OFFICE OF THE GENERAL COUNSEL 

July 23, 2012 

Comments of the United States Patent and Trademark Office to the 

Merit Systems Protection Board Proposed Revision of its Rules 

Published on June 7, 2012. 

The Merit Systems Protection Board (MSPB) published a Proposed Rule on June 7, 

2012, to revise its rules of practice and procedure to improve and update the MSPB’s 

adjudicatory processes. Fed Reg. Vol. 77, No. 110. Written comments are due on July 

23, 2012. The United States Patent and Trademark Office (USPTO), Office of General 

Counsel, submits the following comments for consideration. These comments are based 

on the extensive practice of the USPTO Office of General Counsel before the Board. 

Comment on 5 CFR 1201.23 Computation of Time: 

 The Agency appreciates the clarification that this section applies to all deadlines, 

including those set forth in a Judge’s Order and to discovery requests and responses. The 

Agency recommends that this section be further amended to incorporate the concept of 

constructive receipt as was added to section 1201.22 regarding receipt of agency 

decisions. In situations in which the deadline for the action of a party is determined to 

run from that party’s receipt of a document, a presumption of delivery would assist in the 

efficient conduct of the litigation. For example, when the date for response to discovery 

is determined by the date the party receives the discovery request, a presumption of 

delivery would insure that an appellant not intentionally or negligently avoid service. 

Comment on 5 CFR 1201.24 Content of an Appeal, Right to Hearing:

The USPTO appreciates the Board’s attempt to limit duplicative filings by limiting the 

information an appellant is required to file with an appeal and supports that goal. The 

USPTO agrees that evidence on jurisdiction should be filed in response to an Order to 

Show Cause on Jurisdiction, but only if the Board would hold in abeyance the agency’s 

narrative response to the appeal until after the resolution of jurisdiction in a case. 

Acknowledgment Orders typically require the agency’s narrative response to contain the 

agency’s statement of jurisdiction, and the narrative response frequently is due either 

before the appellant is required to respond to the Order to Show Cause or before the 

Administrative Judge has resolved the jurisdictional question. Without any supporting 

documents, the agency is frequently unable to make any meaningful statement on 

jurisdiction. For example, in a case alleging jurisdiction under the VEOA, the agency 

may not have any idea if the appellant has exhausted his or her administrative remedies 

with the Department of Labor and could not make any statement on jurisdiction until the 
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appellant files supporting documentation. The Agency suggests that the rule be modified 

to provide that the agency not be required to file its narrative statement until the appellant 

has filed his/her response to the Order to Show Cause. 

Comment on 5 CFR 1201.33 Federal Witnesses: 

The initial clarification is welcome. The Agency additionally requests that the Board 

clarify the responsibility for payment of travel and per diem for Federal witnesses. We 

request that you clarify which Federal agency is responsible for the expenses when the 

Federal employee called to testify is not an employee of the agency that is party to the 

matter before the Board. Of special interest is when the Federal employee witness is an 

employee of an agency located in a different city and could, therefore, incur substantial 

travel and per diem expenses. 

Comment on 5 CFR 1201.58 Closing the Record: 

The Agency believes the intent of the change, as stated in the Summary of Changes, to 

allow a party “to submit evidence to rebut new evidence submitted by the other party just 

prior to the close of the record,” will ensure fairness and completeness of the record. We 

have two comments for your consideration on the wording of the regulation: (1) We are 

concerned by the addition of the phrase “or argument” (i.e., “ . . . unless the party 

submitting it shows that the evidence or argument was not readily available . . .”). The 

addition of this phrase appears to broaden the opportunity of a party to add additional 

arguments that they just omitted to raise before the briefing deadline. While the 

opportunity to submit new evidence may be justified, if it supports an existing argument, 

the text seems to permit the submission of new argument independent of newly 

discovered evidence. (2) In the context of jurisdictional responses, typically the appellant 

submits a response to the Show Cause Order and the agency files a response with the 

record closing upon submission of the agency’s response. The revised regulation could 

be interpreted to permit appellant to reply to the agency’s response since in its response 

the agency would be submitting new argument. 

Comment on 5 CFR 1201.73 Discovery Procedures:

The USPTO appreciates the Board’s attempt to limit duplicative filings in this context as 

well. However, while the agency may duplicate all information supplied in its initial 

disclosures in the Agency File, no similar disclosure exists for appellants. An appellant’s 

initial disclosures provide the agency with a valuable avenue to quickly determine whom 

to depose from the appellant’s case in chief. Without initial disclosures, the agency 

cannot learn anything about what witnesses the appellant intends to call until it receives 

the appellant’s responses to discovery, over a month after initial disclosures would have 

been due. Given the short timeframes in MSPB cases, a month delay can prevent an 

agency from being able to depose all relevant witnesses. Accordingly, the USPTO 

suggests that 5 CFR 1201.73 be amended to eliminate the agency’s initial disclosures but 

require the appellant to provide “[t]he name and, if known, the address, telephone 

number, and e-mail address of each individual likely to have discoverable information 
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that the appellant may use in support of his or her claims or defenses, identifying the 

subject of such information,” i.e., the information currently required by 5 CFR 

1201.73(a)(2)(ii). 

Comment on 5 CFR 1201.115 Criteria for Granting Petition or Cross Petition for 

Review: 

The Board’s clarification is helpful. The USPTO offers this comment on subsection (d), 

permitting a Petition for Review (PFR) when “New and material evidence or legal 

argument is available that, despite the petitioner’s due diligence, was not available when 

the record closed . . . .” The Agency notes that the Board has previously held that “The 

Board will not consider an argument raised for the first time in a petition for review 

absent a showing that it is based on new and material evidence not previously available 

despite the party’s due diligence.” Mascarenas, v. Dep’t of Defense, 57 M.S.P.R. 425 

(May 7, 1993). The text of the proposed rule appears to broaden Mascarenas to permit 

the submission of new argument in and of itself. Under this rule, a party could raise new 

argument in the PFR that it merely omitted, or hadn’t thought of, below. The Agency 

requests that the text be clarified to reflect case law. 

Comment on 5 CFR 1201.118 Board Reopening of Final Decisions: 

The Agency appreciates the opportunity to comment on the revision and requests 

clarification of the impact of the change on Petitions for Review.