Keeping the Road Clear: The Patents Ombudsman Program
You’ve filed a patent application without the help of an attorney (pro se), and now you have a pending utility application before the United States Patent and Trademark Office (USPTO). You’re pretty happy with yourself. Then you receive an Office action—a letter informing you that some of your claims have been rejected. After reading the required action, you’re confused, so you contact your examiner and have a conversation. Maybe you also contact the supervisory patent examiner (SPE) and have a conversation, yet after both of these communications you still don’t feel the issue has been resolved. You’ve exhausted the normal channels and now you’re stuck, like a roadblock has set across your path. Fortunately, that’s when the Patents Ombudsman Program can step in and help.
Under the America Invents Act of 2011, the USPTO established the Patents Ombudsman Program to assist small businesses and independent inventors during patent prosecution. At the USPTO, patent applications are examined in Technology Centers (TCs) staffed by thousands of examiners. The course of patent prosecution usually leads to back-and-forth communication between an applicant (or the applicant’s attorney or agent) and the specific examiner assigned to the application. The complex legal and technical language involved, as well as the specific protocol that must be followed during patent prosecution, creates an environment where communication issues can arise. When you add the volume of patent applications the Office receives in a given year (over 500,000 in 2011), some applications can, from time to time, get stuck in the pipeline or seem to fall off the track.
Realizing this, the USPTO designated a Patents Ombudsman representative in each of the Technology Centers. The Patents Ombudsman Program does not circumvent normal prosecution practice or channels of communication, nor is it intended to supersede the authority of patent examiners and SPEs. Rather, it provides two key benefits to applicants: it helps facilitate complaint-handling for stalled applications in both the pre-examination and examination processes, and it tracks complaints to ensure they are handled within 10 business days.
Now in its second year, the Patents Ombudsman Program has assisted more than 840 users and fielded over 1400 inquiries. Since the USPTO began specifically tracking pro se data, 255 pro se applicants have used the program. While these statistics show the program is working, it’s the appreciation users express and the expertise of the Ombudsman representatives that indicate it is a success.
Here are examples of how two anonymous applicants used the program to reach favorable conclusions in the course of their patent prosecutions.
“Adam” contacted the Patents Ombudsman Program about his utility application; the application had received a final rejection, and Adam was very frustrated. He insisted that he had a patentable invention. The Ombudsman representative carefully listened to Adam and his concerns, then spoke with management at the TC where the application had been examined. The representative was able to determine that what the applicant really wanted was to protect the design of his invention. Adam was put in touch with the Ombudsman representative for design patents, who then explained to him the protection available and the application involved in a design patent. Adam was happy to learn that there was, after all, protection available for his invention, and he proceeded to file a design application.
"Belinda” contacted us after an appeal brief was filed by her attorney. She could no longer afford the attorney and didn’t know how to proceed. Belinda was intimidated by the prospect of going at it alone and worried that her application would become abandoned. The TC Ombudsman representative explained that Belinda could revoke the power of attorney and showed her how to do that. The representative then discussed how Belinda could proceed with the prosecution on her own and helped to restore her confidence in her application.
Both of these cases demonstrate how even seemingly small issues can be imposing during prosecution. The Patents Ombudsman Program is designed to ensure that the system works the way it should and that nobody is left standing in the middle of the road encountering an unnecessary barrier to his or her dreams of innovation.
To find out more, please visit the Patent Ombudsman Program homepage.