US Patent Office

Rule Changes
Gene Quinn
Patent Attorney, Zies Widerman & Malek

Founder of IPWatchdog, Inc.

 Rules and Events for Discussion

• PTO Changes UPL Rules (9/15/08)

• Appeals Rules stayed by OMB
(12/10/08)
• Claims & Continuation Saga
• CAFC panel issues opinion (3/20/09)
• Rehearing en banc ordered (7/6/09)
• Rules in Limbo – IDS and Markush
 PTO Changes UPL Rules
Summary
• Appeared to be a fatal blow to
invention submission companies.
• Seemed directly aimed at
LegalZoom.com.
• Have not been used by the USPTO
against non-practitioners.
• Practitioners BEWARE! USPTO want the
patent bar to police the industry.
 Rule 11.5 (b)

Practice before the Office includes, but

is not limited to, law-related service that
comprehends any matter connected with
the presentation to the Office or any of its
officers or employees relating to a client’s
rights, privileges, duties, or responsibilities
under the laws or regulations administered
by the Office for the grant of a patent or
registration of a trademark, or for
enrollment or disciplinary matters.
 Rule 11.5 (b)

Such presentations include

preparing necessary documents in
contemplation of filing the documents
with the Office, corresponding and
communicating with the Office, and
representing a client through
documents or at interviews, hearings,
and meetings, as well as
communicating with and advising a
client concerning matters pending or
contemplated to be presented before
the Office.
Rule 11.5(b)

Nothing in this section

proscribes a practitioner from
employing or retaining non-
practitioner assistants under the
supervision of the practitioner to
assist the practitioner in matters
pending or contemplated to be
presented before the Office.
 Comment 9 in FR Notice

• § 11.5 places unnecessary and

improper restrictions on practitioners
who may work with non-practitioner
invention developers who communicate
or consult with clients
• It is unreasonable and improper for the
PTO to interfere with the relationship
between invention promoters and
practitioners by restricting working with
non-practitioners.
 Comment 9 in FR Notice

• So long as legal advice and the filing of

patent applications, attending hearings,
etc. remain the responsibility of the
practitioner. It is unreasonable and
improper for the PTO to interfere with
the relationship between invention
promoters and practitioners by
restricting working with non-
practitioners.
 PTO Response to Comment 9

• The Office disagrees that § 11.5 places

unnecessary and improper restrictions
on practitioners who may work with
non-practitioners who communicate or
consult with clients. Nothing in the rule
prevents a person having prospective
business before the Office from utilizing
both lay and legal service providers in
connection with that person’s invention.
 PTO Response to Comment 9

• Non-practitioners who assemble

information to provide only non-legal
services at a cost may continue to
provide non-legal services.
• Non-practitioners who provide law-
related services… must be employed or
retained by the practitioner and under
the practitioner’s supervision.
 PTO Response to Comment 9

• Contrary to the comment, assembly of

information is not always a non-legal
service; for example, providing a list of
patent references found in a search of
the prior art is a non-legal service
whereas transmitting information to the
practitioner to use to describe the
invention in a patent application is a
legal service.
 PTO Response to Comment 9

• The Office “frequently finds itself

challenged by so-called ‘invention
promoters’ who exploit unsophisticated
inventors, heap every invention with
praise regardless of the merits or the real
prospects of legal protection, and entice
inventors into engagement agreements
filled with hollow guarantees of patent
protection and promises of royalty-
bearing licenses that seldom yield
anything of any significant value.”
 PTO Interpretation You MUST
Know

• A practitioner working with an

unsupervised non-practitioner
facilitates such practices.
• At a minimum, it is necessary that
the practitioner representing the
client not only consult with the
client, but also that the
consultation otherwise advise that
inventor on how best to proceed in
his or her particular case.
 The Reality of Rule 11.5

• Unfortunately, Rule 11.5 will in no way

have any impact on invention submission
companies.
• It will have impact on patent attorneys
and patent agents registered to practice
before the USPTO.  
• The Office does not believe they have the
authority to do anything to regulate the
activities of those who are not attorneys
or agents.
 OMB Stops Appeals Rules

• Normally, an agency obtains Paperwork

Reduction Act clearance at the time that
a new rule is published as a Notice of
Proposed Rulemaking.
• In this case, the PTO certified to OMB that
the total economic burden was
essentially zero and made no request for
Paperwork Approval until the day before
the publication of the Notice of Final Rule.
 OMB Stops Appeals Rules

• Thus, even though the Appeal Rule was

published as a final rule, the Patent Office
could not enforce it because the PTO
failed to timely seek OMB approval under
the Paperwork Reduction Act.
• OMB could not complete its review of the
Final Appeals rules before they were to
go into effect 12/10/08, so OMB forced
the USPTO to delay implementation of
these rules.
 Claims & Continuations Rules

• I knew it was bad news when I saw that

Judge Rader did not write the opinion,
but rather concurred in part and
dissented in part. 
• It seems that the only thing that the
Patent Office couldn’t do was limit the
number of continuations that can be
filed, and practically everything is now
a “procedural rule.”
 Tafas v. Doll CAFC Panel
Decision

• Final Rules 75, 78, 114, and 265 are

procedural rules that are within the scope
of the USPTO’s rulemaking authority.
• Final Rule 78 conflicts with 35 U.S.C. §
120 and is thus invalid.
• Affirm the district court’s grant of
summary judgment that Final Rule 78 is
invalid, vacate with respect to Final Rules
75, 114, and 265, and remand for further
proceedings.
 What Panel said was Next…

• This opinion does not decide: whether

any of the Final Rules are arbitrary and
capricious; whether any of the Final Rules
conflict with the Patent Act in ways not
specifically addressed in this opinion;
whether all USPTO rulemaking is subject
to notice and comment rulemaking under
5 U.S.C. § 553; whether any of the Final
Rules are vague; and whether the Final
Rules are impermissibly retroactive.
 Stop the Presses! En banc
Review

• On Monday, July 6, 2009, the CAFC

decided to rehear the claims and
continuations rule challenge en banc. 
• Additionally, the CAFC has vacated the
panel decision that awarded victory to
the USPTO. 
• The date of oral arguments in front of
the entire CAFC is as yet to be
determined.
 What Next for Claims & Cont.
Rules?
• The CAFC will hear the case sitting as
one based on the briefs already
submitted.
• The Appellant’s additional brief is due
August 5, 2009. Appellees’ additional
briefs due August 25, 2009. Appellant
may then file a subsequent brief within
7 days thereafter.
• Additional briefs are limited to 7,000
and any reply brief limited to 3,500
words.
 Predictions?

• Seems likely this was taken to either

give the USPTO a complete victory,
including on continuations practice; or
• To say that the majority got the case
wrong and adopt a ruling more in line
with Judge Rader, meaning the Final
Rules would be no more.
 What Should the Patent Bar do?

• The retroactivity provisions in the Final

Rules were particularly troubling, and
with this Supreme Court would likely
not be valid.
• The outcome will either be very good,
or very bad, so plan for the worst and
pray for the best.
• Be ready to file continuations, RCEs and
divisionals quickly this fall.
 What about IDS & Markush?

• On hold until resolution of claims and

continuations rules.
• These really work best, if at all, in
conjunction with the claims and
continuations rules, so if they fall these
may be re-evaluated.
 Deferred Examination

• PTO held a roundtable to discuss

deferred examination on 2/12/09.
• Comments needed to be filed on or
before 6/5/2009.
• Look for more rulemaking as the USPTO
seeks to try and address the backlog,
possibly by using deferred examination
to get rid of applications.
 The End

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