| General Information |
Referenced Items (94, 95, 96, 97, 98, 99, 100, 101, 102, 103, 104, 105, 106, 107, 108, 109, 110, 111, 112, 113, 114, 115) |
(100) Notice of Complex Work Unit Pilot Program
Request for Voluntary Submission of Electronic
Complex Work Unit Files
Issue
Applications containing complex work units such as chemical structures,
mathematical formulae, and tables often add significant complexity and cost
to the current processes for publishing patents and pre-grant patent
application publications. This is largely due to the fact that the
Office's publisher must take the complex work unit as filed in paper and
convert it to an electronic format that is appropriate for publication.
Further, especially in the realm of chemical structures, it is sometimes
necessary for the Office to recreate the complex work unit in order to
search relevant databases. Accordingly it would be desirable for the
Office to obtain an electronic version of any complex work unit that is in
a format compatible with Office electronic systems.
Background Information
Tables
In view of the processing problems caused by the submission of
applications containing paper or image versions of lengthy tables, the
Office continues to encourage applicants to submit lengthy tables on
compact disc (CD) in ASCII text as provided in 37 CFR 1.52(e) or via
EFS-Web as provided in the EFS-Web Legal Framework, as a part of the
specification as provided in 37 CFR 1.77(b)(5). However, the Office
continues to receive a significant number of patent applications that
include lengthy table information submitted only on paper. The Office has
an ongoing pilot program for patent document publishing purposes only
wherein, in response to an Office request, applicants may submit lengthy
tables in electronic formats other than ASCII text so the lengthy tables
can be posted on a separate repository (PSIPS) instead of being published
in the full text searchable databases. See Notice that Lengthy Tables will
be Published Differently in Patents, Statutory Invention Registrations and
Patent Application Publications And Notice of Pilot Program With Respect to
Lengthy Tables, 1282 O.G. 108 (2004).
Chemical and Three-Dimensional Biological Structure Data
The Office published an Advance Notice of Proposed Rule Making (ANPRM)
entitled "Acceptance, Processing, Use and Dissemination of Chemical and
Three-Dimensional Biological Structural Data in Electronic Format," 70 Fed.
Reg. 35571 (21 June 2005) seeking public comment on how best to provide the
capability to manage, process, search, and disseminate 3-D biological
structure data and chemical structure data as appropriate. In addition to
general background information, the ANPRM provided background information
specific to 3-D protein crystal data and chemical structure data. In
particular, an effort was made to familiarize the public with standards and
tools that are currently available to provide a frame of reference.
The USPTO anticipates that submission of chemical and 3-D biological
structural data in electronic format in patent applications will improve
the processing and examination of patent applications that include such
data, as well as the publication of such data. Public comments in response
to the ANPRM with regard to 3-D protein structure data were generally
favorable, with most respondents favoring requiring electronic submission
of such data, as it would benefit both the public and the Office without
placing an undue burden on applicants, because most structures were already
stored in electronic form. While public comments were mixed with regard to
requiring the submission of chemical structures in electronic form, the
respondents acknowledged that chemical structures appearing in patent
applications are usually drawn using either free or commercially available
software, and thus are created and stored in electronic form.
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EFS-Web
With the upgrade to EFS-Web 1.1, the Office is now able to accept text
files as part of a patent application submission. Text-based formats are
currently available for several of the types of complex work units
frequently submitted by applicants. For example, chemical structure
information can be created or saved as IUPAC International Chemical
Identifier (InChI(TM)) files; mathematical equations can be created or saved
using the Mathematical Markup Language (MathML); and three-dimensional
protein crystalline structures can be created or saved using the
text-based, Protein Data bank (PDB)-compliant format. InChI(TM), MathML, and
PDB formats are all comprised of ASCII text strings. As an added benefit,
the worldwide PDB has indicated a willingness to start a pilot program to
accept, store, and disseminate information from published patent
applications which have been received by the USPTO in PDB format, a format
commonly used by practitioners in this art.
Compact Disc (CD) Submissions
With the advent of the Supplemental Complex Repository for Examiners
(SCORE) system, the Office is able to receive files in ASCII text through
EFS-Web, or in a wide variety of format types via compact disc (CD)
submission, and make these files available to examiners through the
Electronic Desktop Application Navigator (eDAN) and to practitioners and
the public through a link in the Patent Application Information Retrieval
(PAIR) system. However, the Office has not yet determined which file
formats would improve the efficiency of the publication and/or examination
processes.
Pilot to Accept Electronic Copies of Complex Work Units
Beginning the date of the publication of this notice in the Official
Gazette, the Office will begin a pilot program to accept voluntary
submission of tables, chemical structures, three-dimensional protein
crystalline structures and mathematical formulae recorded in electronic
formats not compliant with 37 CFR 1.52(e) on CD as a supplement to (not as
a replacement of) submission of these complex work units on paper or as a
PDF file via EFS-Web.
Effective immediately, applicants may and are encouraged to
electronically submit text documents in InChI(TM), MathML, and PDB formats
via EFS-Web as separate text files as a supplement to (not as a replacement
of) submission of these complex work units as a PDF filed via EFS-Web.
Pilot Program Requirements:
* The patent application submitted on paper or as a PDF file via EFS-Web
must include therein at least one complex work unit, i.e., at least
one table, chemical structure, three-dimensional protein crystalline
structure, or mathematical formula.
* Any CD or text file submitted in accordance with this pilot must be
accompanied by a statement that the complex work unit file submitted
in electronic form is the same as the file used to create the image of
the complex work unit submitted as part of the paper patent
application or PDF format patent application filed via EFS-Web. In the
event of any discrepancy between the paper or PDF and the electronic
version of a complex work unit, the paper or PDF version is the
authoritative version.
* Each CD must be labeled "CWU Pilot" and only one copy of each CD is
required. Each file must be labeled in accordance with the
instructions given on the USPTO web site at:
http://www.uspto.gov/web/patents/cwupilot.html. The requirements of 37
CFR 1.52(e) are hereby waived to the extent that they are inconsistent
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with the complex work unit pilot program requirements.
Duration and Results of Pilot Program
The pilot program is scheduled to run for six months. After the
completion of the pilot the Office will evaluate the findings of the pilot
and make a determination as to whether or not to (1) implement procedural
changes based on the findings of the pilot program or (2) extend the pilot
program for an additional length of time.
Exclusions from Pilot - Computer Program Listings, Sequence Listings,
Tables in ASCII Format, International Applications
Computer Program Listings, Sequence Listings, or tables in ASCII format
must be submitted on a separate set of CDs and comply with 37 CFR 1.52(e)
or must be submitted in accordance with the EFS-Web Legal Framework.
In addition, international applications filed under the Patent
Cooperation Treaty (PCT) are excluded from this pilot program. Thus, PCT
applicants may not file complex work units on CD as a supplement to a
patent application filed either on paper or via EFS-Web. Furthermore,
applicants may not file text documents in InChI(TM), MathML, or PDB
formats via EFS-Web in international applications filed under the PCT.
Effect on Calculation of Application Size Fee
The application size fee set out in 35 U.S.C. 41(a)(1)(G) applies to any
application the specification and drawings of which exceed 100 sheets of
paper.1 However, electronic files submitted in accordance with this pilot
are the source code for the complex work units that are included in the
specification or drawings and thus are not considered to be a part of the
specification or drawings. Accordingly, the following documents, when
submitted in accordance with this pilot, will not be included for purposes
of determining the application size fee:2 tables, chemical structures,
three-dimensional protein crystalline structures and mathematical formulae
recorded on CD in electronic formats not compliant with 37 CFR 1.52(e); and
chemical structures, mathematical formulae, or protein crystalline
structures expressed as a text document in InChI(TM), MathML, or PDB
format and submitted via EFS-Web.
Further Legal Consideration
Currently, 37 CFR 1.52(e) only allows an applicant to file Computer
Program Listings, Sequence Listings, or tables on compact disc (with a
duplicate compact disc) in ASCII format. Accordingly, for purposes of this
pilot program, the Office hereby waives the requirements of 37 CFR 1.52(e)
to the extent required to allow applicants to submit chemical structures,
mathematical equations, three-dimensional protein crystalline structures,
and tables not in compliance with 37 CFR 1.52(e) in electronic format on
compact disc as a supplement to a paper copy of a patent application or a
PDF copy of a patent application filed via EFS-Web.
Information obtained during the pilot will allow the Office to determine
the feasibility of accepting and using chemical structures, tables,
mathematical equations, and three-dimensional protein crystalline
structures in specific electronic formats. Upon successful completion of
the pilot, the Office will assess the desirability of proposing rules
pertaining to the submission of chemical structures, tables, mathematical
equations, and three-dimensional protein crystalline structures in
electronic formats that are most useful to the Office (analogous to the
current nucleic acid and amino acid sequence rules).
Detailed Information
More detailed information pertaining to this pilot is posted on the
USPTO web site at: http://www.uspto.gov/web/patents/cwupilot.html. This
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page includes links to the ANPRM and OG notices referenced above, a
detailed description of InChI(TM), MathML, and PDB formats, an explanation of
the file formats currently used in the publication process, preferred
naming conventions for the electronic files, and answers to frequently
asked questions.
Contact Information
Questions regarding this notice may be directed to Lisa Titcomb, CWU
Pilot Program Manager, by phone at (571) 272-5723 or by e-mail at
lisa.titcomb@uspto.gov.
1 Any sequence listing or computer program listing filed in electronic
medium is excluded from this calculation.
2 The application size fee is codified in the Code of Federal Regulations
at 37 CFR 1.16(s).
April 14, 2008 JON W. DUDAS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1330 OG 49]