PTO Publishes Precedential Director's Ruling Reversing Abandonment Refusals
For the first time in years, the USPTO has published a precedential ruling of the Director: In re P.T. Polymindo Permata, 109 USPQ2d 1256, 1257-58 (Dir. USPTO 2013), in which the Director, exercising supervisory authority under Trademark Rule 2.146(a)(3), reversed the holding of abandonment in two applications. The Director found that applicant had substantially complied with Rule 2.65(b) by providing unverified but otherwise acceptable substitute specimens in its requests for reconsideration and then the necessary verifications on petition.
The Director found no clear error in the examining attorney's deeming the applications abandoned when applicant failed to file complete responses to the final refusals. Applicant had submitted, with requests for reconsideration, substitute specimens but failed to include appropriate verifications. However, the Director ruled, applicant had substantially complied with the examining attorney's requirements and had made a good faith attempt to advance prosecution. The preferred course of action for the examining attorney would have been to allow applicant 30 days within which to provide the required verifications. See Rule 2.65(b) and TMEP 715.03(a)(2)(c). Moreover, with its petition to the Director, applicant provided accompanying declarations under Rule 2.20.
The Director therefore exercised her supervisory authority under Rule 2.146(a)(3) to grant the petitions. The applications were returned to the examining attorney for consideration of the substitute specimens and supporting declarations.
Read comments and post your comment here.
Text Copyright John L. Welch 2014.
posted by John L. Welch @ 4/18/2014
4 comments
4 Comments:
whats the difference between doing this and just a petition to revive?
I think a petition to revive under Rule 2.66 was not available because applicant did respond to the final refusal. What it didn't do, apparently, is file a notice of appeal. Had it done that, it might have been able to suspend the appeal, get a remand to the PTO, and then submit the verifications.
so you can petition to revive for unintentionally not filing a response but not for unintentionally filing an incomplete response? seems legit.
Are petitions to the Director becoming a viable way to actually review decisions by the Office? This case coupled with the recent one you reported on trial briefs, may suggest a policy change, as previously it was even easier to get direct certiorari from the Supreme Court than to get the Director to reverse a prior decision of the Office.
Post a Comment
<< Home