Removing Unnecessary Rules at the PTO

As required by the Trump White House, the USPTO has continued its process of removing regulations that are “potentially outdated, unnecessary, ineffective, costly, or unduly burdensome to both government and private sector operations.”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:

  1. 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.
  2. 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.”
  3. 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.
  4. 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.comments@uspto.gov 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.

41 thoughts on “Removing Unnecessary Rules at the PTO

  1. 5

    Remove or revise this section:

    § 1.83 Content of drawing.

    (a) The drawing in a nonprovisional application must show every feature of the invention specified in the claims.

    Maybe: (a) The drawing in a nonprovisional application should show every feature of the invention specified in the claims, but does not need to show those features adequately described in the specification and enabling one skilled in the art to make and use the invention.

    -This section is beyond the powers of the Patent Office, in my opinion. (And before anyone complains that we should write cases based on this rule, we do; our clients in other parts of the world, however, do not have this rule and do not pay attention to it.)

    Also, get rid of the MPEP section/rule on capitalizing words that are trademarks. This is a complete waste of time.

    Also, stop rejecting the Brief Description of the Drawings because a draftsperson put a single figure onto two pages and provided a diagram showing that Fig. 1 is now split into Fig. 1A and 1B. This should be good enough, but the Patent Office does not see “Fig. 1A” or “Fig. 1B” in the Brief Description and therefore rejects the specification. It’s a waste of time responding to this.

  2. 4

    Hmm. This stuff is non-substantive… it’s on the level of fixing typos.

    I have a more ambitious proposal – one that would improve the lives of everyone: Get rid of the non-final / final designations for office actions.

    Nothing is “final” about a final office action, given the absence of any limit on RCEs. Not one bit of the substance of an office action changes based on whether it’s non-final or final.

    Nevertheless, lots of procedural rules have picky nuances based on whether the application is “finally” rejected or not: deadline calculations, IDS submissions, interviews, examiner production counts, etc. All of this complexity adds complication for both examiners and applicants, but provides no benefit.

    Also – rather than a zero-fee opportunity to reply to a non-final office action and a big fee for an RCE, the costs can be allocated evenly for replying to each office action. This will make budgeting, including budget forecasting, easier for both the PTO and applicants.

    1. 4.1

      “Nothing is “final” about a final office action”

      It is literally the final agency determination on the substance of the application. For admin law purposes. You surely know this, stop bsing.

      “Not one bit of the substance of an office action changes based on whether it’s non-final or final.”

      Legal “substance” of it does. It is the final agency decision.

      “Nevertheless, lots of procedural rules have picky nuances based on whether the application is “finally” rejected or not: deadline calculations, IDS submissions, interviews, examiner production counts, etc. All of this complexity adds complication for both examiners and applicants, but provides no benefit.”

      Yes because you have received what the federal gubmit considers to be its final determination.

      “All of this complexity adds complication for both examiners and applicants, but provides no benefit.”

      True, but it does add formal legal procedure which is ultimately necessary.

      1. 4.1.1

        > Legal “substance” of it does. It is the final agency decision.

        Please identify even one instance where, legally, that matters.

        Patent law provides one key mechanism for escalating pending applications through the legal process: ex parte appeals. The procedural criterion is that the application must have been “at least twice” rejected. No mention of “finally” rejected. If an application is finally rejected, RCEd, and non-finally rejected again, it can be appealed. Even if the application has never been finally rejected – even if it is on its second non-final rejection – it can be appealed.

        1. 4.1.1.1

          “Please identify even one instance where, legally, that matters.”

          It literally matters in literally every single application that gets a final or a NOA. It is true that it doesn’t have much irl effect in the vast majority of cases other than to trigger the various procedural oddities implemented by the agency, except for when someone wants to take the decision to the district court or even the fed. circ. (generally courts require the agency to have made a final decision on the matter, and additionally often to have exhausted all internal “appeals” or appeal mechanisms). Another thing it does is cut off the submission time for evidence (though district courts now seem to want to force the PTO to allow in evidence after final determination) which the office is obliged to consider in making its determination.

          1. 4.1.1.1.1

            > (generally courts require the agency to have made a final decision on the matter, and additionally often to have exhausted all internal “appeals” or appeal mechanisms).

            See above. A rejection can be appealed, and the resulting PTAB decision can be the subject of federal litigation – irrespective of whether the application is at a “final” rejection stage. Even if it has never been “finally” rejected.

            > Another thing it does is cut off the submission time for evidence (though district courts now seem to want to force the PTO to allow in evidence after final determination) which the office is obliged to consider in making its determination.

            Evidence can only be submitted with an appeal if it has been submitted to and considered by the examiner. Nothing about that rule changes whether:

            * The examiner issued a non-final rejection, the applicant replied with new evidence, and the examiner issued a final rejection in view of the evidence; or

            * The examiner issued a final rejection, the applicant replied with an RCE including new evidence, and the examiner issued a new non-final (or even final) rejection in view of the evidence.

            This is my point: substantively, the process is the same, regardless of the status of the rejections. The differences are logistical complexities, management tools, and fee collection points – all of which can be equivalently implemented in a simpler system.

            1. 4.1.1.1.1.1

              “This is my point: substantively, the process is the same, ”

              Not quite. If applicant has some evidence x and he doesn’t submit it by the final rejection getting issued then the office doesn’t consider that evidence SUBSTANTIVELY in making its determination (a 102 etc. could turn on that evidence). As a matter of procedure. Unless the examiner just up and decides to allow it in for consideration.

              “The examiner issued a final rejection, the applicant replied with an RCE including new evidence,”

              That’s with an RCE. Which is just a bs procedural mechanism that blows up the whole rest of the otherwise orderly procedure. But the gubmit wants to allow it so whatev. It is an entitlement program after all.

              But yes, with $$$ more or less it is all procedural things because the gubmit started allowing a reset button called RCE’s and CONs.

      2. 4.1.2

        6: “It is literally the final agency determination on the substance of the application. For admin law purposes.”

        When you say “final agency determination … for admin law purposes,” you could not mean anything less than final agency action for judicial review purposes, right? But this is wrong. A final examiner action is not a final agency action. One must first appeal it to the Board and only the Board’s decision constitutes a final agency action subject to judicial review. Moreover, the availability of after-final submissions that comply with Rule 116 requires examiners’ consideration and responses thereto, at least in advisory actions, which are made after final action.

        1. 4.1.2.1

          While the Board’s decision is indeed “final” for purposes of judicial review, even the Board’s decision is not necessarily the end of the road at the Patent Office given that the applicant can still file an RCE following a PTAB affirmance of the examiner.

        2. 4.1.2.2

          ” A final examiner action is not a final agency action. ”

          Yes, it is. We also have a mini appeal built in which will sometimes become the final agency action (if the board changes the PTO’s position which nowadays is very rare, if not in practicality forboddin) but otherwise it is always the final action going up the appeal chain to the supremes. That mini-appeal doesn’t change the former fact.

          Furthermore to be clear, the final judgement is literally a dual reject/allow not the minute details of the action, for instance the rejections etc. themselves.

          The office could, hypothetically send an action that says: we’re rejecting this patent because “nenernerner boo boo”. This on final. The final decision of the office is to reject the patent application. Obviously that would be overturned on appeal to the board or CAFC IF it is appealed. Otherwise the application just dies as rejected after a period.

          1. 4.1.2.2.1

            6,
            Do not conflate agency-internal examination finality required for an agency-internal administrative appeal (“claims twice rejected”) with finality requirement for judicial review external to the agency.
            Have you ever seen a district court case containing only a challenge to a final examiner rejection that was not dismissed due to lack of finality?

            1. 4.1.2.2.1.1

              6, perhaps the disconnect we have here is that you do not realize that APJs are not really judges engaged in judicial review – they are agency employees working at the pleasure of the agency head.

              1. 4.1.2.2.1.1.1

                No I’m well aware of that. I’m also aware that the CAFC treats the opinion of the board as the opinion of the office, which as a practicality it ends up being. But that doesn’t change the fundamental fact that the final decision in examinatin’ procedure of the official agency is the final action. Which is literally why it is called that. You know this is so Ron.

                “Have you ever seen a district court case containing only a challenge to a final examiner rejection that was not dismissed due to lack of finality?”

                No I have not seen one. Though they did discuss that in a decision a few times.

                “Do not conflate agency-internal examination finality required for an agency-internal administrative appeal (“claims twice rejected”) with finality requirement for judicial review external to the agency.”

                I’m not conflating anything. Nor do I, or the agency, care one whit about the 2x rejected setup in the statute for appeal to the CAFC etc. in regards to what a final action fundamentally is.

                You’re hung up on muh finality requirement for judicial review hur hur hur. Nobody cares about the specific statutory appeals setup in the patent arena. Generally administrative agencies have to make a final decision on a matter. This is a fact. And in the patent context that is all the final action is. Layered on top of that general framework throughout the years have been various “gimmes” for applicants as the gubmit wishes to be generous. Those include the 2x rejected, APA challenges, etc. etc. Layer after layer all on top of the fundamental framework.

                1. You are delusional 6, forgetting that the agency exists to serve others.

                  Part of this “hur hur hur” stuff is posturing.

                  But part of it still holds you in its thrall.

                  I “get” that you may feel the need to hold onto that, given your own mental fraility.

                  But you are no master.

                  You are but a servant.

                  Forgetting that – or worse, choosing not to see that – is the nadir of bureaucracy.

                2. 6,
                  Again you are confusing administrative appeals to the Board with appeals to the district court or to the CAFC. This is evident from your comment about “2x rejected setup in the statute for appeal to the CAFC ,” which is clearly wrong. Rather, the statute in 35 U.S.C. § 134(a) states that an applicant “whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board” – not to the CAFC. Appeals to the CAFC are provided under 35 U.S.C. § 141(a) (A”final decision in an appeal to the [Board] under section 134(a) may [be appealed] to the[CAFC]”), or to district court under 35 U.S.C. § 145 (“the decision of the [Board] in an appeal under section 134(a) may, unless appeal has been taken to the [CAFC], have remedy by civil action against the [PTO].

                  Where in the statute do you find any opportunity for appealing final examiner rejections to the courts? The only PTO patentability decision that can be appealed to the courts is a “final decision in an appeal to the [Board] under section 134(a).” Do you now finally get that a final examiner rejection is NOT a final agency action under administrative law?

                3. “This is evident from your comment about “2x rejected setup in the statute for appeal to the CAFC ,” which is clearly wrong.”

                  Um no it isn’t re re, I just didn’t feel like responding to you in full complexity. Because getting down into details is just more brushwork.

                  It’s the final agency decision.

                  More appeals or an appeal scheme does not change this.

                  Period.

                  “Where in the statute do you find any opportunity for appealing final examiner rejections to the courts? ”

                  I don’t re re. The final examiner rejections are supposed to be the same thing that goes through the board’s review to decision, subject to rare modification which is pretty much done away with now (note this was done precisely for the reason that the board was supposed to be reviewing the final agency decision, not creating a new one out of whole cloth itself).

                  “Do you now finally get that a final examiner rejection is NOT a final agency action under administrative law?”

                  No re re, I don’t. But I know why you are confused and why the statutory setup is confusing to you. Appeals are not agency actions as such, they are reviews of such. Or at least that’s how it is supposed to be. Again, this is why they changed things at the board a few years back.

                  Look this is the last time I discuss this with you, you don’t have to believe me. I know things were confuzzling as set up during most of your career because the mini-appeal REVIEW system was a joke in so far as it might turn into just more examination. Just go ahead and ask the people in the legal dept, call em up, they’re going to tell you the same thing. Ask them: is the agency issuing a final decision when it sends a final action? And they’ll say yes, it’s the final decision on the examination, which is why it is called a final action. And then they will say “herp derp”, and you can qqqqqqqqqq all day long a huge river for me. And I will lol @ u.

  3. 3

    Any proposal from the PTO that doesn’t get rid of Rule 56 is not a serious proposal.

  4. 2

    Surprised to not see 37 CFR 1.2 on that list with the “reasoning” that such is not currently applied anyway….

  5. 1

    As a leader in IP thought I just thunk up something that might be of use to patent applicants.

    In large families all springing from a single application (for example several CONs/DIVs from that initial application) that all have different claims to various features or embodiments that would ordinarily be ok to have all in one patent I would propose that for a small one time fee the patent office consolidate the claims into either a new publication (a new patent for the whole thing) or consolidate all the claims into the first issuing patent in the fam. This being done to save on rather large maintenance costs arising from this huge fam otherwise and to consolidate complexity of the various cases at the end of the overall patenting process for that fam.

    Thoughts? Unpossible due to various legal complications that generally arise in the various prosecutions? Perhaps this has been proposed already and shot down?

    1. 1.1

      So after forcing applicants to pay additional filing fees to file DIV’s required because of bogus restriction requirements, you’re proposing that for a “small one time fee” applicants can have the claims of the DIV(‘s) “consolidated” back into the parent patent?

      You should be the Director of the PTO proposing a money making scheme like that. Surprised you’re still in the examining corps with clear genius level thinking like that.

      Sometimes applicants want CON’s and DIV’s due to different licensing opportunities and issues like patent exhaustion that may crop up. CON’s with differing claim scope are also good insurance against prior art that may invalidate broader claims, but not narrower claims.

      A good proposal would be to end restriction practice, at least for related inventions, and give applicants the opportunity, for a “small one time fee” pay for the search and examination of the additional related inventions (sort of like when your PCT application claims lack unity of invention, you get an “invitation” to pay additional search fees). The case would issue when all of the claims have been searched and examined and found to be allowable (or until applicant cancels any claims that are not allowed and applicant doesn’t want to amend further and/or appeal.) That would save on DIV filing fees, DIV issue fees, and DIV maintenance fees and would be appreciated.

      1. 1.1.1

        “You should be the Director of the PTO proposing a money making scheme like that. ”

        lol, but it saves a lot of money for the applicants in the long run. My proposal is literally only for cases where they feel like they would save money. But yes, I can see your being cynical here.

        “A good proposal would be to end restriction practice, at least for related inventions, and give applicants the opportunity, for a “small one time fee” pay for the search and examination of the additional related inventions (sort of like when your PCT application claims lack unity of invention, you get an “invitation” to pay additional search fees). The case would issue when all of the claims have been searched and examined and found to be allowable (or until applicant cancels any claims that are not allowed and applicant doesn’t want to amend further and/or appeal.) That would save on DIV filing fees, DIV issue fees, and DIV maintenance fees and would be appreciated.”

        Yeah that might be best, but would require a new statute I’d guess. Can’t do that by “rule-making”. I’m not even sure if the office could do my proposal by rule making but I thought it might be possible.

        1. 1.1.1.1

          Wouldn’t require a new statute. Section 121 is discretionary (it says the Director “may” require restriction, not “must”).

          I can see not wanting independent inventions in one patent (what’s the example in the MPEP? digging a well and painting a house, or something like that), but it makes no sense for related inventions. If I have a product/article/system/composition and a method of making/using the product/article/system/composition, what’s the rationale for forcing applicant to have a separate patent on each. Give the product claims to the examiner who examines products and give the method claims to the examiner(s) who examine methods. They can either issue separate OA’s, or a combined one. Combined one would be administratively easier for PTO and applicants, but it’s not like both aren’t already keeping track of due dates. A few more ain’t gonna break the system(s).

          1. 1.1.1.1.1

            “Section 121 is discretionary”

            Yes, but there would be challenges no doubt to the director’s authority to “invite them to pay a fee for the various groups” in the EU style. That would require a new statute most likely because the courts would just be like “meh, no authority”, you can bet on that. “meh meh meh traditional practice is that the PTO examines the application after the examination fee and search fee is paid (at filing usually) the director has no authority to keep charging fees forever” “meh meh meh” – the CAFC panel a year after that is challenged.

            “but it makes no sense for related inventions.”

            I tend to agree if closely related, it’s just a leftover procedural mechanism from way back in the simplistic days. Which nobody has the political power/leadership to change. And also it may not, at this point, be worth the $$$ required to make the change internally.

            1. 1.1.1.1.1.1

              6,
              Although it may appear that the maintenance fees saved in the long run may be substantially in excess of the “nominal” fees for your proposed joinder of pending continuation claims in one patent, such “savings” will prove illusory because the PTO will increase upfront application fees to make up for the loss in maintenance fees based on its purported “aggregate costs” fee-setting authority. More importantly, this proposal ignores an important risk to patent holders that is otherwise mitigated by keeping continuation claims bifurcated in separate patents: It is the avoidance of IPR/PGR clouds on claims in the family chain that are not actually challenged in such proceedings. Given the devastating effects of IPR/PGR proceedings on quiet title of patents, there is an advantage of keeping claims bifurcated in a patent that cannot be hauled into such proceedings in which other claims in the family are challenged. These two reasons likely make your proposal a DOA in the minds of astute applicants.

              1. 1.1.1.1.1.1.1

                “Although it may appear that the maintenance fees saved in the long run may be substantially in excess of the “nominal” fees for your proposed joinder of pending continuation claims in one patent, such “savings” will prove illusory because the PTO will increase upfront application fees to make up for the loss in maintenance fees based on its purported “aggregate costs” fee-setting authority.”

                Yeah I thought about that too. So it would basically just be a fee shifting scheme as the fees would ultimately get drawn from somewhere. But, it would empower people that knew what they were doing and how to avoid fees a slightly cheaper option on occasion. And it might also simplify the complexity of the total patent thicket in terms of the sheer number of documents.

                But thanks for the reminder.

                “It is the avoidance of IPR/PGR clouds on claims in the family chain that are not actually challenged in such proceedings. Given the devastating effects of IPR/PGR proceedings on quiet title of patents, there is an advantage of keeping claims bifurcated in a patent that cannot be hauled into such proceedings in which other claims in the family are challenged.”

                Yeah I hear you on that one. So long as IPR and PGRs happen.

                1. 6,
                  Thanks for a cogent reply to my comment. I also commend you (an examiner, I presume?) for thinking about reducing paperwork, an area to which the PTO must pay more attention. Happy New Year.

            2. 1.1.1.1.1.2

              I doubt there would be any challenge. Unless the “invitation” was mandatory, i.e. unless the applicant had to pay the extra fees in the parent application in order to get the other related applications examined together and was precluded from filing a divisional.

              If my application has claims 1-10 to an article, claims 11-15 to a method of making the article, and claims 16-20 to a method of using the article, I might want to pay extra fees to have them all examined in the same application. But I may also want to have separate applications/patents on the methods. It should be up to the applicant.

      2. 1.1.2

        AAA JJ:

    2. 1.2

      BTW, applicants already take into account the filing, issue, and maintenance fees when deciding whether to file CON’s and/or DIV’s. Generally speaking, applicants only file them and pay the fees when it’s worth it to applicants.

      1. 1.2.1

        Yeah I know, but there’s still a lot of money being spent there that often likely wouldn’t need to be.

        1. 1.2.1.1

          It wouldn’t need to be if the PTO had a rational restriction practice. And enforced it.

          1. 1.2.1.1.1

            Incidentally, it’s not just the PTO: the EPO uses irrational “unity of invention” requirements.

            Last week, I spent some time reviewing foreign correspondence for a client involving four PCT applications that had come back with “unity of invention” requirements. Incredibly, each one exhibited a different rationale for the basis of the restriction and the groups that had been identified. Four different methodologies, in four similar applications. And all four were familiar because I’d seen similar games played at the PTO.

            1. 1.2.1.1.1.1

              David, can you say more, on the subject of the EPO being “irrational” in its restriction requirements? You see, I had always thought them to be rational.

          2. 1.2.1.1.2

            It wouldn’t need to be if the PTO had a rational restriction practice. And enforced it.

            Bravo. (no snark)

    3. 1.3

      An even better proposal would be to delay the first maintenance fee payment by the amount of PTA that the patent receives. So if I get a patent that has 2 years of PTA, I get that at the front end, and not the back, and my first maintenance fee is due 5 years after issue, instead of 3. PTA tacked on the end of the term is generally worthless (except for pharma of course), which is why the PTO does such a terrible job of complying with the directives of the statute to examine the application in a manner that ensures timely allowance/issuance.

      1. 1.3.1

        Not a bad idea but if we’re going to do something like that it seems simpler to just make the first maintenance fee due at 5 years or whatever the avg would be for the “avg” patent instead of constantly having to doodle around with the PTA for every patent’s fee date calculation.

        1. 1.3.1.1

          The PTO is statutorily obligated to calculate PTA for every patent. The determination of when the first maintenance fee would be due would be one more calculation. That’s what, one more line of code to write? Not exactly much to “doodle around with” really.

    4. 1.4

      I think that it’s an interesting idea, but it does not fit with this proposal as it would not “remove unnecessary rules.”

      1. 1.4.1

        I know. It’s just a pet peeve of mine and I bring it up whenever I can.

    5. 1.5

      As a leader in IP thought I just thunk up something

      I saw this and “thunk” of you, 6:

      link to facebook.com

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