Patent Law

David E. Boundy takes whack at the USPTO

By Lawrence B. Ebert, Esq.

http://www.uspto.gov/web/offices/com/sol/notices/73fr32938.pdf

[effective date is for all appeal briefs filed December 10, 2008]

David E. Boundy writes:

The Response to Comments repeatedly misparaphrases the comments, and then replies to the misparaphrase, rather than fairly addressing the comment.

The Board seems willing to make up facts out of thin air. Several comments pointed out that preparing a Table of Authorities using MS Word "Table of Authorities" tool takes hours. The Board says, with no identified factual basis, that it takes "10 to 15 minutes" to generate Table of Contents and Authorities with no identification of what tool generates a Table of Authorities in that amount of time.

Several comments pointed out that the Federal Circuit permits skipping page numbers in the Appendix in order to make it tractable to prepare the appendix and refer to the page numbers in the body of the brief. The Board declined to adjust the page numbering rule, and instead insists that page numbers begin at 1 and continue consecutively through the appendix. God help the appellant who needs to insert an additional page in the last few days before filing the brief.

Several people raised substantial issues under Paperwork Reduction Act and Executive order 12866. The PTO simply brushed the issues aside with no comment, except to baldly assert that the Appeal Rule imposes zero cost of compliance and zero sacrifice of rights, with no identified basis. The PTO's certification to Office of Management and Budget of "not significant" allowed the PTO to evade review under Executive Order 12866. Even on the best possible view of the facts presented in the Final Rule notice, the PTO concedes that the burden of this rule is at least above the threshold for "significant," and the PTO failed to reply to comments showing that it is likely "economically significant," the highest category of burden. This failure to reply to public comments violates both the spirit of the Executive Order and the Administrative Procedure Act.

The new Appeal Rule 41.39(b) provides "No new ground of rejection. An examiner?s answer shall not include a new ground of rejection." First of all, this is illegal - it is not a "logical outgrowth" of the rule as published in the Notice of Proposed Rule Making (recall this is one of the grounds on which Judge Cacheris preliminarily enjoined the PTO's Continuations and Claims rules in October). Second, this was the rule during the period 1998-2004. However, the Board refused to enforce the rule during the time it was in effect, Ex parte Brissette, 2002 WL 226585 (BPAI May 19, 2000); Ex parte Deacon, 2002 WL 226993 (BPAI 2000), so as a practical matter, examiners were free to throw in new grounds of rejection at any time, and applicants were constrained in their ability to reply

Since 2001, the PTO has regarded rules of procedure as expendable, to be ignored when constraining PTO action but enforceable when applicable to constrain applicants, and Due Process is something for dewey-eyed foreigners. This Notice of Final Rulemaking appears to continue the trend.

Full post as published by IPBiz on June 10, 2008 (boomark / email).