Trouble Ahead for the USPTO's Appeal Brief Rules?

If anyone thought that the manner in which the USPTO Appeal Brief Rules were implemented was, well, a bit "askew", there appears to be evidence that your instincts were correct. Last Friday, David Boundy circulated a Federal Register Notice that apparently was not publicized on any of the PTO's list of Federal Register Notices.

The notice, appearing in June 9, 2008 Federal Register, Vol. 73, No. 111 (link), requests public comment for the PTO's estimate for paperwork burdens for the Appeal Rule. This notice was followed by another notice, appeaing in June 10, 2008 Federal Register , Vol. 73, No. 112 (link), which spelled out the Final Rulemaking for the Appeal Rule.

The rub here is that the PTO's request for public comment was published one day before the notice of Final Rulemaking. Normally, Paperwork Reduction Act clearance is performed by an agency at the time that a new rule is published as a Notice of Proposed Rulemaking, and the agency submits the rule to OMB shortly thereafter for review under Executive Order 12,866. However, in this case, the PTO had already certified to the OMB that the "total economic burden" was essentially zero ("[t]his rulemaking has been determined to be not significant for the purpose of Executive Order 12866"), and made no request for Paperwork Approval until the day before the publication of the Notice of Final Rule.

This suggests that the PTO may lack the authority to enforce the rule, because the PTO failed to timely seek OMB approval under the Paperwork Reduction Act. Additionally, the OMB requires that the PTO's burden estimates be in compliance with the PTO's own Information Quality Guidelines. If OMB finds that the PTO's estimates lack any of these characteristics, OMB can deny the PTO the authority to implement or enforce the Appeal Rule. For example, under the Information Quality Guidelines, the PTO must base its rulemaking notices on information that is "objective" and "reproducible." If the PTO relies on mere "belief," that would be grounds for the OMB to deny approval to the PTO's Paperwork Reduction Act Request.

Some interesting statistics from the PTO's June 9 Notice:

Estimated Time Per Response: The USPTO estimates that it takes the public approximately 5 to 30 hours to complete this information, depending on the brief, petition, or request. This includes the time to gather the necessary information, prepare the briefs, petitions, and requests, and submit them to the USPTO.

Estimated Total Annual Respondent Cost Burden: $239,907,450. The USPTO believes that associate attorneys will complete these briefs, petitions, and requests. The professional hourly rate for associate attorneys in private firms is $310. Using this hourly rate, the USPTO estimates that the total respondent cost burden for this collection is $239,907,450 per year. Once the notices of appeal and requests for oral hearing before the BPAI are moved into this collection, the USPTO estimates that the annual respondent cost burden will increase by a minimum of $1,772,890.

Comments for the latest notice are due by August 8, 2008, any should be submitted to Susan Fawcett at the USPTO. You may submit comments by any of the following methods:

• E-mail: Susan.Fawcett@uspto.gov. Include ‘‘0651–00xx Board of Patent Appeals and Interferences Actions comment’’ in the subject line of the message.
• Fax: 571–273–0112, marked to the attention of Susan K. Fawcett.
• Mail: Susan K. Fawcett, Records Officer, Office of the Chief Information Officer, Customer Information Services Group, Public Information Services Division, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313–1450. Federal e-Rulemaking Portal: http://www.regulations.gov/.

Since PTO submissions may be "summarized" to the OMB, you may request that your comments not be summarized. In any case, it is recommended that comments be cc:'ed to the OMB as well:

• David_Rostker@omb.eop.gov Desk Officer, Dept. of Commerce Office of Information and Regulatory Affairs Office of Management and Budget Washington, D.C. 20503