| Electronic Filing and Submission |
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(378) Department of Commerce
United States Patent and Trademark Office
37 CFR 1.182, 1.183
Electronic Filing System Available to Public
Agency: United States Patent and Trademark Office
Summary: The United States Patent and Trademark Office (USPTO or Office)
recently announced the availability of the Electronic Filing System
(EFS) to the public. A description of the system, its operation, and the
application of regulations to submissions under the EFS are presented.
For Further lnformation Contact: Jay Lucas at jay.lucas@uspto.gov.
Questions on the operation of the EFS system should be directed to the
SIRAI/EFS project primary contact, Ms. Diane Lewis at diane.
lewis@uspto.gov. Correspondence may also be addressed to Jay Lucas or
Diane Lewis, United States Patent and Trademark Office, Washington, D.C.
20231.
Description of the Electronic Filing System
The United States Patent and Trademark Office (USPTO or Office) has
recently announced that its Electronic Filing System (EFS) is available
to the general public for electronic filing. The software has completed
a successful pilot program involving patent application submissions from
law firms, companies, and independent inventors. Numerous changes to the
software have been made in response to their feedback.
In October 2000, the USPTO distributed a new production version of EFS
software. This software is used for three types of electronic
submissions: (1) new utility patent applications, (2) computer readable
form (CRF) of nucleotide and/or amino acid sequence listings, and (3)
copies of applications for Patent Application Publication. Applicants
using EFS will submit encrypted text and image files to the USPTO and
receive an immediate Acknowledgement Receipt that summarizes their
submission. If the submission is for a new application, it will enter
the normal examination process. Sequence listings will be stored and
processed. Resubmitted applications for 18-Month Publication will be
directed to the responsible Office division for Patent Application
Publication processing. Complete information on EFS is available on the
Patents Electronic Business Center Web Page, at the USPTO Website:
http:uspto.gov/ebc.
The EFS distribution includes two types of software packages: (1) word
processing templates to create an electronic specification, and (2) a
separate, stand-alone validation and transmission program called ePAVE.
The word processing templates, available in either Microsoft Word or
WordPerfect format, allow the user to create an eXtensible Markup
Language (XML) document with tags that identify the content of each
element of the specification. For example, one XML tag will identify the
title and a separate tag will identify the first claim. These tags will
be used to control the display of the specification in a standard
Internet browser form that can be processed by the USPTO.
The ePAVE program prompts the user to associate with a specification
file standard bibliographic data, payment information, and publication
information. The ePAVE program also allows the user to attach drawings,
a scanned declaration, a nucleotide and/or amino acid sequence listing,
and an assignment information sheet for new utility applications. ePAVE
then validates the information, displays it to the applicant, prompts
for an electronic signature, uses the applicant's digital signature to
encrypt the whole package, and transmits the submission to the USPTO.
Upon receipt, the Office sends to the applicant an "electronic post
card" Acknowledgement Receipt, itemizing the files received by the USPTO.
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As mentioned above, EFS will be used for three purposes: Utility Patent
Applications, Biotechnology Sequence Listings, and Patent Application
Publications.
Utility Patent Applications
Most non-provisional utility applications can be filed using EFS.
Certain types of patent applications, however, must be filed in paper
form since the necessary software templates for these submissions have
not yet been developed or for other reasons. For example, provisional
patent applications, design applications, secrecy order (national
security) applications, international applications, and plant patent
applications are not, as yet, acceptable for EFS. Detailed requirements
for submissions are contained in the documentation provided on the
Patents Electronic Business Center Web Page, at the USPTO Website:
http://www.uspto.,gov/ebc. Until the USPTO moves to full electronic
examination, utility applications filed using EFS will be printed on
paper. This paper copy will become part of the official application file
and be examined like any other application.
Biotechnology Sequence Listings
Applicants may submit the CRF of a sequence listing required by 37 CFR
1.821(e) for a previously submitted application (having an application
number) using EFS instead of the conventional means indicated in 37 CFR
1.824. Sequence listings can also be submitted with new patent
applications using EFS as described in the previous paragraph.
Patent Application Publications
The EFS software is also used for resubmission of utility patent
applications for publication (i.e., Domestic Publication of Patent
Applications Published Abroad under P.L. 106-113). Consult the new
regulations set forth in 37 CFR 1.211-1.221 for a full description of
publication of applications.
Ordinarily, the application, as filed, is used for the Eighteen-Month
Publication. However, if applicant desires the publication of
a) a redacted copy of an application under 37 CFR 1.217;
b) the application as amended under 37 CFR 1.215;
c) an application filed before, but pending on November 29, 2000
under 37 CFR 1.221 (voluntary publication); or
d) an application previously published under 37 CFR 1.211 (a
republication under 37 CFR 1.221)
then the application must be resubmitted in electronic form using EFS.
If applicant requests early publication under 37 CFR 1.219, then an
electronic copy may be submitted using EFS.
Detailed explanations of these procedures are available on the Patents
Electronic Business Center Web Page, at the USPTO Website:
http://www.uspto.gov/ebc.
Public Key Infrastructure Certificates
EFS, as well as the companion Patent Application Information Retrieval
system (PAIR), relies on Public Key Infrastructure (PKI) technology to
assure the confidentiality, authenticity, and integrity of
communications over the Internet. Applicants who intend to use EFS must
register to obtain a PKI certificate before using EFS. PKI registration
involves filing a paper authorization and receiving the EFS software
from the USPTO. The certification process generally takes a few days to
complete. A customer number will also be required for transacting
business with the USPTO. Procedures to receive PKI certificates and
customer numbers are fully described on the Patents Electronic Business
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Center Web Page, at the USPTO Website: http://www.uspto.gov/ebc.
Confirmation Numbers
In order to assure the publication of the proper specification with EFS
Patent Application Publication submissions, the USPTO is issuing
confirmation numbers for each specification. Once an application is in
condition for publication, a four-digit confirmation number is generated
and transmitted to the applicant. This confirmation number is used in
conjunction with the application number to identify a pending
specification. In EFS, when an applicant is submitting a replacement
specification for publication or republication, the applicant must enter
both the application number and the confirmation number in order to
submit the replacement specification. This procedure is necessary
because many applications will have identical filing dates and similar
application numbers; a typographical error could result in the
specification being placed in the wrong application. Confirmation
numbers for all applications pending in November 2000 will be generated
and mailed to applicants if they desire to have voluntary publication of
these applications.
Effect of Patent Regulations
Section 22 of title 35 of the United States Code expressly provides for
electronic filing of documents. However, because the current regulations
are directed almost exclusively to paper submissions, the regulations do
not speak to electronic submissions. To the extent that any USPTO
regulation is inconsistent with EFS, the regulation will be interpreted
in a manner to support EFS and waived, when necessary, until formal
regulations directed to electronic submissions are promulgated. See 37
CFR 1.182, 1.183. When the Office has more experience with
electronic submissions, formal regulations will be developed.
This waiver is consistent with the directives of current statutory
guidance, including the Government Paperwork Elimination Act, Title XVII
of Pub. L. 105-277, which in section 1707 states that government
electronic records are not to be denied legal force and effect solely
because they are in electronic form. The same section gives electronic
signatures similar effect.
Weekend and Holiday Hours of Operation
The USPTO will be open for receiving applications in electronic
form during scheduled hours every day of the week. Hours will
be announced on the Patents Electronic Business Center Web
Page, at the USPTO Website: http://www.uspto.gov/ebc.
Electronic filing will provide applicants with the opportunity to
receive a filing date on any day of the week, including Saturday,
Sunday, and Federal holidays. In addition, consistent with 35 USC 21
(b), when the last day for taking any action or paying any fee in the
USPTO falls on Saturday, Sunday, or a Federal holiday within the
District of Columbia, the action may be taken or fee paid on the next
succeeding secular or business day. Thus, under United States law,
applicants will still be permitted to take action on the next business
day when the last day for taking action falls on a weekend or Federal
holiday, regardless of the mode or form of filing.
Because the conditions for priority rights are governed by national law,
applicants are cautioned to consider possible adverse consequences
regarding the determination of priority periods under Article 4(C)(3) of
the Paris Convention when filing international applications in the
United States. Specifically, the ability to file applications
electronically on weekends may result in loss of priority rights in
foreign jurisdictions designated in international applications filed
with the USPTO, if applicants elect to take advantage of sections 21(b)
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and 119(e)(3) of title 35. In such circumstances, other Patent Offices
may deny the priority claim on the basis that the international
application was not timely filed according to their national law. For
this reason, applicants may prefer not to take advantage of sections
21(b) and 119(e)(3) of title 35 when filing international applications
with the USPTO.
STEPHEN G. KUNIN
Deputy Assistant Commissioner for
Patent Policy and Projects
[1240 OG 45]