By Donald Zuhn —

Yesterday, the U.S. Patent and Trademark Office published a notice in the Federal Register (73 Fed. Reg. 70282) clarifying the new appeals rules scheduled to take effect on December 10, 2008.  The Patent Office also posted a statement regarding the clarification on its website.  As we reported last summer, the USPTO set forth amended rules of practice before the Board of Patent Appeals and Interferences (BPAI) in ex parte appeals that would take effect six months from their June 10, 2008 publication date (see "New Appeals Rules Published"). 

The Office's clarification involves the format of appeal briefs submitted prior to the December 10 effective date.  In particular, the Office has indicated that it will accept appeal briefs that are submitted in the new format prior to the effective date of the new appeals rules.  The Office noted that it had discovered that a number of appeal briefs have been submitted in the new format, and that these briefs were being rejected as non-compliant.  The Office stated that the rejection of such briefs was unintended, and that it "will not hold an appeal brief as non-compliant solely for following the new format even though it is filed before the effective date."  Appellants who have received a notice of non-compliant brief under such circumstances may request withdrawal of the notice.

The Office noted that information regarding the new appeals rules, including a list of Frequently Asked Questions about the new rules and checklists for ensuring that briefs comply with the new rules, can be found on a dedicated webpage the Office has set up for the new appeals rules.

The Office's clarification may be somewhat surprising in view of two other Federal Register notices the Office has published on the new appeals rules.  In the first notice (73 Fed. Reg. 32559), published on June 9, 2008, the Office requested that interested members of the public comment on the Office's estimates for any additional burdens imposed on applicants by the new appeals rules.  As we noted in July, in addition to publishing the notice for comment only one day before the final version of the new appeals rules were published, the Office curiously neglected to list the June 9 notice on its website — in contrast to the June 10 notice setting forth the final appeals rules which was posted on the Office's website (see "USPTO Rulemaking Practices Being Called into Question (Again)").  The Office published a second notice (73 Fed. Reg. 58943) on October 8, 2008, inviting public comments on paperwork burdens associated with the new appeals rules (see "Unhappy with the Ex parte Appeal Rule?  Read This Now").  The publication date of this notice was significant, since the Office of Management and Budget requires 60 days in which to review comments regarding the paperwork burdens of new rules (it does not appear that the OMB has completed its review of the new appeals rules; see ICR regarding new appeals rules).  Interested applicants and patent practitioners will now await the OMB's decision regarding the appeals rules.

For additional information regarding this topic, please see:

• "More on Ex parte Appeal Rule," October 10, 2008
• "Unhappy with the Ex parte Appeal Rule?  Read This Now," October 8, 2008
• "Patent Office Posts Comments on New Appeals Rules," September 11, 2008
• "More on USPTO Rulemaking Practices,"July 21, 2008
• "USPTO Rulemaking Practices Being Called into Question (Again)," July 20, 2008
• "New Appeals Rules Published," June 10, 2008
• "Patent Office to Publish New Appeals Rules on Tuesday," June 9, 2008

    By Christopher P. Singer —

In a Notice published in the Federal Register (73 Fed. Reg. 67750) on Monday, November 17, 2008, the U.S. Patent and Trademark Office announced a new rule that would institute an annual fee for all registered practitioners.  The fee will be required for practitioners to maintain active status to practice before the Office.  As other commentators have mentioned, and as the Notice informs, the rule change is based on a prior Notice published on December 12, 2003 which discussed proposed amendments to 37 C.F.R. § 11 that include an annual practitioner fee (see, e.g., Patently-O, "Patent Practice: Annual Practitioner Maintenance Fee").  The Office rationalizes the motivation for the rule change based on an interest in "maintaining a roster of registered practitioners, including affording practitioners due process, protecting the public, preserving the integrity of the Office, and maintaining high professional standards" as well as protecting the general public interest in having an up-to-date roster of registered patent attorneys and agents.  The fee is currently scheduled to be $118 per year, and as Hal Wegner, a partner at Foley & Lardner LLP and professor at George Washington University Law School, noted in a Monday newsletter to his e-mail subscribers "since the final rules are effective in the new fiscal year (in December) the payment is due September 30, 2009."

The rules describe the protocol the Office plans to implement regarding notifying registered practitioners when the fee is due, as well as consequences for non-payment (administrative suspension) and how practitioners who are suspended, if suspended in good faith, can be placed back on active status.  These fees, according to the Notice, are designed to recover the Office's estimated annual cost of maintaining the active practitioner roster, which includes additions and removals from the roster, updating contact information, conducting investigations regarding allegations of practitioner misconduct, and conducting disciplinary proceedings against practitioners.

Perhaps what is most disturbing about this Notice is that it comes on the heels of the USPTO's recent announcement that the recent rule changes to Markush claims and IDS practice will not go into effect under the current administration (see "PTO Announces No IDS or Markush Rules During Bush Administration").  Hopefully, this action will prove to be the single exception to the current Administration's stated intention of not making any further changes to the patent rules and regulations.

    By Donald Zuhn —

The U.S. Patent and Trademark Office released its FY 2008 Performance and Accountability Report yesterday and announced that the Office had for the first time "met 100 percent of its Government Performance and Results Act (GPRA) goals."  According to the Patent Office, the year-end numbers "demonstrate the agency’s commitment to sustaining high performance in the quality and timely examination of patent and trademark applications."

The Performance and Accountability Report indicates that the Office examined 448,003 applications in 2008 — the highest number of applications the Office has ever examined in a year (the Office's previous high of 362,227 examined applications was set last year).  The report also notes that 72.1% of patent applications were filed electronically via the EFS-Web in 2008, which is up from about 50% last year and less than 2% in 2005.  Not surprisingly, the Office also received a record number of application filings via the EFS-Web in 2008 (332,617).  Despite the significant increase in the number of applications that the Office examined in 2008, the report states that the total number of applications awaiting action rose from 760,924 in 2007 to 771,529 in 2008, and the total number of applications under examination rose from 1,112,517 in 2007 to 1,208,076 in 2008.

The report indicates that while the Office had more patent application disposals (396,228) in 2008 than in any of the four previous years, the Office allowed fewer applications (187,607) in 2008 than it did in 2007.  The percent of application disposals constituting allowances in 2008 was 47.3%, down from 54% in 2007, 56.1% in 2006, 61% in 2005, and 64.2% in 2004.  Last year, the Office indicated that the dropping allowance rate supported its assertion that patent quality was on the rise.  In the 2008 report, the Office instead focuses on its higher than expected allowance compliance rate of 96.3 percent when speaking of increased patent quality.  (The allowance compliance rate is the percentage of reviewed applications allowed by examiners that did not have any errors.)

Turning from the (ever) dwindling allowance rate, Tech Center 1600 (biotechnology and organic chemistry) offered biotech and pharma applicants and practitioners some good news, as that Group was once again able to reduce the average pendency to a first Office Action.  The average pendency to a first Office Action dropped (for the second year in a row) from 22.7 months in 2007 to 19.9 months in 2008.  Unfortunately, the average total pendency in Tech Center 1600 rose slightly to 34.8 months from 34.4 months in 2007.  As a point of comparison, the average pendency to a first Office Action for all Tech Centers combined jumped from 25.3 months in 2007 to 25.6 months in 2008, and the overall average total pendency increased from 31.9 months in 2007 to 32.2 months in 2008.

For additional information regarding this and other related topics, please see:
• "USPTO Announces 'Record Breaking' 2007 Performance," November 15, 2007
• "BIO Issues Statement Regarding USPTO Performance Report," December 6, 2007
• "Patent Office Announces Record-Breaking Year," December 27, 2006