Trademark Automation of the Future: What should it look like?
Suggestions of the Trademark Public Advisory Committee (TPAC)
(Items in italics are ones TPAC would like to be given priority.)
A. Owner Trademark Portfolio Management
(1) There is an option for an automated “monitoring” service that notifies the requestor of certain status changes in any application or registration.
(2) Deposit Accounts: Mail alerts when deposits are made or withdrawn, or when the balance reaches a certain level, so that the applicant/registrant or attorney of record has current deposit account information.
(a) automatic update to ownership data when an assignment is filed;
(b) a PDF of the actual assignment document filed is available, not just a summary.
(4) Trademark owners or their representatives can manage application and registrations on line, making real time changes to the application and registration files.
(5) An on-line “docketing system” is created that would permit either the attorney of record or the applicant/registrant to view all their upcoming deadlines.
(6) Mail reminders can be sent automatically, as opposed to the more passive situation where the owner of record, either applicant or attorney of record can access the system to see deadlines. Note that USPTO errors in this area would not relieve the user of responsibility for meeting deadlines.
(7) USPTO automated systems maintain easily viewable lists of every version of the identification of goods or services that the applicant has submitted.
(8) There is the ability for users to create a customized “watch service” in order to be notified of third party applications, etc., based on user input search strategies.
B. Ease of Use of System
(9) Official Gazette: (a) Links provided with the notice of publication open to the relevant trademark information rather than downloading the entire OG. (b) The OG is published in HTML rather than in PDF, with a download to PDF as an option.
(10) Direct email links to the relevant examiners are included within the record for ease of communication.
(11) The website recognizes – to the extent possible – the level of expertise of the applicant or registrant.
(12) The filing system collects information and leads the user through the appropriate steps for what the user wants to do.
(13) New applicants and pro se’s responding to an office action can be successful without knowing anything about the internal working of the Office. There will be a pre-built response form tailored to the office action that will identify all issues that the applicant must respond to.
(14) To the user, all USPTO records regarding a particular application/registration are seamlessly combined and accessible, whether from the Trademark Operation, the TTAB, the Assignment Division, or the Finance Office, resulting in total end-to-end electronic processing for all matters.
(15) Users filling out an application can peruse the USPTO ID Manual and in one step simply check off each ID to be inserted in the application.
(16) There’s an easily available, up-to-date, process map on the web site that will link to up-to-date processing times for each application or registration.
(17) Continued expansion of acceptable file formats: Systems will accept all popular file formats and users can retrieve information in a preferred format.
(18) Unusual formats such as sound and video can be accessed and stored in the electronic file (today the TICRs and TDR databases)
(19) Development of a method to include all the attachments to an office action in a single file, as opposed to multiple files.
(20) Constantly up-to-date, HTML versions of TMEP and TBMP.
(21) Office Actions contain hyperlinks to cited C.F.R. and the TMEP sections if the links can be kept updated as the TMEP itself is updated. A constantly updated TMEP/TBMP is the preference if the updated links cannot be achieved.
(22) Issuance of electronic certificates of registration with a paper certificate optional at extra cost.
(23) Examining attorneys will have a docketing system in which they can check applicable deadlines for filings related to any appeal of a final refusal to the TTAB, and can set the TTABVUE system to send them an e-mail or other communication reminding them of approaching deadlines and notifying them of filings by the applicant with the Board.
(24) The TTABIS system will include docket management applications and the capability of producing for TTAB management and employees reports on productivity and timeliness of actions taken in regard to pending cases.
(25) There is full electronic processing in from the time of application to the post registration process – including TTAB, OTQR etc.
(26) Certain kinds of information are automatically supplied to examining attorneys at the time the application is first assigned (e.g. surname search, geographic search, computer dictionary, prior TTAB decisions).
(27) The USPTO can easily modify the drawing of the mark submitted by applicant so that the drawing is clear, appropriately sized, and if the mark is in color, the colors displayed are accurate.
(28) All functionalities available to employees in the Office will be available remotely.
(29) IT costs should stabilize, rather than increasing every year. In the most recent five years, the OCIO budget has had an increase each year. Although there have been claims that investing in newer, better technology or processes will reduce those costs, typically that has not been the result. The hope would be that once systems are developed in the target configuration, that costs would be contained and stabilized.
(30) Provide real-time monitoring of Trademark resources on the network.
(31) Plan and identify requirements and cost estimates in collaboration with business units and programs to develop strategic priorities in coordination with the budget formulation process to ensure funding exists to deliver on priorities.
(32) Use the exhibit 300 and 53 process to coordinate IT projects with the budget request.
(33) Develop a measure, in conjunction with Trademark management, to track that projects are on time and on budget.
(34) Track performance and Return On Investment (ROI) for existing and planned systems.
(35) Understand what systems cost now to enable reasonable future cost estimates.
(36) Design, implement and enforce a Service Level Agreement commensurate with a high performance agency.
(37) Provide intuitive report writing capabilities and support to users for extracting workload, financial, production, revenue, cost budget etc. linked data.