Patents pending

Patent and Trademark Office

To make it easier to electronically file patent applications, U.S. Patent and Trademark Office officials are distributing new filing software based on Microsoft Corp.'s Word.

USPTO officials began mailing CDs with the free software at the end of October. They hope the new software will overcome a major obstacle to online filing: asking patent e-filers to use an Extensible Markup Language authoring system. Besides being unfamiliar and incompatible with the word processing software used to create patent documents in law offices, the old USPTO software does not let users e-mail document drafts before they are ready for filing.

With the new software, the patent application "is a Word document until the very end of the process" of creating and filing it, said Edward Kazenske, deputy USPTO commissioner for patent resources and planning. "We're hoping that addresses 99 percent of [e-filer] needs."

The software's release is the latest in a series of rapid movements toward modernizing the paper-intensive patent process. After receiving applications, patent examiners review them to make sure the applicant is the first to claim ownership of an invention or intellectual property. Eventually the documents become available for the public's review so everyone can see the patents.

Although USPTO officials have been automating the agency's systems for years, they appear closer than ever to major breakthroughs in handling business and interacting with the public. When the first cohort of 2,600 agency employees moved into USPTO's new offices in Alexandria, Va., Dec. 2, they left much of the paper behind. The new offices will need less storage space for paper files.

The advances coincide with pressure put on agency officials to accelerate work to ensure the protection of rights to U.S. discoveries and inventions. In an era of global competition, legal protection for technologies, processes and know-how has become urgent.

Meanwhile, the office's workload has grown in size and complexity. Patent applications increased at an annual rate of between 20 percent and 30 percent during the 1990s, according to the organization's strategic plan. The growth rate is lower now, but that doesn't mean the problems have been solved.

"Technology has become increasingly complex," the plan says, "and demands from customers for higher quality products and services have escalated." It now takes applicants more than two years on average to receive their patents, but some applications are backlogged for four or more years.

As part of the agency's response to backlogs, USPTO officials have made a commitment to process all patent applications electronically by Oct. 1, 2004. In July, officials took a major step toward that goal when they began scanning all paper applications into the new patent application processing system, known as the Image File Wrapper.

USPTO obtained the software from the European Patent Office, although considerable work was required to convert the mainframe-based system to run on USPTO's servers, Kazenske said. The Image File Wrapper also had to be integrated with existing USPTO systems.

The European software did not include a module for patent examiners to search and retrieve online applications at their desks, so USPTO officials developed that functionality. Now the agency has the first end-to-end patent application processing system.

Since July, Kazenske said, at least 75 examiners per week have begun using the new system. More than 800 of the examiners have been through three-day training programs. As each group of examiners is trained, the information technology staff installs the new systems at their desks and scans the applications into their computers, he said.

"The patent examiners are loving this system," Kazenske said. "They have taken to it really easily." Among other benefits, it allows several examiners to access the same file simultaneously — something not possible with paper files.

However, Ronald Stern, president of the Patent Office Professional Association, USPTO's employee union, said the examiners have some concerns about the system during this transition period. He said Image File Wrapper users sometimes have trouble locating needed files online, and the new system has slowed some parts of the process.

For example, Stern said, an examiner who found a piece of an application missing or damaged in a paper file simply called the applicant and got a new copy faxed to the office. Examiners now have to wait an additional two days for the fax to be scanned into the new system.

"With any system, there are birthing pains," Stern said. His organization is concerned because the workload quotas that examiners must meet have not been adjusted to reflect delays that occur during the transition, he said.

"In the transition, there are some very great problems," Stern said. Although the problems are being fixed, "that doesn't mean they aren't painful at the moment," he added. On the other hand, the employees expect "cases will not get lost as much" when they are in the Image File Wrapper system, he said.

The switchover has gone smoothly, Kazenske said, but it has not been glitch-free.

Older scanners sometimes left black lines on the pages, he said. The older scanners have been replaced, and more than 300,000 applications with more than 34 million pages have been scanned into the Image File Wrapper system. The agency scans about 3 million pages of applications each week.

If agency officials can get most applicants to file electronically, they can catch up with the scanning workload. Only about 2 percent of patent applications are filed electronically, Kazenske said.

One feature of the e-filing system is a private portal in which filers can view their applications online the day after they file them. The public cannot see an application for 18 months, but the public portal will open for business in July, Kazenske said.

Officials from the National Intellectual Property Researchers Association (NIPRA), an organization of patent searchers, have filed two suits against USPTO seeking to ensure that the paper files remain available for research after the Image File Wrapper is adopted. The association reached an agreement with USPTO in April to settle its first suit, but in June it filed another suit, claiming that the agency had breached the settlement agreement. The second suit is pending in U.S. District Court in Alexandria, Va.

"New USPTO and independent studies report substantial data error rates in the automated databases, and document thousands of missing or corrupt registrations in the USPTO search systems," association officials said in a press release. Kazenske acknowledged that some case files have been misplaced within the new system, but he noted that paper files are misplaced sometimes, too.

NIPRA President Robert Weir said the problems are not limited to scanning and cataloging errors. "The system seems to go down at least once a week lately," and no one has an explanation, he said. In addition, it takes too long to print pages from the Image File Wrapper, he said.

When NIPRA officials bring their issues to the attention of USPTO officials, "by and large, we're getting lip service from the agency," Weir said.

Kazenske said the agency is proceeding with the implementation as planned. At press time, Congress had not passed the USPTO budget, and the outcome of budget negotiations could affect the automation program, he added.

If the agency gets the go-ahead, patents will begin appearing on the agency's Web site in July. In the meantime, some examiners will begin working entirely from the Image File Wrapper system, he said. Examiners are grouped according to the types of inventions being patented.

The new system has the support of several major organizations, including the American Intellectual Property Law Association and the intellectual property section of the American Bar Association.

USPTO also is upgrading its trademark systems and tackling modernization initiatives outlined in its 21st Century Strategic Plan. However, a number of the initiatives need congressional approval that has not yet materialized.

Meanwhile, empoloyees are moving into the agency's new headquarters in a five-building complex in Alexandria, Va. The agency has been housed in several buildings a few miles to the north. Employees will be relocated in several increments until early 2005.

Ferris is a freelance writer in Chevy Chase, Md. She can be reached at ferrisn@att.net.

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Patents

Number of patent examiners: 3,600

Backlog of pending patent applications: 450,000

Patent applications received in fiscal 2003: 355,418

Average wait for initial processing of patent application: 2 years

Capacity of data storage for Image File Wrapper system: 100 terabytes

Source: U.S. Patent and Trademark Office