Patent Office Rule Changes 7-20-2009

8/14/2019 Patent Office Rule Changes 7-20-2009

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US Patent OfficeRule Changes

Gene Quinn

Patent Attorney, Zies Widerman & Malek


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Rules and Events for Discussion

PTO Changes UPL Rules (9/15/08)

Appeals Rules stayed by OMB(12/10/08)

Claims & Continuation Saga

CAFC panel issues opinion (3/20/09)

Rehearing en banc ordered (7/6/09)

Rules in Limbo IDS and Markush


3/26

PTO Changes UPL Rules

Appeared to be a fatal blow toinvention submission companies.

Seemed directly aimed at

LegalZoom.com.

Have not been used by the USPTOagainst non-practitioners.

Practitioners BEWARE! USPTO want thepatent bar to police the industry.


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Rule 11.5 (b)

Practice before the Office includes, butis not limited to, law-related service thatcomprehends any matter connected withthe presentation to the Office or any of its

officers or employees relating to a clientsrights, privileges, duties, or responsibilitiesunder the laws or regulations administeredby the Office for the grant of a patent orregistration of a trademark, or for

enrollment or disciplinary matters.


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Rule 11.5 (b)

Such presentations includepreparing necessary documents incontemplation of filing the documentswith the Office, corresponding andcommunicating with the Office, andrepresenting a client throughdocuments or at interviews, hearings,and meetings, as well as

communicating with and advising aclient concerning matters pending orcontemplated to be presented beforethe Office.


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Rule 11.5(b)

Nothing in this sectionproscribes a practitioner fromemploying or retaining non-

practitioner assistants under thesupervision of the practitioner toassist the practitioner in matterspending or contemplated to bepresented before the Office.


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Comment 9 in FR Notice

11.5 places unnecessary andimproper restrictions on practitionerswho may work with non-practitioner

invention developers who communicateor consult with clients

It is unreasonable and improper for thePTO to interfere with the relationship

between invention promoters andpractitioners by restricting working withnon-practitioners.


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Comment 9 in FR Notice

So long as legal advice and the filing ofpatent applications, attending hearings,etc. remain the responsibility of the

practitioner. It is unreasonable andimproper for the PTO to interfere withthe relationship between inventionpromoters and practitioners byrestricting working with non-

practitioners.


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PTO Response to Comment 9

The Office disagrees that 11.5 placesunnecessary and improper restrictionson practitioners who may work with

non-practitioners who communicate orconsult with clients. Nothing in the ruleprevents a person having prospectivebusiness before the Office from utilizingboth lay and legal service providers in

connection with that persons invention.


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Non-practitioners who assembleinformation to provide only non-legalservices at a cost may continue to

provide non-legal services. Non-practitioners who provide law-

related services must be employed orretained by the practitioner and under

the practitioners supervision.


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Contrary to the comment, assembly ofinformation is not always a non-legalservice; for example, providing a list of

patent references found in a search ofthe prior art is a non-legal servicewhereas transmitting information to thepractitioner to use to describe theinvention in a patent application is a

legal service.


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The Office frequently finds itselfchallenged by so-called inventionpromoters who exploit unsophisticatedinventors, heap every invention withpraise regardless of the merits or the realprospects of legal protection, and enticeinventors into engagement agreementsfilled with hollow guarantees of patent

protection and promises of royalty-bearing licenses that seldom yieldanything of any significant value.


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The Reality of Rule 11.5

Unfortunately, Rule 11.5 will in no wayhave any impact on invention submissioncompanies.

It will have impact on patent attorneysand patent agents registered to practicebefore the USPTO.

The Office does not believe they have the

authority to do anything to regulate theactivities of those who are not attorneysor agents.


15/26

OMB Stops Appeals Rules

Normally, an agency obtains PaperworkReduction Act clearance at the time thata new rule is published as a Notice ofProposed Rulemaking.

In this case, the PTO certified to OMB thatthe total economic burden wasessentially zero and made no request forPaperwork Approval until the day before

the publication of the Notice of Final Rule.


16/26

OMB Stops Appeals Rules

Thus, even though the Appeal Rule waspublished as a final rule, the Patent Officecould not enforce it because the PTOfailed to timely seek OMB approval underthe Paperwork Reduction Act.

OMB could not complete its review of theFinal Appeals rules before they were togo into effect 12/10/08, so OMB forced

the USPTO to delay implementation ofthese rules.


17/26

Claims & Continuations Rules

I knew it was bad news when I saw thatJudge Rader did not write the opinion,but rather concurred in part and

dissented in part. It seems that the only thing that the

Patent Office couldnt do was limit thenumber of continuations that can be

filed, and practically everything is nowa procedural rule.


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Tafas v. Doll CAFC Panel

Final Rules 75, 78, 114, and 265 areprocedural rules that are within the scopeof the USPTOs rulemaking authority.

Final Rule 78 conflicts with 35 U.S.C. 120 and is thus invalid.

Affirm the district courts grant ofsummary judgment that Final Rule 78 is

invalid, vacate with respect to Final Rules75, 114, and 265, and remand for furtherproceedings.


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What Panel said was Next

This opinion does not decide: whetherany of the Final Rules are arbitrary andcapricious; whether any of the Final Rulesconflict with the Patent Act in ways not

specifically addressed in this opinion;whether all USPTO rulemaking is subjectto notice and comment rulemaking under5 U.S.C. 553; whether any of the FinalRules are vague; and whether the Final

Rules are impermissibly retroactive.


20/26

Stop the Presses! En banc

On Monday, July 6, 2009, the CAFCdecided to rehear the claims andcontinuations rule challenge en banc.

Additionally, the CAFC has vacated thepanel decision that awarded victory tothe USPTO.

The date of oral arguments in front of

the entire CAFC is as yet to bedetermined.


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What Next for Claims & Cont.

The CAFC will hear the case sitting asone based on the briefs alreadysubmitted.

The Appellants additional brief is dueAugust 5, 2009. Appellees additionalbriefs due August 25, 2009. Appellantmay then file a subsequent brief within7 days thereafter.

Additional briefs are limited to 7,000and any reply brief limited to 3,500


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Predictions?

Seems likely this was taken to eithergive the USPTO a complete victory,including on continuations practice; or

To say that the majority got the casewrong and adopt a ruling more in linewith Judge Rader, meaning the FinalRules would be no more.


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What about IDS & Markush?

On hold until resolution of claims andcontinuations rules.

These really work best, if at all, inconjunction with the claims andcontinuations rules, so if they fall thesemay be re-evaluated.


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The End

For more information on the topicsdiscussed in this presentation go to:

www.ipwatchdog.com/tag/patent-rules/

Documents

Patent Office Rule Changes 7-20-2009