Informal Rulemaking: What to expect when you’re expecting a new rule from the USPTO

“The USPTO has stated the new proposed rule is (somehow) both interpretative and one of procedure.”

by: Preston Morgan, Licensing Analyst | May 21, 2018

The USPTO recently proposed new rules concerning the standard for claim construction in AIA proceedings. As the rule currently stands, claims are to be given their broadest reasonable interpretation (BRI) in light of the specification. The proposed rule suggests leaving BRI behind and adopting Phillips. Under Phillips, claims are construed as to their ordinary and customary meaning as understood by one having ordinary skill in the art. While the merits of adopting a new rule are debatable, it is important to first understand an agency’s process for implementing new rules.

It is not often the USPTO lends their ear to the public for comments on new rules (The USPTO officially released over 400 documents since requesting comments on the implementation of the new AIA provisions in 2012—15 of those documents were proposed rules). The Administrative Procedures Act (APA) sets forth the rules for how agencies should engage in rulemaking. When an agency is interpreting its own rules, procedures, or policies there is no need to consult the public. An agency must, however, go through certain procedures for substantive rules. While the distinction between interpretative and substantive rules is a highly contentious one, agencies may elect to provide notice of a proposed rule and receive comments to avoid the debate. If such an election is made, the agency must follow the informal rulemaking procedure laid out in § 553 of the APA or risk invalidation of the final rule.

The USPTO has stated the new proposed rule is (somehow) both interpretative and one of procedure. While courts are “mindful but suspicious of the agency’s own characterization,” the USPTO can avoid arguments about the classification of the rule because it has elected to go through notice-and-comment rulemaking procedures. Nevertheless, when previously challenged in comments on the classification of the rule the agency maintained that the rules were interpretative and/or procedural, but since the agency followed § 553 anyway the point was moot.

Once an agency decides to go through informal rulemaking it must (1) issue a notice of proposed rulemaking, (2) receive comments, and (3) give a statement of basis and purpose for any adopted rule. Each step contains nuances that could create issues for the USPTO if it is not careful. The following will highlight a few of the most common problems arising during the informal rulemaking process.

When an agency issues a notice of a proposed rule § 553(b)(3) says it must give either the terms or substance of the proposed rule or a description of the subjects and issues involved. While this does appear to be a choice for the agency, a general description can often lead to an inadequate notice and an invalid rule. One of the points of adequate notice is to give the public enough information to make meaningful comments on the effect of the proposed rule if made final. Therefore, another way the notice could be inadequate is if the final rule is not a “logical outgrowth” from the proposed rule. This is not to say that the final rule cannot be different than the proposed rule; only that interested parties must have been able to anticipate and comment on the final rule.

Here, the USPTO offered a proposed rule to adopt Phillips consistently for IPR, PGR, and CBM proceedings. If the final rule were to adopt Phillips for PGR and CBM but not for IPR, the notice could possibly be found inadequate. Since the proposed rule states that Phillips would be adopted consistently across all three proceedings, commentators could argue they did not contemplate the rule being applied inconsistently across all three proceedings.

After issuing a notice and receiving comments, an agency gives a statement of basis and purpose. This means an agency’s final rule must be justified and fully explained in light of the comments on the proposed rule. According to Am. Mining Cong. V. United States EPA, an agency must respond to each comment which, if true, would require a change in the proposed rule. While this does not require an agency to respond to every comment, agencies are typically over-cautious and respond to more comments than necessary. Additionally, when an agency does respond to a response-worthy comment, the response must adequately address the raised issue and not be merely dismissive of the issue.

Comments are a very important part of the process and can be highly influential on how the final rule looks compared to the initial proposed rule. If there are comments that contemplate a certain variation of the proposed rule it could help prove the adequacy of the notice if challenged. Conversely, a lack of comments on a certain variation could prove the opposite. If the agency does not respond to a comment pointing out a fundamental flaw in the agency’s thinking (or data influencing the agency’s thinking), then the statement of basis and purpose could be lacking causing the rule to be invalidated.

Comments are not only for those who have a complaint. If fifty out of fifty-one comments on a rule are negative, you can almost guarantee the agency will cite the one comment that was in favor of the rule. Agencies also utilize helpful tweaks to proposed rules. It is not rare for final rules to either be altered from the proposed rule or scrapped altogether. These changes from the proposed rule can be a by-product of convincing comments from the public. For this reason, it is often better to take a wait-and-see approach when handling proposed rules than to be proactive and proceed with current cases as if the proposed rule will be adopted.

This is not the first time the USPTO has asked the public to give their opinion on the claim construction rule. When first implementing the AIA, the USPTO engaged in similar rulemaking procedures to come up with the rule we have today. In response to the proposed rules, 251 comments were received and many were directed to this very issue. While the USPTO defended their rule against the comments then, it looks like the agency is ready to change their mind.

Currently, the comment period is officially open and anyone can submit their own comments at The deadline to submit comments is July 09, 2018. Comments are public and will be available on the USPTO website. Whether you are in favor of the rule or have issues with it, let the USPTO know and you could help shape the future of claim construction before the PTAB forever—or until they decide to change it again.


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