IP: Opportunities to interact with (and educate) the USPTO

Customer partnership meetings and the technical training programs foster dialogue between patent applicants and examiners

Ask any patent attorney to list the most important tools used to advance applications during examination, and they likely will include the examiner interview. The interview may be in the form of a teleconference or in-person meeting, and may last from 15 minutes to an hour. The interview provides an interactive opportunity for both sides to assess the strengths and weaknesses of their positions as to a particular application.

Interaction with the U.S. Patent and Trademark Office (USPTO) is not limited to the highly individualized context of the interview, however. The USPTO has established other avenues for patent applicants and their attorneys to communicate with examiners and their managers. These avenues may be useful in addressing systemic issues that are less efficiently handled on a case-by-case basis. In this article, we will discuss two such programs: the customer partnership meeting and the Patent Examiner Technical Training Program (PETTP).

One of the newer customer partnerships is the Medical Device Customer Partnership. Although it was formed recently, the group has generated substantial interest. At the November 2011 meeting, approximately 125 examiners, managers and other USPTO personnel joined approximately 100 external stakeholders, attending in-person or by webcast, for a morning of discussion and debate. 

As a panelist at the November meeting, I was impressed by the openness of the communication between the USPTO and the stakeholders. Opinions were offered on a broad range of topics, including the proper procedure for examiner interviews, the relevance of patents and publications cited as a consequence of applicant’s duty of disclosure and appropriate claim scope. There certainly were differences of opinion between the stakeholders and the USPTO, and even between various groups within the USPTO. As such, the meeting provided a perspective unobtainable through other means, certainly in such a compact presentation format.

As USPTO Director David Kappos explained during the November Medical Devices Customer Partnership meeting, the ultimate goal is for the USPTO to capture the information presented at these PETTP presentations for examiner use. In particular, Director Kappos mentioned that he would like to have all of the presentations recorded, and the transcripts made available. While some of the presentations certainly have been recorded, it is my understanding that no plan has yet been implemented to prepare transcripts.

To increase the awareness of the program, the USPTO recently partnered with the Association of University Technology Managers (AUTM). As  a March 15 press release announced, the partnership will be known as the Patent Examiners Training Initiative (PETI). However, in discussing PETI further with the responsible parties within the USPTO, it is clear that this program is part of the PETTP administered by the USPTO, rather than a new program.

Contributing Author

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Paul Craane

Paul Craane is a partner at Marshall, Gerstein & Borun LLP in Chicago, Illinois. For nearly twenty years, Paul has been prosecuting patent...

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