AIPLA Files Comments on Proposed Final Pretrial Conference Pilot and Order
Written September 7, 2022
Arlington, VA. August 26, 2022 - The American Intellectual Property Law Association (AIPLA) filed comments to the United States Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) on the proposed pilot program for instituting a Final Pretrial Conference (PFC) requirement in certain TTAB opposition and cancellation proceedings.
Overall, AIPLA supports the pilot program to give the TTAB an opportunity to evaluate its potential effectiveness, recognizing the burden placed on TTAB Administrative Judges and staff when cases with large records are presented for decision. Therefore, AIPLA supports the TTAB in studying and evaluating ways to make these cases more efficient.
Because TTAB opposition and cancellation proceedings are intended to be streamlined proceedings, AIPLA recommends caution in adopting identical or nearly identical pretrial order requirements as exist under federal court procedures. AIPLA supports the proposed pilot program requiring the PFC to be presided over by the Interlocutory Attorney and one Administrative Judge. This will allow both parties to present a more focused case. If the form FPC Order is adopted for the pilot as currently proposed, then AIPLA recommends the parties have at least 60 days to prepare and submit the FPC Order given the voluminous information required.
Additionally, AIPLA recommends the TTAB notify both parties in litigation of their selection for the Pilot program and direct the parties to consider their participation at the initial discovery conference and agree to opt into the procedure.
AIPLA also recommends that the TTAB consider adopting the following practices to better streamline the order: (a) Allow the parties to identify the claims and defenses they believe should be tried and achieve a consensus at the PFC; (b) Because AIPLA does not support a requirement to include proposed finding of fact and conclusions of law in the FPC Order, the comments suggest that it would be more productive and efficient if these are filed after the close of the testimony periods and before the plaintiff’s opening brief is due; (c) AIPLA recommends at least 30 days after the close of discovery for the initial exchange of exhibits.
To view the complete comments, please download the comment letter posted to the right of this page.