Procedure to promote consistent examination announced

The US Patent and Trademark Office (USPTO) has announced a one-year pilot project to promote consistency by providing applicants with a mechanism to bring the inconsistent treatment of applications to its attention. The mechanism is intended to address inconsistent treatment between or among an applicant’s own applications, and cannot be used to address inconsistencies between applications filed by different applicants. 
The USPTO set forth four requirements in order for an applicant to avail itself of the new procedure:
  • The request must be based on co-pending applications, or an application and a registration owned by the same legal entity or a successor in interest (eg, an assignee);
  • The registration(s) involved must have been issued less than one year prior to the date of the request; 
  • At least one of the applications must be in a pre-publication status at the time of the request; and
  • The allegedly inconsistent treatment must already have occurred. 
The request is to be made by sending an email (to [email protected]) simply listing the alleged inconsistency and the application(s) and/or registration(s) involved. The request will be a part of the file history and thus will be publicly available, including through the USPTO’s online database. There will be no direct response to the request. Rather, the USPTO will consider the request “promptly”. The only way in which the requesting party will know whether the request has been granted will be by monitoring the application to check whether there have been any changes within the four to six weeks after the request has been made. There is no guarantee that the action taken will be that requested by the applicant.
The announcement did not specify the types of inconsistencies that are intended to be addressed by this procedure. However, interestingly, the announcement specified that inconsistencies as to identification issues are specifically excluded from this process, as the Acceptable Identification of Goods and Services Manual should be relied upon in order to promote consistent identifications. Presumably, the procedure could be used to address inconsistent requirements as to disclaimers and substantive refusals, such as descriptiveness and likelihood of confusion.
This initiative is a positive step in the direction of promoting consistency. However, regardless of this new procedure, the USPTO is encouraging applicants to work directly with the examiner in the first instance in order to address inconsistencies.
Karin Segall, Foley & Lardner LLP, New York

Unlock unlimited access to all WTR content