[E-trademarks] Change in USPTO Internal Examination Policy for ID Amendments in Office Actions

[Katherine Markert]

Hi All,

For those of us practicing for a while, I imagine you're accustomed to seeing strikethrough language in USPTO Office Actions proposing ID amendments.  I've noticed a growing trend in Office Actions where language is not shown in strikethrough, and sometimes language just appears to be missing.

I received an Office Action recently where 4 substantial phrases from a multi-class ID were not in the Examiner's proposed ID revisions or otherwise referenced in the Office Action.  It was unclear to me whether this was an accidental oversight, so I contacted the Examiner for clarity.  In this process, I learned that the USPTO lifted its writing requirements, meaning that Examiner's are no longer required to provide a detailed written explanation for why each portion of an ID needs amendment, and can just delete language they view as unnecessary, overbroad, or indefinite (instead of proposing such language be clarified).

So, warning, review ID amendments CLOSELY (if we weren't all doing that already).

Katie Markert
Partner

Markert & Cominolli PLLC
Phone: 585-504-2507
Email: km at markertcominolli.com<mailto:km at markertcominolli.com>
Web: www.markertcominolli.com<http://www.markertcominolli.com/>
75 S. Clinton Ave., Suite 510, Rochester, NY 14604

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