In this issue More on outsourcing to India! PTO fees reform: so close, yet so far GAO reports on application publication More electronic moves at PTO

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More on outsourcing to India!

I should not have spoken lightly in the recent newsletter about the idea of outsourcing patent work to India. Since then, the American Bar Association has reported on an eminent patent law firm in Minneapolis that has outsourced to India the task of proofreading U.S. patents issued to its clients. The objective of the proofreading is to catch printing errors and request correction from the U.S. Patent & Trademark Office (PTO.)

	PTO fees reform: so close, yet so far
Supporters are working very hard to move forward in the U.S. Senate the bill (H.R. 1561) already passed by the House of Representatives, which would revise entirely the structure of fees charged by the PTO to patent applicants. The Senate Judiciary Committee approved the bill last April. However, favorable action by the full Senate is not certain. The Senate Committee on Appropriations is reportedly concerned over a provision designed to prevent the diversion of fees collected by the PTO to fund federal programs outside the PTO. H.R. 1561 would create a Patent and Trademark Fee Reserve Fund. Fees collected by the PTO in excess of the amount that the PTO is authorized to spend by congressional appropriations would be deposited in this fund. In the following fiscal year, the PTO would refund the excess fees to those PTO users who had paid fees during the prior fiscal year. In the new fee structure set up by the bill, the present patent application filing fee would be split into an initial filing fee, and an examination fee. Applications that exceed 100 pages in length (excluding computer program listings and sequence listings) would be subject to a surcharge of $250 for each additional 50 pages (or portion thereof.) Under the new fee structure, the PTO is expected to collect an additional amount of $200 millions annually.

	GAO reports on application publication
When the U.S. Congress approved legislation in 1999 requiring that patent applications be published 18 months after their filing date, it required the General Accounting Office (GAO) to study the implementation of this provision. This requirement was in response to the concern that application publication may disadvantage independent inventors and small companies, by disclosing their inventions before their applications mature into patents. Under the new law, applications from those entities may be exempt from publication if the applicants certify that they do not intend to file corresponding patent applications in other countries, where publication is mandatory. The GAO recently issued a report based on a review of Patent and Trademark Office (PTO) data for patent applications filed in the two years beginning November 29, 2000. In that period: 805,000 applications were filed. In 88,000 of those applications, the applicants certified that they intended to file a patent application only in the U.S. and requested exemption from publication. Certification was rescinded in about 8,000 applications. In 275,000 applications, the applicants indicated an intent to file corresponding applications in other countries. For the remaining 456,000 applications, no exemption from publication was requested. However, the PTO has no information on whether these applicants indeed intend to file corresponding applications overseas. In brief, the pertinent information from the GAO survey is that only about 10% of the patent applicants in that two-year period requested that their applications be exempt from publication. See full text of report. »

	More electronic moves at PTO
About 200,000 application file wrappers have been converted to electronic format, or Image File Wrapper (IFW). Examiners in Technology Centers 1600, 1700 and 2800, which have moved to the new PTO Carlyle Campus, are working with IFWs instead of paper files. The PTO goal is to complete the conversion of paper files to IFWs by October 2004. For an application filed electronically, the IFW is generated promptly, in some cases almost instantaneously. The applicant's attorney can view the IFW for the newly filed application through the PAIR system (Patent Application Information Retrieval) within a day, or even an hour after filing. Assignment records for patents and published patent applications may be searched on the PTO Web site. As of May 2004, assignment documents may be e-filed by completing a form on the PTO Web site and attaching the assignment documents as TIFF files. See Electronic Patent Assignment System (EPAS). Patent applicants will continue to be nudged --more or less gently-- towards increased use of electronic interfaces with the PTO. Notably: 1. The PTO no longer provides paper copies of U.S. patents and U.S. published patent applications cited by the examiner in the prosecution of an application, but gives applicants' representative on-line access to these documents. See PTO notice. 2. New rules effective June 25, 2004, require that a Power of Attorney identify the appointed attorneys/agents collectively by the PTO Customer Number associated with these attorneys/agents, instead of reciting their individual names and PTO registration numbers. A Power of Attorney naming up to 10 attorneys/agents is exempt from this new requirement. See PTO notice. 3. A new announcement from the PTO places on applicants and their representatives the burden of monitoring with "due diligence" the status of patent applications through the PTO's PAIR system. In the event an applicant petitions for withdrawal of a PTO holding of abandonment of an application on the basis that the applicant did not receive an Office Action sent by the PTO, or on the basis that a reply filed by the applicant was not received (or was lost) at the PTO, the PTO gives this warning: "Since practitioners and pro se applicants can monitor the status of their applications using the USPTO's PAIR and IFW systems, the failure to receive a notice of abandonment (or any other USPTO notification) will not excuse an unreasonable delay in filing a petition to withdraw the holding of abandonment." (emphasis added) 4. The PTO annual report indicates that the goal of having 2% of patent applications being filed electronically in Fiscal Year 2003 was not met. Only about 1.3% of applications were filed electronically. This reluctance of patent applicants to file electronically is attributed partially to a lack of incentive in the form of a fee reduction. On this note, the bill (H.R. 1561) discussed above that restructures the fees charged by the PTO provides a 75% discount on the $300 application filing fee, for applicants who qualify as "small entities", i.e., independent inventors, small business, and non-profit organizations. 5. Some viable alternatives to the PASAT software initially provided by the PTO are becoming available (for converting the text of a patent application to the XML format required for electronic filing.) Worth noting is the PCT-SAFE software released by WIPO (World Intellectual Property Organization). A few patent attorneys have successfully filed patent applications through a "cross platform" system, by using PCT-SAFE to create the patent application and using the PTO's ePAVE software to file the application electronically. PCT-SAFE is reported to be more user-friendly and reliable than the PTO's PASAT software. As to the remaining software available for producing patent applications in XML format (ABX developed by the PTO and currently in beta testing; IP IntelliFile and IPDAS, both commercial products), they are so new that little is known yet about their performance.

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