Oblon, Spivak's Comments Submitted to USPTO Regarding Proposed Multi-Track Examination System

August 23, 2010 – Firm News

Dear Commissioner Stoll:

Oblon, Spivak, McClelland, Maier & Neustadt, LLP (Oblon Spivak) is an Intellectual Property specialty firm, which last year obtained over 4,000 U.S. patents for its clients. We are the U.S. I.P. firm for many U.S. and foreign-based companies, a number of which being transnational corporations that use U.S. Patents to protect their R&D investments in the U.S. market.

Generally, we and our clients have been very satisfied with the cooperative approach taken by the new U.S.P.T.O. administration in reforming the U.S.P.T.O. as is strives to deal with difficult issues such as quality control and backlog management. For example, the U.S.P.T.O's statistical data on the effectiveness of interviews in obtaining notice of allowances early in the patent prosecution process has been helpful to our clients in developing more cost effective prosecution strategies. Also, our clients have been very pleased with the guidance provided by the U.S.P.T.O. in explaining how the Patent Prosecution Highway (PPH) programs are mutually beneficial to the U.S.P.T.O. and patent applicants. Likewise, our clients have been pleased with the efforts of Undersecretary Kappos in his renegotiation of the POPA agreement, which appears to have revitalized the Examining Corps by rewarding efficient prosecution.

Oblon Spivak also appreciates the objective of the U.S.P.T.O. in proposing the multitrack examination system to reduce pendency and provide options to our clients depending on their particular patenting needs. However, Oblon Spivak is particularly concerned about the discriminatory effect the proposal would have on foreign-first filing patent applicants. These concerns are reflected in the following comments on the 33 questions posed in the subject Federal Register Notice.

Comments on Questions Posed in Federal Register Notice, 75 Fed. Reg. 31,763.

Please also see Oblon, Spivak Highlights the Main Aspects of Multi-Track Examination Initiative.