Thursday, December 11, 2008

USPTO website mentions Appeal rule status

The USPTO website stated:

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.

Read the Federal Register announcement:

Gene Quinn referenced Ron Katznelson, advising

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 As numerous comments show, certain features of the new rules would have to be withdrawn or modified substantially.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.

***As a side point on the appeal and continuing application proposed rules-->

ProPublica, a nonprofit investigative news organization, notes that while last-minute rules that have not yet taken effect can be quickly reversed by Obama’s appointees or by executive order, rules that are in force when he takes office cannot:

Rescinding a rule would require the new administration to restart the rulemaking process, which can take years and prompt legal challenges. Another strategy that has been talked about lately – getting Congress to disapprove the rules through the Congressional Review Act – carries political risks and has been used only once before.

[from csmonitor]


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