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Patent Office Ombudsman to the Rescue!
April 29, 2010
Director David Kappos of the United States Patent and Trademark Office ("PTO") initiates more changes to the patent system with the PTO's launch of the new Ombudsman pilot program on April 6, 2010. The new program is designed to advance patent applications that are "stalled" in the PTO system by providing patent applicants assistance with application processing-specific issues. Previously, when applicants encountered difficulties with the PTO during the patent granting process, the applicants worked through these difficulties with the examiner that had been assigned to the matter, or even with the supervisory patent examiner (SPE) in some instances. These actions often could take significant amounts of time to resolve and lead to mixed results. Now, with the creation of the Ombudsman position, in addition to traditional methods for resolving issues, the Ombudsman program provides yet another tool, and another experienced person within the PTO, to assist applicants and their representatives with moving an application along when trying to obtain a patent. In addition, the program serves as yet another Kappos program that may reduce patent backlog and application pendency.1
The PTO has repeatedly stressed that the Ombudsman program is not designed to replace currently existing resources available to applicants, nor is it designed as an alternative forum for settling disagreements between applicants and examiners that can otherwise be resolved by appeal, petition, or other procedures. Specifically, the goals for the program include: (1) facilitating complaint handling for stalled applications; (2) tracking complaints and handling each within ten (10) days of receipt; (3) providing feedback and early warning alerts to PTO management regarding training needs; and (4) building a publicly accessible database with frequently asked questions. The Ombudsman's role will be limited to procedural, rather than substantive, examination issues.2
The PTO staffs the Ombudsman program with senior PTO supervisors, including SPEs, training quality assurance specialists, and subject matter experts. It appears that the PTO has worked to staff the positions with individuals having sufficient experience level to assist with the problems that may be encountered.
The program also includes the development of an internal PTO database for tracking whether the issue remains open or becomes closed. Ombudsman representatives routinely review the database to confirm that issues are being addressed within ten (10) business days of being filed and to look for trends within the issues being raised to determine if additional training is necessary. In order to assist applicants in navigating the examination process without the need of Ombudsman assistance, information gathered from the database is being compiled and will be presented on the PTO website in the form of commonly seen problems and their resolutions.
Each Technology Center will have one Ombudsman and a back-up Ombudsman, both of which will be selected based upon their experience level. To utilize the Ombudsman, the patent applicant completes an electronic form located at the PTO website and describes the general nature of the problem to be addressed. The PTO has promised to call the applicant within one (1) business day after receiving the electronic submission of the request. From there, the Ombudsman works with both applicants and examiners to address the issues and progress the application. Any information regarding the merits of a pending application will then be placed in the application file. It is worth noting that the Ombudsman will not participate in any interviews or any pre-appeal or appeal conferences. Patent Ombudsman Pilot Program, 75 Fed. Reg. 17380, 17381 (April 6, 2010).
The Ombudsman program is initially available for one (1) year, at which point the PTO will evaluate, and possibly extend the program, "with appropriate modifications based on the feedback from the participants, the effectiveness of the pilot program and the availability of resources." Id. at 17382.
Exemplary situations where the use of the Ombudsman program may be particularly useful include when applicants are unable get someone at the PTO to act on a specific request regarding a pending application, such as, assisting with correction of mistakes in filing receipts and assignment recordations, and with petitions to add inventors.
The creation of the Ombudsman program benefits all parties involved, with very little or no downside, as the program provides applicants with yet another tool to assist them in obtaining a patent. Applicants should not view the program as a way to guarantee the allowance of an application, but instead as an opportunity to involve an arguably impartial third-party in the examination process to assist with answering questions relating to the pending application and moving applications toward a final disposition. Although it remains to be seen whether the program operates as it is designed and whether it is actually effective in moving applications forward in the process, any program designed to improve the patent process and provide applicants with assistance should be welcomed by the patent community. Finally, the Ombudsman program should help reduce the backlog of pending patent application in the PTO and to increase the speed of the patent application examination process.
Additional details on the Ombudsman program and frequently asked questions are available online at http://www.uspto.gov/patents/ombudsman_faqs.jsp. For further information, please contact your Bracewell attorney. Comments, questions and feedback regarding the Ombudsman program can be submitted by email at OmbudsmanProgram@uspto.gov.
1 Other recent Kappos programs that may reduce patent backlog include the small entity accelerated examination program, the Green Technology Pilot Program and the USPTO's new examiner count system. Although only the small entity accelerated examination program was specifically designed to reduce patent backlog, these programs, along with the Ombudsman program, may ultimately result in reduced backlog, due to better examination and reduced application pendency.
2 The Ombudsman's role, as defined by the PTO, corresponds with the traditional definition of an ombudsman as one that investigates, reports on, and helps settle complaints. See, e.g., www.merriam-webster.com/dictionary. Exemplary situations suitable for use of the Ombudsman include when an examiner does not appear to address an applicant's new argument or amendment; or inability to reach an examiner or SPE in a reasonable amount of time. Patent Ombudsman Pilot Program, 75 Fed. Reg. 17380, 17381 (April 6, 2010).