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Public Comments on Proposed Rule Change for Request for Reconsideration: Miriam Trudell, Sheridan Ross P.C.

From:  Miriam Trudell
Sheridan Ross P.C.
1560 Broadway, Suite 1200
Denver, CO 80202
Sent:  Mon 3/19/2007 11:22 AM
To:  TM RECON COMMENTS
Subject:  Comments on Proposed Rule Change for Requests for Reconsideration

We are not in favor of this proposed rule change for the following reasons:

1. Making it a requirement to file a request for reconsideration electronically is unreasonable.  If an Applicant is under a final refusal, there is a possibility that the matter may be the subject of an ex parte appeal, and the request for reconsideration is the last chance for an Applicant to include evidence in the record on which to rely on in the appeal.  As such, Applicants would be limited to evidence that can be manageably filed via the electronic TEAS form, which is not fair to an Applicant who may want to include 50+ pages of evidence.  Thus, Applicants may simply not be able to include all evidence in support of their possible appeal if the filing is limited to an electronic form.   

Also, Applicants that do not feel comfortable with electronic forms, do not have access to the internet, etc., are disadvantaged.  Further, if the USPTO web site is experiencing problems, or the Applicant's or Applicant's attorney's internet access is experiencing problems, this would unduly burden an Applicant that happens to be filing on the deadline date, by not giving them an option to file on paper.

2.  Making it a requirement to file the request for reconsideration within 3 months of a final Office Action is not fair to an Applicant, since Applicants currently have the option of filing the request within 3 months now (rather than a mandatory requirement).  Also, since the Examining Attorney is not required to respond to the request for reconsideration before the appeal deadline, then this does not lessen any burden on the Applicant or the USPTO (in the form of  fewer appeals/remands), which is a listed reason for the proposed rule change. 

If the rule were to include language that would make it mandatory for the Examining Attorney to accept or reject the request for reconsideration and notify the Applicant before the appeal deadline, this would lessen the number of appeals, remands, etc., and would then in fact lessen the burden on both the Applicant and the USPTO.  Otherwise, without this additional language, it simply puts harsher requirements on Applicants and does not necessarily lessen the number of appeals, remands, etc.

Miriam D. Trudell, Esq.
Sabrina C. Stavish, Esq.
Katie Taylor, Esq.

United States Patent and Trademark Office
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