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Public Comments on Proposed Rule Change for Request for Reconsideration: Intellectual Property Owners Association (IPO)

From:  Intellectual Property Owners Association (IPO)
1255 Twenty-Third Street NW
Suite 200
Washington DC 20037-1174
Sent:  June 3, 2007
To:  Hon. Jon Dudas Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO)
ATTN: TM RECON COMMENTS - Cynthia C. Lynch
Subject:  Comments on Changes in the Requirements for Filing Requests for Reconsideration of Final Office Actions in Trademark Cases, 72 Fed. Reg. 6984 (February 14, 2007)

Dear Under Secretary Dudas:

The Intellectual Property Owners Association (IPO) welcomes the opportunity to comment on the proposed rule and practice changes amending 37 C.F.R. 2.64 recently proposed in the above referenced Federal Register notice.

IPO is a trade association for owners of patents, trademarks, copyrights and trade secrets. IPO's membership includes more than 200 companies and 10,000 individuals who are involved in the association either through their companies or as an inventor, author, executive, law firm or attorney member. Most members of IPO's Board of Directors are chief intellectual property counsel in U.S. companies. We serve all intellectual property owners in all industries and all fields of technology. IPO advocates effective protection for patents, trademarks, copyrights, and trade secrets and also urges laws that provide reasonable certainty to avoid undue litigation. The proposed changes to the USPTO Rules will have a significant effect on many of our members, their employees, and others in the trademark community, who practice before the USPTO in trademark matters. The proposed rule change would require applicants to file a request for reconsideration of an examining attorney's final refusal within three months of the mailing date of the final office action. IPO is opposed to such a requirement and requests the USPTO to reconsider the proposed rule.

According to the notice, the examining attorney would be encourage d, but not required , to act on a request for reconsideration prior to the end of the six month period after the office action was issued and prior to the applicant's deadline for filing a Notice of Appeal. We understand that the g oal of this rule change is to reduce the number of remands and transfers which c reate an administrative burden on the USPTO, prolong the pendency of the case an d also increase the likelihood that the applicant's request for reconsideration will be acted upon prior to the six month deadline for filing a notice of appeal . The net effect would hopefully result in eliminating the practice of filing a request for reconsideration at the same time the notice of appeal is filed by th e applicant and ultimately reduce the number of appeals that are filed based on the practical reality that a certain number of the requests for reconsideration will be granted. Requests for reconsideration of an examining attorney's final refusal, however, generally contemplate the filing of new evidence. In most instances, legal arguments would have been fully developed in the previous responses, and the new evidence submitted is often factual in nature. Such new information can include coexistence agreements, consumer surveys, customer statements and other evidence relevant to particular rejections, such as evidence of acquired distinctiveness and evidence refuting a likelihood of confusion objection. This information can take a fairly lengthy period of time to develop and gather, particularly if the applicant is located outside the U.S. For instance, coexistence agreements can require months of negotiations in order to reach terms satisfactory to both parties. Surveys require a substantial amount of time to design and execute and then to report the results. Even customer statements may take a fair amount of time because the process of obtaining statements is complex and involves intensive fact gathering before the final submission is complete. Further, the additional three months may be important when conflicting registrations are due for renewal or in the event case law changes. IPO members are concerned that the proposed rule change will not have the desired effect of eliminating unnecessary notices of appeal unless the examining attorney is required to examine the request in a certain time frame, certainly before the end of the six month period. Instead, the rule change would increase applicants' burden to monitor the status of the applications, and could result in more last minute filings of notices of appeal. Such a result would defeat the benefit of such a proposed rule. We request that the USPTO reconsider its proposed three month requirement and continue to allow applicants to file a request for reconsideration at any time during the six month period after issuance of the final office action and concurrently with the notice of appeal.

We thank you for the opportunity to provide these comments.

Sincerely,
Herbert C. Wamsley, Executive Director

United States Patent and Trademark Office
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