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File Wrapper << Image
File Wrapper Final Rule Presentation (text version)
Alternative
Text Version - posted July 7, 2003
Slide
1
[Alternate
text: Image of USPTO logo]
Image
File Wrapper Final Rule
Prepared
by:
Office of Patent Legal Administration (OPLA)
Robert J. Spar, Director
Bob.Spar@USPTO.gov
(703) 308-5107
Slides
2-5
Image
File Wrapper– Final Rule,IFW Implementation
- The
Office is implementing the Image File Wrapper (IFW)
system which is an image technology system for storage
and maintenance of records associated with patent applications.
- The
IFW system will replace the standard paper applications
in paper file wrappers.
- Paper
components of the application file contents (including
the specification, oath or declaration, drawings, information
disclosure statements, amendments, Office actions, and
file jacket notations) of pending applications will
be scanned into the IFW system as electronic image files.
- The
electronic image files in the IFW system will be the
official records of the applications (the transition
will begin on 6/30/03).
- 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).
- All
processing and examination will be performed with the
electronic image files, instead of paper source documents,
by all Office personnel.
- The
IFW system is consistent with the data processing system
used by the European Patent Office (EPO). Office plans
to increase information exchange by leveraging common
storage architecture.
- Applicants
may continue to file applications and correspondence
in paper form.
- Alternatively,
applicants may use the Office electronic filing system
(EFS) for new application filings and certain information
disclosure statement (IDS) submissions.
- Copies
of U.S. patents and U.S. patent application publications
are not required under §1.98 if the references
are being submitted in an e-IDS.
- The
Office will supply copies of U.S. patents and U.S. patent
application publications to applicants for applications
in IFW until the Office implements a system to permit
applicants via PAIR to access these documents electronically.
- Foreign
patent documents and non-patent literature will
still be provided.
- U.S.
patents and application publications are currently
available on the USPTO website at http://www.uspto.gov/patft/index.html
Slide
6
Image
File Wrapper– Final Rule,Advantages of IFW
- Electronic
Maintenance of Application Records
- Increases
the integrity of the Office records;
- Reduces
the potential for loss of records and misfiling;
- Allows
parallel processing of the application by various
parts of the Office; and
- Facilitates
intra-Office access to an application file and to
other authorized parties.
- Applicants
may electronically access their applications in the
IFW system via private side of Patent Application
Information Retrieval (PAIR) system.
- The
contents of published applications that are in the IFW
system will be viewable by the public through
the public side of PAIR in FY04.
Slides
7-10
Image
File Wrapper– Final Rule,IFW Implementation
-
All new applications are being scanned, and indexed,
into the IFW system.
- The
backfile of existing applications will be scanned, and
indexed, into the IFW system.
- A
schedule for capturing the backfile of existing applications
linked to art units has been established.
- When
a paper for an existing application in a designated
art unit is recognized, the paper and the application
will be scanned into the IFW system.
- Prototype
Electronic Image File Wrapper Program
- By
December of 2003, 1,700 examiners (from TCs 1600, 1700
and 2800) are expected to be working in IFW environment
with all their applications scanned into the IFW system.
- Examiners
will be trained to use IFW desktop tools, messaging
system, and desktop application navigator to bring
up examiner’s docket and any application on their
docket.
- Examiners
may print out a working paper file consisting of
selected parts of the application (e.g., the specification,
drawings, or most recent claim set.)
- Proposed
Rule
- See
Changes to Implement Electronic Maintenance of
Official Patent Application Records, 68 FR 14365
(Mar. 25, 2003), 1269 Off. Gaz. Pat. Office 166
(Apr. 22, 2003).
- Major
changes proposed involved:
- Amendment
Practice - §1.121
- Application
format requirements - §§1.71, 1.72,
1.75, and
1.823
- E-IDS
- §§ 1.97 and 1.98
- Access
and status information - §1.14
- Final
Rule – Effective date: July 30, 2003
- See
Changes to Implement Electronic Maintenance of
Official Patent Application Records, 68
Fed. Reg. 38611 (June 30, 2003), xxxx Off. Gaz.
Pat. Office xxx (July xx, 2003)(final rule).
- The
Office received 20 written comments from intellectual
property organizations, law firms, and patent practitioners
in response to the notice of proposed rulemaking.
Slide
11
Image
File Wrapper– Final Rule, 37 CFR 1.3, 1.59 and 1.99
- Elimination
of Return of Non-entered Papers
- The
rules have been revised to eliminate Office's return
of certain papers because of the costs for locating,
and the limited availability of, post-scanned papers.
- Where
permitted by statute, the final rule has adopted
the public comments to provide notification of non-entry
of papers under §1.3, "Business to be
conducted with decorum and courtesy", and §1.59,
"Expungement of information or copy of papers
in application file", (but not for §1.99,
"Third-party submission in published application").
- The
non-entered papers may be returned if the contents
of the application have not been captured as image
files.
Slide
12
Image
File Wrapper– Final Rule, 37 CFR 1.9 and 1.14
- Section
1.9, "Definitions", has been amended to clarify
that the word "paper" and "papers"
refer to a document or documents, which may be electronic
records or physical paper
sheet(s).
- Section
1.14, "Patent applications preserved in confidence",
has been revised to provide clarity and expand the rule
to provide for electronic files.
Slides
13 and 14
Image
File Wrapper– Final Rule, 37 CFR 1.14(a)
- Separate
paragraphs in §1.14(a) were established to state
what access or information is available in specific
situations:
- Patented
applications and statutory invention registrations
(SIR). (§1.14(a)(1)(i))
- Published
abandoned applications. (§1.14(a)(1)(ii))
- Published
pending applications. (§1.14(a)(1)(iii))
- Unpublished
abandoned applications (including provisional applications)
that are identified or relied upon. (§1.14(a)(1)(iv))
- Unpublished
pending applications (including provisional applications)
whose benefit is claimed. (§1.14(a)(1)(v))
- Unpublished
pending applications (including provisional applications)
that are incorporated by reference, or otherwise
identified. (§1.14(a)(1)(vi))
Request
for Access under 37 CFR 1.14(a)(1)(iv)
Applicants
are encouraged to use Form
PTO/SB/68 [PDF] which has been revised to include
explanatory notes concerning when access is available.
[Alternate
Text - Image of Form PTO/SB/68]
Slide
15
Image
File Wrapper– Final Rule, 37 CFR 1.14(b)
- Electronic
access to an application
- Where
a copy of the application papers or access to the
application is available pursuant to §§
1.14(a)(1)(i) through 1.14(a)(1)(vi), the Office
may at its discretion provide access only to
an electronic copy of the file contents of the
application.
Slide
16
Image
File Wrapper– Final Rule, 37 CFR 1.52
- Papers
may not be permanently bound
- Papers
must be readily separable for scanned entry into
the image system.
- The
use of binder clips or standard office staples will
generally be acceptable.
Slide
17
Image
File Wrapper– Final Rule, 37 CFR 1.71, 1.72, 1.75, and
1.823
- Each
section of a patent application is required to start
on a separate sheet and include no other portions of
the application or other material.
- The
application will be electronically scanned and each
section of the application (e.g., text of
the specification, abstract, claims) will be indexed
separately in IFW.
- Presentation
of other material on the same page makes the electronic
indexing of the application more difficult.
Slide
18
Image
File Wrapper– Final Rule, 37 CFR 1.72
- Elimination
of the prohibition on using the abstract to interpret
the claims
- §1.72(b)
has been amended to delete the last sentence in
the rule ("The abstract will not be used for
interpreting the scope of the claims.") to
be consistent with Hill Rom Co. v. Kinetic Concepts,
Inc., 209 F.3d 1337, 1341 n.*, 54 USPQ2d 1437,
1440 n.1 (Fed. Cir. 2000).
Slide
19
Image
File Wrapper– Final Rule, 37 CFR 1.97 and 1.98
- Electronic
Information Disclosure Statement (eIDS)
- Section
1.98 has been amended to provide that the requirement
for a copy of U.S. patents and application publications
does not apply to any IDS submitted electronically
in compliance with the Office's EFS. Also see 1262
OG 94 (9/17/02).
- Only
U.S. patents and application publications may be
submitted with eIDS.
- eIDS
may be submitted with original application or later.
- eIDS
may be submitted even where application was not
submitted by EFS.
- eIDS
automatically loads patent citations for examiner
with EAST & WEST search tools
Slides
20 and 21
Image
File Wrapper– Final Rule
- For
the present time, the Office did not adopt:
- The
proposed changes to §1.14(e) and §1.19(b)
concerning electronic document exchange; and
- The
Office will consider further rule changes pending
negotiation and implementation of appropriate
agreements.
- The
proposed changes to §1.14(f) concerning any
action of the Board of Patent Appeals and Interferences
(BPAI) or decisions by the Director
- These
changes are not necessary for the IFW implementation.
The Office may reconsider the changes in future
rule making.
- Note:
the former §1.14(g) has been redesignated
as §1.14(e)
- The
Office also did not adopt:
- The
proposed changes to §1.97(c) to reduce the
time period in §1.97(c) by one day.
- The
Office will consider posting any outgoing correspondence
in PAIR on the next business day after the mailing
date of the correspondence.
Slide
22
Information
Contacts
Office
of Patent Legal Administration - (703) 305-1616 or
e-mail to Patent
Practice@USPTO.gov
- IFW
- Final Rule
- Jay Lucas (703) 308-6868, Robert Clarke (703) 305-9177,
or Robert Spar (703) 308-5107
- Amendment
Practice - Elizabeth Dougherty (703) 306-3156, Eugenia
Jones (703) 306-5586, or Joe Narcavage (703) 305-1795
- Access
under 37 CFR 1.14 - Karin Ferriter (703) 306-3159,
or Michael Lewis (703) 305-5585
- Reexamination-
Jerry Dost (703) 305-8610 or Ken Schor (703) 308-6710
- Reissue-
Joe Narcavage (703) 305-1795
- Electronic
Filing, CDs - Michael Lewis (703) 305-5585 or Jay
Lucas (703) 308-6868
Slide
23
Further
Information Contacts
Image
File Wrapper - http://www.uspto.gov/web/patents/ifw/index.html
Recent
Patent-Related Notices (published in O.G., F.R., etc.)-
http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html
Questions
of a General Nature - Inventors Assistance Center-
800-PTO(786)-9199
Electronic
Business Center - Customer Numbers, PAIR, EFS - http://www.uspto.gov/ebc/
or (703)305-3028
The
American Inventors Protection Act of 1999 in general-
http://www.uspto.gov/web/offices/dcom/olia/aipa/index.htm
Slide
24
Thank
you
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