Wednesday, October 08, 2008

"Unhappy with the Ex parte Appeal Rule? Read This Now"

The following is an article by Dr. Richard B. Belzer
(former White House staff economist)-->


Today the PTO published a notice in the Federal Register inviting public comments on paperwork burdens associated with the Ex parte Appeal Rule
(73 Fed. Reg. 32937-32977, June 10, 2008).

The Paperwork Reduction Act (44 U.S.C. 3501 et seq, 5 C.F.R. Part 1320) is a very important but almost completely unknown law. It's purpose is to protect the public from abusive governmental demands for information. Unlike previous notice-and-comment periods, this time comments go to the Office of Management and Budget, a neutral arbiter outside the PTO whose statutory responsibility is to ensure that federal agencies treat the public fairly.


Without OMB's approval, the Patent Office has no legal authority to compel patent applicants to comply with the Ex Parte Appeal Rule.


Obtain the documentation from the PTO.

The first thing to do is send an email request to the PTO asking for a copy of the relevant documents:

Subject Line: 0651–00xx Board of Patent Appeals and Interferences (BPAI) Actions copy request
Message Body: Please send by reply email a copy of this ICR and the Supporting Statement.

Please include a bcc to me (rbbelzer [at] so that I can count how many requests are sent to the PTO as a result of this alert.

You should receive at least two documents (we are awaiting our copies). The text of the ICR will contain summary information. By regulation, the Supporting Statement must include objectively supported estimates of burden, and these estimates must be transparent and easy for you to reproduce to see how they did it.

For reference, the definition of paperwork "burden" is an expansive one; see the text below.

Estimates based on the "professional judgment," "belief," or "opinion" of Patent Office personnel, or estimates with no disclosed basis, do not qualify as "objectively supported."

Submit a public comment to OMB.

For the next 30 days, OMB will be accepting public comment on the paperwork and recordkeeping burdens associated with the Appeal Rule. By law, OMB has 60 days to either approve or disapprove the ICR. That deadline will run out very close to December 10, 2008, effective date of the Appeal Rule. For that reason, it is imperative that public comments be submitted as early as possible. Do not wait until Day 29 to decide to do this.

It is essential that OMB hear from you. The more thoughtful, reasoned, and documented public comments OMB receives, the better. Usually, OMB does not receive any public comments at all, and in these cases it is OMB is compelled by necessity to assume that what the agency provided is valid and reliable. Your job is to make sure OMB gets higher quality information.

Public comments on the ICR should be sent as soon as possible, and must be sent by November 7, 2008, via email to:

Nicholas A. Fraser
Desk Officer for USPTO
Office of Information and Regulatory Affairs
Office of Management and Budget

What to include in your public comment.

Public comments to OMB should address the following issues:

Has the PTO provided an objectively-based estimate of the number of hours it will take to comply with the Appeal Rule? Historically, the Patent Office has severely underestimated the number of hours, and has failed to provide any analytical transparency into the sources or methods employed. Often, the PTO's burden estimates consist of mere "judgment" or "belief."

Has the PTO provided an objectively-based estimate of the opportunity cost of each of these hours? Historically, the Patent Office has significantly understated the hourly cost of attorney time, and assumed that tasks normally performed by attorneys can be performed by lower-cost paralegals and administrative staff instead.
Has the PTO provided an objectively-based estimate of the number of applications expected to be appealed? There is considerable controversy about how many appeals should be expected. For purposes of public comment on this ICR, the Continuations Rule, currently enjoined by the District Court in Tafas v. Dudas but now under appeal, should be assumed to apply. Do not assume that Tafas will be upheld. You are entitled to take the PTO at its word, that issues formerly resolved through continuations must now be resolved through appeal.
Did PTO contact you for assistance or information to help them estimate the burden associated with the Ex parte Appeal Rule? By law and regulation, the PTO is required to consult with those who would bear the burden of complying with information collection requirements. They do not have to consult with all of you, but they do have to consult with some of you. Statements from the organizations that logically should have been consulted (e.g., AIPLA, ABA-IP, IPO, NAPP) stating that they were not consulted would be especially helpful.
Which elements of the Ex Parte Appeal Rule require you to submit information that the PTO already has in its possession, albeit in another form? It is against the law for OMB to approve the collection of duplicative information. Thus, most contents of the appendix required by current and proposed 37 C.F.R. § 41.37(t) are simply illegal. Are there any other provisions that you believe are duplicative?

I'd very much appreciate your help ensuring that OMB receives a rich set of highly informative public comments. I would like to make sure that comments are submitted by a variety of entities (organizations, firms, large, small, from a variety of technological areas), and I can help you target your efforts to be informative without being tendentious. A series of conference calls may be scheduled to assist you. To indicate interest in participating, please contact me by email at rbbelzer [at] or by phone at 703-780-1850.

Richard B. Belzer


5 C.F.R. 1320.3(b)(1):

Burden means the total time, effort, or financial resources expended by persons to generate, maintain, retain, or disclose or provide information to or for a Federal agency, including:

(i) Reviewing instructions;

(ii) Developing, acquiring, installing, and utilizing technology and systems for the purpose of collecting, validating, and verifying information;

(iii) Developing, acquiring, installing, and utilizing technology and systems for the purpose of processing and maintaining information;

(iv) Developing, acquiring, installing, and utilizing technology and systems for the purpose of disclosing and providing information;

(v) Adjusting the existing ways to comply with any previously applicable instructions and requirements;

(vi) Training personnel to be able to respond to a collection of information;

(vii) Searching data sources;

(viii) Completing and reviewing the collection of information; and

(ix) Transmitting, or otherwise disclosing the information.

The PTO has not made its submission to OMB requesting clearance under the Paperwork Reduction Act for the Appeal Rule easily available on its web site. However, the PTO's submission is available at the OMB web site. The single most important document is this one
Further background is available at: (click the "All" box at the top of the page)

The materials on the Appeal Rule and the public comments are at

The relevant regulations under the Paperwork Reduction Act are in this attachment
<< File: CFR 05 1320.01 et seq OMB's Information Collection regs (with highlight).pdf >>


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