|
*************** © McLeland &
Associates, P.L.L.C
As the U.S. Congress wraps up its work before the
five-week summer recess, the U.S. Patent and
Trademark Office (PTO) is coming closer to finding out
how much money it will have in fiscal year 2004 for
undertaking its planned conversion to a paperless, all
electronic operation.
Diversion of PTO user fees not ended
In the last 10 years, a portion of the fees collected by
the PTO from patent and trademark applicants has
been diverted by the Administration and the Congress
to fund other government programs. From an all-time
high of $200 million in fiscal year 1998, the amount
diverted has decreased to about $20 million in the last
two years. This is due to shortfalls in the fees collected
by the PTO, since the amount diverted is the difference
between the fees collected and the funding
appropriated by the Congress.
Prior attempts by supporters of the PTO have not
succeeded in ending the fee diversion. Another
attempt was made this year, in the House Judiciary
Subcommittee that oversees the PTO. The
Subcommittee added language to end the fee diversion
to a bill that it approved for authorizing the PTO to
raise fees charged to applicants. It is uncertain
whether the full Judiciary Committee will retain that
language in the bill. Patent professional societies
reluctantly support the fee increase, under the
condition that the practice of fee diversion be ended.
More importantly, in funding matters the House
Judiciary Committee acts only as the "authorizing"
committee that sets spending limits. The actual level
of funds made available to the PTO is set by the
traditionally all powerful House Committee on
Appropriations, which has relied on the diversion of PTO
fees as a budgeting tool. The Appropriations
Committee has approved funding for the PTO at $1.238
billion, an increase of $57 million over the prior year,
but $156 million less than requested by the PTO. This
appropriation level means that about $59 million in fees
collected in fiscal year 2004 will not be available for the
PTO's use. As was the case in recent years, the
actual
diversion may be smaller due to shortfalls in PTO fee
collection. In approving funding for the PTO, the House
Appropriations Committee in effect ignored the $200
million increase in PTO revenues that would result from
passage of the PTO fee authorization bill mentioned
above. The bill appropriating funds for the PTO (and a
number of other agencies) was passed by the House on
July 23, 2003, but may be vetoed by President Bush
because of a provision concerning the Federal
Communications Commission (FCC).
|
|
PTO fees for fiscal year 2004 |
 |
|
In the meantime, the PTO has published the schedule
of new fees effective October 1, 2003. The fees are
increased based on the CPI (Consumer Price Index),
and will be raised again if the PTO fee authorization bill
mentioned above is enacted into law.
See full text of PTO notice (PDF) »
|
|
|
Outsourcing of prior art search cut back |
|
|
A proposal by the PTO to contract out the search of
the prior art, against which the patentability of the
claims of a patent application is assessed, has met with
opposition from the patent community. As a result, the
House Judiciary Subcommittee overseeing the PTO has
added to the PTO fee authorization bill some language
limiting the use of outside search companies to "a pilot
program of limited scope," to be reviewed by Congress
and the PTO's Patent Public Advisory Committee.
|
|
|
First steps to a paperless PTO |
|
|
The entire content of U.S. patent applications filed on
or after June 30 (whether filed electronically or in paper
format) will be captured and stored electronically by
the PTO, except for applications that are the U.S.
national stages of international applications filed in the
PCT (Patent Cooperation Treaty) system. The resulting
image file wrapper (IFW) for each application will serve
as the working document for the PTO. Since the
majority of applications are still received by the PTO in
paper format, they will be scanned to produce the IFW,
and the application papers eventually will be disposed.
In addition, the PTO has established a schedule for
scanning the back files of existing patent applications
for entry in the IFW systems. The back files of
applications handled by Technology Centers 1600, 1700
and 2800 (i.e., the chemical, biotechnology and
electronic examining groups) will be scanned first.
Examiners in those groups will be working solely with
IFW by December 2003, to prepare for their move to
the new PTO campus in Alexandria without moving the
paper files for the applications. See text of PTO
notice and PowerPoint presentation.
To implement the switch to IFW, the following changes
in PTO practice have been made:
Bar codes can no longer be used for presenting the
PTO "Customer Number" on any papers submitted to the
PTO. The customer number must be printed in
numerals.
Gray background, such as in a text box, is no
longer permitted in forms or other papers submitted to
the PTO.
The PTO has proposed that original assignment
documents (evidencing the assignment of an invention
by the inventors or by an original assignee) will not be
returned to the applicants' representatives after being
recorded by the PTO. The same proposal also requires
that assignments be submitted in letter size 8½ x 11
inches or A4 size, but NOT in legal paper size.
The PTO is also proposing to make mandatory the
use of the PTO customer number if a power of attorney
for an application is given to more than 10 registered
attorneys or agents. The customer number is recited in
the power of attorney, instead of a list of the
attorneys or agents and their PTO registration numbers.
The list of attorneys and agents associated with that
customer number is kept in the PTO electronic records.
The use of the customer number, introduced by the
PTO only a few years ago, has been optional until the
present proposal. See full text of PTO notice.
Amendments to the text of an application must
comply with the new rules. See the next feature
in this newsletter for details.
The benefit of the new IFW system already is
evident for an application filed electronically. The
entire content of the application file, including the text
of all the documents as received by the PTO, can be
viewed electronically on the PTO Web site through
the "private" side of the PTO's Patent Application
Information Retrieval (PAIR) system, usually one day
after the filing date. Only patent attorneys and patent
agents who hold digital certificates and are associated
in the PTO records with the "Customer Number" for an
application are authorized to access this private side of
PAIR. When an application is published, the application
records are then open to the public and can be viewed
electronically through the public side of PAIR. The PTO
anticipates providing this public access to the contents
of published applications through the IFW system in
fiscal year 2004, which begins in October 2003.
|
|
|
Beware of non-compliant amendment! |
|
|
Amendments to patent applications that are submitted
on or after July 30, 2003, must follow the new format
set in Rule 121. Until that date, compliance with the
format is optional. After that date, the PTO will issue a
notice of non-compliance setting a time limit for an
amendment to be corrected. When the prosecution of
the patent application is closed, for example, after the
issuance of a final rejection, the notice will not toll the
period for response, e.g., for filing a notice of appeal of
the final rejection.
See full text of the notice »
|
|
|
No more CPA! |
|
|
CPA (Continued Prosecution Application) practice is no
longer permitted effective July 14, 2003, except for
design patent applications. A Request for Continued
Examination (RCE) should be filed instead. The PTO
continues to allow CPA filings for design patent
applications because the American Inventors Protection
Act (AIPA), which introduced RCE practice as part of a
major overhaul of U.S. patent laws in 2000, does not
authorize the use of the RCE for design patents.
|
|
|
Electronic patent application filing news |
|
|
ePAVE 5.1, the new version of the software for filing
U.S. patent applications electronically, was released
last April by the PTO. Electronic submissions using the
older version of the software are no longer accepted.
As sometimes happens with new software, the switch
to ePAVE 5.1 apparently has not been smooth, even for
patent practitioners experienced at filing patent
applications with the prior version of the software.
There is hope that the PTO will make progress in
providing a more user-friendly electronic filing system in
the future.
Incremental improvements indeed have been made
recently. The PTO's server for EFS (electronic filing
system) was upgraded last May to accept TIFF images
created with a wider variety of software. (In filing a
patent application electronically, formulas and drawings
are transmitted as TIFF images.) Also, an X-Port tool
now can be downloaded from the PTO Web site to
convert patent applications previously created (using
the PTO-provided PASAT software) to a format that
complies with the new international guidelines found in
Annex F of the PCT (Patent Cooperation Treaty), and
the "document type definitions" recently agreed to by
the PTO, WIPO (World Intellectual Property
Organization), EPO (European Patent Office) and JPO
(Japanese Patent Office).
|
|
|
Acronyms in electronic filing |
|
|
As the PTO and other major patent offices move
toward the goal of total electronic application filing,
even the most reluctant patent practitioner must
master a modicum of related acronyms. A sampling is
offered here, with attempted explanations in plain
English.
PDF (Portable Document Format): a proprietary
document format owned by Adobe, suitable for text as
well as images. The European Patent Office currently
accepts electronically filed applications only in PDF
format, and recommends specific software, Amyuni, for
converting a word processor document into the PDF
format. XML (Extensible Markup Language): a
format for text which is more flexible and versatile than
HTML (HyperText Markup Language, the common Web
language). Both XML and HTML are derived from the
international standard language SGML (Standard
Generalized Markup Language). XML has been
described as an abbreviated version of SGML. Unlike
PDF, SGML and its progeny are not proprietary, but
public formats. The PTO requires electronically filed
patent applications to be in XML format. Since XML is
only for text and not for images, images such as
formulas and drawings must be submitted as TIFF files.
(See definition immediately below.) TIFF (Tagged
Image File Format): a standard format for graphics. A
variety of software is available for creating and viewing
TIFF files. PASAT (Patent Application Specification
Authoring Tool): commercial software commissioned by
PTO for use by applicants to prepare patent
applications in XML format, either by conversion from
an MS Word document or by authoring directly in
PASAT, which is considered an MS Word "add-on" and
has menus similar to MS Word. ePAVE (a rather
non-auspicious name--"EPAVE" means "sunken ship" in
French): commercial software commissioned by the
PTO for use by applicants to submit electronically in a
secure manner an application for filing in the PTO.
PKI (Public Key Infrastructure) digital certificate: the
security ID needed for one to file an application, and
access the application records on-line during the
confidential stage of the application process (i.e., prior
to publication of the application). PAIR (Patent
Application Information Retrieval): the PTO system
that allows users access through the PTO Web site to
the PTO records for patent applications. Access is
limited to authorized persons until the application is
published. Prior to the creation of the IFW (Image File
Wrapper) system by the PTO, the data that could be
viewed in PAIR was limited to a listing of the
correspondence and actions taken in each application.
When the IFW system is fully operational, the entire
content of the documents in the application file can be
viewed through PAIR. ANNEX F: The Holy Grail for
electronic patent application filing worldwide. Officially
part of the "Administrative Instructions Under the PCT
(Patent Cooperation Treaty)," Annex F sets guidelines
for electronic application filing and "document type
definitions" that have been agreed to by the PTO,
WIPO (World Intellectual Property Organization), EPO
(European Patent Office) and JPO (Japanese Patent
Office). Annex F anoints XML as the international
language for electronic patent applications.
Consequently, the EPO (European Patent Office) is
having software developed for use in preparing
applications in XML format. See definition immediately
below. PATXML: software developed for and tested
by EPO, which the PTO is also testing, for preparing
XML documents from MS Word documents. Like PASAT
(the XML authoring tool provided by the PTO), PATXML
is an MS Word "add-on".
|
|
|
Outside the box? On the lighter side? |
|
|
You be the judge!
NON-LAWYER: a person who is not an attorney or
lawyer. See 37 CFR § 10.14(b). (From "Glossary"
on PTO Web site.) Yet another lawyer joke?
BACK SEAT DRIVERS WANTED: AUTOMOBILES DRIVEN
FROM THE BACK SEAT. British Patent GB1394639. To
see drawings of the car, click on the word "Drawing"
on the menu bar at the top of the page of this link.
|
| Welcome to McLeland & Associates, P.L.L.C. |
|
|
