Saturday, August 26, 2006

IP Orgs Pow-Wow with PTO Re Proposed TTAB Rule Changes

Representatives of the USPTO, the ABA, INTA, IPO, and AIPLA met on July 25, 2006 to discuss the proposed TTAB Rule Changes. According to the five-page Summary Report (found at the TTAB-Rules blog), "the Organizations provided consensus viewpoints regarding five of the proposed changes to the Rules in descending order of importance (i.e., "1" being the greatest source of concern and "5" being the least): (1) Scope of the Mandatory Initial Disclosures; (2) Reduction in the number of Interrogatories; (3) Serving Notice of Board Proceedings; (4) Protective Order; and (5) Expert Disclosures."

To summarize the Summary Report:
  • As to initial mandatory disclosures, the Organizations suggested more modest disclosures of the type described in Rules 26(a)(1)(A) & (B), Fed. R. Civ. P. The broad disclosure categories proposed by the PTO are likely to increase motion practice regarding the adequacy and scope of parties' compliance, stalling the progress of proceedings.

  • The PTO was asked to reconsider the proposed reduction in the number of interrogatories from 75 to 25, since the current system seems to be working well. A "drastic reduction" to 25 interrogatories would encourage more motions for leave to serve additional interrogatories and more discovery depositions, resulting in the expense of greater resources in a proceeding.

  • As to serving notice of Board proceedings, the Organizations do not object to direct service on the party in the position of defendant, but they are concerned about the Board'’s proposed steps required of a plaintiff who suspects that the correspondence address of record no longer is accurate or who finds that the service copy of the notice of opposition or the petition for cancellation is returned as undeliverable.

  • As to the automatic imposition of the Board's Standard Protective Order, the Organizations expressed their concern that the proposed Rule changes would undermine the protection accorded trade secrets and confidential information in Board proceedings. Because the nature of confidential information differs from case-to-case, a "one-size-fits-all" approach to protecting such information is not appropriate.

  • Finally, regarding expert disclosure, the Organizations urged the Board to either track FRCP 26 (which allows a court to set a deadline for expert disclosures at a time before trial, but not necessarily during the discovery period, as the PTO proposes), or provide more flexibility, perhaps even setting a period for expert disclosures and discovery after fact discovery has closed and before the plaintiff's testimony period opens.


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