Two items of USPTO News:

  • Deferred Examination Roundtable Webcast is Thursday Morning [Link]
  • E-OFFICE ACTION: After a successful pilot, the PTO is starting an e-Office Action program. Applicants to decide to use the program will receive e-mail notifications of PTO correspondence rather than waiting for hardcopy to arrive in the mail. Program participants will not receive a hardcopy. The program is expected to begin in March 2009. Contact

9 thoughts on “USPTO News

  1. 9


    Thanks for the added detail. I’ve always wondered why the Trademark side could pull this off but not the Patent side. Obviously, the deadlines can be a bit more pressing so a confirmation system like you mention or even duplicate email addresses would seem to help.



  2. 8

    I suggest reading the details of the program before putting your foot down like a little child and saying “no way”. We were part of the pilot program, and it worked out very well. They send you a postcard if you haven’t checked a particular item within a certain period of time (7 days?). For those interested in moving to a paperless system, it’s a great solution.

  3. 7

    I am fairly certain that most trademark applications are filed electronically (you can still file a paper-based application but you have to pay more).

    I am also fairly certain that most trademark office actions and responses are also forwarded and filed electronically without any paper being transferred through the mail.

    I prosecute both patent and trademark applications and don’t lose any sleep over receiving my trademark communications via email. I am, however, less sanguine about receiving patent communications via email. The recent history of USPTO’s various software implementations relating to patents don’t inspire confidence.

  4. 6

    “should be ‘Aren’t Trademark filings 100% electronic?'”

    Actually, I’d argue that it should be “aren’t trademark filings 100% electronic?” OR “isn’t Trademarks 100% electronic?” (since “Trademarks” as it’s used here refers to the trademark part of the PTO).

  5. 5

    “Isn’t Trademarks 100% electronic???”

    should be ‘Aren’t Trademark filings 100% electronic?’

  6. 3

    There are risks associated with relying on e-mail, but as a practical matter most people rely on e-mail more than is justified anyway.

    Most delivery failures are detectable and it should be possible to utilize delivery confirmations (manual or automatic) to ensure that messages are received. However, I don’t know if the e-Office Action program plans to use any type of e-mail confirmation.

  7. 2

    Steve, notwithstanding the little piece of technology that we call a printer, you are correct that email of official communication is inviting a multitude of excuses regarding why an office action was not received.

    I could see an email notice being sent on the “mailling date” of the action to give the practitioner a little extra time to prepare and report an action, or to immediately e-report an action to a client, with a paper copy to follow.

    But I agree it could be dangerous to rely 100% on email.

  8. 1

    E-mail notifications?

    No way.

    Even w/automated “check PAIR” reminders, this is a risky & dangerous election…not even allowing for the importance of having a true, written record of everything the office generates.

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