Thursday, July 05, 2007

Will the USPTO's proposed rules on continuing applications go through?

Although Patently-O on July 4 predicted the USPTO proposed rules on continuing applications will go through, Boundy wrote as a comment to the post words including:

My guess, after working clsely with two former OMB folks (one a former deputy director), is that the rules are on the less-likely-to-survive-OMB-review end of the spectrum. Part of OMB review is a consultation with the Department of Justice. If DoJ tells OMB that they don't want to defend the case, OMB won't let the rules out.

PTO's failure to disclose its data, both at the time of the Notices of Proposed Rulemaking and in response to FOIA requests, and DoJ's perception that the PTO broke the law by that failure to disclose, is the single issue most likely to sink them.

The discovery rules for an agency are reasonably analogous to those for a civil litigant. The agency, as proponent of a rule, bears the burden of coming forward with substantial evidence, and must make its record during the rulemaking procedure. The record closes at the end of Notice and Comment - they can't supplement the record later, in response to litigation. The agency has to show that the rules are reaosnably related to a specific underlying cause for an identified problem. They have to produce documents they intend to rely on at the time of the Notice of Proposed Rulemaking (in this case, January 3, 2006). With no evidence to support the issues on which an agency must show evidence, the agency loses. If the agency can be shown to have affirmatively hid and selectively disclosed documents, the agency gets sanctioned with attorney fees. This all arises under various administrtive statutes instead of Rule 26 discovery sanctions, but the analogy is reasonbly accurate.

As IPBiz said before, if the whole thing isn't fixed, the USPTO will lose on the proposed rules.


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