Public Comments on Proposed Rule Change for Request for Reconsideration: Frank Terranella - Abelman, Frayne & Schwab
ABELMAN, FRAYNE & SCHWAB
Attorneys at Law
666 Third Avenue
New York, New York 10017-5612
June 8, 2007
Cynthia C. Lynch, Office of the Deputy Commissioner for Trademark Examination Policy
Docket No. PTO – T-2006-0011 Changes in the Requirements for Filing Requests for Reconsideration of Final Office Actions in Trademark Cases
Dear Ms. Lynch:
This letter provides my personal comments on the Notice of Proposed Rule published in the February 14, 2007 edition of the Federal Register.
The USPTO proposes to require that the time period for filing Requests for Reconsideration be cut in half to three months and that all such Requests must be filed online via TEAS. The reason given for the change is to curtail the number of Notices of Appeal that are filed simultaneously with the Requests for Reconsideration.
While the USPTO's goal of reducing the number of Notices of Appeal is commendable, the solution is misguided. I agree that the current rules encourage the filing of Notices of Appeal by having the appeal deadline run from the issuance of a Final Refusal (which normally is only the second Office Action). The way to solve the problem of unnecessary Notices of Appeal is to allow a response to the second Office Action that is free of any appeal deadline. That way, applicants can respond without fear that the appeal clock is running. If the response to the second Office Action is deficient and the Examiner does not believe that it can be solved by a simple amendment agreed to over the telephone, a real Final Refusal should be issued. It could have a 90-day clock.
The problem here is that the USPTO has traditionally used the appeal deadline as a weapon to pressure applicants to reach agreement with Examiners. Is it any wonder that applicants respond by filing Notices of Appeal to relieve the pressure? If the USPTO is truly interested in reducing the number of Notices of Appeal, then it should refrain from issuing a Final Refusal until the applicant has been give two real chances to put the application in shape for publication. Complex identifications often require more than one round of revisions. Examiners need not go "final" unless it is clear that further discussions are pointless and the application will not be amended into an acceptable condition. I do not advocate taking away this weapon from Examiners; I advocate letting Examiners use their judgment when it should be used.
The current proposal will do nothing to reduce the number of Notices of Appeal. In fact, it is likely to increase them. Clients are notoriously slow at responding to their attorneys' communications. This is especially true when the clients are from other countries where the pace of life may not be as frantic as here and where local practice always permits a request for another extension of time. What will happen under the new rule is that Requests for Reconsideration that would have been filed beginning the day after the three-month deadline will now instead be plain Notices of Appeal. This means that a minor ID issue or a disclaimer that would now be solved by filing a Request for Reconsideration will now instead generate a Notice of Appeal. There will be an avalanche of these unnecessary Notices of Appeal caused as a result of this new rule.
Moreover, the proposed rule has the unwanted effect of eliminating from the present Rule 2.64 the wording "normally the examiner will reply to a request for reconsideration before the end of the six-month period if the request is filed within three months after the date of the final action." Under the new rule, although applicants are required to file their Requests for Reconsideration within three months after the date of the final action, examiners are free to respond or not to the Requests for Reconsideration before the appeal deadline. This also will increase the number of Notices of Appeal as examiners are as likely to procrastinate as anyone else given the absence of a deadline, even an aspirational one as in the present rule. Applicants are likely to want to cover themselves, in the absence of any assurance that the response will be examined before the appeal deadline.
There is also a real question about the definition of a Request for Reconsideration. Is it defined as every response to a final refusal or is it simply a response to a substantive refusal? What if there is a refusal on an identification of goods question and the applicant chooses to amend to language other than that suggested by the Examiner. Is that a Request for Reconsideration? It is not clear what is a permissible amendment during the final three months of the response period. The rule must clarify this and, if enacted, a special TEAS form should be established for Requests for Reconsideration.
However, if the real ambition of the USPTO in this rule is to increase use of TEAS and speed up the examination process, there are better ways to do that. TEAS use could be promoted by having the printed output look more like the paper filings that attorneys make. Many attorneys are uncomfortable presenting a TEAS print-out to their clients as their work product. This could be solved by a little more attention to the look of the print-out. For example, the addition of headings for disclaimer statements and claims of prior registration would be welcome. TEAS is no longer a child. It needs to mature into an adult and have a more mature look. It would also be helpful if the TEAS argument section permitted the imbedding of images as Microsoft Word does.
As for speeding up prosecution, it is my view that the USPTO is more concerned with this issue than applicants are. If an applicant is interested in speedy prosecution, the applicant will respond immediately to Office Actions. Most applicants are less interested in quick disposition than in accurate disposition without new issues being raised in the second Office Action that could have been raised in the first. However, in order to prod applicants along, the response time to Office Actions for non-substantive refusals could be reduced to three months.
In conclusion, the proposed rule will not meet any of the USPTO's stated goals of reducing the number of Notices of Appeal or speeding prosecution. All that it will do is turn an applicant's choice to respond within three months of a Final Refusal into a mandate without any corresponding mandate being placed on the Examiner. By leaving a three-month window after the deadline for Requests for Reconsideration and before the appeal deadline, it will turn what would have been applications with easily-solved problems into new TTAB cases. Only by reserving the "nuclear" option of a Final Refusal to the point where the Examiner feels that there is an impasse will extraneous Notices of Appeal be reduced.
Very truly yours,