(240) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No. PTO-P-2010-0012]
Patents Ombudsman Pilot Program
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
SUMMARY: The United States Patent and Trademark Office (USPTO)
published a notice in the Federal Register seeking public comments on a
proposed procedure for a Patents Ombudsman Pilot Program. The majority
of the written comments from the patent community were positive and
supported the implementation of such a program. After considering the
written comments, the USPTO has decided to implement the Patents
Ombudsman Pilot Program as set forth in this notice for a period of one
year. The Patents Ombudsman Pilot Program is intended to provide patent
applicants, attorneys and agents with assistance with application-
processing issues regarding concerns with advancement of prosecution
(e.g., stalled applications). The Patents Ombudsman Pilot Program is
not intended to circumvent normal communication between pro se
applicants or applicants' representatives and examiners or Supervisory
Patent Examiners, and it is not intended to supersede the authority of
the examiners or Supervisory Patent Examiners. After the one-year
period, the USPTO may extend the pilot program with appropriate
modifications based on the feedback from the participants, the
effectiveness of the pilot program and the availability of resources.
DATES: Effective Date: April 6, 2010.
Duration: The Patents Ombudsman Pilot Program will run for twelve
months from its effective date. Therefore, any request under the
Patents Ombudsman Pilot Program must be submitted before April 6, 2011.
FOR FURTHER INFORMATION CONTACT: Mindy Fleisher, Special Programs
Advisor, Technology Center (TC) 2400, at (571) 272-3365, or Pinchus M.
Laufer, Legal Advisor, Office of Patent Legal Administration, Office of
the Associate Commissioner for Patent Examination Policy, at (571) 272-
7726.
Valencia Martin-Wallace, TC 2400 Director, available at (571) 272-
4020, will provide oversight of the Patents Ombudsman Pilot Program.
SUPPLEMENTARY INFORMATION: The majority of patent applications filed
with the USPTO proceed through the examination process consistent with
established USPTO procedure. However, some patent applicants,
attorneys, and agents have expressed that their applications have not
proceeded in accordance with established procedure. In some situations,
the patent applicants, attorneys, and agents have felt that examination
has stalled and that their efforts to move their applications forward
through the normal channels have not been effective. Patent applicants,
attorneys, and agents have suggested that there be a dedicated resource
they can turn to in such instances. These suggestions led the USPTO to
consider implementing a Patents Ombudsman Pilot Program and to publish
a notice in the Federal Register seeking public comments on a proposed
procedure. See Request for Comments on Patents Ombudsman Pilot Program,
74 FR 55212 (Oct. 27, 2009), 1348 Off. Gaz. Pat. Office 418 (Nov. 24,
2009). The USPTO received fifteen written comments from the public,
which are available on the USPTO Web site at
http://www.uspto.gov/patents/law/comments/ombudsmancomments.jsp. The
majority of the written comments from the patent community were positive
and supported the implementation of such a program. The USPTO considered
the written comments and decided to implement the Patents Ombudsman Pilot
Program as set forth in this notice for the duration of one year. After the
one-year period, the USPTO may extend the pilot program with
appropriate modifications based on feedback from the participants, the
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effectiveness of the pilot program and the availability of resources.
The objectives for the Patents Ombudsman Pilot Program are: (1) To
facilitate complaint-handling for pro se applicants and applicant's
representatives whose applications have stalled in the examination process;
(2) to track complaints to ensure each is handled within ten business days;
(3) to provide feedback and early warning alerts to USPTO management
regarding training needs based on complaint trends; and (4) to build a
database of frequently asked questions accessible to the public that tracks
commonly seen problems and effective resolutions. The entire Patent
Examining Corps and other Patents operation units (e.g., Office of Patent
Application Processing) will be included in the program. While the USPTO
realizes the role of the ombudsman in the Patents Ombudsman Pilot Program
as set forth in this notice does not fall within the "classic" definition
of the term "ombudsman," the USPTO notes that many Federal agencies have
established ombudsman-like complaint-handling offices and this pilot
program is in line with that type of office. Furthermore, the USPTO
published a notice proposing a Patents Ombudsman Pilot Program and had
many discussions with the stakeholders regarding the program.
Therefore, the USPTO decided to continue to use the term "ombudsman"
in the pilot program to avoid confusion. Additionally, the USPTO will
continue to work with the Coalition of Federal Ombudsmen to ensure that
the USPTO's program will meet the intended goals.
The Patents Ombudsman Pilot Program is intended to provide patent
applicants, attorneys and agents with assistance with application-
processing issues, particularly concerns with advancement of
prosecution. The program is to be used by applicants who believe that
their applications have stalled in the examination process.
Specifically, the program is intended for those applications in which
the normal process has gone awry, and after all other avenues have been
used but failed to provide the needed assistance. The ombudsman may be
contacted for an application-processing issue that applicant has been
unable to resolve using USPTO's existing processes (e.g., the examiner
that does not appear to address a new argument or amendment, and the
applicant cannot reach the examiner and Supervisory Patent Examiner
after a reasonable period of time). Other examples of situations where
it is appropriate to contact an Ombudsman will be provided on the USPTO
Web site at http://www.uspto.gov/patents/ombudsman.jsp.
The Patents Ombudsman Pilot Program, however, cannot be used as an
alternative forum for resolution of disagreements between the applicant
and a USPTO official that are currently resolved via appeal, petition
or other procedures (e.g., a request for pre-appeal brief conference).
The program cannot be used to circumvent the examination process and
normal communication between pro se applicants or applicants'
representatives, and examiners, Supervisory Patent Examiners, or TC
Directors, with respect to their applications. Furthermore, the program
cannot be used to supersede the authority of the USPTO deciding
official but rather to help ensure that applications proceed through
the established process in a timely fashion. In particular, the role of
the ombudsman will not usurp the function of the examiner, Supervisory
Patent Examiner, or TC Director, such as participating in any
interviews or any pre-appeal or appeal conferences.
In addition, the USPTO has various customer services mechanisms
already in place and the Patents Ombudsman Pilot Program is not
intended to replace those mechanisms. Specifically, the program should
not be used for routine status inquiries or other routine matters.
Applicants are encouraged to check the status of their applications
using the Private Patent Application Information Retrieval (PAIR)
system, or contact the various help desks for assistance (e.g., the
Patents Electronic Business Center (EBC) for any assistance on
electronic filings), rather than contacting the ombudsman. See Manual
of Patent Examining Procedure (MPEP) Sec. 203.08 for more information
on status inquiries. Contact information for various organizations is
available on the USPTO Web site at http://www.uspto.gov/patents/
ombudsman.jsp. Applicants may receive faster assistance by going to the
point of contact in the USPTO that routinely resolves the relevant issue.
In order to participate in the Patents Ombudsman Pilot Program, pro
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se applicants or applicants' representatives must fill an electronic
form on the USPTO Web site at http:/www.uspto.gov/patents/ombudsman.jsp
to provide their name and phone number and select the ombudsman for the
patent organization (e.g., TC 2400) in which they are seeking assistance.
Once a participant accesses the program via the USPTO Web site, the
participant will immediately receive a system generated e-mail response
noting that the inquiry was received. The participant should expect a
telephone call from the ombudsman within one business day to proceed with
the inquiry. A person seeking assistance in an application through the
Patents Ombudsman Pilot Program must have the authority to represent the
application. Therefore, third parties and individuals represented by a
patent attorney or agent may not participate in the program.
The ombudsman in the appropriate organization will call the pro se
applicant or applicants' representative within one business day to
obtain a full description of the issue. During the initial telephone
call, the participant may request that the communication with the
ombudsman not be forwarded to the deciding official (e.g., the
Examiner). This will permit participants to provide feedback and early
warning alerts to USPTO management regarding training needs based on
complaint trends. Once the full description is obtained, the ombudsman
will create a record in a database. The record in the database will be
solely limited to the contact information and a general description of
the issue at a generic level that does not require it to be made part
of the application record.
All requests for assistance made to the pilot program will be
tracked in the database to: (1) Ensure that all requests for assistance
are addressed; (2) identify and use trends to develop targeted training
for employees as appropriate; and (3) enhance customer service. The
ombudsman will be regularly monitoring the database to look for trends
within his/her own area, and the senior management team managing the
program will be looking at the database for overall trends. These
trends will be reported to senior management and used to develop future
initiatives as appropriate. The TC Director who is overseeing the
Patents Ombudsman Pilot Program, Valencia Martin-Wallace, will also
periodically review reports of the suggestions, comments and complaints
to look for trends regarding similar issues and implement appropriate
changes to resolve these issues.
The Patents Ombudsman Pilot Program is staffed by senior
supervisors and TC staff, including Supervisory Patent Examiners,
Training Quality Assurance Specialists, and subject matter experts.
Unless participant requests that the issue raised with the ombudsman
not be forwarded to the deciding official, the ombudsman will forward
the issue to an official in the appropriate organization that is best
suited to resolve the issue (e.g., Technical Support Staff, Supervisory
Patent Examiner, or TC Director) and ensure that the issue is
appropriately addressed. The official in the appropriate organization
will notify the participant of the resolution. Any written
communication between the official in the appropriate organization and
the participant, and any complete written statement as to the substance of
a telephone interview, with regard to the merits of an application will be
made of record in the application (e.g., the examiner will complete an
Interview Summary form PTOL-413 for any interview where a matter of
substance has been discussed during the interview). See MPEP Sec. 713.04.
Furthermore, any written communication received by the ombudsman regarding
the merits of an application will be placed in the application file.
The ombudsman will request that the official send a message back to
the ombudsman when the issue has been treated and the participant has
been notified of the resolution. In order to gauge the effectiveness of
the program, the ombudsman may contact the participant for feedback. It
is intended that all issues be considered and treated within ten
business days. The ombudsman in each organization will regularly
monitor the database to ensure that issues are being treated in a
timely manner. In particular, the ombudsman will inquire into instances
where five business days have elapsed and there is no indication that
the issue has been closed out or is actively in the process of being
treated.
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The USPTO will evaluate the success of the program by seeking
feedback and comments from the participants. The satisfaction level of
the participants will be monitored. If a participant is not satisfied
with the program, the participant may contact TC 2400 Director,
Valencia Martin-Wallace, who is overseeing the Patents Ombudsman Pilot
Program. After the one-year period, the USPTO may extend the pilot
program with appropriate modifications based on the feedback from the
participants, the effectiveness of the pilot program and the
availability of resources.
March 29, 2010 DAVID J. KAPPOS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
[1353 OG 219]