[Patentpractice] USPTO welcome letters

[Katherine Koenig]

And think of all the people who trust the USPTO that they can prepare and file (and prosecute) an application themselves, only to realize later they missed a priority date, can’t go back and fix something they’d messed up, now have intervening prior art issues because the provisional didn’t support a utility, added attorney fees to fix mistakes, etc.  It’s actually a disservice to applicants.   Plus, with the backlog they’re dealing with, isn’t it more time efficient for Examiners to interact with patent attorneys and not pro se applicants who don’t understand the system?  Pro se applicants who do understand the system already know they can file without and attorney and don’t need a welcome letter or a marketing campaign from the USPTO.

Best regards,

Katherine

Dr. Katherine Koenig
Registered Patent Attorney
Koenig IP Works, PLLC
2208 Mariner Dr.
Fort Lauderdale, FL 33316
(954) 903-1699
katherine at koenigipworks.com<mailto:katherine at koenigipworks.com>

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Targeted Intellectual Property Strategy

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Krista Jacobsen via Patentpractice
Sent: Thursday, February 22, 2024 9:15 AM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Krista Jacobsen <krista at jacobseniplaw.com>
Subject: Re: [Patentpractice] USPTO welcome letters

All of this.

Exactly zero of my clients want/need this letter. I also agree with Neil's (and others') observations about the helpfulness/accuracy of its contents for pro se inventors.

The welcome letter is yet another indication of the USPTO not having any clue about who is actually filing applications and how they are using Patent Center and Ass. Center. It smacks of the marketing department stepping in for "brand building," though less obnoxiously than the Nascar sponsorship.

Why is the USPTO behaving as if there's somewhere else applicants could go to seek U.S. patents? Branding is a poor way to spend the additional $400/$160/$80/application they're now Hoovering up.

------------------------------------------
Krista S. Jacobsen
Attorney and Counselor at Law
Jacobsen IP Law
krista at jacobseniplaw.com<mailto:krista at jacobseniplaw.com>
T:  408.455.5539
www.jacobseniplaw.com<http://www.jacobseniplaw.com>


On Thu, Feb 22, 2024 at 5:20 AM Neil R. Ormos via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>> wrote:
Carl Oppedahl wrote:

> A listserv member asks to post anonymously ...

>>  "how much more can they waste our time" ...

>> I know the Welcome Letter was previously
>> discussed, but today I found 10 or more
>> WELCOME.LET2 in our daily eOA along with a
>> corresponding M327 document (Miscellaneous
>> Incoming Communication to Applicant-No Action
>> Count).  Welcome Letter TWO was mailed about
>> 10+ days following an office action.

>> What a huge waste of time on our part --
>> especially linking it to an M327 document which
>> generally has an important communication with
>> it.  Unless I'm wrong, these Welcome Letters
>> aren't extremely important...

Separate from the issue of wasting practitioner time, the letter seems to include some less than helpful communications to /pro se/ inventors.

For example:

| Need help near you? We have regional offices
| across the country [...], as well as Patent and
| Trademark Resource Centers in libraries in
| nearly every state [...], with specialists
| standing by to help you at no cost.

Libraries may have someone who can show a /pro se/ inventor how to use computer search facilities.  That kind of help might be useful before the application is filed.

Do any libraries really have "specialists standing by" to provide help in responding to office actions?

What help could someone who is not a registered practitioner offer other than referring the patron to a book or web site that discusses office actions and how to respond.

("Oh, you have appendicitis? Here's a copy of /Remove It Yourself/. Scalpels are in the drawer. Please don't forget to clean up when you're done...")

Another example:

| Connect with us on Instagram, Linkedin, Twitter,
| Facebook, and YouTube.

Although this is in the "learn more" section of the letter, does it really benefit /pro se/ applicants to invite them to use public communication channels to "connect" with the PTO?  Even if the PTO's file wrapper is itself open to public inspection by the time the first office action is mailed, some /pro se/ applicants, especially those who have not been counseled on confidentiality, are sometimes very chatty and blurt out all kinds of (formerly) confidential information not essential to patent prosecution when seeking help in public fora.

Also, "Twitter"?  I guess the news has not yet reached Alexandria.

And why is the text of the letter screened with a pattern?  (Yes, I know how the IFW works, but text that is solid-black in the first place does not get screened. I don't understand why anyone would use gray text in the first place.)

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