United States Patent and Trademark Office OG Notices: 17 December 2002
USPTO Announces Prototype of Image Processing The United States Patent and Trademark Office (USPTO or Office) is pleased to announce that a prototype of electronic image processing of patent applications will commence in December, 2002. Three art units in Technology Centers 1600 and 2800 will participate in this prototype, as well as sections of the Office of Initial Patent Examination (OIPE) and other related processing divisions. PROTOTYPE DESCRIPTION This prototype program will test the use of image technology to replace the standard paper processing of patent applications currently used in the USPTO. The paper document contents (including the specification, oath or declaration, drawings, information disclosure statements, amendments, Office actions, and file jacket notations) of pending applications assigned to the three participating art units will be scanned into electronic image files. All processing and examination will be performed with the image files, instead of the paper source documents, by the examiners, technical support staff and all other USPTO professional staff during the prototype. The prototype will not affect applicants during the patent application submission process. Some changes in amendment practice will be requested from applicants on a voluntary basis in making replies to applications assigned to the affected art units (please see details in the WAIVER section below). Upon commencement of the prototype, the Office will request amendments in a special format in all pending applications assigned to the three participating art units. The request will be included in an information sheet attached to all Office actions mailed by the three participating art units during the prototype, and also included in a separate notice. In addition to the changes to the amendment process, applicants in the participating art units will not be sent paper copies of US patent and published application references. The information sheet attached to each office action will guide applicants to receive electronic copies of US patent and published application references cited by the Office. These cited references will be available from the USPTO web site. Paper copies of the references will be available on request. Cited foreign patents, foreign published applications and non-patent literature will be mailed in conventional paper form. The technology and procedures for the prototype program are similar to those used at the European Patent Office, but adapted to the legal requirements and existing computer systems of the USPTO. The Office intends to incorporate the experience and lessons learned from this prototype program into a production system for all patent applications in the near future. Business processes used during the prototype program will be analyzed and modified as needed for the production system. New utility applications and pending applications in the participating art units will be processed during the prototype program in electronic image format. The paper documents that are the source of the image files will be separately maintained and constitute the official files at the USPTO. The official paper file will be used by parts of the Office not participating in the prototype program (e.g. the Board of Patent Appeals and Interferences.) It is expected that the prototype program will incrementally migrate into a production system, with the goal of eliminating paper patent applications in the near future. WAIVER 37 CFR 1.121 requires that amendments to the specification and claims be provided as a clean copy of the replacement paragraphs, sections or claims and be accompanied by a marked up copy of the paragraphs, sections or claims showing the changes made to the original specification or section, or to the prior version of the amended claim, by the amendments. The USPTO, however, would prefer that applicants use a special amendment process on a voluntary basis for applications assigned to the three participating art units. The requirements of 37 CFR 1.121 will be waived for applications assigned to the three participating art units, provided that applicant follows the instructions for amendments that will be included in all Office actions issued in applications assigned to the three participating art units (also posted on the USPTO web site (www.uspto.gov)). In general terms, those instructions will provide for a new complete claim set with changes marked in strikeouts (for deletions) and underlining (for additions) for each amendment. While claims that are not amended would be submitted as part of the claim set, no clean copy of the claims that were amended would be necessary. Amendments to paragraphs or sections of the specification will continue to follow the requirements of 37 CFR 1.121, to include a clean version in addition to the marked-up version. We welcome your comments on the prototype of image electronic processing of patent applications. For further information on the prototype, please contact the Search and Information Resources Administration at: image.processing@uspto.gov. For information on the waiver or legal aspects of the prototype, please contact Jay Lucas (jay.lucas@uspto.gov), Rob Clarke (Robert.clarke@uspto.gov) or Joseph Narcavage (Joseph.Narcavage@uspto.gov). STEPHEN G. KUNIN Deputy Commissioner for Patent Examination Policy