USPTO OFFERS INTERIM PROCEDURES FOR
SUBMISSIONS ON COMPACT DISC
BACKGROUND
In the recently promulgated regulations, Changes to
Implement the Patent Business Goals; Final Rule, 65 FR 54604,
September 8, 2000, changes were made to 37 CFR 1.52 in new paragraph
(e). These changes permit the submission of nucleotide and/or amino
acid sequence listings and certain tables on compact discs (CDs) and
requiring certain computer program listings to be submitted on CDs. The
compact disc technology offers great advantages to the Office and to
our applicants for the convenient handling of large documents. The
media has been generally well received by the applicant community.
In spite of the significant advantages of the compact disc
technology, some applicants are reluctant to use this new medium for
submission because of a concern about the ability to read characters on
the submitted discs using USPTO equipment when they were written using
the applicants' computers. In view of the high importance of the
readability of the submissions associated with patent applications (see
37 CFR 1.52 (e) (7)), the Office has noted a reluctance of the
public to forgo the conventional paper medium in favor of CDs. These
interim procedures are designed to encourage the use of the compact
discs by promptly testing the submitted CDs.
INTERIM PROCEDURE
The USPTO is implementing the following optional interim
procedure to encourage the use of compact disc (CD) submissions in
accordance with 37 CFR 1.52(e), 1.96, 1.821 et seq.
This interim procedure will provide a quick test and acknowledgement
only as to whether a portion of the files included on the compact discs
contain readable characters, 37 CFR 1.52(e)(7).
1. Applicants wishing to avail themselves of this procedure may
call the Office of Initial Patent Examination (attn: Tom Koontz or
Manny Macalalad) at (703) 308-0910 to make an appointment for the
filing and testing of their compact disc submission of the relevant
part of a U.S. patent application.
2. In addition to all normally submitted documents, applicants
must submit a Compact Disc Transmittal Letter. The Compact Disc
Transmittal Letter must include the relevant information set forth in
37 CFR 1.5, and further include a list specifically identifying all
of the files included on the accompanying CDs. The files must be
identified by name, size in bytes, and date as indicated on the CD file
directory. Each set of CDs requires its own Compact Disc Transmittal
Letter. The Compact Disc Transmittal Letter must also include the name
and telephone number of the applicant or attorney/agent to be contacted
concerning the submission, and a facsimile transmission telephone
number to be used to transmit an acknowledgement of receipt as
indicated below.
3. Applicants will arrange for their submission to be hand
carried to the Office of Initial Patent Examination, Crystal Plaza 2,
Room 7D25, 2011 South Clark Place, Arlington, Virginia, at the
appointed time.
4. The USPTO will test the submitted CDs for the purpose of
readability of the characters (37 CFR 1.52 (e)(7)) within 3 working
days, and send an acknowledgement back to the applicants by facsimile
transmission to the facsimile transmission telephone number indicated
on the Compact Disc Transmittal Letter.
5. The test will comprise: 1) a virus scan of the CD - COPY 1
(see 37 CFR 1.52 (e) (4)); 2) displaying and printing the
directory of that CD; 3) opening each file on that CD with a text
viewer and quickly viewing a portion of the file to determine that the
characters are generally readable (i.e. is rendered as ASCII
characters).
6. If a certain file is not readable on one copy of a CD, the
USPTO will test the other copies of that CD (see 37 CFR 1.52 (e)) to
determine if the Office has received a readable copy of the file. If it
has, the file will be indicated as being present and readable. In later
processing, applicants will be advised to submit replacement copies
that are fully complete and readable.
7. On the conclusion of the test, and within 3 working days, an
Acknowledgement of Receipt (copy below) will be forwarded to applicants
by facsimile transmission, including:
* A printout of the directory screen as read by the USPTO
computer.
* A copy of the CD Transmittal Letter on which is indicated:
ACKNOWLEDGEMENT OF RECEIPT OF FILES ON
COMPACT DISC
The files indicated on the attached transmittal document were received by
the USPTO, opened on a USPTO computer and were readable pursuant to
37 CFR 1.52 (e).
_____________________________ (name of tester) _____________________ (date)
* Files that were not readable will be so indicated on the
Compact Disc Transmittal Letter faxed to the applicant.
* The directory screen printout, the Compact Disc Transmittal
Letter, and the Acknowledgement of Receipt will be placed in the
application file.
8. Applicants are cautioned that this is not a full test for
compliance with all requirements for receipt of a patent application.
This is strictly a quick test to determine only whether the files
included on the compact discs contain readable characters, 37 CFR
1.52(e)(7).
Should it prove that some or all of the files submitted on
compact disc are unreadable, the application will be treated as being
filed with Omitted Items, and the procedures itemized in MPEP 601.01(d)
will be applied, as modified for the electronic nature of the medium.
These procedures are effective on the publication of this
notice, and will remain in effect until superceded by revised or
finalized procedures. Compact discs are a relatively new medium for
document submission, and the Office will be monitoring the submissions
under these procedures to understand the complexities and difficulties
of their use. Appropriate revisions of these procedures will be made in
due course.
A future notice will address procedures that will be followed
for international applications submitted with sequence listing parts on
compact discs under the Patent Cooperation Treaty to the United States
Receiving Office.
Questions on this notice may be addressed to Jay Lucas, Sr.
Legal Advisor, Office of PCT/Patent Legal Administration, USPTO at
Jay.Lucas@USPTO.gov or (703) 308-6868. Questions on individual
applications submitted for CD Testing, or inquiries to make an
appointment for Readability Acknowledgement, should be addressed to Tom
Koontz, Director, or Manny Macalalad, Office of Initial Patent
Examination, (703) 308-0910.
January 30, 2001 THOMAS L. KOONTZ
Director, Office of Initial Patent Examination