The USPTO launched an Ombudsman Program on April 6, 2010 “to provide patent applicants with more assistance in handling application-processing problems if the normal channels have not been successful.”   More specifically, this program establishes a dedicated resource which provides an Applicant with application-specific prosecution assistance when the Applicant has been unable to move an application forward through the normal channels.

Background

Director Kappos of the USPTO has indicated that, “this program is a direct response to feedback we’ve received from members of the patent community who have told us that they need a dedicated resource they can turn to when they have concerns about the prosecution of their application….”

Prior to utilizing this program, the Applicant should first contact the Examiner and Supervisory Patent Examiner (SPE) ( “normal channels”).   Furthermore,  the program is not intended to supersede the authority of the Examiner or SPE as it was created to ensure that a patent application moves through the established process in a timely manner

The Ombudsman should not be contacted regarding:  general questions not related to a specific pending patent application or for matters which are routine (e.g., status inquiries).   For the aforementioned scenarios, the Applicant should utilize PAIR or other USPTO help desks.   Finally, this program is not intended to be an alternative forum for resolving a dispute which is being presently resolved via appeal, petition or other procedure (e.g., pre-appeal).

The program is open to Applicants, Attorneys, and Agents who have application-processing concerns regarding specific patent applications.   However, if an Applicant is represented by an Attorney or Agent, they cannot separately contact the Ombudsman as dual correspondence is not allowed.

Each Technology Center (TC) is assigned an Ombudsman representative (and a backup) which is primarily tasked with addressing Applicants concerns related to the advancement of patent prosecution.  The Federal Registrar Notice states (in a single specific example) that the Ombudsman may be contacted when the Examiner does not appear to address a new amendment or argument and the Applicant cannot reach the Examiner/SPE after a reasonable amount of time.   Further, the Notice states that other instances when the Ombudsman may be contacted will be provided at:  http://www.uspto.gov/patents/ombudsman.jsp

Process

To utilize the program, the Applicant must first complete an Electronic Form on the USPTO website (http://www.uspto.gov/patents/ombudsman.jsp) which requires their name, contact phone number, and selection of the appropriate TC Ombudsman.   After submitting the Electronic Form, the Applicant will receive a call within one business day from the Ombudsman to discuss the issue more extensively.

During this phone call, the Applicant may request that their issue be kept confidential so that it is not forwarded to the deciding Official (e.g., the Examiner, etc.).   However, if a confidentiality request is made, the Ombudsman will take no further action regarding the Applicant’s issue and will only log the complaint into a database.   The database will be reviewed periodically to observe trends, issues, etc.

If the Applicant does not request confidentiality, then the Ombudsman may take action on the Applicant’s issue by forwarding the issue to the appropriate Official (e.g., SPE, TC Director, etc.) for resolution.   At the conclusion of the phone call, the Ombudsman will enter the complaint information into the database for review purposes (as indicated previously).

It should be noted that any written communication between the Official in the appropriate patent organization and the Applicant will be made of record in the file, and additionally, “any written communication received by the ombudsman regarding the merits of an application will be placed in the application file.”

Finally, the program is intended to resolve all issues within ten business days.

Conclusion

The Federal Registrar indicates that the program is effective for one-year; however, may be extended with appropriate modification based upon participant feedback and overall effectiveness.

Further Information:

USPTO Press Release:                      http://www.uspto.gov/news/pr/2010/10_11.jsp

USPTO:                                                   http://www.uspto.gov/patents/ombudsman.jsp

USPTO FAQS:                                       http://www.uspto.gov/patents/ombudsman_faqs.jsp

USPTO Phone Numbers/
Ombudsman TC Contact Page:       http://www.uspto.gov/patents/ombudsman.jsp

Federal Registrar Notice:                  http://www.uspto.gov/patents/law/notices/75fr17380.pdf

The USPTO Press Release for this proposal indicates in part,

“The Department of Commerce’s United States Patent and Trademark Office (USPTO) is seeking public comment on a proposed change that would effectively provide a 12‑month extension to the existing 12-month provisional application period. This change would be implemented through the missing parts practice in nonprovisional applications.

The proposal would benefit applicants by giving them additional time to determine if patent protection should be sought – enabling them to defer additional fees and enabling applicants to focus efforts on commercialization during this expanded provisional period.  The proposal would benefit the USPTO and the public by adding publications to the body of prior art, and by removing from the USPTO’s workload those nonprovisional applications for which the applicants have decided not to pursue examination. “

At first glance, the aforementioned press release is a bit misleading as it seems to imply that the provisional patent application period will be extended to 24 months through the proposal.   However, the proposal only modifies the missing parts practice as it relates to Non-provisional patent applications which claim benefit to provisional patent applications.

The proposal does not modify the rules requiring an Applicant to file a non-provisional patent application within 12-months of the provisional patent application filing date.

Regarding Provisional Patent Applications generally, the Federal Registrar notice importantly states “Applicants are reminded that the disclosure of an invention in a provisional application should be as complete as possible because the claimed subject matter in the later-filed nonprovisional application must have support in the provisional application in order for the applicant to obtain the benefit of the filing date of the provisional application.”   As an aside, I have provided my general thoughts regarding the benefits/pitfalls of Provisional Patent applications in a separate blog post which is available here.

Accordingly, further to the proposal, the Applicant would file a non-provisional patent application (with at least one claim),  along with the basic filing fee ($330) and a submitted oath or declaration.  Further, the Applicant would be unable to file a non-publication request through this proposal.

As indicated in the USPTO Press Release, this 12-month period will allow an Applicant to defer some costs (a surcharge, search and examination fees ($445 for small entities and $890 for other Applicants) in addition to any excess claim fees) associated with the filing of a non-provisional patent application to determine whether commercial opportunities exist for the invention.

The Federal Registrar notice indicates that once a timely reply is made to the notice to file missing parts (within 12 months from the non-provisional filing date), the application will be placed in the examination queue based on the actual filing date of the non-provisional patent application.  Accordingly, there would be no change in the order in which an application is examined which utilizes the proposal.   However, any patent term adjustment (PTA) accrued by an Applicant due to certain USPTO delays would be reduced by an amount equal to an Applicant’s response beyond three months of the mailing of the notice to file missing parts(e.g., PTA could be reduced by up to 9 months).

It should be noted that the proposal does not modify a number of items : patent term is still measured from the non-provisional patent application filing date; publication of the patent application will still occur at 18-months; and any foreign applications (PCT) which utilize a provisional patent application for establishing priority must still be filed within 12 months of the filing date of the provisional patent application (the 12-month priority period provided by the Paris Convention is not modified by this proposal).

The Federal Registrar notice also indicates that the USPTO is considering to offer Applicants an optional International style search report prepared during the extended 12-month missing parts period.  The report would include details regarding the current state of the prior art and would be similar to the report that is prepared for International applications.

Overall, as the proposal allows an Applicant to defer some costs for an additional period of time, I believe that it will indeed be beneficial in certain situations, and additionally, will likely help reduce the patent application backlog at the USPTO.

For further information regarding the proposal:

USPTO Press Release:  http://www.uspto.gov/news/pr/2010/10_10.jsp

Federal Registrar Notice: http://edocket.access.gpo.gov/2010/2010-7520.htm