[E-trademarks] [EXT] Proposed shortening of Request for Reconsideration to Final Appeal

[Alex Butterman]

I think that proposed rule skips a step because the period from final OA to appeal is only 6 months if the applicant files an extension request BEFORE filing the Request for Reconsideration. Is the rule saying that the filing of a RFR by 3 months automatically extends the appeal deadline to six months? And with or without payment of the $125 fee?

That rule does sound like the PTO making the applicant pay for the PTO’s inability to process a RFR and Notice of Appeal simultaneously rather than just fix internally whatever is screwing up that process. Maybe the PTO should alter is examiner jurisdiction rules.

Alex Butterman
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Lara Pearson via E-trademarks
Sent: Monday, January 6, 2025 10:57 PM
To: Carl Oppedahl <e-trademarks at oppedahl-lists.com>
Cc: Lara Pearson <lara at brandgeek.net>
Subject: [EXT] [E-trademarks] Proposed shortening of Request for Reconsideration to Final Appeal

Happy New Year list friends:

I hope you all had a delightful holiday break and are finding things to look forward to this year.

I have a response to a Final OA and was researching whether there'd been a change in the response time from 6 to 3 months, and came across this Dec 31, 2024 USPTO Notice of Proposed Rule<https://www.uspto.gov/web/offices/com/sol/og/2024/week53/TOCCN/item-469.htm>, which I don't recall seeing discussed here (forgive me if it was, and I missed it):


The United States Patent and Trademark Office ("USPTO") proposes to

amend 37 C.F.R.  Sec. 2.64 to require a request for reconsideration of

an examining attorney's final refusal or requirement to be filed through

the Trademark Electronic Application System ("TEAS") within three

months of the mailing date of the final action. ***

A request for reconsideration of a final action does not extend the time

for filing an appeal or petitioning the Director on that action. Under the

current version of the rule, wherein the applicant may file a request for

reconsideration at any time between the final action and the six-month

deadline for appealing or petitioning, many applicants simultaneously seek

reconsideration and file an appeal. Because the examining attorney loses

jurisdiction over the application upon the filing of an appeal to the TTAB,

this simultaneous pursuit of reconsideration and appeal often necessitates

a remand by the TTAB to the examining attorney for a decision on the

request for reconsideration. If the request is denied, then the case is

transferred back to the TTAB. If the request is granted, and the examining

attorney reconsiders the final action, the appeal or petition may become

moot. The need for these remands and transfers contributes to the burden on

the applicant and the USPTO, and prolongs the pendency of the case.

In order to eliminate some appeals and petitions and reduce the need for

these remands and transfers, the proposed rule provides that a request for

reconsideration must be filed within three months of the final action,

while the six-month period for appeal or petition remains unchanged.

Comments must be received by [60 days from the date of publication in the Federal Register] to ensure consideration.

I agree with the rationale here, but I'm not sure the process is the best to meet the stated goals, given the shortened evidentiary timeline.

Curious what others think.

Cheers!


Lara Pearson (she/her/hers) [Why pronouns<https://medium.com/gender-inclusivit/why-i-put-pronouns-on-my-email-signature-and-linkedin-profile-and-you-should-too-d3dc942c8743>?] (Hear how I say my name<https://namedrop.io/larapearson>)

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