The USPTOUnited States Patent and Trademark Office. See also PTO. has put out a new NPRM, attempting to lock in place rules that were created without going through rulemaking in the prior Trump administration. While I have a lot to say about the substance of the rules—more on that next week—there’s also a severe procedural issue here.
Specifically, this NPRM does not appear to have gone through the required EO12866 regulatory review. There’s no record of it on OIRA’s website for such regulatory reviews, either as reviewed or under review. I’ve heard that the PTOPatent and Trademark Office, informally used interchangeably with USPTO. told OIRA that it was not a “significant” rule—which is flatly untrue—but it clearly should have gone through 12866 review as a more sweeping change than the last two attempts.
So why didn’t it go through such review? My best guess is that it’s because the last two times that the PTOPatent and Trademark Office, informally used interchangeably with USPTO. has tried to put in place such a rule, the rule saw heavy opposition at the 12866 stage. In one case, the proposal was pulled entirely; in the other, it wasn’t pulled but was seen as a non-starter by others in the administration leading to it not moving forward. That opposition is likely what the PTOPatent and Trademark Office, informally used interchangeably with USPTO. is trying to avoid this time. They’re aware that a large swath of American industry and the intellectual property bar opposes the proposed rule and are trying to keep that fact from other parts of the Administration who would kill it.
If the rule had been reviewed by OIRA, I’d expect them to have pointed out the enormous costs that it will create by removing an effective tool for reviewing invalid patents, with little to no offsetting benefit. I’d expect them to have questioned whether the PTOPatent and Trademark Office, informally used interchangeably with USPTO. has sufficient legal authority for many of the proposed changes. And I’d expect them to have alerted other Executive agencies to what was being proposed. None of that has happened because the PTOPatent and Trademark Office, informally used interchangeably with USPTO. either kept the rule from OIRA entirely or misled them by telling them it was not a significant rule.
EO12866 doesn’t create any enforceable rights, but it’s certainly worth questioning why the process was avoided here.
