Patent office focuses on e-filing

Electronic filing of patent and trademark applications will become the norm under a wide-ranging reorganization that the U.S. Patent and Trademark Office announced June 3.

The centerpiece of the reorganization plan is an e-filing system that will be developed jointly with Japan and countries of the European Union using existing off-the-shelf software, said James Rogan, director of USPTO and the Commerce Department's undersecretary for intellectual property.

The reorganization plan is expected to save the office more than $500 million over five years.

Rogan said he has already discussed the development of such a system with Japanese and European patent and trademark officials. "Essentially our multiple vision is to have an e-filing system that an American filer can use here or in Europe or Japan with a click of a mouse," he said.

Other hallmarks of the reorganization plan include:

* A restructuring of the fee schedule for patent and trademark applications to make it less expensive to file electronically than to file on paper.

* Efforts to competitively outsource patent and trademark searches to private-sector companies.

* The institution of a four-track examination process that relies on searches from other countries and governmental "industrial offices."

* A new system to upgrade and certify federal patent examiners' skills.

* Efforts to seek congressional legislation that will allow the patent and trademark office to rescind a patent on its own rather than filing a petition with a court to rescind the patent, as is now required.

Massive backlogs of patent applications are driving the reorganization, Rogan said. It takes an average of more than two years for a patent to be granted. Already 408,000 applications are in the examination pipeline, and the backlog will grow this year as an expected 340,000 new applications are filed, he said.

Currently 2 percent to 3 percent of U.S. patent applications are filed electronically, Rogan said, and 30 percent of all trademark applications are filed electronically.

"We want to move to where e-filing is considered the norm," he said. "Paper filing slows down the process, is very cumbersome, is time-consuming and prevents us from being able to work-share. In the 21st century, you can't just rely on an 18th-century model."

Developing an e-filing system unique to USPTO would be counterproductive, Rogan said. Such as system would cost $100,000 or more and would not be compatible with the patent and trademark filing systems in Europe and Japan, where 90 percent of U.S. patent and trademark applicants also file for legal protection.

Rogan said he has set a deadline of Oct. 1, 2003, to convert to an all-electronic filing system for trademarks and Oct. 1, 2004, for an all-electronic filing system for patents.