Anticipate This!™ | Patent and Trademark Law Blog

Ombudsman Pilot Program of the USPTO

Posted in General Commentary, Practice Commentary by Mike Dockins on August 19, 2010

The USPTO announced an Ombudsman Pilot Program in the Federal Register on April 6, 2010. The Federal Register announcing the Program may be viewed here. The USPTO Ombudsman webpage may be accessed here. The webpage includes information links concerning the Program, as well as the submission form that practitioners submit to initiate an interview with an Ombudsman.

The Ombudsman Pilot Program “is designed to enhance the USPTO’s ability to assist applicants and/or their representatives with issues that arise during patent application prosecution. More specifically, when there is a breakdown in the normal prosecution process, the Ombudsman Pilot Program can assist in getting the process back on track.”

After over four months, the USPTO scheduled a teleconference available to the first fifty (50) practitioners or pro se applicants that have used the Ombudsman Pilot Program. All of the Ombudsmen were present on the teleconference. We were lucky to have been participants on the conference call. Overall, the feedback regarding the Program was positive, and the participants on the call were all pleased with how the Program has worked so far. A few interesting things came from the conference call that we thought we should share:

  1. In four months, 187 inquiries (2 trademark, 185 patent) have been made using the Ombudsman Pilot Program. Of the 187 inquiries, 182 have been closed and marked as “resolved”.
  2. The initial goal of the Program was to resolve inquiries within ten (10) business days. The average time for resolution of the 182 resolved inquiries was two (2) business days.
  3. The Ombudsmen are all SPEs and have SPE powers. The Ombudsmen are the “best and brightest” SPEs from each Technology Center, and each Ombudsmen has years of experience with the USPTO.
  4. Ombudsman intervention is not punitive for the Examiner’s or their SPEs. No notation is made in the Examiner’s file that is reviewed during performance reviews.
  5. There is a database not accessible to the Examiners or SPEs that documents complaints against Examiner’s and SPEs for failure to return phone calls or to timely return phone calls. Unbeknownst to us, the Examiner’s are expected/required to return phone calls within 24 hours of the originating call from practitioners or applicants.

The most important thing that came from the conference call is a list of types of issues the Ombudsman Pilot Program was designed to address:

  1. When an Examiner or SPE cannot be reached or is unresponsive to calls or e-mail.
  2. To check the status of an Application when no status is available or a long, unexplained delay has occurred.
  3. When an Examiner refuses an interview. It was unclear if this meant any interview or only interviews following a non-final rejection. Interviews following a final rejection are discretionary.
  4. When the same art has been cited against an application despite amendments to the claims to directly address the cited art.
  5. When clarification of an Office Action rejection is unclear.
  6. When (truly) erroneous art is cited against an application.
  7. When an Amendment After Final is not entered though the Amendment merely re-writes a dependent claim in independent form.

It seems that the Ombudsman Pilot Program may be here to stay and, in our opinion, that is a good thing. Maintaining and/or fixing lines of communication between practitioners or applicants and Examiners is a good thing. Our own experiences with the Ombudsman Pilot Program have been great. Our issues were quickly and satisfactorily addressed. We encourage our readers to use the Program when communication with an Examiner and the Examiner’s SPE has broken down.

If you have experiences with the Ombudsman Pilot Program, whether good or bad, please let us know in the comments.

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