Additional Discussion of TTAB's Standard Protective Order

Comment period extended until June 30, 2019

Background

The TTAB adopted a revised Standard Protective Order (SPO) on June 24, 2016. After it had been in effect for more than a year, the TTAB sought comments and suggestions on the SPO and its overall utility. Four entities provided comments by the January 31, 2018 deadline.

Certain ambiguities were identified in Sections 3-5 regarding disclosure of protected information to experts and consultants. The Board intends to clarify the language in those sections.

Previous Comments on In-House Counsel Access

The SPO provides for two levels of protected information: Confidential and Attorneys' Eyes Only (trade secret/commercially sensitive) (AEO). The SPO allows in-house counsel access to AEO only upon an appropriate showing and approval by the Board.

The commenting entities disagreed on changing the current presumption precluding routine access by in-house counsel to information and documents designated AEO.

Two commenters, intellectual property associations, argued in favor of changing the SPO to allow presumptive access to AEO by in-house counsel relying on U.S. Steel Corp. v. U.S., 730 F.2d 1465 (Fed. Cir. 1984). These commenters suggested that the TTAB amend the current SPO to allow in-house counsel such access by default without the requirement of showing a need for access.

The other two commenters, companies with in-house counsel, argued in favor of retaining the current provisions that condition access to AEO by in-house counsel on a showing of need for access, relying on Akzo N.V. v. U.S. Int'l Trade Commission, 808 F.2d 1471, 1 USPQ2d 1241 (Fed. Cir. 1986).

Board attorneys have not needed to resolve any disputes involving access to AEO material by in-house counsel or disputes concerning any other provision of the SPO.

Issue to be Discussed

In the absence of a consensus, and in view of the nature of the split, the Board is seeking further discussion on access by in-house counsel to AEO material. Earlier comments remain posted on the IdeaScale Collaboration Tool. (https://uspto-tbmp.ideascale.com/)

The comment period closes: The comment period is extended and now closes June 30, 2019

If you have problems posting your discussion to IdeaScale, you may send the discussion for posting to Cheryl Butler at cheryl.butler@uspto.gov.

Please provide your answers and comments to the following questions.

1.         Please describe the entity or individual submitting the comments (i.e., a law firm, a private practice attorney, a corporation or other business entity, in-house counsel, a trade association, a legal or policy association, professor/academia, other).

2.         The SPO currently provides for the protection of information and documents designated as (1) Confidential or (2) Confidential – For Attorneys' Eyes Only (trade secret/ commercially sensitive) (AEO). Under the SPO, AEO material is only available for review by outside counsel, not in-house counsel. Absent agreement by the parties or Board order, in-house counsel currently cannot access AEO information and documents. Should the SPO be amended so that the default is to allow for in-house counsel access to AEO information and documents? YES or NO, and please explain the reason for your response.

3.         If your answer to question 2 is yes, should it matter if the in-house counsel is domestic or foreign? Please explain.

4.         When a party requests that in-house counsel be entitled to access AEO information in a particular case, the TTAB currently relies on the test set forth in Akzo N.V. v. U.S. Int'l Trade Commission, 808 F.2d 1471, 1484, 1 USPQ2d 1241 (Fed. Cir. 1986) to make that determination. The factors to be balanced are:

(1) Whether the party seeking to gain access to AEO information for in-house counsel has "need for the confidential information sought in order to adequately prepare its case."

(2) Any showing of "harm that disclosure would cause the party submitting the information."

(3) The forum's interest in maintaining the confidentiality of the information sought."
Do you believe that this test is still appropriate for assessing in-house counsel access to AEO information? YES or NO, and please explain the reason for your response.

5.         If your answer to question 2 is no, and you do not think the SPO should be amended so that the default is to allow for in-house counsel access to AEO material, should the SPO instead be amended to incorporate the Akzo test described in question 4. YES or NO, and please explain the reason for your response.

6.         In addition to the issue of access to AEO material, the USPTO is interested in comments on the SPO's levels of confidentiality for protected information and documents. The previous version of the SPO included three levels: Confidential, Highly Confidential, and Trade Secret/Commercially Sensitive, with a presumption that in-house counsel would not have access to information or documents in the last category. Should the current SPO be amended to re-introduce the "Highly Confidential" tier? Please explain.

Any other comments and observations you have are welcome.

(@lisaulrich)

Additional Discussion of TTAB's Standard Protective Order

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Gilead and IBM thank the United States Patent and Trademark Office (“Office”) for the opportunity to comment on the TTAB Standard Protective Order (“SPO”). We appreciate that the current SPO includes a designation for “Attorney’s Eyes Only” that excludes in-house counsel. We think that the outside counsel only designation is especially important in trademark proceedings. Gilead and IBM believe that “Attorney’s Eyes ...more »

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Please provide your answers and comments to the following questions. 1. Please describe the entity or individual submitting the comments (i.e., a law firm, a private practice attorney, a corporation or other business entity, in-house counsel, a trade association, a legal or policy association, professor/academia, other). Kirstin Jahn - Solo practitioner 2. The SPO currently provides for the protection ...more »

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Additional Discussion of TTAB's Standard Protective Order

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Additional Discussion of TTAB's Standard Protective Order

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Additional Discussion of TTAB's Standard Protective Order

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IBM thanks the United States Patent and Trademark Office ("Office") for the opportunity to comment on the additional discussion of TTAB's Standard Protective Order ("SPO"). We have provided our answers and comments to the posted questions below. 1. Please describe the entity or individual submitting the comments (i.e., a law firm, a private practice attorney, a corporation or other business entity, in-house ...more »

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Additional Discussion of TTAB's Standard Protective Order

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28 March 2019 The Honorable Gerard F. Rogers Chief Administrative Trademark Judge United States Patent and Trademark Office Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313–1451 VIA EMAIL ONLY (cheryl.butler@uspto.gov) Re: Additional Discussion of TTAB's Standard Protective Order Dear Chief Judge Rogers: Intellectual Property Owners Association ("IPO") appreciates the opportunity to provide comments ...more »

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Additional Discussion of TTAB's Standard Protective Order

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March 29, 2019 United States Patent and Trademark Office Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313–1451 ATTN: Jennifer Cook Re: Comments of the AIPLA to the current Standard Protective Order Dear Ms. Cook, The American Intellectual Property Law Association (AIPLA) is pleased to have this opportunity to provide comments on the current version of the USPTO's Standard Protective Order for use ...more »

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Additional Discussion of TTAB's Standard Protective Order

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