USPTO Building. Photo: Diego M. Radzinschi/NLJ

The U.S. Patent and Trademark Office is revving up correspondence with in-house counsel to let them know how the agency can help meet their intellectual property needs, according to a panel of IP regulators at the annual meeting of the Association of Corporate Counsel in Phoenix on Tuesday.

The panel included Mary Boney Denison, the USPTO's commissioner for trademarks, and Molly Kocialski, the director of the USPTO Rocky Mountain Regional Office based in Denver. Denison and Kocialski said the agency wants to increase communications with in-house counsel to promote how they can be of assistance as patent and trademark filings remain high.

Molly Kocialski, Director of the USPTO's Rocky Mountain Regional Office.

"It was part of what we did, but now it's more focused," said Kocialski of the heightened outreach effort to in-house counsel, in an interview. She added regional directors such as herself have proactively reached out more to in-house counsel to offer assistance over the past fiscal year. 

Kocialski told the group of about 60 in-house counsel in the audience that if they receive a call or an email from a regional director out of the blue, it most likely means the director wants to connect, such as visit the company, to address any IP-related questions. 

"Our main focus, USPTO as a whole, was always on IP attorneys," she said. "We never made the distinction between outside counsel and in-house counsel, but in-house counsel are the decision-makers." Kocialski said the outreach resonates with her as a former in-house lawyer with 15 years of experience; her agency biography lists Oracle America Inc. and Qwest Corp. as previous employers.

According to the 2018 USPTO Performance and Accountability Report, patent filings have decreased by 7,001 filings from 2017 to 2018, with the agency seeing 643,349 filings last year, down from the prior year's 650,350. But Kocialski said the agency is strengthening its focus on communications with lawyers at corporations, because that's where the majority of inventors are.

"Director [Andrei] Iancu wanted to change the IP conversation," Kocialski said. "We don't change the IP conversation in our office. We change it by having it." 

Kocialski said she has notified small companies when she would be in their area—her office covers Colorado, Idaho, Kansas, Montana, Nebraska, North Dakota, South Dakota, Utah and Wyoming—and enjoyed the visits with these companies where she saw firsthand how their patents and trademarks drive the business.

"The biggest quote that comes out of this is, 'We didn't know the USPTO did this,'" she said.

For trademarks, Denison said she was "specifically asked" to let in-house lawyers know they, too, can submit comments to the Trademark Trial and Appeal Board, even if their bar associations had submitted their own comments. 

"Sometimes the bar groups comment, and you may or may not agree with them, so we would love to hear from you," she told the audience. "Last year, we had put out, I think, twice a request for comments from in-house counsel on a protective order, and we really didn't get very many comments. If you're in-house counsel and you have comments, please feel free to still send them to us because we're still talking about what to do. It's not just that, it's really anything that we're doing we want to hear from you."

In 2018, TTAB's website shows the board received comments from four entities on its standard protective order that would allow in-house counsel access to information and materials designated as confidential, "for attorneys' eyes only," upon a showing and approval by the board. With a split in opinion among the commenters, the board had extended the comment period to June 30, 2019.

Denison, who joined the agency in 2011 and will be retiring Dec. 31, added the USPTO would also like feedback on its surveys from in-house counsel. Over her tenure, trademark filings have increased every year, according to the agency's 2018 report, with 673,233 filings by the Sept. 30 fiscal year-end, up 5% from last year's 638,847 filings.