United States Patent and Trademark Office OG Notices: 23 December 2003
Notice of Office Plan to Cease Supplying
Copies of Cited U.S. Patent References With
Office Actions, and Pilot to Evaluate
the Alternative of Providing Electronic Access to
Such U.S. Patent References
Summary
The United States Patent and Trademark Office (Office or USPTO)
plans in the near future to: (1) cease mailing copies of U.S. patents
and U.S. patent application publications (US patent references) with
Office actions except for citations made during the international stage
of an international application under the Patent Cooperation Treaty and
those made during reexamination proceedings; and (2) provide electronic
access to, with convenient downloading capability of, the US patent
references cited in an Office action via the Office's private Patent
Application Information Retrieval (PAIR) system which has a new feature
called "E-Patent Reference." Before ceasing to provide copies of
U.S. patent references with Office actions, the Office shall test the
feasibility of the E-Patent Reference feature by conducting a two-month
pilot project starting with Office actions mailed after December 1,
2003. The Office shall evaluate the pilot project and publish the
results in a notice which will be posted on the Office's web site
(www.USPTO.gov) and in the Patent Official Gazette (O.G.).
In order to use the new E-Patent Reference feature during the pilot
period, or when the Office ceases to send copies of U.S. patent
references with Office actions, the applicant must: (1) obtain a
digital certificate from the Office; (2) obtain a customer number from
the Office, and (3) properly associate applications with the customer
number. The pilot project does not involve or affect the current Office
practice of supplying paper copies of foreign patent documents and
non-patent literature with Office actions. Paper copies of references
will continue to be provided by the USPTO for searches and written
opinions prepared by the USPTO for international applications during
the international stage and for reexamination proceedings.
Description of Pilot Project to Provide Electronic Access to Cited
U.S. Patent References
On December 1, 2003, the Office will make available a new
feature, E-Patent Reference, in the Office's private PAIR system, to
allow more convenient downloading of U.S. patents and U.S. patent
application publications. The new feature will allow an authorized user
of private PAIR to download some or all of the U.S. patents and U.S.
patent application publications cited by an examiner on form PTO-892 in
Office actions, as well as U.S. patents and U.S. patent application
publications submitted by applicants on form PTO/SB08 (1449) as part of
an IDS. The retrieval of some or all of the documents may be performed
in one downloading step with the documents encoded as Adobe Portable
Document format (.pdf) files, which is an improvement over the current
page-by-page retrieval capability from other USPTO systems.
Steps to Use the New E-Patent Reference Feature During the Pilot Project
and Thereafter
Access to private PAIR is required to utilize E-Patent
Reference. If you don't already have access to private PAIR, the Office
urges practitioners, and applicants not represented by a practitioner,
to take advantage of the transition period to obtain a no-cost USPTO
Public Key Infrastructure (PKI) digital certificate, obtain a USPTO
customer number, associate all of their pending and new application
filings with their customer number, install no-cost software (supplied
by the Office) required to access private PAIR and E-Patent Reference
feature, and make appropriate arrangements for Internet access. The
full instructions for obtaining a PKI digital certificate are available
at the Office's Electronic Business Center (EBC) web page at:
<http://www.uspto.gov/ebc/downloads.html>. Note that a
notarized signature will be required to obtain a digital certificate.
To get a Customer Number, download and complete the Customer Number
Request form, PTO- SB125, at:
http://www.uspto.gov/web/forms/sb0125.pdf. The completed
form can then be transmitted by facsimile to the Electronic Business
Center at (703) 308-2840, or mailed to the address on the form. If you
are a registered attorney or patent agent, then your registration
number must be associated with your customer number. This is
accomplished by adding your registration number to the Customer Number
Request form. A description of associating a customer number with an
application is described at the EBC web page at:
http://www.uspto.gov/ebc/registration_pair.html.
The E-Patent Reference feature will be accessed using a new
button on the private PAIR screen. Ordinarily all of the cited U.S.
patent and U.S. patent application publication references will be
available over the Internet using the Office's new E-Patent Reference
feature. The size of the references to be downloaded will be displayed
by E-Patent Reference so the download time can be estimated. Applicants
and registered practitioners can select to download all of the
references or any combination of cited references. Selected references
will be downloaded as complete documents as Adobe Portable Document
Format (.pdf) files. For a limited period of time, the USPTO will
include a copy of this notice with Office actions to encourage
applicants to use this new feature and, if needed, to take the steps
outlined above in order to be able to utilize this new feature during
the pilot and thereafter.
During the two-month pilot, the Office will evaluate the
stability and capacity of the E-Patent Reference feature to reliably
provide electronic access to cited U.S. patent and U.S. patent
application publication references. While copies of U.S. patent and
U.S. patent application publication references cited by examiners will
continue to be mailed with Office actions during the pilot project,
applicants are encouraged to use the private PAIR and the E-Patent
Reference feature to electronically access and download cited U.S.
patent and U.S. patent application publication references so the Office
will be able to objectively evaluate its performance. The public is
encouraged to submit comments to the Office on the usability and
performance of the E-Patent Reference feature during the pilot.
Further, during the pilot period registered practitioners, and
applicants not represented by a practitioner, are encouraged to
experiment with the feature, develop a proficiency in using the
feature, and establish new internal processes for using the new access
to the cited U.S. patents and U.S. patent application publications to
prepare for the anticipated cessation of the current Office practice of
supplying copies of such cited references. The Office plans to continue
to provide access to the E-Patent Reference feature during its
evaluation of the pilot.
Comments
Comments concerning the E-Patent Reference feature should be in
writing and directed to the Electronic Business Center (EBC) at the
USPTO by electronic mail at eReference@uspto.gov or by
facsimile to (703) 308-2840. Comments will be posted and made available
for public inspection. To ensure that comments are considered in the
evaluation of the pilot project, comments should be submitted in
writing by January 15, 2004.
Comments with respect to specific applications should be sent
to the Technology Centers' customer service centers. Comments
concerning digital certificates, customer numbers, and associating
customer numbers with applications should be sent to the Electronic
Business Center (EBC) at the USPTO by facsimile at (703) 308-2840 or by
e-mail at EBC@uspto.gov.
Implementation after Pilot
After the pilot, its evaluation, and publication of a
subsequent notice as indicated above, the Office expects to implement
its plan to cease mailing paper copies of U.S. patent references cited
during examination of non provisional applications on or after February
2, 2004; although copies of cited foreign patent documents, as well as
non-patent literature, will still be mailed to the applicant until such
time as substantially all applications have been scanned into IFW.
For Further Information Contact
Technical information on the operation of the IFW system can be
found on the USPTO website at
http://www.uspto.gov/web/patents/ifw/index.html. Comments concerning
the E-Patent Reference feature and questions concerning the operation
of the PAIR system should be directed to the EBC at the USPTO at (866)
217-9197. The EBC may also be contacted by facsimile at (703) 308-2840
or by e-mail at EBC@uspto.gov.
NICHOLAS P. GODICI
Commissioner for Patents