one signatory to this letter attempted to utilize the USPTO’s “premature final rejection”
procedures on several occasions. These petitions were all dismissed or denied on various
grounds that never reached the merits of the precise breaches of guidance that were raised:
Various USPTO officials stated that they never grant such petitions, because premature
final rejection is appealable subject matter, not petitionable.
These officials cite no
authority for the proposition, and fail to distinguish contrary agency precedent and
USPTO petitions decisions often recharacterize issues to irrelevant grounds and thereby
avoid deciding the precise breach complained of.
UPSTO decisions often do not carefully and accurately state the law.
“Premature final rejection” is inherently a time-sensitive issue, and must be decided
before deadlines run out,
else an applicant must either act in a way that diminishes the
remedy grantable by the petition, or face abandonment of the application. Decisions on
this class of petition appear to be selectively delayed
until that time deadline has
$790 ($395 for small entities) plus about ½
hour of attorney time. In contrast, the cost of filing this
petition is roughly equal to the total post-filing cost of prosecuting a typical application.
See, e.g., 09/385,394, Decision of Nov. 8, 2005 (holding an issue of premature final rejection
to be appealable, not petitionable).
E.g., MPEP § 706.07(c), “prematureness of a final rejection … is purely a question of practice,
wholly distinct from the tenability of the rejection. It may therefore not be advanced as a ground for
appeal, or made the basis of complaint before the Board of Patent Appeals… It is reviewable by petition
under 37 CFR 1.181.”
For example, in 09/385, 394, issues directed to untimely examination were denied because
examination was eventually completed. Issues relating to incomplete examination were denied because
the petitions examiner would only consider timeliness. A typical set of errors is set forth in a Petition
filed April 10, 2006, seeking higher review of lower-level decisions in application 09/385,394.
09/385,394, Decision of May 4, 2004, at page 6, stating that the test for mootness is whether
an event is “likely to recur,” and refusing to issue an order to ensure that it will not recur, when Supreme
Court precedent provides mootness of a federal agency action only when the agency accepts a “heavy
burden” of showing that it will cease all “offending conduct,” Adarand Constructors v. Slater, 528 U.S.
216, 221-22 (U.S. Sup. Ct. 2000); see also 09/385,394, Decision of Nov. 8, 2005, at page 5, stating that
the Kronig and Wiechert decisions will not be followed because “it cannot be seen.”
37 C.F.R. § 1.181(f) (“The mere filing of a petition will not stay any period for reply that may
09/385,394, a Petition for Review of Premature Final Rejection filed April 10, 2006 remains
on the docket for consideration by Brian Hearn in the Office of Petitions fourteen months later. The
Petitions Office representative contacted on June 6, 2007 confirmed that Mr. Hearn’s backlog is 2-4
lapsed. USPTO then denies the petition as moot, but refuses to honor the procedural
benefits that accrue to an applicant on the USPTO’s determination of mootness.
Based on this experience, the protections provided for in the USPTO’s guidance document to
deal with procedural error by its examiners, and relied upon by the USPTO in addressing
applicants concerns about the harshness of the Continuations Rule, do not appear to exist in
While we appreciate that this experience may be anecdotal, we submit that all such
evidence presented by patent practitioners will necessarily be anecdotal. Patent applicants
possess a widely dispersed data set that defies systematic collection. The USPTO, on the other
hand, possesses a centralized database and full knowledge of whether petitions to the Director
will present an effective check and remedy for procedural errors and violations of agency
guidance by examiners during prosecution. We believe that the USPTO should perform a
thorough analysis that complies with Circular A-4, and that this analysis should include a
transparent reporting and analysis of the petitions filed to dispute improper finality and the
resolution of such petitions, and whether these petitions are being soundly decided on the law.
months. Similarly, two petitions on different issues were filed in the same art unit at about the same time:
a petition directed to an unrelated issue was decided in a few weeks, while the Final Rejection petition
filed on April 8, 2005 was decided on September 9, five months.
Under Supreme Court precedent, the legal effect of an assertion of mootness by the USPTO is
often identical in consequence to a grant of all relief sought in the petition – a party asserting mootness
accepts responsibility for “completely and totally eradicating all effects of the alleged violation,” and
states “with assurance that there is no reasonable expectation that the alleged violation will recur.” That
is, by asserting mootness, USPTO waives all challenges to even unproved “allegations” raised in a
petition, and accepts the responsibility to eradicate all effects. However, at the highest levels an applicant
can access, USPTO uses mootness as a way to deny all relief, not to implement an obligation to eradicate
all effects. See, e.g., 09/385,394, Decision of Dec. 4, 2003.
USPTO often does not adhere to its own guidance. See, e.g., In re Alappat, 33 F.3d. 1527,
1580, 31 USPQ2d 1545, 1588 (Fed. Cir. 1994) (en banc) (Plager, J., concurring) (“The Commissioner [of
Patents] has an obligation to ensure that all parts of the agency … conform to official policy of the
agency, including official interpretations of the agency’s organic legislation. Otherwise the citizenry
would be subject to the whims of individual agency officials of whatever rank or level, and the Rule of
Law would lose all meaning…”).
USPTO Failed to Comply with Applicable Information Quality
Principles and Guidelines
The Federal Information Quality Act and OMB’s government-wide Information Quality
Guidelines have been in place for almost five years.
USPTO, separate from the Department of
Commerce of which it is part, issued its own guidelines implementing OMB’s guidelines taking
into account its particular needs.
Both OMB’s and USPTO’s guidelines require that information USPTO disseminates
satisfy applicable quality standards.
The standards relevant to these draft rules are utility,
reproducibility and objectivity.
USPTO’s definitions of these terms follow the definitions established by OMB. In
addition, because the information in question constitutes the agency’s basis for regulatory
decision-making, it is inherently influential.
“Utility” refers to the usefulness of the information to its intended users, including the
public. In assessing the usefulness of information that the agency disseminates to the
public, the agency considers the uses of the information not only from its own
perspective but also from the perspective of the public (Sec. 6(b)).
In principle, it’s possible that the limited information disclosed by USPTO in support of
these two draft rules is sufficiently useful from its own perspective. However, it is inarguably
false that this information is useful “from the perspective of the public.” As documented in
Attachment L and Attachment N, USPTO’s responses to both informal and formal requests for
supporting data, models and assumptions, and its apparent willingness to provide selected
Office of Management and Budget, “Guidelines for Ensuring and Maximizing the Quality,
Objectivity, Utility, and Integrity of Information Disseminated by Federal Agencies; Notice;
Republication, 67 Fed. Reg. 8452.
U.S. Patent and Trademark Office, “Information Quality Guidelines,” online at
Nothing in this Attachment should be construed to imply that the domain of information
disclosed by USPTO is sufficient for purposes of Executive Order 12,866. We restrict our review to the
information that USPTO actually disclosed.
“Influential” information is defined by USPTO as “information that will have or does have
clear and substantial impact on important public policies or important private sector decisions consisting
primarily of statistical information on USPTO filings and operations.”
K: USPTO F
individuals with privileged access, proves that agency officials know that the public considers
the information it has disseminated to have little or no utility.
“Reproducibility” means that the information is capable of being substantially
reproduced, subject to an acceptable degree of imprecision. For information judged to
have more (less) important impacts, the degree of imprecision that is tolerated is reduced
(increased). With respect to analytical results, “capable of being substantially
reproduced” means that independent analysis of the original or supporting data using
identical methods would generate similar analytical results, subject to an acceptable
degree of imprecision or error (Sec. 7).
The reason that the Administrative Procedure Act and E-Government Act of 2002 require
disclosure of an agency’s data, models and assumptions is to provide informed comment during
the prescribed public comment period. As a prerequisite, the public must be able to reproduce
USPTO’s own analyses. Without access, it is simply impossible to do so.
Objectivity” involves two distinct elements, presentation and substance. The presentation
element includes whether disseminated information is being presented in an accurate,
clear, complete, unbiased manner, and within a proper context. Sometimes, in
disseminating certain types of information to the public, other information must be
disseminated in order to ensure an accurate, complete, and unbiased presentation.
Sources of the disseminated information (to the extent possible, consistent with
confidentiality protections) and, in a scientific, or statistical context, the supporting data
and models need to be identified, so that the public can assess for itself whether there
may be some reason to question the objectivity of the sources. Where appropriate,
supporting data shall have full, accurate, transparent documentation, and error sources
affecting data quality shall be identified and disclosed to users. The substance element
focuses on ensuring accurate, reliable, and unbiased information. In a scientific, or
statistical context, the original or supporting data shall be generated, and the analytical
results shall be developed, using sound statistical and research methods. If the results
have been subject to formal, independent, external peer review, the information can
generally be considered of acceptable objectivity (Sec. 6(a)).
In this case, both presentational and substantive objectivity are important. Most clearly,
USPTO’s forecasts of future backlog must be “accurate, reliable, and unbiased.” Whether the
This is not a Shelby Amendment “data access” issue given an information quality veneer. The
data, models and assumptions in question are USPTO’s, not those of an arguably independent third party.
K: USPTO F
agency’s forecasts meet these tests speaks directly to the merits of its stated regulatory objective,
assuming arguendo that the stated objective is defensible under law and Executive Order 12,866.
To be presentationally objective, USPTO’s forecasts must be presented in “an accurate,
clear, complete, [and] unbiased manner, and within a proper context.” We are especially
concerned about “completeness” and “proper context.” For USPTO’s forecasts to be complete,
they must at a minimum include information about how rates are predicted to vary by application
type, art and technology center. In addition, additional information is needed about variability
To be in a “proper context,” it is essential to have “accurate, reliable, and
unbiased” information about the effects these rules would have on applicants and innovation.
USPTO’s forecasts are presented without documentation in any of these areas. The
forecasts have no utility for the regulated public; are not reproducible; and cannot satisfy the
presentational objectivity test.
USPTO might have been able to meet these quality standards if it had subjected its
analyses to independent external peer review, in accordance with OMB’s government-wide
According to USPTO, it does not use peer review as a tool for pre-dissemination
review to ensure that applicable information quality standards are met.
Rather, it utilizes other
Variability is a measure of the extent to which random influences would affect predicted
backlogs. Uncertainty is a measure of the extent to which predicted backlogs would change if the
different assumptions or models were used, especially if USPTO’s models have not been validated.
Office of Management and Budget, “Final Information Quality Bulletin for Peer Review,” 70
Fed. Reg. 2664.
“Based on the review it has conducted, the United States Patent and Trademark Office
believes that it does not currently produce or sponsor the distribution of influential scientific information
(including highly influential scientific assessments) within the definitions promulgated by OMB. As a
result, at this time the United States Patent and Trademark Office has no agenda of forthcoming
influential scientific disseminations to post on its website in accordance with OMB’s Information Quality
Bulletin for Peer Review.” See http://www.uspto.gov/main/policy/infoquality_peer.htm.
“Historically, a pre-dissemination review process of all USPTO information disseminated is
incorporated into the normal process of formulating the information. This review is at a level appropriate
to the information, taking into account the information’s importance, balanced against the resources
required and the time available to conduct the review. USPTO’s business units treat information quality
as integral to every step of USPTO’s development of information, including creation, collection,
maintenance, and dissemination. USPTO receives and relies on feedback from both internal and external
customers if the accuracy or completeness of the information disseminated is below standard. Corrective
measures are taken immediately to limit the impact and re-disseminate the corrected information. In an
unbiased manner, USPTO makes every effort to provide complete databases on USPTO website of all
patents and trademarks that have ever been captured electronically. All USPTO information
K: USPTO F
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