procedure Act and several others. A quick tutorial on the Act is at the bottom of this article — but before we get there, let’s look at the subject matter of this comment period.

This comment period asks for comments on regulations or MPEP provisions relating to post-filing prosecutions that increase paperwork burden unnecessarily:

• regulations or MPEP guidance that compel you to expend more time than required by statute, or for no observable reason
• regulations or MPEP guidance that increase burden because of ambiguity
• regulations or MPEP guidance that increase burden because they appear to be inconsistent with the patent statute or Administrative Procedure Act

Congress gave you this opportunity to challenge such regulations and guidance, if your concern slots into one of the kinds of avoidable paperwork that the Act covers.

The Notice itself asks the public to comment on several questions. To elaborate the questions, here are the kinds of issues that have resulted in significant changes to PTO regulations in the past:

1. Do the PTO’s regulations and guidance minimize paperwork burden? How can they be modified to do so? Under the Paperwork Reduction Act, agencies are “required to minimize the burden on the public to the extent practicable.”¹ Are the current rules structured to minimize the burden of the paperwork it requires from you? How could the regulations be improved to reduce burden, or to improve clarity or utility? For example:

• Are there MPEP requirements that go above fair interpretation of the statute or 37 C.F.R.? For example, both 35 U.S.C. § 121 and 37 C.F.R. § 1.141 authorize the PTO to restrict “independent and distinct” inventions, but MPEP Chapter 800 encourages examiners to restrict inventions that are “independent or distinct.” The PTO can’t override the statute via the MPEP. When the PTO does so to impose more paperwork burden than authorized by statute, the PTO violates the Paperwork Reduction Act. (See below for the “public protection” provision, and unenforceability of regulatory content of the MPEP.)
• Are there “unwritten rules” that were never validly promulgated, but that the PTO enforces anyway? Examples include memoranda of April 2007 and January 2010 on restriction and election of species that were never promulgated through valid rule making procedure, and that have been obsoleted by subsequent revisions of the MPEP, but that the PTO continues to enforce.
• Is there a 37 C.F.R. regulation that either has no statutory authorization, or requires more from you than the statute does? For example, 35 U.S.C. § 113 only authorizes the PTO to require drawings “where necessary for the understanding of the subject matter.” However, 37 C.F.R. § 1.83(a) states “The drawing in a nonprovisional application must show every feature of the invention specified in the claims.” The PTO can’t ask more from you than the statute does.
• Are there regulations that are gratuitously burdensome? 37 C.F.R. § 1.111(b), until 2004, permitted you to file a supplementary amendment up until the time it would “unduly interfere with an Office action being prepared.”² In 2004, the Office amended § 111 to cap your right to amend at the six month statutory deadline,³ no matter whether it affected PTO efficiency or not. The PTO’s stated reasons violate the Paperwork Reduction Act — agencies cannot regulate in their self-interest.

2. Burden estimates: Are the PTO’s burden estimates for various tasks reasonably correct? The estimate must account for all time spent on a task, including reviewing instructions, gathering information, thinking and planning, and filling out a paper, and filing it. If you are skeptical of either the PTO’s numbers or estimation methodology, you are invited to comment. Among the PTO’s current estimates are the following:

• For a statutory disclaimer or terminal disclaimer, all legal research, investigating facts, evaluating options, consulting with the client, making the decision, filling out the form, and filing it takes (on average) 12 minutes.
• Evaluating a final Office Action to decide whether to appeal or RCE, starting down one path and changing your mind, preparing the form, and filing it, takes (on average) 12 minutes.
• Preparing an IDS, on average, takes 10 hours
• The PTO is not permitted to rely on speculation, guesswork, or hope for its estimates. The PTO is required to have “objective support” for its estimates, including a duty to “consult with the public” before publishing these estimates.⁴ “The USPTO estimates . . .” is not a legally-sufficient basis for estimation of burden.

Scope of the request for comment

This comment period covers essentially everything that you file in a patent prosecution after the initial filing of an application and recording of an assignment, and before appeal or allowance:

• replies to restriction requirements and election of species requirements
• replies to Office Actions on the merits
• most petitions (a few exceptions are noted below)
• notices of appeal and pre-appeals
• Information Disclosure Statements and prior art search

This comment period does not cover the following phases of prosecution, which are broken out in separate Paperwork categories:

• initial filings of applications, declarations, and the like⁵
• sequence listings⁶ and biological deposits⁷
• Power of Attorney⁸
• PCT international stage⁹
• reexamination filings¹⁰

The Paperwork Reduction Act, in overview

The Paperwork Reduction Act (44 U.S.C. § 3501 to 3519, especially §§ 3506, 3507, and 3512), and regulations issued by the Executive Office of the President for “controlling paperwork burdens on the public” (5 C.F.R. Part 1320), bar the PTO from requiring applicants to submit information that:

• is unnecessary for the proper performance of the functions of the agency;¹¹
• is “unnecessarily duplicative” of “information otherwise reasonably accessible to the agency”;¹²
• has poor or no “practical utility” — that is, an agency may only collect information that has “actual, not merely the theoretical or potential, usefulness . . . to or for an agency, taking into account its accuracy, validity, adequacy, and reliability, and the agency’s ability to process the information it collects . . . in a useful and timely fashion”;¹³
• is of poor quality¹⁴ or clarity;
• is more burdensome than necessary on those who are to respond — the PTO must “[take] every reasonable step to ensure that the proposed collection of information . . . is the least burdensome necessary.”¹⁵
• regulations must be “written using plain, coherent, and unambiguous terminology.”¹⁶

The Paperwork Reduction Act is administered by the Office of Management and Budget within the Executive Office of the President. Each agency must seek OMB clearance of any regulation that imposes paperwork burden; if OMB denies clearance, the agency cannot enforce the regulation.^17,18

Note that the Paperwork Reduction Act does not control statutes — if Congress says you have to submit information to the PTO, or the Federal Circuit’s inequitable conduct law requires submission of information of limited relevance, then the Paperwork Reduction Act provides no relief from those requirements. However, if the PTO imposes regulations for form of the information to be submitted, and those regulations violate any of the bullet points above, then the Paperwork Reduction Act gives you a right to request amendment to the regulation.

The PTO has to obtain re-approval for these items every three years. Thus, this review gives the public an opportunity to propose ways to reduce the burden and to bring to the PTO’s attention any violations of the Paperwork Reduction Act, and to request amendment to the regulations that would bring the PTO into compliance with the Act. Indeed, the PTO’s Federal Register Notice specifically asks you to comment on “ways to minimize the burden of the collection of information,” either by revising the regulation or by revising procedures for submission (e.g., electronic filing), and you should take the PTO up on its invitation.

How and where you should send your comments

There is no set form for a comment to the PTO; an email or letter works just fine. You can find examples on OMB’s web page for the 2008 Appeal Rules.¹⁹ Comments should be submitted to the PTO by May 21, 2012 (though a couple days delay is usually tolerated, especially if you send an email by May 21 to indicate that your comments will follow in a few days), to:

• By email to InformationCollection@uspto.gov with “0651–0031 comment” in the subject line of the message
• By fax to 571–273–0112, marked to the attention of Susan K. Fawcett
• By mail to Susan K. Fawcett, Records Officer, Office of the Chief Information Officer, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313–1450

If you have any questions, please phone me at 212-294-7848 or email me at DBoundy [at] Cantor [dotcom].

David Boundy (at left) is Vice President and Assistant General Counsel for Intellectual Property at a New York brokerage and investment banking firm. In 2008, David led the teams that made presentations to the Office of Management and Budget showing Paperwork Reduction Act violations for the Continuations, 5/25 Claims, IDS, Markush, and Appeal rules. OMB either directed PTO to withdraw its request for clearance, or withheld approval, for each of these regulations.