United States Patent and Trademark Office OG Notices: 17 September 2002
Electronic Submission of
Information Disclosure Statements
Summary: Information disclosure statements (IDS) may be
electronically submitted to the United States Patent and Trademark
Office (USPTO or Office) via the Office's Electronic Filing System
(EFS). When making such an EFS submission of an IDS, paper copies of
U.S. patents and U.S. patent application publications cited in the IDS
will no longer have to be supplied by applicants. Thus, the Office is
implementing a change which has been requested by many applicants and
patent practitioners in order to eliminate the burden associated with
the making and supplying of paper copies of U.S. patents and patent
application publications.
Description of EFS Upgrade to Permit the Electronic Filing of an IDS
A new EFS software upgrade has added an IDS (submitted under
the provisions of 37 CFR 1.97 and 1.98) as a sixth type of electronic
submission that may be made via the Office's EFS. With the EFS software
upgrade, an applicant will be able to electronically transmit an IDS
with the filing of a new utility patent application, or as a subsequent
filing. This EFS software upgrade will NOT be usable for third party
information disclosure submissions under 37 CFR 1.99. The IDS
submission via EFS is the only electronic substitute for a paper IDS
submission contemplated. The upgrade is available as of May 28, 2002.
The EFS has been available to the general public for limited electronic
filing since October 2000. See Electronic Filing System Available to
Public, 1240 OG 45, November 14, 2000. This EFS software is currently
used for five types of electronic submissions: (1) for filing new
utility and (2) provisional patent applications; (3) for submitting
nucleotide and/or amino acid sequence listings; (4) for submitting
copies of applications for pre-grant publication purposes with requests
for voluntary publication, as amended publication, republication, early
publication and redacted publication and (5) for submitting multiple
assignment records. Applicants using EFS submit encrypted text and
image files to the USPTO and receive an immediate "Acknowledgment
Receipt" that summarizes their submission.
Information regarding EFS, its uses and its operation is
available from the Office's Electronic Business Center (EBC), the
e-commerce home (web site http://www.USPTO.gov/ebc/) for
the USPTO with links to systems for doing business electronically with
the Office. Two useful systems linked from the EBC are EFS, described
above, and the Patent Application Information Retrieval (PAIR) system,
providing data regarding the status of an application or of a patent to
patent applicants and/or their designated representatives prior to
publication, and to public users after the first publication date.
The EFS software upgrade affects only the submission and form
authoring software component called ePAVE (Electronic Packaging And
Validation Engine). This ePAVE software allows the user to enter data
required for transmittal to the Office into forms that are predefined
according to each of the six types of electronic EFS submissions and
builds an eXtensible Markup Language (XML) document with tags that
identify the content of each element of the submission. The ePAVE
software also validates the XML document data and securely transmits
the XML document to the USPTO. The software upgrade is available from
the download page on the Electronic Business Center's web site
(http://www.uspto.gov/ebc/downloads.html). The software upgrade may be
installed by executing the file downloaded from the Electronic Business
Center. In the event that the software cannot be downloaded, a CD
containing the software can be obtained from the Patent Electronic
Business Center by calling 703-305-3028.
Applicants will file an IDS via EFS by (1) entering the
references' citation information in an electronic data entry form,
equivalent to the paper PTO-1449 form; and (2) transmitting the
electronic data entry form data to the Office. This electronic form
allows only citations for U.S. patents and U.S. patent application
publications. If any references to foreign patent documents or
non-patent literature documents or unpublished U.S. applications are to
be cited, then applicants will submit those citations on a separate,
conventional paper PTO-1449 form (or revised form PTO/SB/08). A printed
copy of each cited foreign patent document, non-patent literature
document and unpublished U.S. application via mail, facsimile
transmission, or hand delivery should accompany the conventional IDS
form. Applicants will not send the Office copies of any U.S. patent or
U.S. application publication documents cited on an electronic IDS form
that is electronically transmitted to the Office via EFS.
The electronic IDS form may be included with a new patent
application submission, or it may be submitted for previously filed
patent applications. The ePAVE software upgrade provides an electronic
data entry IDS form equivalent to a paper PTO-1449, Information
Disclosure Statement form, in which citations for up to 50 U.S. patents
and up to 50 U.S. patent application publications may be entered. Each
citation requires the patent or application number, the name of the
patentee or applicant, and the date of issue or publication. The filer
may optionally add the kind code, and U.S. patent class and subclass
code for each citation. The electronic IDS form contains preprinted
certification statements that allow the user to make one of the two
certifications required under 37 CFR 1.97(e), regarding citation of the
documents in a communication from a foreign patent Office and knowledge
of the cited documents by individuals under 37 CFR 1.56(c), by clicking
on the appropriate certification. The electronic IDS form also contains
a free form text area to allow the user to include statements of
relevance or other remarks with regard to the cited documents. The
ePAVE upgrade validates the format of data entered into the electronic
IDS form, and transmits the XML formatted IDS data from the electronic
data entry form to the Office. The ePAVE upgrade validates the format
of data entered into the electronic IDS form and provide the means to
specify whether the electronic IDS form is to be linked to an
accompanying new application filing or is being filed in a previously
filed application, and transmits the XML formatted IDS data from the
electronic data entry form to the Office.
The IDS may be submitted as part of a new utility EFS
electronic application filing, or as a subsequent submission for a
previously filed patent application. The ePAVE program will prompt the
filer to associate an IDS file with a new application file and to
provide payment information, where either is appropriate. As with the
other five types of electronic submissions, ePAVE will validate the
information, display it to the filer, prompt for the filer's electronic
signature, use the filer's digital certificate, obtained from the USPTO
Electronic Business Center, to encrypt the whole package, and transmit
the submission to the USPTO. Upon receipt, the Office will send to the
filer an electronic post card "Acknowledgement Receipt", itemizing
a server date stamp, a unique server number (also known as the EFS ID),
the application number, and confirmation of the names, types, and sizes
of the files received by the USPTO. If the IDS submission is subsequent
to the application filing, the filer will be required to enter both an
application number and a confirmation number. A confirmation number is
an additional four-digit identifier assigned to an application, and can
be found in the upper left-hand corner of the official filing receipt.
An IDS cannot be electronically transmitted prior to an initial filing.
A filer will be required to have a customer number, obtained from the
USPTO Electronic Business Center, and a USPTO provided digital
certificate to use EFS as with current practice.
The IDS form submitted electronically will be printed and
placed in the Office's application file wrapper. The cited document
numbers will be made available electronically to the examiner to
facilitate searching and retrieval of U.S. patents and U.S. application
publications. It is most important that the cited patent and
application publication numbers be accurate and devoid of transcription
error. Because the IDS filer will not submit copies of cited
documents, there will be no copies of the disclosed documents in the
file wrapper for the examiner to review. Instead, the examiner will
electronically retrieve the patents and application publications
identified by the cited document numbers. The only mechanism for having
the correct document reviewed and considered when an erroneous patent
or application publication number is cited in an IDS citation will be
by citing the correct citation number in a subsequent IDS that conforms
to the requirements of 37 CFR 1.97 and 1.98. The IDS form will be
entered as a paper into the application file indicating that it was
received on the date the form was completely received via EFS. This is
the date the Office will refer to in considering compliance with 37 CFR
1.97 and 1.98. Examiners will consider the U.S. patents and U.S.
application publications cited on an EFS transmitted IDS form provided
the remaining requirements of 37 CFR 1.97 and 1.98 are met, by
reviewing electronic or printed copies produced from the Office
electronic databases.
It may be necessary to file a complete IDS via multiple
submissions for several reasons: (1) the foreign patent documents and
non-patent literature must still be submitted in paper, where the U.S.
patents and U.S. patent application publications may be submitted
electronically; and (2) the electronic submission can only include up
to 50 U.S. patents and U.S. patent application publications. If more
than one submission is necessary to file a complete IDS for which a fee
is required under 37 CFR 1.17(p), only a single fee under 37 CFR
1.17(p) will be required under the following conditions: (1) the fee
required by 37 CFR 1.17(p) is included with the first electronic
submission (since it will normally be processed first); (2) all
subsequent submissions making up the IDS should explicitly state that
the fee was included in the earlier submission and request that the one
submitted fee be accepted for the second and any subsequent submission;
and (3) all subsequent submissions (electronic or paper) must be
received by the Office on the same date as the first electronic
submission with which the fee was included. A subsequent non-electronic
submission is considered received by the Office on the same date as the
first electronic submission with which the fee was included for
purposes of the fee due under 37 CFR 1.17(p) if it is deposited in
Express Mail under 37 CFR 1.10, deposited in the first class U.S. mail
with a certificate of mailing in accordance with 37 CFR 1.8, or
transmitted by facsimile with a certificate of transmission in
accordance with 37 CFR 1.8, on the same date as the first electronic
submission with which the fee was included. If a subsequent electronic
IDS submission is received by the Office on a date later than the date
the fee was paid, the later submission will require an additional fee.
FOR FURTHER INFORMATION CONTACT:
For information regarding the software, including installing
and operating the software, the technical requirements and data
definitions and requirements, contact the Electronic Business Center
Help Desk by telephone at (703) 305-3028 or (703) 308-6845 or by
electronic mail at efs@uspto.gov. For information
regarding how the electronic IDS transmittals interact with the
prosecution process, including legal and regulatory requirements,
contact Anton Fetting in the Office of Patent Legal Administration by
telephone at (703) 305-8449, by facsimile at (703) 746-3312, or by
electronic mail at anton.fetting@uspto.gov.
August 20, 2002 EDWARD R. KAZENSKE
Deputy Commissioner for
Patent Resources and Planning