“[R]equests for facts or opinions addressed to a single person are excluded from the scope of the [Paperwork Reduction Act].”
On May 20, the U.S. Court of Appeals for the Ninth Circuit affirmed the decision of the United States District Court for the District of Nevada, holding that requests for information by the United States Patent and Trademark Office (USPTO) to an individual are exempt from the Paperwork Reduction Act (PRA).
Gilbert P. Hyatt is the named inventor on hundreds of inter-related patent applications that encompass over 100,000 claims. See Generally Hyatt v. U.S. Pat. & Trademark Off., 797 F.3d 1377 (Fed Cir. 2015). Both Hyatt and the American Association for Equitable Treatment (AAET) contend that patent applicants should not have to comply with certain USPTO rules because, they allege, the USPTO is violating the PRA.
The Paperwork Reduction Act
The PRA is designed to reduce the burden imposed on the public by the federal government when it engages in certain “collections of information.” Any collection of information that is subject to the PRA must be approved by the Office of Management and Budget (OMB) and assigned an OMB control number. A federal agency conducts a “collection of information” when it “obtain[s], cause[s] to be obtained, solicit[s], or require[s] the disclosure to third parties or the public, of facts or opinions…regardless of form or format, calling for…answers to identical questions posed to, or identical reporting or record keeping requirements imposed on, ten or more persons…” 44 U.S.C. §3502(3). This includes collections that are “mandatory, voluntary, or required to obtain or retain a benefit” and “any requirement or request for persons to obtain, maintain, retain, report, or publicly disclose information.” 5 C.F.R. §1230.3(c). “Information” means “any statement or estimate of fact or opinion.” 5 C.F.R. §1320.3(h). There are ten enumerated categories that are not considered “information.” Most relevant here, Exemption 6 excludes from the definition of “information” “[a] request for facts or opinions addressed to a single person.” 5 C.F.R. §1320.3(h)(6). However, under the PRA, any person may ask the OMB to review the collection of any information by or for an agency to determine if the collection is subject to the PRA and requires a control number. The OMB is required to respond to any non-frivolous request and take the appropriate remedial action if it determines that the agency has been conducting unapproved information collection.
The Patent Application Process
The USPTO has authority to promulgate regulations governing the granting and issuing of patents. The application process begins with an applicant submitting a patent application using one of the uniform applications approved by the OMB. The parties in this case submitted that the initial application was subject to the requirements of the PRA.
After the application is submitted, each applicant may take one of several paths, as determined by the USPTO’s patent examiners. Once past the initial application stage, certain rules kick in, including those at issue in this appeal: rules 105, 111, 115, 116, 130, 131, and 132 and MPEP §2173.05(n) (Rules). These rules allow or require applicants to submit additional information to the USPTO.
Hyatt & AAET’s Claims
In August 2013, Hyatt requested that OMB review rules 111, 115, and 116, arguing that those rules imposed “collections of information” under the PRA and therefore required OMB approval and control numbers. Since the Rules has not been approved by OMB, Hyatt asserted that he was not required to maintain, provide, or disclose the information referenced by the Rules. In September 2013, OMB responded that it had already determined that “these collections are not subject to the PRA because what is collected is not considered ‘information,’ pursuant to [three] exemptions in OMB’s PRA implementing regulation:” Exemptions 1, 6, and 9.
In 2016, AAET submitted three requests to OMB, making similar arguments regarding USPTO rules 105, 130, 131, and 132, and MPEP §2173.05(n). OMB responded simply that “the requests under Rule 1.105 are not subject to the PRA because responses to questions submitted under Rule 1.105 are not ‘information,’ but instead are exempt under” Exemption 9. In 2017, AAET once again submitted three requests to OMB making similar arguments regarding the same rules. This time, OMB responded that Rules 105, 130, 131 and 132 and MPEP §2173.05(n) were all exempt due to Exemptions 6 and 9. Additionally, OMB asserted that Rules 130, 131, and 132 were additionally exempt under Exemption 1.
Following OMB’s decision, Hyatt and AAET sued, alleging that OMB’s denial of their petitions were arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law in violation of the APA, because the challenged Rules were subject to the PRA and yet had not been reviewed or assigned a control number. The district court found that the challenged Rules “constitute requests for facts or opinions addressed to a single person are excluded from the scope of the PRA” under Exemption 6, and therefore, OMB’s denial of Hyatt and AAET’s PRA petitions was not arbitrary, capricious, or contrary to law. The district could did not address the parties’ arguments regarding Exemption 9, and granted summary judgment in favor of OMB, which Hyatt appealed.
The Ninth Circuit Court of Appeals concluded that the challenged Rules are not subject to the PRA; they do not authorize “collections” because they do not impose “identical” questions or reporting, recordkeeping, or disclosure requirements. The court relied on the statutory and regulatory definition of “collection,” which focuses on the nature of the request, namely the inquiry or prompt the public is being asked to respond to. The Rules at issue either impose formatting or submission guidelines or require or allow a particular patent applicant to respond to an office action. Each of these Rules require a response to an individualized communication concerning a specific application. Rule 115 allows an applicant to make an optional preliminary amendment to an application in a specific format, but no information is requested or required. Similarly, rules 130, 131 and 132 generally authorize submission of additional information, specifically, information related to prior art. Rule 116 allows for amendments before appeal of a final office action and allows various types of amendments. The Ninth Circuit noted that none of these impose “identical questions or reporting, recordkeeping, or disclosure requirements.”
The court also reasoned that their conclusion follows from “a practical understanding of the patent application process.” Patent examiners engage in thousands of conversations with patent applicants every year subject to the Rules. This dialogue is aimed at clarifying, amending or correcting a single application as it travels toward a final determination. The court determined that though the Rules apply to every applicant, merely imposing formatting requirements or providing for a uniform process is not sufficient to turn procedural rules into “collections” under the PRA or its regulations. To support this point, the court pointed out that the types of questions asked to a patent applicant attempting to patent a breeding methodology would not be asked to an inventor of computer components. Therefore, the court asserted, it would be illogical and antithetical to the purposes of the PRA to require the USPTO submit every such office action for OMB approval. Moreover, the “identical” requirements that Hyatt and AAET point to merely require that office action responses be highly specific. There is nothing in the PRA or its implementing regulations that suggests requiring specificity amounts to identicality. Therefore, because the Rules do not impose “collections,” they are not subject to the PRA’s approval and control number requirements.
The Ninth Circuit panel further concluded that even if some of the Rules impose “collections,” the PRA’s procedural requirements would still not apply to “virtually any of the Rules” because, according to Exemption 6, the definition of “information” generally excludes “request[s] for facts or opinions addressed to a single person.” The court reasoned that office actions, letters, and calls from a patent examiner sent to an individual applicant are “quintessentially individualized” and ultimately affirmed the decision of the district court.
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