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(363) USPTO to Cease Supplying Paper Copies of
Cited WO Document References in International Applications
In support of its 21st Century Strategic Plan goal of increased patent
e-Government, the United States Patent and Trademark Office (Office or
USPTO) ceased the mailing of cited U.S. patents and U.S. patent application
publications in national Office actions and in International Search Reports
(ISRs), Written Opinions (WOs) and International Preliminary Examination
Reports (IPERs) prepared by the Office in international applications under
the Patent Cooperation Treaty (PCT) in June 2004 and July 2007,
respectively. In continued support of that goal, the USPTO will cease the
mailing of copies of published PCT applications (WO document citations) in
ISRs, WOs and IPERs prepared by the Office.
The Office estimates a savings of approximately $125,000 annually
through this initiative and expects an increase in the timely issuance of
ISRs and WOs in international applications where the Office acts as the
International Searching Authority.
Prior to June 2004, the USPTO provided paper copies of all cited
references with Office actions in national patent applications and with
ISRs, WOs and IPERs prepared by the Office in international applications
under the PCT.
In June 2004, the USPTO began the phase-in of its E-Patent Reference
program by: (1) providing downloading capability of the U.S. patents and
U.S. patent application publications cited in Office actions via the
E-Patent Reference feature of the Office's Patent Application Information
Retrieval (PAIR) system; and (2) ceasing to mail paper copies of cited U.S.
patents and U.S. patent application publications with office actions. A
otice announcing these changes was published in the Official Gazette. See
USPTO to Provide Electronic Access to Cited U.S. Patent References with
Office Actions and Cease Supplying Paper Copies, 1282 Off. Gaz. Pat. Office
109 (May 18, 2004). The same notice also announced an exception, with
respect to item (2), for citations made during the international stage of
an international application under the PCT.
In July 2007, the USPTO removed the exception for citations made during
the international stage of an international application under the PCT. A
notice announcing this change was published in the Official Gazette. See
USPTO to Cease Supplying Paper Copies of Cited U.S. Patent References in
International Applications (July 03, 2007).
Effective upon publication of this notice in the Official Gazette, the
USPTO will no longer mail paper copies of published PCT applications (WO
document citations) in international applications. Applicants may obtain
copies of cited published PCT applications from the Internet Web site of
the World Intellectual Property Organization (http://patentscope.wipo.int)
and/or from commercial sources. The USPTO will continue the practice of
supplying paper copies of other foreign patent documents and non-patent
literature with International Search Reports, Written Opinions and
International Preliminary Examination Reports prepared by the Office.
Questions about this notice may be directed to Michael Neas, Supervisory
PCT Legal Examiner, Office of PCT Legal Administration (OPCTLA), at
michael.neas@uspto.gov.
October 2, 2013 MARGARET A. FOCARINO
Commissioner for Patents
United States Patent and Trademark Office
[1395 OG 335]
Top of Notices (363) December 27, 2016