Federal Register, Volume 75, Number 219, November 15, 2010, Pages 69571-69850 Page: 69,844
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Federal Register/Vol. 75, No. 219/Monday, November 15, 2010/Proposed Rules
decisions and orders cited Ghuman in
noting that an appellant had withdrawn
claims from appeal. In FY 2009 (October
2008-September 2009), of the
approximately 5,612 reported Board
decisions and orders, only twenty cited
Ghuman in noting that an appellant had
withdrawn claims from appeal. In FY
2010 (October 2009-September 2010), of
the approximately 5,990 reported Board
decisions and orders, only twenty-six
cited Ghuman in noting that an
appellant had withdrawn claims from
appeal. While these numbers may not
represent a precise indication of the
numbers of appeals where appellants
chose not to appeal all of the rejected
claims, these figures are provided as an
indication of the relatively small
number of appeals in which appellants
choose to appeal fewer than all of the
rejected claims without canceling such
unappealed claims prior to appeal.
Based on this data, the Office found that
approximately 0.41% of all appeals had
Ghuman issues, i.e., where fewer than
all of the rejected claims were appealed.
For purposes of calculating additional
cost to appellants from this proposed
rule change, the Office rounded up to
1% and used this as a conservative
(high) estimate for the number of
amendments expected. As such, this
proposed rule change will not have a
significant economic impact on a
substantial number of small entities.
Additionally, for the majority of
appellants this proposed change will
likely result in cost savings. Because the
current rule allows appellants to appeal
fewer than all of the claims under
rejection, the current rule also requires
appellants to affirmatively state (in the
status of claims section of the appeal
brief), all of the claims on appeal. Under
this proposed rule, the Board would
presume that appellants intend to
appeal all claims under rejection unless
those claims under rejection for which
review is not sought are canceled. This
proposed change to the rule allows the
Office to eliminate the current
requirement for appellants to identify
the claims on appeal in the appeal brief.
Thus, in those instances where
appellants wish to appeal all claims
under rejection, which represents the
majority of appeals, the appellant's
burden is lessened by not having to
include a listing of the status of all of
the claims under rejection.
Changes to Appeal Brief Requirements
The Office also estimates a net cost
savings to all appellants as a result of
the proposed changes to the appeal brief
requirements. In particular, the Office
estimates a savings due to the proposedrequirements and proposed changes to
other requirements to make them more
flexible. The Office estimates a small
increase in cost to the subset of
appellants who choose to argue claims
separately or as a subgroup.
For the subset of appellants who
choose to argue claims separately or as
a subgroup, the small increase in cost
would merely be the addition of
subheadings before separately argued
claims or subgroups. The Office
estimates this added burden may
increase the time it takes to prepare an
appeal brief by 0.2 hours for those
appellants who choose to separately
argue claims. This estimate is based on
the Office's view of the time it would
take to add subheadings based on
agency expertise in patent prosecution
practice. The estimated small increase
in cost would not apply to all appeal
briefs because some appellants choose
to argue all of the claims rejected under
a ground of rejection as a single group.
However, since the Office does not track
the number of appeals in which
appellants argue all claims as a single
group versus the number of appeals in
which appellants argue some claims
separately, the Office has applied this
increase to the estimate of all appeal
briefs filed. Nevertheless, this proposed
change will not have a significant
economic impact on a substantial
number of small entities.
Notably, the overall proposed changes
to the appeal brief requirements will
result in net savings to appellants. By
allowing for more flexibility in how an
appellant chooses to present an appeal
to the Board and by eliminating many
current appeal brief requirements,
appellants will incur less cost overall in
preparation of appeal briefs. As
discussed infra in the Paperwork
Reduction Act section of the notice, the
Office estimates a net average savings in
preparation time under the proposed
rule of three hours of attorney time as
compared to the previous estimate
under the current rule. This estimate is
based on the Office's view of the net
time saved in preparation of an appeal
brief as a result of the proposed changes
based on agency expertise in patent
prosecution practice. As such, the
overall average attorney time and cost it
will take to prepare an appeal brief
under the proposed rule will be reduced
from 34 hours ($11,050) to 31 hours
($10,075). Using the median billing rate
of $325 per hour, as published in the
AIPLA 2009 Report, the Office estimates
that these proposed rule changes will
result in an average savings of $975 per
appeal brief. This savings will applyelimination of certain appeal brief
Accordingly, any costs related to the
filing of an amendment canceling claims
and the addition of subheadings to an
appeal brief will not have a significant
economic impact on a substantial
number of small entities. Moreover,
proposed changes to the rule, as a
whole, will likely result in a net cost
savings to an appellant and, therefore,
also not have a significant economic
impact on a substantial number of small
entities.
Unfunded Mandates: The Unfunded
Mandates Reform Act requires, at 2
U.S.C. 1532, that agencies prepare an
assessment of anticipated costs and
benefits before issuing any rule that may
result in expenditure by State, local, and
tribal governments, in the aggregate, or
by the private sector, of $100 million or
more (adjusted annually for inflation) in
any given year. This rule would have no
such effect on State, local, and tribal
governments or the private sector.
Executive Order 13132: This
rulemaking does not contain policies
with federalism implications sufficient
to warrant preparation of a Federalism
Assessment under Executive Order
13132 (Aug. 4, 1999).
Paperwork Reduction Act: This
proposed rule involves information
collection requirements which are
subject to review by the Office of
Management and Budget under the
Paperwork Reduction Act of 1995 (44
U.S.C. 3501 et seq.). The collections of
information in the rule have been
reviewed and previously approved by
OMB under control numbers 0651-0031
and 0651-0063.
As stated above in the Regulatory
Flexibility Act section of this notice,
while the majority of the changes to the
rule being proposed will either have no
impact on or will lessen the burden to
the public as compared to the collection
of information previously approved by
OMB, the Office has identified two
proposed changes that may, in certain
circumstances, increase the burden to
the public.
Specifically, the Office has estimated
that the proposed change to Bd.R.
41.31(c) will impose an increased
burden of two hours time to a small
subset of appellants (1%) who choose
not to seek review of all claims under
rejection by requiring such appellants to
file an amendment canceling any
unappealed claims, or otherwise have
the Board treat all rejected claims as
being on appeal. Additionally, the
Office estimated that the proposed
change to the briefing requirements in
Bd.R. 41.37(c)(1)(vii) (requiring
appellants to place any claim(s) argued
separately or as a subgroup under aseparate subheading that identifies the
69844
equally to large and small entities.
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United States. Office of the Federal Register. Federal Register, Volume 75, Number 219, November 15, 2010, Pages 69571-69850, periodical, November 15, 2010; Washington D.C.. (https://digital.library.unt.edu/ark:/67531/metadc52800/m1/280/: accessed April 25, 2024), University of North Texas Libraries, UNT Digital Library, https://digital.library.unt.edu; crediting UNT Libraries Government Documents Department.