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

[Katherine Markert]

Yes, Alex.  You're 100% correct.  I think it would be helpful for practitioners to be made aware of these shifts because, in my opinion, it impacts OA quality (and I understand productivity is higher priority than quality for the USPTO).

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________________________________
From: Alex Butterman <abutterman at dbllawyers.com>
Sent: Saturday, June 29, 2024 1:10:44 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Katherine Markert <km at markertcominolli.com>
Subject: RE: [EXT] [E-trademarks] Change in USPTO Internal Examination Policy for ID Amendments in Office Actions


That is probably an accommodation to the examiners to meet their increasingly excessive quota which is a function of the Offices’ endless effort to reduce pendency.



Alex Butterman

Partner

DUNLAP BENNETT & LUDWIG

211 Church St., SE; Leesburg, VA 20175

T: 703-777-7319 – BIO<https://www.dbllawyers.com/attorney/alex-butterman/>

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Katherine Markert via E-trademarks
Sent: Friday, June 28, 2024 3:58 PM
To: e-trademarks at oppedahl-lists.com
Cc: Katherine Markert <km at markertcominolli.com>
Subject: [EXT] [E-trademarks] Change in USPTO Internal Examination Policy for ID Amendments in Office Actions



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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