Waiver is a common legal principle. It allows more efficient resolution of issues by enabling one party or the other to reduce issues. Waiver rules have been referred to as part of the “winnowing process” of reducing issues that need to be decided in a dispute.
In the administrative law context, waiver has been applied both to agencies as well as those challenging agency decisions. For example, in the context of Chevron deference, courts have said that the agency can waive the Chevron defense to their actions. See, e.g., Neustar, Inc. v. FCC, 857 F.3d 886, 893-94 (D.C. Cir. 2017); Commodity Futures Trading Comm’n v. Erskine, 512 F.3d 309, 314 (6th Cir. 2008).
As a patent applicant, waiver pitfalls abound. If the applicant does not traverse a restriction at the first chance, the right to further challenge by petition is waived. Petitions to the Director under 37 CFR 1.181 “not filed within two months of the mailing date of the action or notice from which relief is requested may be dismissed as untimely, except as otherwise provided.” The failure to object to an examiner’s use of Official Notice on the first chance waives the right to further challenge the facts officially noticed. See MPEP 2144.03. On appeal, waiver is even more prevalent. While every claim is, as a general matter, considered a separate invention, the failure of an appellant to argue separately claims subject to the same ground of rejection is deemed a waiver of any argument that the claims are entitled to separate consideration. See 37 C.F.R. § 41.37(c)(1)(iv). Note that the PTAB takes this to an extreme, in that even if argued separately but with a common header/subject, waiver may apply. Specifically, if more than a single representative claim is required, each of these additional claims or sub-groups of claims must be presented and argued under a separate sub-heading. According to the USPTO, claims presented under a single heading may be decided as a group, according to the heading, even if the appellant discusses claims separately within that group.
While the list could go on, the question that arises is why doesn’t waiver apply more strongly to the USPTO? The idea that the USPTO should be given unlimited “do-overs”, whether to reject, restrict, or otherwise delay an application (as we have discussed in the past, the USPTO utilizes re-opening of prosecution to take as many bites at the apple as it would like with no way for the applicant to stop it, here, here, and here) makes little sense when viewed in the context of general waiver principles. Waiver looks to whether the party has full knowledge (or the ability to know) of the right being waived and sufficient bargaining power. In the context of patent prosecution before the USPTO, the USPTO clearly has sufficient power. Examiners are supposed to know the rules at least as well as applicants. Further, the USPTO’s own rules and regulations confirm that the USPTO is supposed to aim for compact prosecution by raising all relevant issues in the first office action. MPEP 2103.
If it is fair to apply waiver to patent applicants in so many different and varied contexts throughout prosecution, then why cannot there be some similar limits on the USPTO? The USPTO has significant power of an applicant and has highly trained examiners that know the rules and procedures. There are, of course, some examples such as where the USPTO attempts to justify a decision on appeal using a new theory, but other examples are difficult to find. Applicants should consider using waiver arguments during prosecution and if, necessary, consider using waiver arguments and principles on appeal.