USPTO Working Group on Regulatory Reform

Under the direction of the White House, the USPTO has formed a “Working Group on Regulatory Reform.”  To implement the 2-for-1 regulatory agenda previously outlined on Patently-O. According to a release from Dir. Michelle Lee’s office:

USPTO’s Working Group on Regulatory Reform implements President Donald Trump’s January 30, 2017 Executive Order 13771(link is external), titled “Presidential Executive Order on Reducing Regulation and Controlling Regulatory Costs,” and his February 24, 2017 Executive Order 13777 (link is external), titled “Presidential Executive Order on Enforcing the Regulatory Reform Agenda.”

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

86 thoughts on “USPTO Working Group on Regulatory Reform

  1. Thought I’d throw my opinion in with that of all you shadowless muppets.

    I’m going 8-0 Kraft, or 7-1 if Justice Thomas goes off on one of his Thomasequely-nit picky side issues.

  2. Waiting for the TC Heartland thread, but I think the CAFC is toast again. Say goodnight to VE Holdings:

    CHIEF JUSTICE ROBERTS: Okay. Well, the
    current statute says “except as otherwise provided by
    law.” And I would have thought that excluded
    overturning the Fourco decision….

    1. Kagan is either going to write the opinion or write a strong dissent. She highly favors Kraft’s position.

      Thomas, Alito said nothing. Roberts seems to favor TC Heartland. Everyone else probably will vote for Kraft. If I read the leaves correctly, at least 5-3 in favor of Kraft. But, really, I still think it could be 8-0, Kraft.

      To Roberts point quoted above, Kagan answered,

      JUSTICE
      KAGAN: But, Mr. Dabney, I mean, one oddity of this case is –is usually, when we say something, when we issue a decision, we can be pretty confident that Congress is acting against the backdrop of that –that decision. But I think that that would be an odd thing to say in this case, given that for 30 years the Federal Circuit has been ignoring our decision and the law has effectively been otherwise. And then the question is, well, what is the backdrop against which Congress is legislating.

      It seems actually that if –if I were a congressman, I’d think that the practical backdrop against which I’m legislating is not Fourco; it is instead the Federal Circuit’s decision in VE Holding, which is the decision that the practice has conformed to.

      1. I saw the questioning of Jay as far more aggressive than that of Dabney, by all the justices. I see Kennedy, Roberts, Breyer and Sotomayor for TC and Alito and Thomas potentially not engaged, and to the extent that they may be, also not understanding where Fourco actually went or how the 2011 revision changed anything . If I had to bet five bucks, I would say 8-0 or 5-3 for TC Heartland. Dabney was stronger than I expected.

        1. Martin, perchance have you read the briefs, especially the reply briefs of Kraft and its amici?

          After having read those briefs I do not see how it is possible that TC Hartland can win. Moreover, Dabney’s argument in favor of TC Heartland was riddled with false statements. Justice Kagan had to point them out.

          Just for one, the patent venue statute was passed to expand the scope of venue for patent cases at the time it was passed. Second, the current statute does not say that aliens can be sued in any District Court. In fact, a ruling in favor of TC Heartland will be flatly inconsistent with the statute with regard to aliens and venue.

          The statutes themselves are set forth in the compact list at the close of the reply brief.

          The Supreme Court cannot ruled in favor of TC Heartland without making a fool of itself.

          1. Ned “I Voted for Trump” Heller: The Supreme Court cannot ruled in favor of TC Heartland without making a fool of itself.

            Regardless of how this case turns out, the Supreme Court won’t end up looking “foolish”. All the egg is on Congress’ face and that’s where it’s going to stay until they learn how to legislate coherently.

            1. MM, the intent of Congress in this case was crystal. That is why TC Heartland cannot win.

              Kagen, Ginsburg, Sotomayor, Breyer and Kennedy all seem to get it as well. If Roberts, Thomas, Alito dissent, I can hardly think on what basis. But they will seem very foolish.

    2. Jay: If there are complaints [about all the cases filed in Texas] they tend to be complaints that aren’t venue style complaints. In other words, [the complaints aren’t that] it’s an inconvenient forum compared to where I am located. They tend to be complaints about how the cases are managed, how discovery takes place, how motions practice is handled, and so on.

      I don’t think it’s ever wise to b.s. the Supremes like this. The inconvenience of traveling to East Texas — a rank shirth0le if there ever was one — is a big deal, especially if you’re a small business. Maybe Jay hasn’t noticed but not too many people look to Marshall when they’re thinking about how to spend their vacation.

      1. MM, the complaints are not about the lack of easy access, about the overcrowding or any of that. It is about the unfair procedures that attract the cases in the first place and force settlement.

        There is no bull here, MM. There is a lot bull being spewed in writing and in the press about this case. But it is not coming from Kraft or its attorneys.

  3. Meanwhile …

    The innovation office has a particular focus on technology and data, and it is working with such titans as Apple chief executive Tim Cook, Microsoft founder Bill Gates, Salesforce chief executive Marc Benioff and Tesla founder and chief executive Elon Musk. The group has already hosted sessions with more than 100 such leaders and government officials.

    “There is a need to figure out what policies are adding friction to the system without accompanying it with significant benefits,” said Stephen A. Schwarzman, chief executive of the investment firm Blackstone Group. “It’s easy for the private sector to at least see where the friction is, and to do that very quickly and succinctly.”

    Granted, this administration is pretty much incapable of getting anything done. But this doesn’t sound like good news for junky logic patents.

  4. Dump the AIA and go back to first to invent, with all its equitable flaws. Back in the day, you paid your 65 dollars for the issue fee and the patent was good for 17 years. Sure the system got gamed, and yes maybe a limit from the day of filing, but how many interference actions went to publication, 50? Maybe 100? First to invent was noble, first to file fosters fraud. It’s 4F. (another back in the day reference)

    1. Richard, since most interferences went to the senior party, basically the first-to-file, I see nothing wrong in saying that the first-to-file (actually first to claim) gets the patent when two applicants are claiming the same invention. Other than that, we should retain the statutes as they existed prior to the AIA, but with some corrections: repeal the revisions to section 104 that allowed first-to-invent privileges to WTO and NAFTA countries, restore the longer of 17 years from issue or 20 years from filing, keep publication but make it entirely optional, repeal 102(e) because that topic is covered by automatically granting patents to the first to file (first to claim) an invention.

      I would further clarify that “on sale” is a personal bar and not prior art, and for that reason, § 103 does not apply.

      I would further clarify that prior invention is not prior art.

      1. I think that you hurried too much with your last two comments:

        I would further clarify that “on sale” is a personal bar and not prior art, and for that reason, § 103 does not apply.

        You need more than “to clarify” in order to rewrite what Congress did – on the record – with the deliberate removal of secret prior art as prior art. It is already clear that “new to you” IS the patent “new.”

        I would further clarify that prior invention is not prior art.

        Not sure what you mean by that – can you unfold that a bit?

        1. Anon, I would reorganize 102 into two subsections, one labeled “prior art,” and other labeled “non-prior art bars.” In the latter, I would include on sale, abandonment, foreign patenting, did not invent, and prior invention.

          The only thing that would remain prior art are things that are publicly known and publicly available.

          Regarding prior invention not being prior art – it really is not. It is only pertinent when rival inventors are claiming the same invention. Other than that, a rival inventor who does not seek to patent his invention should only be able to obtain a prior user right and should not be able to invalidate the rival’s patent. I know that prior invention has been a defense to infringement since the first statutes. But it really undermines the patent system to invalidate a patent over prior invention of another who himself did not file for a patent. The proof of prior invention is uncertain at best.

          1. Your views do not square with the actual law as written by Congress.

            In a number of ways.

            The AIA did reorganize and revamp 102/103 – and part of that revamping was the removal of the personal bar that you somehow want to slip back into the law.

            You really do have to face the fact that Congress acted to make “new to you” into the controlling definition of “New.”

            Once you grasp that, then – and only then – can you then ponder and contemplate what that means for your other Windmill Chase of using “New” in section 101.

            As it is, you are nowhere close to understanding the law at this point in time.

    2. We are dealing with CFR, not USC. You have to ask Congress not the Donald for that one, well until it hits his desk. Good luck.

    1. I’ll support it if we replace it with a more draconian rule that hands out jail time if you have, but fail to give the office, a but-for reference.

        1. Yes, get rid rule 56 and go back to Keystone Driller v. General Excavator, Hazel-Atlas v. Hartford, and Precision v. Automotive, some 70+ years ago, to find those inequitable conducting attorneys.

          New rule 56 should be if a patent falls because whatever the courts find inequitable conduct done by the prosecution attorney causing invalidation of a patent should be automatically suspended for 1…2…3..whatever years.

          While we are at it then we should lower the clear and convincing evidence standard that attorney intentionally withheld or misrepresented information and that the information was material since there would be no rule 56….since really no attorney tells lies or games the system….those forms are too tough to fill out…and I have to increase my revenue flow.

      1. 6, why do not we shoot examiner’s every time the patents they allow are invalidated over prior art they did not find in their searches?

            1. It is pretty funny. But it’s funnier because it’s true.

              Still, even if you did take extreme measures against an examiner it wouldn’t matter, because then you just wouldn’t have examiners, or you’d drive the cost up so that everything was done 2x or 3x. It’s just a game of getting people to be examiners and then allocating the appropriate amount of resources.

              1. You funny – and you totally missed the point on the “elitist” “I’m the gubmit” attitude that you both slink back to and is what your man Trump wants to get rid of.

                You can’t have both, you know.

  5. Applications from international students from countries such as China, India and in particular, the Middle East, are down this year at nearly 40 percent of schools that answered a recent survey by the American Association of Collegiate Registrars and Admissions Officers.

    Those people aren’t too smart so who really cares. This is great news for law schools.

    And all those oppressed white people in middle America. Now’s there big chance!

    1. “Those people aren’t too smart so who really cares. ”

      Nobody but literal pinheads gives two fcks how “smert” they are. We have plenty of smerts right here, no need to brain drain the whole world.

      Though administrators surely will miss their $$$$$$$.

      “This is great news for law schools.”

      What? You think they’ll have trouble meeting their “diversity targets” (totally not a quota btw!)?

      1. We have plenty of smerts right here

        Says a pimply know-nothing who believes that “liberalism” made it harder for “men” to get laid because he read it on the Internets.

        Please keep the laughs coming, 6. How’s you and Trumpies favorite pedo ap0logist hero doing these days? Still keeping you and your fellow sn0wflakes amused? Golly, I hope so.

        1. “Says a pimply”

          I’m actually remarkably clear skinned. It’s odd even to me, I would have expected more acne at this age. I get the occasional pimple or two, but on the whole, I’m fairly blessed.

          “who believes that “liberalism” made it harder for “men” to get laid because he read it on the Internets.”

          Nice strawman there MM. I’ve never said such absurd nonsense.

  6. For some reason Dennis doesn’t want to talk about it but ignoring Preznit Psy ch0 Asterix’s “executive orders” is a perfectly legitimate response to them.

    Or maybe we’re all supposed to obey our “leaders”, no matter what? Because …. why?

    Dennis probably has the answer.

  7. Glad to see specific suggestions below for “USPTO regulations” [not confusing that with those things requiring statutory changes.]
    Another often mentioned, and presumably already under consideration, are IPR and other post-grant proceeding rule changes for more easily substituting subject claims IF done shortly after the prior art submission date.

    1. Despite repeated efforts by the AIPLA and others over the years, the PTO has refused to overhaul its ambiguous and confusing MPEP restriction requirement “explanations.” Thus allowing some examiners to regularly make numerous unnecessary restrictions, resulting in costly and unnecessary divisional applications. This is a primary source of unnecessary expense and time-wasting for the PTO and the inventors and clients paying for all the multiplied costs. It should be a quality control issue as well and a regulatory change.

      1. Two of the most poorly written MPEP sections are the sections dealing with restriction practice and reissue practice (e.g., the presentation of amended claims).

  8. A simple recommendation would be to combine numbers. For example we might currently have rule, 1.97 and 1.98. Combine these two rules into one, for example, 1.97, making part A correspond the former 1.97 and part B correspond to the former 1.98. In this way, we could quickly cut patent regulations in half and simultaneously put a feather in our cap.

    1. Totally agree, they are really one rule but are two because how the new at the time IDS where implemented by the USPTO.

  9. This is overall a good idea. There are a thousand ways that we could make examinatin’ less costly from a regulatory perspective.

    First and foremost, overhauling prosecution as a system itself to drag it out of the dark ages.

    Second, requiring plain english be used in all guidance documents in all places. At the least to the greatest extent possible. And that’s if we don’t want to require it in claims and applications in general.

    Those 2x regulatory changes would save billions over a decade.

    1. Why wait a decade? How many Billions is the patent office budget?

      For a mere few million, one could create a top notch registration system.

      😉

      1. Yes, just a registration system! Let non-technical judges and juries figure this mess out. They do such a better job and so fast! Yet prosecution attorneys will still whine and complain how the PTO registration form is so unfair or complicated and it’s PTO fault not filling out a form correctly. I’m sure they will only claim real inventions and not to fool people with those dang lawyers words or terms. Of course that form will cause them double their fees, because it’s so hard.

        Litigation attorneys for big tech will love this system because juries always side with the facts.

      1. A guidance document isn’t really a regulation Ned. Imo anyway.

        I’m talking about the regulations/laws that govern the creation and maintenance of guidance documents. Yes, such monsters actually exist.

    1. GOP aide on CapHill: “I’m starting to think that while we’re pretty good at winning elections, we’re not great at the whole governing thing”

      Gee, I wonder why that is?

      Answer: (1) lack of intelligence; (2) @ssholes

      1. “I’m starting to think that while we’re pretty good at winning elections, we’re not great at the whole governing thing”

        Said an anonymous nobody allegedly on the interbuts.

        1. The conservatives who refused to support Trump are going to have a hard time stopping a coalition of Democrats and moderate Republicans from fixing Obamacare by throwing more money at it until the nation drowns in debt. They are going to have to realize that what they have done to themselves and to the party is going to damage the Republican label for very long time.

          As well, Trump just sank his presidency.

          1. “The conservatives who refused to support Trump are going to have a hard time stopping a coalition of Democrats and moderate Republicans from fixing Obamacare by throwing more money at it until the nation drowns in debt. They are going to have to realize that what they have done to themselves and to the party is going to damage the Republican label for very long time.

            As well, Trump just sank his presidency.”

            Nah, as has been pointed out to a lot of people, Trump has to deal with the “Freedom Coalition” or some such nonsense backs by establishment backers Koch bros. Trump is going to have to neuter them. And they’re already being neutered. They want waaaaay less than what obamacare already does/gives out. The mainstream republicans already tried to make a deal with them that wasn’t too bad, now the freedom people will be eating the current sht for awhile longer, with no end in sight for them.

            “As well, Trump just sank his presidency.”

            Not in the least.

            1. 6, the problem is that Ryan move forward without getting the prior agreement of the Freedom Coalition. The second problem is that Trump trusted Ryan.

          1. Ned, do you really think Trump’s staff’s de-regulation and cost savings edicts to federal agencies [which this is supposed to implement in the PTO] is only meant to apply to tweaking formal (CFR) Rules? [Even if that distinction occurred to them?]

            1. Paul, I do not think that Trump intended his edict to apply to organizations like the patent office. He intended it to apply to the regulations of regulatory agencies – things that exist because of the Commerce Clause. At least that is what I heard him to say. I am not sure what is Executive Order set in fact.

          2. Paul,

            The MPEP cites CFR sections for a reason–because the MPEP does not have the force of law.

            See US v. Mead to get a sense of the authoritative status of the MPEP.

            When I worked as an examiner, we were frequently told that the MPEP is not the law, but that we could treat is as such, given that there would be few exceptions to its applicability in our day-to-day affairs.

        1. Paul, again on the MPEP, it is not included in the executive order:

          Sec. 2. Regulatory Cap for Fiscal Year 2017. (a) Unless prohibited by law, whenever an executive department or agency (agency) publicly proposes for notice and comment or otherwise promulgates a new regulation, it shall identify at least two existing regulations to be repealed.

  10. The first reg to kill is 37 C.F.R. § 1.83(a) (providing that the drawings have to illustrate every claimed feature), which serves no purpose than to hassle applicants. It’s particularly galling to receive Rule 83(a) objections on applications that originated internationally, in contravention of Art. 27(1) PCT (providing that there may not be additional requirements relating to the form or content of the application to those provided by the PCT). The PCT and its Regulations contain no provision consonant with 37 C.F.R. § 1.83(a). See MPEP § 1825. PCT Art. 7 states that “drawings shall be required when they are necessary for the understanding of the invention,” which is commensurate with 35 U.S.C. § 113 (providing that “[t]he applicant shall furnish a drawing where necessary for the understanding of the subject matter sought to be patented”).

    35 U.S.C. § 113 suffices. 37 C.F.R. § 1.83(a) is unnecessary and its scope likely goes beyond rulemaking authority. If we’re killing rules, 83(a) should be the first to go.

      1. Third that.

        Get rid of the stupid rule that trademarks have to be in all capital letters. What a freaking waste of time.

    1. Cosign this.

      There are also several permissive regs that can go. Many of 37 CFR 1.84(*) are just “the drawings *should* be . . .” Please save recommendations for the MPEP, and have the regs just tell applicant what they MUST do. Examiners too often make objections based on permissive regs, requiring stupid rule 181 petitions to fix. 37 CFR 1.72 also has useless permissive language on title and abstract.

      Also needs to go: Restriction and election practice is a mess between 37 CFR 1.142-146 and additional quasi-rules in MPEP 800. I get that restriciton practice is a money-maker for the office and eases examination burden, but these get wielded in all kinds of stupid ways. Just switch to a true a la carte / pay-per-claim system and give examination time accordingly.

      Also needs to go: 37 CFR 1.56 and every other mention of “duty of disclosure” in ex parte proceedings. The Office takes ZERO action on inequitable conduct, and the doctrine has meaning only in court. The Part 11 rules of professional responsibility and 18 USC 1001 already cover everything else. The Office should just issue a reminder on the OFR to note the requirements of these provisions and inequitable conduct jurisprudence.

    2. In that regard, note that strict patent drawing requirements for each claim element date from the ancient pre-computer era in which patent searches were done by leafing though stacks of paper patents in the PTO Public Search Room looking at the drawings [and trying not to sneeze on the dust].

      1. Excuse me, but that is how I trained. In a high stakes infringement action, I’d leaf through the boots and find stuff that a computer today can’t find. Word based searches are gamed by clever patent attorneys changing the words describing a system.

        1. Yes, computer searches apparently cannot find prior art disclosed in patent drawings that is not verbally described in searched terms. But the PTO “shoes” [not boots] of subclasses of stacked hardcopy patents simply no longer exist.

        2. I feel stupid. I’ve never tried to “game” the system by changing words. I use whatever the inventors use.

          The MPEP rule of having to capitalize trademarks should also be abolished.

        3. I feel stup id. I’ve never tried to “game” the system by changing words. I use whatever the inventors use.

          The MPEP rule of having to capitalize trademarks should also be abolished.

          Ok, so I have to misspell “stu pid” to get through the filter? Yet MM can attach people ruthlessly? What’s the deal?

          1. The fact that half of U.S. applications are translations of foreign applications is one reason why the same component may have different names and not be found if those words are not used. But even U.S. engineers are inconsistent, especially over time, with what some things are called.

        4. Patent attorneys change the words describing a system so you cant find their patents when you want to use them to invalidate patents of someone else?

          That seems like a lot of work for not a lot of gain to the patent attorney’s or their clients, RP.

          I doubt that patent attorneys do that…. at least not the clever ones.

    3. I agree that 1.83 should go….. but 1.56 is troublesome on a weekly basis.

      The whole system assumes the Office can find the relevant art. So why do I spend so much time telling the USPTO which documents the EPO and SIPO has cited in a related application?

      1. One reason is that what is charged for a prior art search by the EPO is far more than what the USPTO charges. Also, the EPO search is conducted differently. Thus, is likely to find art the U.S. examiner did not.

        1. Somewhat of a non sequitur, given that what is paid for is not “a search of ‘x’ quality,” but rather a search – whatever that means – in order for the application to be properly examined.

          Methinks that you are introducing that “internal problem” thing again into somewhere that that internal problem does not belong.

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