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(136) Applicants Cautioned to File Applications on
Papers that Comply With Sheet Size/Margin and
Quality Requirements of 37 CFR 1.52 and 1.84(f) and (g).
Summary: If an application-as-filed does not meet the sheet size/margin
and quality requirements of 37 CFR 1.52 and 1.84(f) and (g), certified
copies of such application may be illegible and/or ineffective as
priority documents.
Discussion: The Patent and Trademark Office (PTO) amended 37 CFR 1.52
and 1.84 in September of 1996 so that application and
application-related papers (application papers) filed in the PTO would
be of a paper size/margin and quality to permit the PTO to produce
reliable electronic records by image and optical character recognition
(OCR) scanning the application papers. See Miscellaneous Changes in
Patent Practice, Final Rule Notice, 61 Fed. Reg. 42790 (August 19,
1996), 1190 Off. Gaz. Pat. Office 67 (September 17, 1996). The PTO,
however, still receives a significant number of applications containing
papers that do not meet the sheet size/margin and quality requirements
of 37 CFR 1.52 and 1.84(f) and (g).
Adverse effect of filing an application on papers that do not comply
with 37 CFR 1.52 and 1.84(f) and (g) on the quality of any certified
copy of the application:
The PTO will not deny a filing date to an application simply because it
is filed on papers that do not comply with the requirements of 37 CFR
1.52 and 1.84(f) and (g).
When an applicant requests that the PTO provide a certified copy of an
application-as-filed and pays the fee set forth in 37 CFR 1.19(b)(1),
the PTO will make a copy of the application-as-filed from the records in
the PICS (or microfilm) database. If papers submitted in the
application-as-filed are not legible, certified copies of the
application as originally filed will not be legible. In addition, if
exception processing (discussed below) is required to make the PICS
copy, certified copies of the application as originally filed may not be
legible.
If papers submitted in the application-as-filed (including any
transmittal letter or cover sheet) do not meet the sheet size
requirement of 37 CFR 1.52 and 1.84(f) (e.g., the papers are legal size
(8 1/2 by 14 inches)), the PTO must reduce such papers to be able to
image-scan the entire application and record it in the PICS database. In
addition, if papers submitted in the application-as-filed do not meet
the quality requirements of 37 CFR 1.52 (e.g., the papers are shiny or
non-white), the PTO will attempt to enhance such papers before scanning
(discussed below) to make the resulting electronic record in the PICS
database more readable.
If application papers are filed that do not meet sheet size/margin and
quality requirements, the PTO will require the applicant to file
substitute papers that do comply with the requirements of 37 CFR 1.52
and 1.84(f) and (g). The substitute papers submitted in reply to the
above-mentioned requirement will provide the PTO with an image- and
OCR-scannable copy of the application for printing the application as a
patent. The PTO, however, will NOT treat application papers submitted
after the filing date of an application (e.g., a later filed oath or
declaration, a translation filed under 37 CFR 1.52(d), or substitute
papers submitted in reply to a requirement to comply with 37 CFR 1.52)
as the original disclosure of the application for making a certified
copy of the application-as-filed or any other purpose. That is, even if
an applicant subsequently files substitute application papers that
comply with 37 CFR 1.52 and then requests that the PTO provide a
certified copy of an application-as-filed, paying the fee set forth in
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37 CFR 1.19(b)(1), the PTO will still make a copy of the
application-as-filed from the records in the PICS (or microfilm)
database, and this database will not include the subsequently filed
substitute papers in compliance with 37 CFR 1.52 and 1.84(f) and (g).
If the certified copy of an application produced from the PTO's PICS (or
microfilm) database is illegible, the applicant may pay the fee set
forth in 37 CFR 1.19(b)(2) (currently $150.00) and request that the PTO
obtain the application file and produce a certified copy of the
application by photocopying the application-as-filed as contained in the
application file. The special handling required to produce a certified
copy of the application from the papers in the application file will
also cause a delay in when a certified copy is available.
Recurring situations in which application papers cause problems
during scanning of an application:
The PTO performs exception processing when scanning application papers
that do not comply with sheet size/margin and quality requirements. As
the PTO uses high-quality scanning equipment, the PTO is often (through
exception processing) able to make a readable electronic image record of
an application even when the application papers do not comply with these
requirements. Nevertheless, even if PTO is able to make a readable
electronic image record of such an application, this exception
processing is a burden on the PTO and delays the initial processing (and
thus examination) of the application.
The following is a list of recurring situations in which application
papers cause problems when the papers are scanned to make an electronic
record in the PICS database:
(1) Applications are filed with legal size (8 1/2 by 14) papers and/or
oversized (blueprint) drawings. The PTO can scan the papers to make an
electronic record in the PICS database, but the resulting images as
recorded in the PICS database are reduced.
(2) Applications are filed on shiny, non-white (background) paper, or
flimsy paper, on papers having slips or stickers, or on papers that are
otherwise illegible to an image-scanning equipment. The PTO must
photocopy the application papers and scan the photocopy to make an
electronic record in the PICS database.
(3) Applications are filed with writing on both sides of the sheets of
paper. The PTO must photocopy the application papers so that the writing
is on only one side of the sheet of paper and scan the photocopy to make
an electronic record in the PICS database.
(4) Applications are filed with unmounted photographs. The PTO must
photocopy the photographs and scan the photocopies to make an electronic
record in the PICS database.
(5) Applications are filed with two-columned specifications, or with
non-block fonts. The PTO can image-scan the papers to make an electronic
record in the PICS database, but the resulting images cannot be
converted into text by OCR conversion.
(6) Applications are filed with papers having incorrect margin sizes.
During office processing of the application, a sticker with the filing
date of the application is placed in the left margin of the papers and
the application number is printed on the left margin of each page that
is scanned. Furthermore, holes are made in the top margins of the
application papers so that the papers can be affixed to the application
file. As a result, any text removed or obstructed before or during the
scanning process will no longer be legible in the application.
(7) Applications, particularly provisional applications, are filed with
papers that are glued or bound together. The PTO must separate the
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papers to scan the pages, which sometimes damages the pages, or
photocopy the bound document, and then scan the photocopy to make an
electronic record in the PICS database.
Questions concerning this notice should be forwarded to Karin L. Tyson,
Senior Legal Advisor, by telephone at (703) 305-9285, by facsimile at
(703) 308-6916, or by e-mail at karin.tyson@uspto.gov.
November 3, 1998 STEPHEN G. KUNIN
Deputy Assistant Commissioner for
Patent Policy and Projects
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