[Federal Register Volume 76, Number 167 (Monday, August 29, 2011)]
[Notices]
[Pages 53667-53670]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2011-21964]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. PTO-P-2011-0032]
Establishing a One-Year Retention Period for Patent-Related
Papers That Have Been Scanned Into the Image File Wrapper System or the
Supplemental Complex Repository for Examiners
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Request for Comments.
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SUMMARY: The United States Patent and Trademark Office (USPTO) is
considering establishing a retention period of one year for patent-
related papers that have been scanned into the Image File Wrapper
system (IFW) or the Supplemental Complex Repository for Examiners
(SCORE). Specifically, the USPTO is considering establishing a one-year
retention period that begins on September 1, 2011, for papers scanned
into IFW or SCORE prior to September 1, 2011; or a paper's submission
date, for papers scanned into IFW or SCORE on or after September 1,
2011. After the expiration of the one-year retention period (after
September 1, 2012, or later), the USPTO would dispose of the paper
unless, within sufficient time prior to disposal of the paper, the
relevant patent applicant, patent owner, or reexamination party files a
bona fide request to correct the electronic record of the paper in IFW
or SCORE, and the request remains outstanding at the time disposal of
the paper would have otherwise occurred. Establishing a one-year
retention period for papers scanned into IFW or SCORE would replace the
USPTO's past practice of indefinitely retaining the papers, which has
been rendered unnecessary and cost-ineffective by improvements in
scanning and indexing.
DATES: Comment Deadline Date: To be ensured of consideration, written
comments must be received on or before October 28, 2011. No public
hearing will be held.
ADDRESSES: Comments concerning this notice may be sent by electronic
mail message over the Internet addressed to
[email protected], or submitted by mail addressed to: Mail
Stop Comments--Patents, Commissioner for Patents, P.O. Box 1450,
Alexandria, VA 22313-1450. Although comments may be submitted by mail,
the USPTO prefers to receive comments via the Internet.
The comments will be available for public inspection at the Office
of the Commissioner for Patents, located in Madison East, Tenth Floor,
600 Dulany Street, Alexandria, Virginia, and will be available via the
USPTO Internet Web site (address: http://www.uspto.gov). Because
comments will be available for public inspection, information that is
not desired to be made public, such as an address or phone number,
should not be included in the comments.
FOR FURTHER INFORMATION CONTACT: Raul Tamayo, Legal Advisor, Office of
Patent Legal Administration, Office of the Associate Commissioner for
Patent Examination Policy, by telephone at (571) 272-7728, or by mail
addressed to: Mail Stop Comments-Patents, Commissioner for Patents,
P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of
Raul Tamayo.
SUPPLEMENTARY INFORMATION: IFW is the USPTO's system for electronically
storing and maintaining the files of patent applications and
reexamination proceedings. The image files in IFW for patent
applications and reexamination proceedings are the official records of
those patent applications and reexamination proceedings. See Changes to
Implement Electronic Maintenance of Official Patent Application
Records, 68 FR 38611 (June 30, 2003), 1272 Off. Gaz. Pat. Office 197
(July 29, 2003). The USPTO stores in IFW documents it receives over the
Electronic Filing System--Web (EFS-Web). In particular, the USPTO
converts Portable Document Format (PDF) files submitted by users into
Tagged Image File Format (TIFF) image files and then stores the TIFF
image files in IFW as part of the official record for the relevant
patent application or reexamination proceeding. The USPTO also stores
in IFW as part of the official record of a patent application or
reexamination proceeding the image files that it creates when it scans
documents filed in paper, i.e., filed by mail, at the USPTO's Customer
Service Window, or, when permitted, facsimile. After being scanned into
IFW, the papers are no longer part of the official record.
Since July 1, 2003, the USPTO has been scanning into IFW newly
received patent applications filed in paper. See Notification of United
States Patent and Trademark Office Patent Application Records being
Stored and Processed in Electronic Form, 1271 Off. Gaz. Pat. Office 100
(June 17, 2003). In particular, the USPTO since July 1, 2003, has been
scanning into IFW newly received, paper-filed (1) Nonprovisional
applications under 35 U.S.C. 111(a), (2) provisional applications under
35 U.S.C. 111(b), (3) plant applications under 35 U.S.C. 161, (4)
design
[[Page 53668]]
applications under 35 U.S.C. 171, and (5) reissue applications under 35
U.S.C. 251. Newly received, paper-filed nonprovisional applications
under 35 U.S.C. 371 have been scanned into IFW as of November 30, 2005,
and newly received, paper-filed international applications under the
Patent Cooperation Treaty have been scanned into IFW as of January 1,
2007. In addition, the USPTO since August 2004 has been scanning into
IFW newly received, paper-filed requests for reexamination.
Once an application or request for reexamination has been scanned
into IFW, follow-on documents that are filed in paper for the
application or reexamination proceeding are scanned into IFW. Follow-on
documents are documents filed after the initial submission of the
application or request for reexamination which include, but are not
limited to, the following: amendments, information disclosure
statements (IDS), replies to Office actions and notices, evidence,
petitions, and other documents filed after the filing of an application
or request for reexamination. Additionally, the USPTO scans into IFW
all USPTO communications for applications and requests for
reexamination that have been scanned into IFW.
The USPTO has also scanned into IFW the paper file wrappers, i.e.,
all of the papers, including the initial applications or requests for
reexamination, follow-on documents, and USPTO communications, of many
applications filed prior to July 1, 2003, and many requests for
reexamination filed prior to August 2004. For example, between 2003 and
2005, the USPTO physically moved its principal office to Alexandria,
Virginia. During that period, the USPTO scanned into IFW the paper file
wrappers of many of the then-pending 600,000 patent applications.
Further, the USPTO routinely scans into IFW the paper file wrappers of
applications filed prior to July 1, 2003, that were not pending during
the 2003-2005 transition. For example, such scanning occurs when a
document, e.g., a request for patent term extension under 35 U.S.C.
156, is filed that necessitates repeated viewing of the paper file
wrapper by one or more USPTO employees.
Not all documents filed via EFS-Web or in paper are stored in IFW.
For example, grayscale and color images are converted to black and
white images when stored in IFW. Accordingly, documents such as
photographs and color or grayscale drawings, which would be degraded if
stored in IFW as black and white images, are not stored in IFW. Prior
to 2007, documents that would be degraded if stored in IFW as black and
white images were placed into Artifact Folders, and Artifact Sheets
were then scanned into IFW as placeholders. By 2007, the USPTO had
fully deployed SCORE, a data repository system designed to augment IFW
with the capture and retrieval of non-standard content, such as color
and grayscale drawings, complex tables, and sequence listings. Thus,
since 2007, the USPTO stores in SCORE as part of the official record
documents that would be degraded if stored in IFW as black and white
images. In addition, the USPTO since 2007 scans into SCORE as part of
the official record documents that were previously in Artifact Folders
when, for example, an examiner makes a request to do so. When a
document is stored in SCORE, a black and white copy of the document is
stored in IFW along with a SCORE placeholder sheet.
Sequence listings and computer program listings, as well as
documents that should not be entered initially (and must be filed in
paper), such as trade secret, proprietary and/or protective order
materials, are other examples of documents not stored in IFW, at least
initially. Prior to the deployment of SCORE, sequence listings and
computer program listings were placed into Artifact Folders with
Artifact Sheets then scanned into IFW as placeholders. Since the
deployment of SCORE, the USPTO has been storing sequence and computer
program listings in SCORE as part of the official record. Documents
that should not be entered initially (and must be filed in paper) are
placed into Artifact Folders, and Artifact Sheets are then scanned into
IFW as placeholders. If it is later determined that they should be
entered into the official record, they are taken out of the Artifact
Folders and scanned into IFW.
The USPTO stores in boxes the papers that it scans into IFW or
SCORE. Scanned papers are boxed and stored in the order that they are
scanned. A sample storage box of scanned documents may contain: newly
received applications; follow-on documents for previously submitted
applications; and USPTO communications for applications. It may also
contain paper file wrappers of applications filed prior to July 1,
2003, that for some reason, e.g., documents were filed that
necessitated repeated viewing of the papers by one or more USPTO
employees, were scanned into IFW at the time the box was being filled.
Thus, while the image files of IFW are organized by application number
or reexamination control number, paper sources of the image files are
not. An application filed in paper in 2006 can be in one box, a follow-
on document filed in paper in 2007 for the application can be in a
second box, a 2008 USPTO communication for the application can be in a
third box, etc.
To date, the USPTO has not disposed of any of the boxes of papers
that it has scanned into IFW or SCORE, even though the scanned papers
are no longer part of the official record. In total, the USPTO has
accumulated approximately 235,700 boxes and stores them at a repository
near Springfield, Virginia.
By not disposing of the boxes, the papers have remained available
for comparison purposes in limited circumstances when issues arise
concerning the electronic records of the papers in IFW. However, the
number of issues that arise which actually require the USPTO to
retrieve a box from storage has steadily declined in the years since
the USPTO started scanning. The USPTO can identify two principal
reasons for this declining trend: (1) Indexing techniques and scanning
quality have improved over the years; and (2) the increased use of EFS-
Web has led to a decrease in the amount of paper that is filed, thus
leading to a decrease in the amount of paper that is scanned (the
submission rate through EFS-Web has increased from 14% in 2006 to 90%
in 2010).
In 2004, the USPTO scanned a total of 195,829,268 pages, and 17,363
issues arose which could have required the USPTO to retrieve a box from
storage. In 2010, the total number of pages scanned by the USPTO fell
to 24,895,341, and only 1,581 issues arose which could have required
the USPTO to retrieve a box from storage. Furthermore, the USPTO was
able to remedy most of the 1,581 issues without actually retrieving a
box. The 1,581 issues that could have required the USPTO to retrieve a
box from storage required the retrieval of only 225 boxes.
The 225 boxes which required retrieval from storage represent less
than 0.10% of the USPTO's total of approximately 235,700 boxes.
Furthermore, the content of the papers in the box most often (116 out
of the 225 boxes) matched the content of the image files in IFW. Of the
225 boxes retrieved from storage by the USPTO in 2010, only 109 were
used to scan one or more papers into IFW or SCORE or to create an
Artifact Folder (impacting a total of 87 patent applications). For 45
of the 109 boxes, papers were scanned into SCORE or placed into
Artifact Folders, usually because the papers were inadvertently not
scanned into SCORE or placed into Artifact Folders in the first place.
For 36 of the 109 boxes,
[[Page 53669]]
papers were scanned into IFW because IFW did not contain image files
for one or more pages of the papers. For 21 of the 109 boxes, papers
were re-scanned into IFW due to quality issues with the initial image
files in IFW. Under the assumption that there was one scanned image
problem for each of the 21 boxes, the image scanning quality rate is
99.999916% ((24,895,341-21)/24,895,341), which exceeds Six Sigma
quality standards. Finally, 7 of the 109 boxes were retrieved to
address indexing errors for very large submissions.
While the number of issues that arise which actually require the
retrieval of a box from storage has steadily declined, the cost of
storing the boxes is high and will only increase if the USPTO's past
practice is left unchanged. At present, the annual cost of storing and
maintaining the boxes is approximately $701,000. Thus, in 2010, the
cost of correcting the 87 total applications impacted by the 225 box
retrievals exceeded $8,000 per application. Additionally, the space
currently used to store the boxes is projected to reach its capacity by
mid-year 2012. At that time, more warehouse space will need to be
acquired, further increasing the USPTO's storage costs. The USPTO's
past practice of indefinitely retaining the boxes of papers that it
scans into IFW or SCORE is therefore not cost-effective.
Establishing a definite period of retention for papers scanned into
IFW or SCORE would address the cost-ineffectiveness of the USPTO's past
practice and yield other advantages. For example, it would further
encourage the use of EFS-Web. In addition, by providing paper filers
with a definite period during which they may review and determine the
accuracy of the electronic record and request any needed corrections,
both the USPTO and the public benefit from greater assurance that the
official record in IFW is correct.
For the foregoing reasons, the USPTO is considering establishing a
one-year retention period for papers that have been scanned into IFW or
SCORE. Specifically, the USPTO is considering establishing a one-year
retention period that begins on: (1) September 1, 2011, for papers
scanned into IFW or SCORE prior to September 1, 2011; or (2) the
paper's submission date, for papers scanned into IFW or SCORE on or
after September 1, 2011. A one-year retention period would be
consistent with the USPTO's currently pending request to the National
Archives and Records Administration (NARA) to transition from general
records disposition authority GRS 20, item 2a(4) to the new USPTO-
specific records disposition authority N1-241-10-1, item 4.4. Papers
that have not been scanned into IFW or SCORE, such as certain papers
placed into Artifact Folders, would not be subject to the one-year
retention period and would remain retrievable consistent with past
practice.
The USPTO considers the one-year retention period proposed in this
notice to be preferable to shorter or longer retention periods.
Retention periods of less than one year would not adequately meet the
USPTO's objective of giving paper filers sufficient time to review
their files and request corrections. Retention periods of more than one
year would not sufficiently meet the USPTO's objectives of reducing
storage costs and improving the quality of the official record in IFW.
The USPTO considers that a retention period of one year would strike
the best balance between these competing objectives. Moreover, a one-
year retention period would be consistent with the USPTO's goal of
reducing first action pendency to an average of 10 months by 2015.
If the USPTO adopts the one-year retention period proposed in this
notice, the USPTO would dispose of the paper after the expiration of
the one-year retention period (after September 1, 2012, or later),
unless within sufficient time prior to disposal of the paper, the
relevant patent applicant, patent owner, or reexamination party files a
bona fide request to correct the electronic record of the paper in IFW
or SCORE, and the request remains outstanding at the time the paper
would have been scheduled for disposal. Filers of requests to correct
the electronic record would be strongly advised to file their requests
by EFS-Web using the document description ``Electronic Record
Correction'' at least one month prior to the expiration of the one-year
retention period to allow sufficient time to process the request.
Requests that are not filed at least one month prior to the expiration
of the one-year retention period may not be acted upon in time.
If the USPTO adopts the one-year retention period proposed in this
notice, a patent applicant, patent owner, or reexamination party who,
during the one-year retention period, is considering filing a request
to correct the electronic record of a paper, and who believes that the
evidence establishes that the need for correction was caused by the
USPTO, would be advised to consider whether the initial submission date
of the paper needs to be secured for the information being corrected.
Such situations could involve (1) Adding information that would not
otherwise be supported by the original specification, (2) avoiding a
reduction in patent term adjustment, or (3) avoiding an impact on the
timeliness of an information disclosure statement under 37 CFR 1.97. If
the initial submission date of the paper does not need to be secured
for the information being corrected, the patent applicant, patent
owner, or reexamination party should simply submit a corrective
replacement document and accept the date of such submission for the
corrective replacement document. If, however, the initial submission
date of the paper needs to be secured for the information being
corrected, a request for correction based on the initially submitted
paper should be filed as a petition under 37 CFR 1.181. The request
should specifically point out the error(s) in the electronic record of
the paper in IFW or SCORE and be accompanied by a replacement copy of
the paper, along with (1) Any evidence to establish (a) that the need
for correction was caused by the USPTO, and (b) the proper submission
date of the original paper, and (2) a statement that the replacement
copy is a true copy of what was originally filed.
When making a decision on the request, the USPTO's presumption
would be that the electronic record of the paper in IFW or SCORE is
accurate and correction is not merited. The USPTO would check to see
whether it has the paper at issue. If the USPTO has the paper, the
USPTO's version of the paper would either support the request for
correction, in which case the request would be granted, or the USPTO's
version of the paper would not support the request, in which case the
request would be dismissed.
On the other hand, if the USPTO does not have the paper, e.g., the
paper has been lost, the presumption that the electronic record of the
paper in IFW or SCORE is correct could be rebutted where the evidence
submitted with the request is sufficient to overcome the presumption. A
postcard receipt which itemizes and properly identifies the items that
have been filed would serve as prima facie evidence of receipt in the
USPTO of all the items listed thereon on the date stamped thereon by
the USPTO. However, while a postcard receipt may be the only evidence
needed for the USPTO to accept, for example, the missing tenth page of
a 10-page document that has been properly identified on the postcard as
a 10-page document, the postcard receipt may be insufficient, on its
own, for the USPTO to accept a replacement tenth page of a properly
identified 10-page document, where all 10 pages were actually
[[Page 53670]]
received by the USPTO and, for example, a sentence is missing on one
page or a chemical structure is thought to have been changed.
Any decision dismissing a request to correct the electronic record
would provide a two-month period to file a request for reconsideration
of the decision, in accordance with 37 CFR 1.181(f).
The USPTO would not dispose of a paper for which, within sufficient
time prior to disposal of the paper, a bona fide request to correct the
electronic record of the paper has been filed and remains outstanding
at the time the paper would have been scheduled for disposal. A request
would be a bona fide request when it specifically points out the
error(s) in the paper and is accompanied by any necessary evidence. A
general allegation that a paper requires correction filed without
evidentiary support would not be a bona fide request. It would be
inadequate to stay the disposal of the paper and would be dismissed.
Once filed, a bona fide request to correct the electronic record would
remain outstanding unless the USPTO has either (1) Issued a decision
granting either the original request or a request for reconsideration
of the original request, or (2) issued a final agency decision denying
a request for reconsideration of the original request.
If the USPTO adopts the one-year retention period proposed in this
notice, a patent applicant, patent owner, or reexamination party who is
considering filing a request to correct the electronic record of a
paper, but who cannot establish that the need for correction was caused
by the USPTO, would be advised to not file the request. Other options
for relief may be available when it cannot be established that the need
for correction was caused by the USPTO. For example, an amendment under
37 CFR 1.57(a) may be filed to address the problem of an application
filed with inadvertently omitted material when the application contains
a claim under 37 CFR 1.55 for priority of a prior-filed foreign
application, or a claim under 37 CFR 1.78 for the benefit of a prior-
filed provisional, nonprovisional, or international application. See
MPEP Sec. 201.17. As another example, an amendment may be filed to
correct an obvious error, along with any evidence, such as an expert
declaration, necessary to establish that one of ordinary skill in the
art would recognize both the existence of the error and the appropriate
correction. See MPEP Sec. 2163.07, II.
If the USPTO adopts the one-year retention period proposed in this
notice, a patent applicant, patent owner, or reexamination party may
file a request to correct the electronic record of a paper after the
one-year retention period, if the evidence is believed to establish
that the need for correction was caused by the USPTO, and the initial
submission date of the paper needs to be secured for the information
being corrected. The USPTO likely would have disposed of any paper for
which a request to correct the electronic record is filed after the
one-year retention period. Therefore, the typical request for
correction filed after the one-year retention period would have to
overcome the presumption that the electronic record of the paper in IFW
or SCORE is accurate and correction is not merited. For certain
instances, e.g., when a paper was inadvertently not scanned into SCORE
or placed into an Artifact Folder, there would be a black and white
image of the paper in IFW that could be used to corroborate any
submitted evidence.
The proposed procedure set forth in this notice for filing a
request to correct the electronic record of a paper that has been
scanned into IFW or SCORE would not be a replacement for the USPTO's
established procedure for responding to a notice (e.g., a ``Notice of
Omitted Item(s) in a Nonprovisional Application'') from the Office of
Patent Application Processing (OPAP) indicating that the application
papers have been accorded a filing date, but are lacking some page(s)
of the specification or some of the figures of drawings described in
the specification. Applicants would continue to follow the procedure
set forth at Change in Procedure for Handling Nonprovisional
Applications Having Omitted Items, 1315 Off. Gaz. Pat. Office 103
(February 20, 2007), when responding to such a notice from OPAP.
In addition, the proposed procedure set forth in this notice for
filing a request to correct the electronic record of a paper that has
been scanned into IFW or SCORE would be generally applicable only to
situations in which a certain document, or one or more pages of a
certain document, contains an error caused by the USPTO that requires
correction. The proposed procedure set forth in this notice would not
be a replacement for the USPTO's file reconstruction procedures (37 CFR
1.251 and MPEP Sec. 508.04). Paper sources for the image files in IFW
are boxed in the order that they are scanned, rather than by
application number or reexamination control number, such that a request
to correct requiring the retrieval of papers from multiple boxes could
not be reasonably effected.
Dated: August 17, 2011.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2011-21964 Filed 8-26-11; 8:45 am]
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