By Kevin E. Noonan —

The past few years have seen a whirlwind of proposed new regulations from the U.S. Patent and Trademark Office.  Although the most dramatic denouement came when Judge William Cacheris’ decided on April 1st to permanently enjoin the new continuation and claims rules, there are several other rules packages pending, including ones regarding Markush claiming, practice before the Board of Patent Appeals and Interferences, and rules governing submission of prior art using Information Disclosure Statements.  And although the PTO brass and Department of Justice have decided to appeal Judge Cacheris’ decision, there are indications that this administration’s heart just isn’t in the fight anymore.

One of these indications is a Memorandum, issued May 9th, to all Heads of Administrative Departments and Agencies of the Executive Branch.  This memorandum came from President Bush’s Chief of Staff, Joshua Bolton (at right).  In it, Mr. Bolton directs the Heads to begin winding down the process of creating new regulations.  Mr. Bolton writes:

We need to continue this principled approach to regulation [balancing the need for regulation with the peoples’ right to be allowed to make their own decisions] as we sprint to the finish, and resist the historical tendency of administrations to increase regulatory activity in their final months.

Mr. Bolton’s proscription to achieve these ends?  "Except in extraordinary circumstances," any regulations to be promulgated by the Bush Administration must be proposed no later than June 1st and implemented no later than November 1st.  Since June 1st is this Sunday, there appears to be little time for extensive new rulemaking.

In addition, Mr. Bolton affirms that there should be no shortcuts:

In identifying priorities and establishing schedules, agencies should provide adequate time for necessary analysis, interagency consultation, robust public comment, and a careful evaluation of and response to those comments.

The burden for ensuring that these rubrics be adhered to falls to the Administrator of the Office of Information and Regulatory Policy and the Office of Management and Budget (the latter of which has been sensitized to the short work done to the budgetary requirements by the Patent Office following the continuation/claims and IDS rules imbroglios).  And Mr. Bolton leaves agencies like the Patent Office with some discretion, saying that "[n]othing in this Memorandum alters or impedes the ability of the executive departments and agencies to perform their responsibilities under existing law."

But it does seem that the impending end of this Administration has begun to make less pressing the task of convincing them of the wrong-headedness of many of the new regulations they have proposed.  The task ahead, of course, is making the voices of the patent community heard by the new Administration.  If we are lucky, they might be more inclined to listen.