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

[Orvis]

I've never understood why they just don't use track changes. Seems pretty simple. However, examiners have not been showing all of the proposed changes for a long time. I have been running red lines of examiner proposals against then currently pending goods and services. It used to be easier when you could review the office action in HTML. Now, office actions always load as PDFs. If anyone knows how to force office actions to load in HTML, I would appreciate the tip.

Jun 29, 2024 3:56:03 PM Katherine Markert via E-trademarks <e-trademarks at oppedahl-lists.com>:

> 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).  
> 
> Get Outlook for Android[https://aka.ms/AAb9ysg]
> ----------------------------------------
> *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/]*
> [cid:image001.png at 01DAC9C1.293D3840][A blue and white logo Description automatically generated][cid:image001.png at 01DAC9C1.293D3840]
> 
> This electronic message contains information from Dunlap Bennett & Ludwig PLLC and may be confidential or privileged. If you are not the intended recipient, any disclosure, copying, or use of the contents is prohibited. If you have received this e-mail in error, please notify us and delete the message without copying or disclosing it.
> 
>  
> 
> *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
> 
> *Web:* www.markertcominolli.com[http://www.markertcominolli.com/]
> 
> 75 S. Clinton Ave., Suite 510, Rochester, NY 14604
> 
>  
> 
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240629/6a1828e2/attachment.htm>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 34793 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240629/6a1828e2/attachment.png>