The U.S. Patent and Trademark Office – Adversary? Ally? Or Both?

As part of the overall dynamic involved in pursuing U.S. patents and trademarks, an adversarial undercurrent can often materialize between applicants and the U.S. Patent and Trademark Office (USPTO). It is no surprise that the intensity of that undercurrent can be a function of the total time/expense before a patent is granted or a trademark is registered. And, if grant/registration is ultimately not achieved, what once was adversarial can be later viewed as unfairly subjective.

However, in many ways, the USPTO functions as ally to applicants and patent practitioners alike, encouraging cooperation, not only via informational programs offered, but also by encouraging feedback when changes are on the horizon.

Relating to information programs offered, the USPTO routinely emails practitioners with respect to upcoming USPTO-sponsored webinars and training sessions. These offerings can vary widely in terms of their content, perhaps in an effort to spark the interests of as many as possible. For example, in a recent two-week calendar of events emailed, the USPTO offered webinars involving core topics such as the patent application process, and training sessions concerning Federal trademark searching, Patent Public searching, and DOCX filing. Also offered were webinars featuring varied topics such as patent and trademark training for librarians, and pros and cons of licensing vs. manufacturing relative to patented products.

Additionally, the USPTO sends alerts to practitioners concerning updates to forms and procedures, as well as informs and solicits comments concerning changes being considered in the legal regulations. For example, recently, the USPTO sent out an alert of an update on the Information Disclosure Statement (IDS) form. Another USPTO alert indicated that a form was being retired due to infrequent use and its redundancy with other forms. Perhaps more exciting, the USPTO has been introducing new guidelines relating to Artificial Intelligence (AI) and to how its use will be treated. To that end, the USPTO has been soliciting feedback from applicants and practitioners on a variety of topics, such as inventorship relative to AI-assisted inventions.

Furthermore, and circling back to its role in examining/granting of patents and registering trademarks, the USPTO has long promoted and encouraged interviews with examiners. While at one time, personal face-to-face interviews were the norm, phone interviews are now commonplace and as such, can be scheduled as warranted throughout prosecution, albeit requiring permission from the examiner at certain stages.

How any given person envisions the USPTO largely depends on that person’s experiences. Regardless, it seems clear that the USPTO is striving to enhance its public profile, seeking to educate and encouraging open and cooperative relationships with applicants and practitioners. When alerted by the USPTO of information/changes which we consider significant or of value, we often look to update you. However, if there is interest in being on the receiving end of the above-noted USPTO communications, please let us know and we can explore facilitating the connection.

  • John S. Parzych

    John is a shareholder in Fredrikson’s Intellectual Property Group. He is registered to practice before the U.S. Patent and Trademark Office. His practice focuses on patent preparation and prosecution, counseling clients ...

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