Former TTAB Judge Beth Chapman Provides Discussion Points for Proposed Rules

Discussion Points for TTAB Proposed Rules

Prepared by Beth A. Chapman

Of Counsel, Oblon, Spivak

March, 2006

• The stated purposes of the proposed changes to the rules are to increase efficiency, enhance earlier settlement and increase procedural fairness.  Will these purposes be met?

• In preparing these rules, did the TTAB take into account the significant increasing number of pro se parties, including pro se foreign individuals and representatives who do not speak English?  Will the rule changes lead to less efficiency while the TTAB helps guide the pro se parties through the system?   Will parties represented by counsel be prejudiced as a result of pro se parties’ lack of understanding or lack of compliance with the rules?

• Will the Board be willing to sanction pro se parties by ruling in favor of the adverse parties if the pro se parties do not comply with the rules, or will it become a group effort at educating pro se parties at the expense of those represented by counsel?

• If these rules are adopted, should Patent and Trademark Office Rule 10.14(e) be amended to require business entities to be represented by counsel?

• With a high percentage of the TTAB oppositions and cancellations being settled prior to final hearing, will the proposed rules encourage more or less settlements? 

• Will the proposed rules lead to significant increases in the costs of Board proceedings, particularly at the initial stages?  As a result of possible increased costs, will Board proceedings still be an alternative dispute resolution tool?  Will more plaintiffs proceed directly to federal court?   

• What good is a standard protective order against non-lawyers, individuals outside of the U.S., and competitors who are not represented by counsel?  What recourse will parties have after confidential information is improperly disclosed?

• What will be the impact of the wording in Rule 2.120(a) “and further explained in documents posted on the Web site of the Office”.  Will the PTO in the future simply post new procedures/practices to the PTO website without giving notice in the Federal Register and Official Gazette?

• Under Rules 2.120(a) and (e), if expert witness disclosure is to be required, should there be a distinction between testifying expert witness(es) and consulting, non-testifying expert witness(es); and should the rules allow disclosure of testifying expert witness(es) after the close of discovery?

• Under Rule 2.120(d), will 25 interrogatories be sufficient, or should the rules leave the number of interrogatories at 75?

• Under Rule 2.120(g), should the filing of a motion for sanctions result in automatic suspension of all times.

• Under Rule 2.121(e), should the requirement for “general” information regarding witnesses be clarified?

• Under Rule 2.122(d)(1), should it provide for receiving a pleaded registration into evidence by filing a copy thereof from the PTO’s TARR database?