More Whispers on PTO Rule Changes

It's easy to grin, when your ship comes in,
And you've got the stock market beat.
But the man worthwhile, is the man who can smile,
When his shorts are too tight in the seat.

- Judge Smails, CaddyShack (1980)

After yesterday's report on the OMB's approval of the PTO rule changes, more information is slowly leaking out on the changes (see Patently-O post here).

According to the most recent information, two sets of rules have been approved. The rules are rumored to be "softened" versions of the original proposals. According to the IPO, "The rules have not yet been made public, but are understood to contain compromise limitations on continuations and claims that are less severe than those originally published and opposed by IPO and other groups in 2006. "

Recent information reported by Hal Wegner speculates the new rules would include:

The "2+1" Limit on Continuations/RCE’s:
Each applicant gets 2 continuations and 1 RCE per application. The rules will be applied retroactively for cases that have not yet received a first action on the merits.

The "3+1 Transition Rule":
For cases that have not received a first action by the time of the new rules, a "bonus" continuation will be allowed, i.e., a total of one (1) RCE and three (3) continuations.

The "25/5" Claim Limits:
Twenty-five (25) total claims, including up to five (5) independent claims.

The new rules are expected to be published in the next month or two, and be effective around October (give-or-take a month).

OMB Gives Green Light to Continuation Rule Changes

The Office of Information and Regulatory Affairs (OIRA) has completed its review of the proposed PTO rule changes. Despite a litany of alleged improprieties regarding the manner in which the proposed changes were introduced, the OIRA has concluded that they are "consistent with change."

Unfortunately, no further information is given, which appears to be consistent with OMB procedure. According to OMB Watch, exact changes are typically difficult to document:

Unfortunately, this is difficult to assess from data reported by OIRA. All rules changed and then approved by OIRA are labeled “consistent with change.” A change for clarity, such as the insertion of a comma, is reported in the same manner as a change in substance that affects the very nature of the regulation. This label needs more specificity to distinguish the various types of changes OIRA makes.

Under Executive Order 12866, issued by President Clinton and still observed by the Bush administration, agencies are to document changes made to their rules while under review at OIRA. Yet this documentation is inconsistent and frequently inadequate. In a 1998 report, the General Accounting Office found complete documentation of OIRA changes for only 26 percent of the 122 regulatory actions it reviewed, covering EPA, the Dept. of Transportation (DOT), Housing & Urban Development (HUD), and DOL.

To view the brief conclusions of the regulatory review, click here and here.

According to David Boundy, who spearheaded the initial challenge, two avenues are being explored for further challenges. Quoting from David:

Note that OMB concluded that the rules, as amended, were not "economically significant." Perhaps they were modified to the point that they're no longer offensive. We'll see." We are exploring two avenues -

(a) Congressional oversight. Several senators and congressmen have said "Get back to me when the executve branch is done. I understand the problem, and if it still exists at the end of executive branch review, let me know, and we'll see." So I need to hear from you to add weight to our request. The more districts/states we can show to be affected, the more offices we can approach.

(b) Administrative Procedure Act judicial review. We got another reply to another FOIA request yesterday, July 9 (coincidence?) - which confirms that the PTO did absolutely NO analysis of any significant issue, and is still hiding documents. (There are several documents that we know to exist, which PTO is still hiding.) We expect that this will not go over well with a court.

If you wish to help or participate in any way, please feel free to contact David at DBoundy@Cantor.com

Whispers on the New Continuation Rules . . .

At the Boston AIPLA meeting, a lot of questions were quietly asked about the new continuation rules. According to Hal Wegner, the following information was allegedly leaked from inside the PTO on the new changes:

The "2+1" Limit on Continuations/RCE’s:

Each applicant gets 2 continuations and 1 RCE per application. The rules will be applied retroactively for cases that have not yet received a first action on the merits.

The "3+1 Transition Rule":

For cases that have not received a first action by the time of the new rules, a "bonus" continuation will be allowed, i.e., a total of one (1) RCE and three (3) continuations.

The "25/5" Claim Limits:

Twenty-five (25) total claims, including up to five (5) independent claims.

-None of this has been confirmed, although some "respectable sources" are vouching for this information (and also are saying the continuation rule package is "extremely thick").

If true, why isn't this information being disseminated freely? Good question. Hal notes:

"To the extent that it is not illegal or unethical to divulge information about the new rules, and to the extent that the above information is accurate, then the PTO should immediately publish the full details for everyone and not 'play favorites.' It is unthinkable that formal rulemaking should be violated by selective leaks of information. "