Maybe It's Finally Time They Went Home

    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.

Comments

[e6k]

Did someone forget that these rules were proposed a long long time ago? Or are you hoping they'll magically stop the appeal and the lawyers working on it because someone says "no new regulation proposals"?

[Kevin E. Noonan]

Dear e:

As for the appeal, the timing works out that it is highly unlikely the process will be over before the change of administration, if only because Judge Cacheris did not rule on the many other grounds asserted by plaintiffs against the new rules. So even if the CAFC were to overturn Judge Cacheris's decision, the case will have to go back for consideration on these other grounds, with possibility (likelihood) for appeal no matter how Judge Cacheris might rule.

And although it is possible that the Office will try to publish the pending rules packages as final rules (I don't put anything past them), when the President's Chief of Staff says he doesn't want to follow prior administrations' tendencies to pass new rules that the next administration quickly reverses (which President Bush did for a host of environmental rules put in place by President Clinton in the waning days of his administration), I think the message is clear: our time here is over.

Thanks for the comment

[e6k]

They're already published as final rules so far as I know, so they're published but merely enjoined from taking effect. I may be wrong but there seems to be a difference in the two situations of 1. not having published them yet and 2. having them published but prevented from going into effect by a legality. Seems to me that might be a crucial difference in this case.

Perhaps there is some other legal nuance which I haven't accounted for that could be relevant?

[Kevin E. Noonan]

Dear e:

Pardon me for mixing apples and oranges. You are correct about the new continuation/claim limitation rules - they are final rules that have not gone into effect only because of the injunction. My point was that there are other legal hurdles besides the current appeal before they can go into effect, and by the time these get sorted out there will be a new administration (and who knows what they will do).

As for the other rules packages, they have been published for comment and at least some have been sent to the OMB; however, the Office has not yet published them as final rules. I think these are now in question in view of Mr. Bolton's memo, since whether vetted or not they will be "new" in the sense of imposing new requirements on the public (or at least our little portion of the public). The memo seems to indicate a philosophical tendency not to impose new rules in the last 6 months of this Presidency.

But, hey, time will tell. Thanks for the comment.