Mr. Wegner's hot commentary:

Prioritized Examination (con'd): Will the PTO Follow the Law?

Prioritized examination under Final Rule 102(e), 37 CFR § 1.102(e), is effective May 4, 2011, Changes to Implement the Prioritized Examination Track (Track I) of the Enhanced Examination Timing Control Procedures (Final Rule), 76 Federal Register 18399, 18400 (April 4, 2011).

Rule 102(e) is the subject of an internal Patent Office Memorandum that announces to the examining corps that the PTO has suspended this rule, despite the fact that the 10,000 applications that would be accepted for this program would bring to the government the PTO's regular filing fee and a $ 4,000 fee to join the program, a government windfall of $ 40,000,000.00 if the full 10,000 applications are accepted for the program.

Will the Patent Office Follow the Law? Since we have not yet reached the May 4th starting date, it would be welcomed to have a notification from the Patent Office that the original program will take place beginning May 4th and any change would be subject to notice and comment as required by the APA. To the extent that a notification by the PTO does not clarify the situation, presumably some applicants will follow Rule 102(e) and file prioritized examination requests beginning May 4th: Will the Patent Office follow the law and honor the requests? Program Impact, Everything to the Public, Little to the Agency: Prioritized examination means everything to those applicants needing a patent immediately by putting them to the front of the 700,000-plus application queue, while having a de minimis impact on the overall queue and the overall work of the 6,000 Patent Examiners.

APA Standards to Waive Notice and Comment: The argument is made that the APA notice and comment provision can be waived for rules that have not yet reached their effective date. While APA rules can be avoided if the final rule has not been published in the Federal Register, here, the final rule was actually published in the Federal Register. It is well settled that "[t]he suspension or delayed implementation of a final regulation normally constitutes substantive rulemaking under APA § 553." Environmental Defense Fund, Inc. v. E.P.A., 716 F.2d 915, 920 (D.C. Cir. 1983)(citing NRDC v. EPA, 683 F.2d 752, 761 (3d Cir.1982); Council of Southern Mountains, Inc. v. Donovan, 653 F.2d 573, 580 n. 28 (D.C.Cir.1981)(per curiam)). Thus, suspension of a published final rule is "subject to APA notice and comment provisions." Environmental Defense, 716 F.2d at 920.

The "Good Cause" Exception: To be sure, a rule may be suspended in the exceptional situation of an "emergency situation[ ]" of the character contemplated for suspension of the rules for "good cause". Environmental Defense, 716 F.2d at 920 (quoting State of New Jersey, Department of Environmental Protection v. EPA, 626 F.2d 1038, 1045 (D.C.Cir.1980), quoting Consumer Energy Council of America v. FERC, 673 F.2d 425, 448 (D.C.Cir.1982), quoting American Federation of Government Employees v. Block, 655 F.2d 1153, 1156 (D.C.Cir.1981)).

Regards,
Hal

April 26, 2011

A hat tip to Mr. Wegner for his attenuated sense of outrage.