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Patents in the Trump Administration: the 2-for-1 order
March 10, 2017

Everyone in the IP community wonders if President Donald Trump will create a new order in the IP field much the same way he has approached other areas of the government.  We had our first glimpse recently when President Trump issued Executive Order No. 13,771, which requires a federal agency to identify two existing regulations to be repealed every time it “publicly proposes for notice and comment or otherwise promulgates a new regulation[.]”   Federal agencies are also required to ensure the cost of new regulations is zero, unless “otherwise required by law or consistent with advice provided in writing by the Director of the Office of Management and Budget.”  This order states a policy “to manage the costs associated with the governmental imposition of private expenditures required to comply with Federal regulations.”

While the Executive Order is not specifically aimed at the USPTO, it could have a significant impact on the USPTO, because the agency is still shaping, by regulations and other means, the relatively new, but rapidly growing America Invents Act invalidation proceedings.  The USPTO has relied on rulemaking power as an important tool to shape the PTAB process.  Furthermore, the USPTO also needs rulemaking power to respond to court decisions applicable to PTAB.

By potentially making it more difficult for the USPTO to promulgate rules governing the PTAB procedures, the Executive Order’s, while having the objective of reducing new regulations’ costs, to the contrary could have the effect of shifting costs to the users of the PTAB process.  This might occur if new procedures evolve through decisions in PTAB proceedings rather than through guidance provided by the USPTO in its rulemaking.   

The Executive Order is working its way through the judicial system.  Several groups, including Public Citizen, the Natural Resources Defense Council and the Communications Workers of America, filed suit in U.S. District Court in Washington, challenging the President’s constitutional authority in issuing the order.

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