Patent Office Finally Announces Rule Delay

The United States Patent & Trademark Office finally posted on its website an announcement that the new appeals rules that were to go into effect today, December 10, 2008, have been held up and will not go into effect.  Here is the announcement on the Patent Office website:

In the December 10, 2008 edition of the Federal Register, the USPTO published an announcement noting that the final rule relating to practice before the Board of Patent Appeals and Interferences (BPAI) in ex parte appeals will not take effect on December 10 as originally scheduled. New effective and applicability dates will be identified in a subsequent announcement.

In the interim, the USPTO will continue to accept appeal briefs in either the current format, or the new format as outlined in the final rule.

I have been out of the office most of the day meeting with folks to air out some ideas I have about reforms that would make sense to address the patent crisis facing the USPTO, while still taking into account the needs of the applicants and patent bar, so I do not know for sure what time this announcement went live.  In the comments to my blog post from yesterday – BREAKING NEWS: USPTO Appeals Ruled Delayed by OMB – someone indicated that as of 6:30am this morning there was no such notice on the USTPO website.  Why is that the case?  Jon Dudas signed off on the Federal Register announcement on Friday, December 5, 2008. 

Ron Katznelson, who Dennis Crouch at Patently-O calls “a leading patent data guru,” also posted an excellent comment to the “Breaking News” post from yesterday.  He said:

It is important that practitioners not follow USPTO’s invitation to use the new rules’ option when filing an appeal and that they make clear in their transmittal that the appeal is filed under the 2004 rules. Because the public record on the extent of paperwork burdens imposed by the new appeal rules is incomplete, this is important for three reasons:

(a) The USPTO will likely use the fact that some filings are made under the new rules to later argue that the public does not really care much which rules are used – thereby making a false point about lack of incremental burdens.

(b) It is also clear that appeal cases that would be most negatively impacted by the new rules would naturally be filed under the old rules and therefore the voluntary filings under the new rules would be heavily biased towards the simple and short cases. The USPTO will most likely use their “junk science” methods to characterize the ensemble of appeals filed under the new rules based on this voluntary highly biased population. This will enable the USPTO to falsely characterize all appeals if filed under the new rules.

(c) It is unlikely that the new appeal rules will survive proper OMB PRA review. As numerous comments show, certain features of the new rules would have to be withdrawn or modified substantially. Therefore, practitioners’ “learning curve benefits” from attempting to follow rules that may never survive are doubtfull at best.

My recommendations above would not have been made had I not experienced the clearly intentional USPTO deviations from procedures of law and its attempts to use “junk science” to support its rulemaking actions in the last two years. Appellants should therefore ignore USPTO’s new appeal rules and use only the rules that are currently in effect – the 2004 rules, the rules they are familiar with.

I agree with Ron, and thank him for all his work providing data and information.  Now is not the time to start using rules that we didn’t want in the first place.  Like a good friend of mine says “no good deed goes unpunished.”  My same good friend also says that the Patent Office should be forced to give applicants and attorneys Miranda-like warnings because “anything you do or say will be used against you.”  We certainly know that to be true with respect to what we say in applications, and those things hang around the neck of the patent owner far beyond the close of prosecution.  While this Miranda-like warning comment was not made in conjunction with this or any other rules package, I can hardly think of a more appropriate comment at this point.  Just say NO to the new appeal rules, at least as long as you have that option.

About the Author:

Gene Quinn is a patent attorney and the founder of and is a member of the PLI Patent Bar Review faculty.

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