(253) New Pilot Program for Submitting Documents
in Text Format in New Utility Patent Applications
I. Summary
The United States Patent and Trademark Office (USPTO) will be conducting
a pilot program from June 2018 through November 2018, referred to as the
Patent Center Text Pilot Program. Applicants participating in the alpha
release of Patent Center will be able to submit new utility nonprovisional
applications in text format by uploading and submitting a single DOCX file
that contains the specification, including claims and abstract. Submission
of these parts of the application in DOCX allows for certain errors to be
detected and corrected by applicant prior to filing of the application,
which will improve the data quality of the application. Applicants will
also be able to subsequently access the DOCX files for their future
convenience.
II. Background
In 2015, the USPTO began the eCommerce Modernization (eMod) Project
which aims to improve the electronic patent application process for patent
applicants by modernizing the USPTO's electronic filing and viewing
systems. As part of the eMod Project, a new system called Patent Center is
being developed and implemented in phases. Patent Center combines both
electronic filing and viewing features into a unified system. Patent Center
will eventually replace the current electronic filing system, EFS-Web, and
the current viewing system, Patent Application Information Retrieval
(PAIR). Patent Center provides many benefits including a single interface
for filing and managing patent applications, and increased functionality.
The alpha release of Patent Center began in March 2018 with a limited
number of participants.
The USPTO conducted an eMod Text Pilot Program in EFS-Web and Private
PAIR from August 2016 until September 2017, in which patent applicants
participating in the pilot program submitted text-based documents in DOCX
for the specification, including claims and abstract, of a new utility
nonprovisional application. Applicants in the pilot program submitted three
separate sections, namely (1) the specification excluding claims and
abstract, (2) claims, and (3) abstract, in DOCX, and the USPTO created the
corresponding PDF documents that were then submitted by applicant as part
of the application filing. Since September 2017, all registered users of
EFS-Web are able to submit a new utility nonprovisional application with
the specification, including claims and abstract, in three separate
sections in DOCX. Submission of the specification, including claims and
abstract, in DOCX allows for certain errors to be detected and corrected
prior to filing of the application, which will improve the data quality of
the application. Compared to uploading a PDF, a DOCX file allows for
content-based validation, such as claims validation for missing claim
numbering or abstract validation for word count and paragraph count.
Structured text, such as mathematical equations and tables, are preserved
which increases image and data quality. Document indexing is automatic
because the system is able to determine the proper document code based on
text patterns detected in the headings within the document. This helps
improve the accuracy of the document code assignments. In the future,
structured text will help build technical foundations to improve the
publication process.
A Quick Start Guide on filing documents in DOCX via EFS-Web (titled
"Quick Start Guide for Text Intake in EFS-Web") is available on the USPTO
website at https://www.uspto.gov/submitdocx.
The USPTO received feedback from users suggesting that applicants be
permitted to submit a single DOCX file that contains the specification,
including claims and abstract. Accordingly, the USPTO has decided to
conduct another pilot program, namely the Patent Center Text Pilot Program
to test this feature.
III. Details of the Patent Center Text Pilot Program
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The Patent Center Text Pilot Program is scheduled to run from June 2018
through November 2018. The Patent Center Text Pilot Program is being
incorporated into the alpha release of Patent Center and may be extended
into the beta release of Patent Center with or without further notice. The
USPTO may terminate the Patent Center Text Pilot Program at any time.
Uploading and Validation of DOCX file
Applicants participating in the alpha release (or the beta release, if
applicable) of Patent Center will be able to submit new utility
nonprovisional applications in DOCX by uploading and submitting a single
DOCX file that contains the specification, including claims and abstract,
in Patent Center. This will reduce the amount of work applicants need to do
in order to submit the specification, including claims and abstract, in
DOCX by eliminating the need for applicants to create three separate DOCX
files for each of the three sections with consecutive numbering throughout
the three files.
After the DOCX file is uploaded into Patent Center, the DOCX file will
be validated and, if there are no errors or warnings (discussed in the
above-mentioned Quick Start Guide), a corresponding PDF document will be
generated. Applicant would then review the PDF document for accuracy and to
confirm that the application is ready to be filed, and then complete the
filing of the application. If there are any errors or warnings, Patent
Center will inform the applicant in an auto-generated feedback document.
Applicant would need to correct any errors and would also have the
opportunity to make additional changes in view of any warnings. Once any
errors are corrected and any additional changes are made, applicant would
upload the revised DOCX file into Patent Center and, assuming no new errors
have been introduced, a corresponding PDF document will be generated.
Applicant should then review the PDF document for accuracy to confirm that
the application is ready to be filed. Applicant would then complete the
filing of the application by submitting all necessary fees and documents
including the single DOCX file and the corresponding PDF document in Patent
Center. The single DOCX file will be split into three separate DOCX files
(specification, claims, abstract) and the corresponding PDF documents will
be generated, which will be accessible for viewing in Patent Center by
applicant after filing of the application.
Waiver of Requirement for Consecutive Page Numbering
The USPTO has determined that it is not possible in this pilot program
to reliably maintain consecutive page numbering for the entire
specification. Current 37 CFR 1.52(b)(5), however, provides that, for
applications other than reissue applications, "the pages of the
specification including claims and abstract must be numbered consecutively,
starting with 1." Accordingly, for applications submitted via the Patent
Center Text Pilot Program, the USPTO is hereby waiving the requirement in
37 CFR 1.52(b)(5) that the pages of the specification, including claims and
abstract, be consecutively numbered starting with the number 1. The USPTO
will permit each of the three separate sections in the form of the three
separate PDF documents generated by the USPTO for the specification,
including claims and abstract, to start with page number 1, rather than
having consecutive page numbering extending throughout all three sections.
It is suggested that applicants should provide consecutive page numbering
in the single DOCX file even though that page numbering will not be
maintained in the three separate DOCX files and the corresponding PDF
documents generated by the USPTO.
Paragraph Numbering Requirement
Participants in the Patent Center Text Pilot Program are required to
number the paragraphs of the specification (other than the claims or
abstract) in accordance with the optional paragraph numbering format set
forth in 37 CFR 1.52(b)(6). This is necessary in order to facilitate the
making of amendments to the specification by replacement paragraph.
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Additional Information
The USPTO will gather data and feedback from participants in the Patent
Center Text Pilot Program and make a determination as to whether this
feature should be implemented on a permanent basis. Regardless of whether
this feature is made permanent, Patent Center will go into production after
the conclusion of the beta release.
IV. Contact Information
If you would like to participate in the alpha release of Patent Center
and the Patent Center Text Pilot Program, please send a request to
eMod@uspto.gov. The USPTO will contact you and provide you with additional
information regarding participation.
For further information regarding the eMod project, please see
https://www.uspto.gov/patent/initiatives/emod-ecommerce-modernization.
Questions or comments may be sent to eMod@uspto.gov or directed to the
Patent Electronic Business Center at 866-217-9197.
June 27, 2018 ANDREI IANCU
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1452 OG 278]