USPTO Makes End-to-End Electronic Trademark Filing and Prosecution a Priority

by Brian Fletcher on August 14, 2011

The United States Patent and Trademark Office (USPTO) has a goal of improving its electronic systems and making them more user-friendly and efficient. As of June 30, 2011, some 98 percent of trademark applications were filed electronically but only 72 percent were prosecuted electronically from beginning to end. The USPTO believes that, to the extent that it can achieve end-to-end electronic processing of all applications, all applicants will benefit. As a result, the USPTO has made promotion of end-to-end electronic filings and communications a priority.

 With end-to-end electronic processing, applicants will find that their applications go through the system more quickly at a lower cost.  Further, by filing electronically, the applicant can ensure the accuracy of data entry.

TIME

1. Electronically-filed applications are reviewed more quickly with an average of 2.9 months to initial review rather than 3.2 months for paper applications.

2. Thirty percent of all TEAS PLUS applications proceed directly to publication without an office action.

3. Average time from filing to disposal (i.e., registration, notice of allowance or abandonment, excluding cases with suspensions, TTAB proceedings and amendments to allege use) is 9.4 months for TEAS PLUS applications and 10.8 months for TEAS applications while it is 12.5 months for paper applications.

PRICE

1. Applicants save money up front with lower electronic application fees. Current fees are:

– TEAS PLUS: $275 per class (TEAS PLUS applications must be filed and prosecuted end-to-end electronically and the applicant must choose its goods and services from a pre-approved list – but there are ways to add to the list)

– TEAS: $325 per class (TEAS applications must be filed electronically but need not be prosecuted end-to-end electronically and the applicant does not need to choose from a pre-approved list of goods.)

– Paper: $375 per class.

2. Filing a TEAS PLUS application significantly reduces the chance that the applicant will receive an office action based on the description of goods and services and therefore saves on overall costs to applicant.

DATA ACCURACY

Almost all data submitted electronically is automatically uploaded into the USPTO databases. Paper filings require manual data entry, increasing the likelihood of data entry errors.

System users should also be aware that the fees charged for paper filings do not cover the USPTO’s costs. While the $275 fee for a TEAS Plus application is very close to the USPTO’s actual cost, the $375 fee for a paper application is 82 percent lower than the USPTO’s actual cost. So in effect every paper filing made today is being subsidized by the lower costs associated with processing and examining electronic filings.

USPTO Director David Kappos has authorized a long-term technology improvement project known as “Trademarks Next Generation” (or “Trademarks Next Gen”) that will bring a host of technological improvements to the Trademark Operation at the USPTO over the next several years. In the meantime, the USPTO is working to make smaller improvements to its systems and reaching out to paper filers to determine what current paper filers need in order to go fully electronic.

Those changes are starting to be put into effect. In April, all USPTO examining attorneys began to list their email addresses in Office Actions so that applicants could more easily communicate with examining attorneys. Later this year, applicants will have the opportunity to list multiple email addresses for receipt of electronic communications from the USPTO. One email address will still be the primary email and any other email addresses designated by an applicant will be deemed “courtesy emails.” That means that if an email to the primary email address bounces back to the USPTO as undeliverable, a paper copy will be mailed via the United States Postal Service; however, if an email to any other address is undeliverable, no paper copy will be mailed. In response to user feedback, the USPTO is also exploring the possibility of changing its system for notices of publication.

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