United States Patent and Trademark Office OG Notices: 17 June 2003
Notification of United States Patent and
Trademark Office Patent Application Records
being Stored and Processed in Electronic Form
Summary
All patent application related papers received by or mailed
from the United States Patent and Trademark Office (USPTO or Office)
will be date stamped, indexed, scanned into electronic image form, and
loaded into the USPTO's new image storage, retrieval and messaging
system called ePhoenix. All processing of the patent applications will
be performed on the electronic file and will constitute the official
file for all purposes.
Background
The USPTO is installing an electronic image capture system to
replace the standard paper processing of patent applications. The file
history (including the specification, oath or declaration, drawings,
references, amendments, Office actions, foreign and non-patent
literature and file jacket notations) of pending patent applications
will be electronically scanned and loaded into ePhoenix. All processing
and examination will be performed by the examiners, technical support
staff, and any other USPTO staff or contractors using the ePhoenix
system.
To pilot the ePhoenix system and gain experience in working with
automated files and processes, a prototype has been operating in three
selected Art Units (1634, 2827 and 2834) since November 2002. The
Office has scanned into ePhoenix thousands of new and amended
applications for those Art Units. Technical support staff have
successfully processed the applications in preparation for examination.
Examiners have examined the applications using electronic images of the
file. The patent publishing contractor has received the completed
examination file history in electronic form to publish issued patents.
During the prototype period, all of the original paper copies
constituting the official electronic files have been maintained at the
USPTO, unavailable to the Technology Centers for the normal course of
business, but retrievable if needed. These paper copies remained the
"official copies" of the applications in the prototype (i.e. they
constitute the records that are scheduled by the Office, under the
direction of the National Archives and Records Administration, for
retention as the official records of the Office).
After the prototype period concludes, the electronic images used during
the prototype will undergo a quality control regimen and upon
successful completion, will be designated as the official electronic
records. They will then be merged with the electronic records generated
as part of the production scanning process for the rest of the Office.
The paper formerly official copies will be re-scheduled as source
scanned paper copies, and treated as noted below.
Official Electronic Records
The advantages of having electronic records established and
maintained in a standard industry electronic format are readily
apparent. For example: applications can be viewed by multiple employees
at various locations within the Office and by the public; backup and
recovery of lost files can be assured; and parallel processing of
applications can be performed by USPTO employees in different locations
at the same time.
The advantages to the public are evident: electronic public records
made available via the Internet can be viewed on computer terminals
anywhere in the world. Confidential records can be reviewed by the
respective applicants and attorneys over secure Internet links, so
documents that have been submitted can be seen, printed and validated.
Documents submitted in paper can be checked for completeness, and
documents submitted electronically can be fully reviewed, to help
applicants learn to trust electronic submission systems.
The USPTO will rely on the image records stored in ePhoenix as official
records. All paper records of pending files, or newly received
applications after June 30, 2003, will be processed into the ePhoenix
system. Processing steps include: 1) Indexing each paper document by
type of document; 2) Scanning a batch of the paper documents, separated
by separator sheets, into images; 3) Performing quality control on the
files of scanned images; 4) Loading the files of scanned images into
the ePhoenix system; 5) Placing the scanned paper documents into boxes
for storage.
After this process, Office employees and applicants will view and use
the electronic records in ePhoenix for prosecuting the application.
Electronic records will be used and accepted as the official records of
the USPTO.
After scanning, the paper scanned source copies will be boxed in
accordance with their date of scanning by the Office, and maintained by
the USPTO in nearby storage for at least two months, allowing
sufficient time for review of the electronic copy by a USPTO employee
in the normal course of business. Thereafter, the paper scanned source
copies will still be available in off-site warehouses, but with a
longer retrieval time (e.g. 2-3 days). The system will maintain the box
number and location of the source scanned paper copy for each record to
ensure prompt retrieval when necessary.
Authority for Electronic Records
Congress has mandated "the Director to develop a
user-friendly electronic system for the filing and processing patent
and trademark applications. This electronic system must also allow
examiners and applicants to send all communications electronically, and
should allow the PTO to process, maintain, and search electronically
the contents and history of each application." (see Pub.
L. No. 107-273, 13103(a), 116 Stat. 1758, 1899 (2002)). The ePhoenix
system described in this notice comprises part of the automation
initiatives presented by the Office in response to this directive.
Making Electronic Records Official
To make electronic records official, Office systems must (a)
satisfy the requirements of OMB Circular No A-130, especially the
standards for Records Management and (b) satisfy both the requirements
of the Government Paperwork Elimination Act (GPEA-Pub. L. No. 105-277,
Title XVII), 44 USC 3105 and 36 C.F.R. 1234 - Standards for the
Creation, Use, Preservation, and Disposition of Electronic Records.
The Office 1) has thoroughly reviewed the electronic records management
procedures involving all the steps in the conversion of the paper
received, generated, or sent by the Office; and 2) generated a request
pursuant to 36 CFR 1234.10 for submission to the National Archives
and Records Administration (NARA) to have USPTO electronic files
rescheduled as official records.
In anticipation of this process, the USPTO developed a Technical
Standard and Guideline (TSG) for Electronic Records Management
(TSG-ERM). The TSG-ERM includes a compilation in one
detailed checklist of all requirements of the records management
sections of OMB Circular A- 130, of the GPEA, and of 36 C.F.R. 1234.
The TSG-ERM is available at
http://www.uspto.gov/web/patents/ifw/index.html. Each of the
requirements of the TSG-ERM was evaluated and applied to the
installed parts of the ePhoenix system, with itemized descriptions of
how the requirements were satisfied. The results of this analysis were
published as the ePhoenix ERM Compliance Paper, which is
also available at the ePhoenix web site
http://www.uspto.gov/web/patents/ifw/index.html. The ERM
Compliance Paper, which includes quality control and quality
assurance methodologies, satisfies the requirements of A-130 and 36
C.F.R. 1234. The Office will ensure that the electronic records are
generated and stored in a secure system, and that controls are followed
to ensure the integrity of the records.
In a parallel effort, at the request of NARA the Office prepared a Data
Location Document that identifies the automated information system
(AIS) that stores each of the electronic parts of the set of records
that constitute the electronic file. Currently, almost all of the
records are maintained on the ePhoenix system itself, with a few data
elements maintained on the Office financial system (RAM). In the
future, if a more sophisticated file structure using other formats is
adopted, the Data Location Document will be revised. The Data Location
Document is available at
http://www.uspto.gov/web/patents/ifw/index.html.
The USPTO's request to NARA seeking to have its electronic files
rescheduled as official records was prepared based on the contents of
the Data Location Document.
The International Context
The USPTO operates both as a national office administering the
U.S. patent laws, and under the Patent Cooperation Treaty (PCT) as a
Receiving Office (RO), International Search and Examination Authority
and National Office.
Electronic patent files (records) at the USPTO comply with the relevant
provisions concerning electronic records under the Patent Cooperation
Treaty. The regulations of the Patent Cooperation Treaty (PCT) were
amended in October 2001 to include Rule 89bis.1, which reads
in part: "International applications may . . . be filed and processed
in electronic form or by electronic means, in accordance with the
Administrative Instructions, provided that any receiving Office shall
permit the filing of international applications on
paper."i
The USPTO's electronic records will be maintained in accordance with
the standards indicated in the PCT Administrative Instructions. The
internal automated systems of the World Intellectual Property
Organization are of the same general design, facilitating the future
transfer of applications under the PCT to and from the International
Bureau in an efficient all-electronic manner.
Time Schedule
On June 30, 2003, or soon thereafter when the system meets the
Office's quality control and quality assurance standards, records in
the ePhoenix system will become the official records of the USPTO. Any
paper records subsequently received, scanned and entered into the
ePhoenix system will become official records, and the paper originals
will be treated as source scanned copies. All new national applications
(except special situations, such as applications under secrecy order)
filed after the date of record rescheduling will be stored
electronically regardless of whether they are filed on paper or by the
Electronic Filing System (EFS).
Between December 2003 and May 2005, the Office plans to physically move
its principal office to Alexandria, Virginia. During this transition
period, those employees and contractors who process the patent
applications will have to share applications across the two sites. The
Office goal is to capture in ePhoenix as many of the 600,000 pending
patent applications as possible so that all employees can access the
files from their respective locations.
Thus the USPTO's move schedule sets a time goal for the scanning of the
patent applications in order to avoid transporting paper files back and
forth between the two sites. Ideally, the Office seeks to have each
Technology Center's records fully electronic in advance of its move, in
order to minimize the amount of paper that must be transported to the
new site.
Quality of Electronic Records
To assure that the records of the Office are admissible, the
records will undergo a regimen of quality control and quality assurance
procedures. These procedures were developed in consultation with ERM
specialists from the industry, and are compatible with those procedures
generally used in government and commercial enterprises that convert
their paper records to electronic form. Maintenance procedures, page
counting and statistical sampling methods, as well as strong quality
assurance procedures, are all used to keep the records at the level of
quality recommended by Electronic Image Management (EIM) standards as
defined in ANSI/AIIM TR34-1996ii. These quality control
procedures can be summarized as follows:
First, the completeness of each document is assured by a double
counting system; the incoming documents are manually counted in the
indexing process that takes place prior to the scanning process, and
then a scanner automatically checks that the number of pages scanned
conforms to the number of pages indexed. The scanning machinery checks
for misfed papers, the most common source of machine error. Second,
quality is assured by pre-calibration of the scanning equipment before
each 8-hour shift. Finally, a scientific sampling of the scanned images
is made, and the selected documents are hand verified. This check is
made each day before the images are uploaded into ePhoenix. The number
of images sampled is determined in accordance with standards
established in ANSI/AIIM, Sampling Procedures for Inspection by
Attributes of Images in Electronic Image Management and Micrographic
Systems (ANSI/AIIM TR34-1996).
Quality assurance is based on a user-feedback mechanism. In the normal
course of business, the users who first view the application after
scanning are made aware of their processing just after the scanning
operation, and will check that the pages have been scanned. Usually,
with a new application, this responsibility will rest with a
formalities examiner in the Office of Initial Patent Examination. With
amendments, the Legal Instruments Examiners of the Technology Center
may be the first users. Whoever the users are, they are alerted to
check for problem scans, and given electronic capability to report bad
scans to a central location. A designated office (currently the Office
of Initial Patent Examination) receives these reports, and investigates
the causes of the problem. If a pattern of defects can be noted, the
designated office is charged with fixing the root cause of the defects.
Submitted Paper Copies
After being scanned, the paper copies of the documents are no
longer official records. The imaged patent application documents are
the records used in the regular course of business by the Office to
process and examine the patent applications. The Office can use the
paper source scanned copy for comparison purposes in the rare
circumstance where a question arises concerning the electronic image.
During the early phases of the ePhoenix system deployment, the paper
source scanned copies will be retained. However, after the system has
been thoroughly tested, the Office ultimately plans to destroy the
paper copies under a NARA-approved record schedule. After the schedule
is approved, at the end of the retention period authorized by the
schedule, the paper copies will be destroyed.
The Office has proposed to amend 37 C.F.R. 1.14 (b) to limit access
to the paper source scanned copies to situations where comparison with
the original paper is needed, or where ordered by a court. See
Changes to Implement Electronic Maintenance of Official Patent
Application Records, 68 Fed. Reg. 14365, 14374-76 (Mar. 25, 2003).
Ordinarily, access to the paper source scanned copies will not be
permitted or required.
Eventually, the paper source scanned copies will be transported in
their boxes to the USPTO Records Center for longer-term storage, and
ultimately destroyed according to an authorized NARA retention
schedule. Historical documents, or those determined by the Director to
be of sufficient significance to be retained, may be transferred to
archives of the National Archives and Records Administration.
FOR FURTHER INFORMATION CONTACT:
Technical information on the operation of the ePhoenix system
can be found on the USPTO website at
http://www.uspto.gov/web/patents/ifw/index.html. Questions concerning
the conversion of USPTO records to electronic records in the ePhoenix
system can be submitted to Jay Lucas by e-mail at
Jay.Lucas@uspto.gov or by telephone at (703) 308-6868.
Comments may also be submitted by mail addressed to: Commissioner for
Patents, Box Comments - Patents, Post Office Box 1450, Alexandria, VA
22313-1450, or by facsimile to (703) 305-2919, marked to the attention
of Jay Lucas.
STEPHEN G. KUNIN
Deputy Commissioner for
Patent Examination Policy
i Proposed changes to the Administrative Instructions
of the PCT will, when promulgated, permit the storage and transmittal
of the international applications in electronic form, even when they
were submitted in paper form and were converted to electronic form by
the receiving Office.
ii AIIM TR34-1996, "Sampling Procedures for
Inspection by Attributes of Images in Electronic Image Management (EIM)
and Micrographic Systems." Silver Spring, MD: Association for
Information and Image Management, 1996.