Douglas E. White

From: Douglas E. White []
Sent: Friday, April 11, 2008 4:16 PM
Cc: TM Mailing Rules
Subject: (INTA List) Proposed Changes in PTO Rules Regarding Filing TM
Correspondence under Certificate of Mailing or Transmission or Express

A Washington, DC attorney wrote:

>This rule change does not affect me because I am local, and we always
hand->carry paper filings, but I can see how this could be a problem for
of >town firms.

Perhaps a few more of you have been practicing before the PTO long enough to remember, as I do, that the Express Mail and Certificate of Mailing procedures were instituted in the first place largely for that very reason:
DC firms had the unique advantage of being able to walk up to a PTO window and file, right up to the stroke of midnight, any and all patent and trademark documents, as well as to take back with them a stamped proof of filing.

In fact, it was quite common for out-of-town firms to courier last minute documents to DC associates in order to obtain such invaluable certainty - I myself did so on quite a few occasions. This procedure was quite lucrative for those few firms that happened to be so geographically blessed. However, even that method had to be initiated at least a day or two in advance of the deadline - leaving local DC firms with what the PTO finally conceded to be an unfair and unnecessary competitive advantage.

There appears to be agreement in this forum that paper filings will need to continue to be made from all over the country, even many of those for which TEAS forms "exist." TEAS is marking its ten year anniversary, yet many of its forms still have design quirks that mean you simply cannot get there from here - at least not electronically.

I am not sanguine that this will be corrected in even the next ten years, if ever. In fact, with each attempt to cover all possible contingencies (no matter how remote), over time the forms just have gotten more confusing, more unwieldy, more repetitive, less relevant to the simple situation at hand, more time consuming, and more prone to inducing errors.

As an example, look at the recent addition of three radio-button paragraphs at the end of the online Office Action response form that query, in about thirty lines of text and more than a dozen links, whether you are an attorney, and if so, are you from Canada, and are you new to the case, and is there a power of attorney, and, if so, has it been revoked, and altogether use language so convoluted that one simply cannot divine what it possibly could be that they really are driving at.

In the pre-TEAS paper days, the PTO had a simple rule: if you sign a document at any point in the application process saying that you are now the Applicant's attorney, we will take your word for it, end of story. The Federal Register stated that this rule was being implemented as a matter of simple professional courtesy - can you believe it? As far as I know, that rule is still on the books, despite TEAS.

Meanwhile, I am sure our DC colleagues will be happy to re-enter the paper-carrying line of business. Incontrovertible proof of on-time filing is just too important to us that practice beyond the Beltway.

It does not have to be a last-minute filing we are talking about here. How many days, if not weeks, will non-DC firms need to file in advance of the deadline in order to leave time to check on TARR that their paper has not been lost in the mail (or, more likely, lost at the PTO) and is not just languishing past the deadline in the mail room waiting for scanning? Does not the Post Office tell us every year that if you want to be sure your missive arrives by December 24, you need to mail it at least three weeks early?

As to a forum member's suggestion to require payment for filing paper responses, I already quite willingly do so in all but the simplest TEASPlus cases. I take this road less traveled not because I am a technophobe (in another life I was a software engineer and have programmed aspects of my own practice to a ridiculous degree), but in order to obtain the valuable tactical advantage of presenting documents of professional appearance that are uncluttered by irrelevant matter and present the issues to the Examining Attorney in the order and manner that I, not some form clerk, deem important. Even many technophiles find such documents to be more flexible, more readable (even after scanning), less prone to complex data-entry errors on our end (the end for which we, not the PTO, are responsible), and, most importantly, more persuasive.

Douglas E. White
Registered Patent Attorney

14 Camino Sobrante
Orinda, CA 94563

Phone: 925-258-8000
Fax: 925-258-8080