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SEP 5 Z l N In re : DECISION ON : PETITION FOR REGRADE : UNDER 37 C.F.R. 5 10.7(c) MEMORANDUM AND ORDER petitions for regrading his answers to questions 21,25 and 43 of the afternoon section of the

The passing grade of 70 constitutes eligibility to hold a USPTO patent. Petitioner, the Register of Copyrights (RC), is a USPTO registered examiner who took the Examination on October 18, 2000. On May 2, 2001, plaintiff filed its application claiming that RC should be enjoined from issuing a registration to petitioner. On October 4, 2001, the Board granted that injunction to RC. After receiving the injunction, petitioner filed a second injunction request, which was granted by the Board on March 29, 2002. This injunction action is presently before the Board. A motion for en band review of that June 2002 injunction is pending before the Board. On February 25, 2003, the USPTO published a notice inviting comments and proposing revisions to its Examining Procedure for Examiners who are currently en band and the new Examining Procedure for Review Members. This procedure is contained in the USPTO's Rules and Regulations and the final rule has yet to be published. Upon publishing this notice, many members of the public wrote to the USPTO to express an opinion that the revised rules provide more effective review of en band applications, which, as the record will show, is not supported by the record before the Board. A discussion of the arguments for and against more effective review of en band applications will be given at the conclusion of this part; however, petitioners' main concern about the proposed new rules concerns their proposed injunction: Petitioner argues that it is premature to consider a new rule that would impose more requirements on an applicant than is necessary to ensure that the applicant be able to respond in writing to the allegations of a party in a proceeding for enforcement of an en band injunction or that the applicant respond during a public hearing with a submission of facts supporting the issuance of an injunction. For its part, the USPTO argues that a new rule is not required and, therefore, that it is unnecessary for it to address the issues regarding en band review. In light of the foregoing, this part of the petition concerns: (i) whether petitioner was given a reasonable opportunity after publication of the notice published by the USPTO to respond to the allegations of plaintiff; and (ii) whether, in light of the evidence in this record and in light of the testimony in the record, the proposed new rule would not constitute unreasonable procedural or substantive demands to which the record is devoid.

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