As required by the Trump White House, the USPTO has continued its process of removing regulations that are “potentially outdated, unnecessary, ineffective, costly, or unduly burdensome to both government and private sector operations.” Executive Order 13777. In this newest proposal (NPRM), the office proposes eliminating the following:
- 37 CFR 1.79, which prohibits reservation clauses. “i.e., it prohibits a pending patent application from containing a reservation for a future patent application of subject matter disclosed but not claimed in the pending application.” Although reservation clauses would not be prohibited, the PTO position is that “inclusion of a reservation clause provides no legal benefit.” However, I expect that it will take a bit of time to understand how this change would interact case-law on dedication and narrowing amendments.
- 37 CFR 1.127 is duplicative. The regulation allows a petition in circumstances where a petition is already permitted under § 1.181. Particularly, Section 1.127 allows for petition when a primary examiner refuses to “admit an amendment.” Under Section 1.181, petition is allowed from “any action or requirement of any examiner … not subject to appeal.”
- 37 CFR 1.351 is unnecessary. The regulation requires amendments to the code of Federal Regulations relating to the Patent Office (37 CFR …) be published in the Official Gazette and the Federal Register. The APA already requires publication in the Federal Register and, although it won’t be required, the Office intends to continue publication in the Official Gazette.
- 37 CFR 42.102(b) and 42.202(b) allow the USPTO Director to limit the number of IPRs and PGRs instituted. However, they the rules had a four-year timeline following the AIA that has now closed.
Send comments on this proposed rulemaking to AD25.firstname.lastname@example.org by February 20, 2018. Comments concerning ideas to improve, revise, and streamline other USPTO regulations, not discussed in this proposed rulemaking, should be submitted to: RegulatoryReformGroup@uspto.gov.