Sunday, April 01, 2007

USPTO Five-Year Strategic Plan Calls for Improvement in TTAB Case Processing

The United States Patent and Trademark Office has issued its 2007-2012 Strategic Plan (pdf here; summary here). In the TTAB realm, it calls for the integration of Trademark and TTAB systems "to provide for a seamless interface for applicants and reliability of operations." The Plan also focuses particularly on the increased pendency of requests for reconsideration that are filed together with notices of appeal, and on "uncontrolled discovery" that is delaying resolution of TTAB proceedings. (page 19).

As to requests for reconsideration, the PTO has already issued a proposed Rule change that would "require a request for reconsideration of an examining attorney's final refusal or requirement to be filed through the Trademark Electronic Application System (TEAS) within three months of the mailing date of the final action." (TTABlogged here).

With regard to TTAB discovery, according to the Strategic Plan, "uncontrolled discovery, along with an excessive number of discovery and trial motions, are increasing the pendency of TTAB opposition proceedings and, ultimately, registration or disposal pendency."

The PTO hopes to "streamline" TTAB case resolution by:
  • Promulgating rules requiring parties in opposition and cancellation proceedings to participate in discovery conferences, make initial disclosure of information, and disclose potential witnesses
  • Promoting and expanding use of "accelerated case resolution" whereby cases are decided based on summary judgment-type submissions stipulated by the parties. (page 20).
Of course, the PTO proposed new discovery rules in January 2006 (TTABlogged here) and has received numerous public comments thereon. When and in what form the new Rules will be issued remains a mystery, but the Strategic Plan leaves little doubt that big changes in discovery practice will occur . As to the "accelerated case resolution" concept, we have yet to see any detailed proposal from the PTO.

The draft Strategic Plan released by the PTO in September 2006 (TTABlogged here), called for an "enhanced level of TTAB precedential decisions (60-80 per year.)." The final Plan takes a more indirect approach to the issue, calling for an initiative to "[m]aximize best practices from ... TTAB decisions by increasing the impact of Board decisions in developing best practices for patent and trademark examination and allowance." (page 25). Thus far in 2007, the Board has issued more than two dozen precedential decisions, and at that pace may issue one hundred or so this year: more than the totals for the last three years combined.

Text Copyright John L. Welch 2007.


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