All executive departments and agencies are required by Executive Order to publish a regulatory agenda every six months indicating regulations that the agency will be promulgating in the next six months. These agendas, from the various Federal agencies, are combined into what is known as the Unified Agenda of Federal Regulatory and Deregulatory Actions. The purpose of the Unified Agenda is to include the public in an agency’s rule making activity by providing a description of the rule, its timeline for completion, and anticipated publication dates for finalization.
The Spring 2009 Edition of the Unified Agenda was published in the Federal Register on Monday. It included several interesting proposals by the PTO.
First, the PTO seems to be proceeding with the new rules to limit Markush claims that were first published in August 2007 and then put on hold in October 2008.
Also on the agenda are the extremely controversial proposed IDS rules. These rules were first proposed in 2006 and put on hold a number of times while the patent bar protested their harshness. Apparently, the PTO is continuing its push for their implementation.
Next, the PTO plans to adjust fees for RCE’s, 18-month publication, and certain other fees, noting that:
[t]he rules of practice . . . do not set a fee that recovers the USPTO’s costs for these processes or services. The USPTO is proposing to adjust . . . these fee amounts such that they more accurately relfect the Office costs for these processes or services.
In these times when the PTO is struggling with reduced filings and reduced revenue, they certainly won’t be reducing these fees. This sounds suspiciously like the rumor about a significant raise to the RCE fee.
The PTO is also amending the procedures regarding enrollment and discipline of registered attorneys. Specifically, the PTO is replacing the UPSTO Code of Professional Responsibility with the USPTO Rules of Professional Conduct. Of significant note is the new annual fee requirement for registered attorneys and agents, as well as the PTO’s continued push for a continuing education requirement. The former has already passed, while the agency continues to push for the latter.
The PTO also continues its push for new Appeal Brief rules. The PTO published proposed rules in mid-2008, but then issued a notice delaying their implementation 5 days prior to the scheduled date. The notice now refers to new rules being published in October 2009 with comments accepted until December, with final action taking place in May 2010. It would seem that the PTO is preparing new rules, perhaps in response to the huge outcry over the previous version.
On a postive note, the PTO is also proposing electronic publication of issued patents and reexamination certificates. The notice indicates that electronic publication would shave about two weeks from the pendency of patents and reexaminations. This doesn’t seem like a lot, but any amount of time is a step in the right direction.
What does this mean?
Hopefully, the PTO is just putting the controversial rules in the notice in case it decides to do something with them some time in the future. It would be really disheartening for a new PTO director to come in and have all of these rules take effect at the same time. Let’s hope they do a better job of listening to comments and revising any proposed rules to work together with its customers, inventors and the patent bar.