Saturday, March 10, 2007

2003 Changes To Implement Electronic Maintenance of Official Patent Application Records

On June 30, 2003, the U.S. Patent and Trademark Office published a rule change package as part of its "21st Century Strategic Plan" to implement electronic image processing of patent applications. The rule changes can be found here:

The rule changes were effective July 30, 2003.

The USPTO began to use image technology to replace the standard paper processing of patent applications. Paper contents of patent application files were scanned and thereafter all processing and examination by all Office personnel was to be conducted with the electronic image files. Various rules were amended to be consistent with electronic processing of files.

For example, Section 1.3 was amended to provide that papers presented in violation of the decorum and courtesy requirements, would not be included in the electronic official records. If such a document had been captured electronically, the office would electronically remove it from the official file. If the paper was intended as a reply to an Office Action, it would not be considered a bona fide reply and the period set in the prior Office Action would continue to run.

37 C.F.R. Section 1.9 was amended to clarify that the word "paper" referred to a document which may be electronic in form.

Section 1.14 was amended to indicate that electronic access may be provided to all or parts of certain applications.

Section 1.17 and 1.59 were amended to eliminate the reference to returning information that was expunged. Expunged information no longer needed to be returned. With electronic Official Files, there would be nothing to return.

Section 1.71 was amended to require that the first page of a specification begin on a new sheet. No sheet including part of the text of the specification could include any other material. Further, the claims, abstract, or sequence listing should not be included on any sheet including any other part of the specification.

Section 1.72 was amended to prohibit a paper presenting an abstract to include any other portions of the application or other material.

In addition, Section 1.72(b) was amended to eliminate the prohibition on using the abstract to interpret the claims in view of Federal Circuit case law in Hill-Rom Co. v. Kinetic Concepts, Inc. 209 F.3d 1337, 54 USPQ2d 1437 (Fed. Cir. 2000).

Section 1.98 was amended to indicate that copies of U.S. patents and patent application publications no longer needed to be provided with Information Disclosure Statements that were filed using the Office's Electronic Filing System.

Section 1.121, relating to the manner of making amendments, was revised in a manner similar to that proposed in the pre-OG Notice described in a separate posting. Any replacement section must include markings to show all changes relative to the immediate prior version.

A presentation on the revised amendment practice can be found here:

The changes did not much impact practitioners, other than those who did not read the pre-OG Notice relating to changes to Amendment practice. On the other hand, many USPTO examiners believe that electronic documents decrease their efficiency. In examining patent applications, it is typical to review many piles at the same time--the patent application, the drawings, and multiple relevant prior art references. Switching between screens and flipping between pages on a computer can take more time than flipping pages of paper copies. For this reason, some examiners print out much of the information and recreate paper files, but are not allocated time to do so. Efficiency could be increased with more monitors or larger monitors. The adjustment is probably more difficult for more senior examiners who are used to dealing with paper. Most patent attorneys still use paper files.