Comments Related Electronic Submission of Applications for

Public Comments Resulting From:
Notice of Request for Comments on Development of a Plan To Remove the Patent and Trademark Classified Paper Files From the Public Search Facilities
66 FR 45012, August 27, 2001, Reopened for Comment 66 FR 50619, October 4, 2001
NOTE: All comments were scanned from paper documents whether e-mail, mail, fax or hand-delivered. Personal home addresses, USPTO e-mail header information, and fax/copier information have been removed. Comments were extracted from the original and are viewable from the links below. Click on the "Original Document" button to open a new window and view the original. Comments are listed in the order they were processed.

COMMENT NAME AFFILIATION
1 David Giglio Attorney
2 Stephen Trattner Trattner & Associates
3 Steven Gardner Kilpatrick Stockton LLP
4 Michael O'Flaherty Olsson, Frank, and Weeda, PC
5 Dave Testardi Attorney & Searcher
6 Nils Victor Montan INTA
7 Gerald O'Brien Jones, Tullar & Cooper, PC
8 Charlotte Kraebel Attorney
9 Paul Kilmer, Carol Matthews, Thomas Brooke Holland & Knight LLP
10 Catherine Collins, Daniel Van Dyke, Terence J. Linn, Matthew L. Goska, Timothy A. Flory Van Dyke, Gardner, Linn & Burkhart, LLP
11 Daphne Hammond Trademark Office Public User Society
12 Earl Major Public Searcher
13 Melanie Villanueva Public Searcher
14 Victor Manos Public Searcher
15 Robert Lev Public Searcher
16 James Harvey Public Searcher
17 Fred Malek Public Searcher
18 Daniel Bliss Bliss McGlynn & Nolan, PC
19 Michael Gzybowski Baker & Daniels
20 Bernard Murphy Reg. No. 24,006
21 Richard Kakareka Public Searcher
22 Israel Agranov Public Searcher
23 John Fernbacher Patent Agent
24 Steven Catlin Oliff & Berridge, PLC
25 David Cleveland Patent Agent
26 Natalie Brewster
27 Angelo Notaro Notaro & Michalos P.C.
28 Michael M. Zadronzny Shlesinger, Arkwright & Garvey, LLP
29 Terrence L.B. Brown Shlesinger, Arkwright & Garvey, LLP
30 Daphne Hammond Trademark Office Public User Society
31 Scott W. Kelly Kelly Bauersfeld Lowry & Kelley, LLP
32 B. Shideler Web Law
33 B. Shideler Web Law
34 Michael K. Kirk AIPLA
35 David Boundy Shearman.com
36 Markus B.G. Oberg Law Student
37 Ronald J. Stern POPA
38 Robert B. Weir Searcher
39 Wesley Niccolls Inventor
40 Alfred Gluecksmann Patent Agent
41 David Goldstein Search Room User
42 Thomas Moseley Patent Searcher
43 Christopher Kondracki NIPRA
44 Michael K. Kirk AIPLA
45 Allison Strickland Fross Zelnick Lehrman & Zissu, P.C.
46 Jennison & Shultz, PC Law Offices
47 Charles Baker American Bar Association
48 Jeffrey Ketchum Patent Agent
49 Brian Anderson, Roberta S. Bren, Kathleen Cooney-Porter, Colette Durst-Barkey, P. Jay Hines, Jonathan Hudis, Jeffrey H. Kaufman, David J. Kera, Jordan Weinstein Oblon, Spivak, McClelland, Maier & Neustadt, P.C.
50 Glenn E. Wise Patent Searcher

Start of Comments

Comment

As requested, I am responding to your request published in the August 27,200l
Official Gazette.

Replacing the paper files with electronic files is fine as long as a paper backup in
class and subclass order is maintained. Too many times the electronic database
system is off line for either a number of hours or a number of days. This would
present a problem when an individual attempts to perform a search in the
USPTO’s public search library. In this day and age of hackers bnd viruses, I feel
the electronic system will become more vulnerable to such events and a paper
backup is the qriy option.

To recap, while l’ do support the action of creating and maintaining a State-of-the-
art electronic system, I think it would be in everyone’s best interest to maintain a
paper backup just as you have for so many years.

David Giglio
Attorney-at-Law
231 Elizabeth Street
Utica, New York 13501

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Comment

I have been involved in trademark practice for over 25 years. I lecture on trademark law and
I am a co-author for a trademark treatise to be published next year by BNA.

In my opinion, removal of the paper file would be an enormous mistake and is at odds with
protecting the public interest in preventing future trademark infringements. The fact is that for years
I have received a search of the paper file and computer files for the same marks & in some
instances the paper files reflected marks that are not ,contained in the computer files. In these
instances, the paper files prevented the adoption of an infringing mark.

I oppose in the strongest terms possible the proposed removal of the paper files.

Respectfully submitted,
Stephen M. Trattner

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Comment

As requested, I am responding to your request published in the August 27,200l Official Gazette.

Replacing the paper files with electronic files is fine as long as a paper backup in
class and subclass order is maintained. Too many times the electronic database system is off
line. An electronic-only system would present a problem when an individual attempts to
perform a search in the USPTO’s public search library.

To recap, while I support the action of creating and maintaining a state-of-the-art
electronic system, I think it would be in everyone’s best interest to maintain a paper backup,
just as you have for so many years.

Steven Gardner

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Comment

As a trademark practitioner, I submit the following comments on behalf of our firm to
convey our grave concerns regarding the Patent and Trademark Office’s (PTO) proposed
development of a plan to remove the classified paper files from the PTO’s public search libraries and
replace them with electronic records. See generally 66 Fed. Reg. 45,012 (Aug. 27,200l).

We believe that any plan to remove PTO paper files from the public search facilities in favor
of eledtronic records is, at best, very premature. Electronic trademark records cuxrcntly are replete
with errors. The paper records provide the only check on electronic data and remain csscntial to
conducting a valid and reliable trademark search. Unless and until the electionic records are made
accurate, any action by the PTO that would make paper records less accessible for public search
would only foster mistakes in the search process and result in otherwise unwarranted infringement
and similar proceedings. The aggregate of unnecessary, associated business, administrative and
judicial costs is incalculable.

We urge the PTO to retain its paper records system as is until the validity and integrity of an
electronic system can be ensured. We appreciate your attention to our comments.

Michael J. O’Flaherty

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Comment

I am an independent patent attorney and an independent patent searcher. My direct
clients include IBM Corp. and Whirlpool Corp., and my indirect clients include Toyota
Motor Co. and Honda Giken KK (whom I work for through the patent firm NGB Corp. in
Tokyo, Japan).

I strongly oppose any eIimination of the current cIassified paper files, since they
provide a unique function which is unduplicated by any electronic database available at the
USPTO or elsewhere.

The classified paper files are our most reliable and comprehensive source of both U.S.
and foreign patent data. Even though classification of foreign patents was stopped in 1994
(due to a brash, unjustifiable decision by Commissioner Lehman), yet the paper collection of
foreign patents at the USPTO has no equivalent in the electronic world. The paper collection
at the USPTO goes back to the early days of patented technology, The current electronic
databases at the USPTO do not cover ANY foreign technology prior to October 1976.

For example, it is impossible to perform a proper search on current automotive
steering systems or suspensions without considering pre-1976 European art.

On November 19, 1999, the Washington Post ran an article (beginning on page E1)
describing the new computerized search system at the USPTO which, according to USPTO
officials, was a more-modern replacement for the older APS system that was unilaterally
dismantled by USPTO officials earlier in that year. The Post article began with a single,
tell-all sentence:

"This is the computer system from hell."

Not only did we learn that the modern "WEST" system was orders of magnitude
slower than the older APS syqtem, we also learned it couldn’t perform any of the more
complex tasks performed by APS (such as "expanding" search terms or "focusing" search
results, nor can it still).

Certainly, the USPTO officials knew of the deficiencies of WEST when they pulled
the plug on APS. Yet they pulled the plug on APS without a back-up plan and with total
disregard for the substantial disruption in U.S. Patent searching that their action would cause
in the industrial sector. We were told that APS wasn’t Y2K compliant since it was based on
the ChemAbs "Messenger" software. But ChemAbs had both put a fix in place and made
that fix available to the USPTO. And today, the USPTO chemical examiners are still using
Messenger through commercially available ChemAbs databases! [It is now well-known that
it is impossible to correctIy perform chemical searches with the vintage-1980 BRS search
engine that is at the heart of WEST. Let me know if you need to know the technicalities.]

The cripplingly slow speed of WEST was, in part, remedied by the introduction of
EAST (which shares the BRS search engine and the consequential limits of WEST described
above) in 2000, yet both WEST and EAST have, to date, been plagued with high levels of
instability. ‘"SYSTEM DOWN" signs appear with disheartening regularity for those of us
who have to daily perform patent searching, and the signs almost always follow each
attempted enhancement to the EAST/WEST system. Indeed, enhancements almost always
produce new problems or are incorrectly executed in the first try. RecentIy, an enhancement
made U.S. Patent images from the period 1959-1961 and half of 1993 compIeteIy
unavailable! And the "technical people" who are in charge of EAST/WEST were fully
unaware of the problem for four days until a member of the public brought it to their
attention. This does not inspire our confidence in the people (e.g. SIRA and their,
contractors) who are in charge of the electronic database implementations at the USPTO.

And during those regular times when EAST/WEST is "SYSTEM DOWN", everyone
pours into the classified paper files, or puts off their work.

I hope that at least some of the people who read this letter where part of the U.S.
patent system prior to the tenure of Bruce Lehman. I was an examiner from 1985 to 1989,
and I remember being SO impressed with APS, and later with CSIR. We truly had the most
impressive information search and retrieval systems in the world! And everyone knew it.
But that changed when Patent Office appointments became a tool for political paybacks.

I’m sure you already know that Mr. Lehman wasn’t appointed for reasons of patent
merit. But, unfortunately, during his tenure, he dispIayed that "merit" which he was
appointed for, and in the process, the U.S. Patent System suffered greatly. We’ve been set
back a full decade in the capabilities of the electronic search systems in place at the USPTO.

Therefore, now is no time to eliminate the classified paper files, when we already have
a second rate electronic search system. First improve the electronic search system to include
the pre-1976 foreign art AND to have at least the capabilities that APS and CSIR had in the
pre-Lehman era, and then, after some time of overlap it may be prudent to eliminate the
classified paper files.

But let’s do first things first, and have the backup classified paper files in place while
the computer systems are undergoing enhancements and improvements.

David Testardi, Reg.33,639, VSB No. 38608
2101 Crystal Plaza Arcade, PMB 189
Arlington, VA 22202
Tel/Fax 703-765-3176
E-mail datestardi@earthlink.net

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Comment

The International Trademark Association (INTA) takes this opportunity to respond to the
request for public comments on the development of a plan to remove the patent and trademark
classified paper files from the public search facilities, as published in the August 27,200l Federal
Register. INTA, a 123-year-old not-for-profit organization with over 4,000 members, is the largest
organization in the world dedicated solely to the interestsof trademark owners. The members of
INTA, who routinely apply for and maintain trademark registrations, are customers of the U.S.
Patent and Trademark Office (PTO). INTA’s comments are intended only to address the trademark
paper files, which we understand to be the paper copies of registration certificates and pending
application drawings that are filed in the public search facilities. We take no position with respect to
the patent paper files.

INTA does not object to the development of a plan to remove the trademark classified paper files
from the public search facilities, provided that such a plan includes a provision to demonstrate to the
user-public and the Congress before the paper files are removed that the automated records that
replace the paper files are complete, up-to-date and reliable with respect to both word and design
marks, as well as non-traditional marks such as color. While INTA is a supporter of a high-tech
PTO in light of the value such advances bring to both the agency and its customers, we believe it is
incumbent upon the PTO to show that its new technology is capable of providing the customers with
the same relevant level of detail that is currently provided by the paper files. The ultimate goal in
eliminating the paper records and replacing them with an automated system should be to provide the
public with all necessary information more quickly, efficiently and cost-effectively. Moreover, the
search database provided for public access should be the very same search database that currently is
used by the PTO’s trademark examiners. This will save money for the agency, ensure that the
applicants and the trademark examiners are working from the same information, and help cut down
on delays during the examination process. INTA pledges its resources to work with the PTO and its
leadership in the development of this technology, the demonstration of its value, and the education of
the public.

In addition to requiring that the PTO ensure the reliability of the automated system prior to
elimination of the paper copies of registration certificates and pending application drawing records, it
is also critical that the elimination of the paper files must have no effect on the public’s ability to
obtain on-site acces’s to search databases, to quickly and easily obtain and review paper copies of
trademark “file wrappers” and to search and review historical documents now housed in the search
room in bound volumes, in card indices or on microfilm. To the extent that the space now allocated
to the public search room would be eliminated, there must be new physical space allocated for a
facility for the public’s automated searching, the ordering, reviewing and copying of “file wrappers”
and the researching and reviewing of historical documents in bound volumes or microfilm, all in one
location.

Thank you for the opportunity to reply to the RFC on the plan to remove classified paper
files. Should the PTO have any questions or comments concerning INTA’s response, please contact
Jon Kent, the INTA Washington Representative, at (202) 223-6222.

Nils Victor Montan
President
International Trademark Association

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Comment

In response to the Notice on removal and elimination of the paper files, it is my eamest
desire to see that Department of Commerce continue to maintain the paper files and keep them
available for public access,

Currently, the EAST system database provides for a valuable supplement to a manual
search but does not provide the equivalent. This search tool can be useful for targeting specific
key terms within generalized or specific classification areas, however, there is no standardization
of key words. The most objectionable drawback is user fatigue which can occur within one hour
or less when staring at a monitor. Reading lengthy or highly technical portions of text from a
computer monitor is extremely tedious and difficult. Attempting to read for six to eight hours is
futile. Simply put, electronic files do not provide an equivalent substitute for reading and
physically paging through paper patent files.

I have conducted patent searches both independently and for various law firms over the
past 16 years. Based on my experience, the ability of private individuals and law firms to conduct
patentability, novelty, infringement, right to use and validity searches will be greatly degraded.
Invariably, the difficuity and cost of search work will increase and the quality will be significantly
compromised The paper files must be maintained and kept available for public access.

JONES, TULLAR & COOPER, P.C.
Gerald C. O’Brien

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Comment

I welcome. the opportunity to comment on issues relating to availability and retention
of paper search files at the Patent and Trademark Office. I am a frequent, almost daily, user
of the Public Search facilities. The comments are my opinions, not those of any organization.

The existing paper files represent an irreplaceable source of technological information,
a source which should not be put into dead storage or destroyed unless and until electronic
information products have been demonstrated to be equivalent to or better than the paper search
files. It is reasonable for the PTO to identify redundant or underutilized paper search files and
remove/store these files in order to mitigate increasingly serious demands for filing space.

The PTO should act conservatively in reducing its reliance on the paper files.
Assuming there are acceptable electronic replacement techniques for selected search areas, the
PTO might archive the related paper files, pending decisions on whether/when to destroy the
paper files. At least for the foreseeable future and with the exception of extremely inactive art,
the PTO should ensure that classified files in active arts remain available to the public. At a
minimum, paper files, corresponding to those removed from the Examiners’ search areas,
should remain available to users of the Public Search Room.

Although computer workstations may eventually become an acceptable substitute for
the paper files, my impression is that the computer workstations have met with mixed
acceptance among public users. Enhancements in the workstations have ameliorated some of
the numerous public objections to the workstations.

I believe there is continuing legitimate concern with respect to the quality of the images
displayed, particularly with respect to legibility of text. Comments from people who normally
search by viewing drawings are generally more favorable than comments from those who are
required to read mainly textual material. Workstation users will require higher image quality
than presently available in order to be able to use the machines for several hours each day
without eyestrain. Improvements in the monitors with respect to glare/angle of viewing etc.
are almost certainly needed for the monitors to become acceptable replacements for viewing
of paper document copies for hours at a time.

A further concern with respect to substitution of the computer workstations for paper
search files is system reliability. Based on numerous anecdotes shared with me, it appears that
the system is plagued by "down time" problems. Without a highIy reliable system, which is
in running order 99+% of the time, users will be frustrated by (a) being unable to use the
system at all during system outages and (b) loss of work product when the system goes down
during the course of a search.

Despite the progress made in developing the electronic workstations, the workstations
are not yet an adequate replacement for searching of the paper files. Therefore, at least highly
used paper search files should continue to be available for use at the PTO for the foreseeable
future.

I have no suggestions with respect to how integrity of the electronic files is to be
maintained. I have experienced numerous instances in which the electronic files (EAST) in
a particular subclass do not contain the same documents as the paper files, particularly very
recent paper documents. The subclass listings, available on CASSIS, do not always agree with
the documents in a particular electronic subclass (EAST). In addition, extremely recent
documents in the paper files, classified on their faces in a particular subclass, are not always
retrievable in an electronic search of the same subclass (EAST).

Theoretically, it should be possible to search identical document sets, whether or not
the documents are in paper or electronic form. Until the paper and electronic files are
internally consistent, this capability is not reliably available.

Regardless of the form in which the search files are available, it is imperative to
maintain the U.S. Classification system (UCLA) and constantly update the classification system
to accommodate the need for manageable searches of increasingly large and active subclasses
(over IO00 documents).

The full-text electronic search capability is inherently limited by the fact that the
applicant is his/her own lexicographer. The full-text and classified search capabilities are
complementary, not coextensive, in their scope. The full-text data base is not indexed.
Therefore, the information retrieved by a query in the full-text data base is limited by the way
in which the query is framed.

The full-text capability will almost certainly fail under at Ieast the following
circumstances:

  1. A critical word appears once in a document and is spelled incorrectly.
  2. The applicant or patentee has used terminology, other than that
    contemplated by the searcher or inventor. This is particularly likely to happen when
    the applicant/patentee has used "unconventional" or "creative" language in order to
    avoid known prior art.
  3. The invention involves chemical compounds, characterized by structural
    formulae and Markush claims, without particular compounds being named at all.
  4. Terminology has evolved as a technology has developed.
  5. Pertinent art predates 1974 and is not available in the full-text data base.
Concept-based classification, as exemplified by UCLA, is independent of terminology.
Concept-based classification allows the applicant/patentee to describe the invention in
terminology of his/her choosing and provides a framework in which the searcher can find
pertinent references, regardless of how the invention is described. The importance of
maintaining the UCLA and reclassifyiny overly large subclasses into manageable subclasses
should not be underestimated.

It is not apparent that any of the proposed dispositions for the paper files for third-party
acquisition/maintenance of the files (items D. l-D.4) is appropriate. None of the suggested third
parties appears to have any compelling interest in

maintaining or keeping the files available to
the public, particularly if the third parties are required to make the files available to the public
free of charge. The US. Patent and Trademark OffIce has the duty to keep the files available,
so as to "promote the progress of science and the useful arts [Article I, Section 8]."

Thank you for your interest in this matter.

Respectfully submitted,
CharIotte M. Kraebel
Reg. No. 25,784

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Comment

This will constitute the response of Carol Matthews, Thomas Brooke and
myself to the referenced Federal Register notice and request for comments. We
are all partners in the Intellectual Property Law group of the firm of Holland &
Knight LLP, which has more than 1,200 attorneys in 27 offices worldwide.
Holland & Knight was ranked 4th nationwide by Intellectual Property Today in its
survey of "Top Trademark Firms" for the year 2000.

We stand opposed to the proposal to remove paper records regarding
trademarks from the public search facilities of the U.S. Patent and Trademark
Office. Although there may come a time when immediate public access to paper
records regarding trademarks is unnecessary, for the reasons set forth below, we
do not believe that time has yet arrived.

The specific issues that the current electronic records do not adequately
address are:
a. Design searching is not adequate or reliable through the online records
and numerous errors continue to exist in those records due to lack of adequate
quality control.
b. Word mark records on the electronic system are inaccurate and quality
control remains lacking.
c. Cancelled, expired and abandoned records prior to 1982 are not available
online and may only be searched on microfilm or through the paper records.
d. As the experience with assignment records has proven, sending paper
records to an archive or other facility effectively denies the public availability to
that resource.
e. Searching phonetic equivalents and punctuated marks (e.g. hyphenated
marks or marks with an apostrophe) is unreliable on the current electronic system.
f. The current electronic system (X-Search) is different from the public
TESS system and therefore functionally unavailable to those outside of the Patent
and Trademark Office.

In time, perhaps these serious deficiencies in the current system can be
remedied. However, we do not believe that this is the time to remove the paper
records from the Trademark Office and deny the public access to that invaluable
resource.

Thank you for your consideration of this letter. Should you have any
questions regarding the foregoing, please feel free to call on us.

Very truly yours,
HOLLAND & KNIGHT LLP
Paul F. Kilmer
Carol L.B. Matthews
Thomas W. Brooke

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Comment

We, the undersigned, are long time private practitioners in the Intellectual
Property Law field in the state of Michigan. In response to your request for comment published
in the Federal Register Volume 66, No. 166, dated Monday 27,2001, we respectfully respond as
follows.

Initially, we request that the Patent Office consider holding public hearings on the
issue of the removal of the paper files and, preferably, at multiple sites, especially where the
Patent Office has public search room capabilities, such as Detroit, Sunnyvale, Washington, D.C.,
before submitting a proposed plan to Congress.

We oppose a plan that would remove the patent and trademark classified paper
files from the USPTO’s public search libraries and replace them with electronic records. We
believe that the paper files should be retained by the U.S. Patent Office’s public search libraries
for the following reasons:

  1. Computerized search systems in the public search room (PSR) still are not
    reliable enough to be the sole source for searching;
  2. foreign content on PSR computer search systems are missing many of the
    foreign patents and all of the publications found in the classified paper
    files;
  3. a considerable number of U.S. patents in certain subclasses are in the
    paper files, but are not on the PSR computerized system;
  4. in our opinion, the more searching resources available the better the results
    of the search;
  5. first time PSR users will need assistance by PTO employees-often times,
    there are not enough PTO employees to assist in such a search;
  6. paper searches are currently free;
  7. in order for a person to make effective and efficient use of the PSR
    computerized system, training and training updates are required; and
  8. a complete switch to electronic form of the files would effectively
    preclude most practitioners from engaging in searches when they visit the
    Patent Office unless they are regular users of the system.
In summary, we believe that the cost of searches will increase and the quality of
searches will be negatively impacted should the paper files be removed from the Patent Office
search libraries.

Sincerely yours,
Daniel Van Dyke
Terence J. Linn
Catherine S. Collins
Matthew L. Goska
Timothy A. Flory

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Comment

The Trademark Office Public User Society is an affiliation of professional trademark research firms and
individuals who make use of the United States Patent and Trademark Office Public Search Facilities to
conduct all manner of trademark research. Our customers include practically all intellectual property
practitioners and either directly or by extension virtually every Fortune 500 entity. I submit the following
comments on behalf of the Society to convey our grave concerns regarding the proposed elimination of the
classified paper files from the Public Search Facilities.

We believe that the request for comments is premature. The request should not be for comments on the
development of a plan to remove the files but rather whether the files should be removed at all. As the
electronic records and search systems for both patents and trademarks are fraught with errors, omissions
and search engine issues, the paper records constitute the only check on the veracity of the electronic data
and are thus essential to conducting a valid and reliable search. Given the problems and inaccuracies of
the electronic databases, any action by the Office to remove or otherwise make the paper file less
accessible to the public would result in searches replete with the database errors and result in unnecessary
litigation, infringement proceedings and questions of liability, the ultimate cost of said proceedings being
borne by any potential applicant affected by said searches.

Although the total cost of such proceedings is inestimable, those costs pale in comparison to the affiliated
costs of advertising campaigns and materials, printing plates, etc. that will have to be destroyed as a result
of those search errors. Indeed, the aggregate administrative, litigation, business costs are incalculable and
do not include the additional penalty of the loss of good will and brand identity in the market place.

As such, we advocate the retention of the paper file until such time as the integrity and validity of the
electronic record is the equivalent of a parallel search of both the paper and electronic records.

Further, prior to any decision to remove the paper file, the Society believes that following information
should be released by the office:

  1. The OMB analysis of the notice, issues identified by OMB and the reasons for the ninety day period
    between submission and publication of the notice.
  2. Any reports submitted to the Committees on the Judiciary of the Senate and the House of
    Representatives detailing the plan to eliminate the paper files.
  3. Details of the significant investment in the public search tools as it relates to trademarks as such
    information is not available in previously released budgets. Such details should include planned and
    actual expenditures from 1981 to 2001, identify each expenditure and its relation to public search
    tools versus in-house PTO search tools, identify shared expenditures for public and in-house systems.
    identify exclusive expenditures for both public and in-house systems, identify PTO depository library;
    expenditures by location, product, service expenditures, staff, staff support, consulting expenses and
    overhead for the years 191-2001.
  4. Identify the USPTO portion of investment of fee income in the maintenance of trademark and patent
    databases as well as the development and enhancement of software search systems.
  5. Explain the rationale of eliminating the paper file while allowing patent examiners to retain some
    paper files for purpose of examining and approving applications for patents.
  6. Identity financial incentives, proposals and counter proposals offered to or by patent examiners to
    obtain their agreement on the phased elimination of the examiners' paper search files.
  7. Confirmation that the USPTO is on schedule to complete its relocation and consolidation at the
    Carlyle campus in 2004 and delineate what if any components of the agency will not be located at the
    new campus. ,
  8. Identify the amount of space to be allocated for the public search records and systems at the new
    campus and how the relocation will impact the maintenance of the public records.
  9. Provide all reports, white papers, memoranda and executive decisions regarding decisions or policies
    for the placement and maintenance of the public records ant the Carlyle campus.
  10. Identify and provide details, including financial infrastructure, on the current USPTO planning
    approach to the dissemination of patent and trademark information and enhancements to patent and
    trademark databases.
  11. Identify and provide details on the electronic capture of trademarks to include the cost per page,
    average cost per file for each processing stage of the application process for both paper filings and
    electronic filings.
  12. Identify and provide details on the expected shelf life of digitized information by storage medium,
    plans for future technologies and expected changes to ensure the maintenance of digitized data for the
    next 25 years.,
  13. Identify and provide details on plans to recapture data lost in any past or future data migrations from
    one medium to another.
  14. Identify what data has been lost by the USPTO in past data conversions or captures.
  15. Identify the cost of maintaining digitized data by year for the years 1981-2001.
  16. Identify all software programs used by the USPTO for patent and trademark data for the years 1981 -
    2001, the reasons why programs are no longer used, the shelf life of each program, and programs that
    were not used for their expected service life.
  17. Identify what programs did not meet their expected utility and the costs of each such program.
  18. Identify how many registrations, amendments, corrections, etc. are missing from USAMARK, the
    reasons for their omission and plans to capture the missing data.
  19. Identify and quantify the unavailability of the TESS and X-Search systems during the years 1999,
    2000 and 2001 particularly noting the dates and number of hours for said dates that the systems were
    down.
  20. Identify the dates and numbers of hours for each instance when TESS and X-Search systems did not
    give complete or accurate search results or experienced data loss for the years 1999,2000 and 2001,
    and identify the reasons for such problems and how those problems came to the attention of the
    USPTO.
  21. Detail all USPTO efforts to inform the examining corps and the public of problems with USPTO data
    systems.
  22. Detail the USPTO estimation of the database search requirements and needs of the examining corps.
  23. Detail the USPTO estimation of the database search requirements and needs of the public.
  24. Detail the measures planned to ensure data quality upon elimination of the paper file.
  25. Detail plans to ensure that an archival record of all patents and trademarks is maintained.
We respectfully request that the comment period be extended at least for ninety days after receipt of the
answers to the above listed questions.

Sincerely yours,

Daphne Hammond, President

Original Document Back to the Top

Comment

As requested, I am responding to your request published in the August 27, 2001 Official Gazette.

Replacing the paper files with electronic files is fine as long as a paper backup in class and subclass order is
maintained. Too many times the electronic database system is off line for either a number of hours or a
number of days. This would present a problem when an individual attempts to perform a search in the
USPTO's public search library. In this day and age of hackers and viruses, I feel the electronic system will
become more vulnerable to such events and a paper backup is the only option.

To recap, while I do support the action of creating and maintaining a state-of-the-art electronic system, I
think it would be in everyone’s best interest to maintain a paper backup just as you have for so many years.

Earl Major
Public Searcher

Original Document Back to the Top

Comment

As requested, I am responding to your request published in the August 27, 2001 Official Gazette.

Replacing the paper files with electronic files is fine as long as a paper backup in class and subclass order is
maintained. Too many times the electronic database system is off line for either a number of hours or a
number of days. This would present a problem when an individual attempts to perform a search in the
USPTO's public search library. In this day and age of hackers and viruses, I feel the electronic system will
become more vulnerable to such events and a paper backup is the only option.

To recap, while I do support the action of creating and maintaining a state-of-the-art electronic system, I
think it would be in everyone’s best interest to maintain a paper backup just as you have for so many years.

Melanie Villanueva
Public Searcher

Original Document Back to the Top

Comment

As requested, I am responding to your request published in the August 27, 2001 Official Gazette.

Replacing the paper files with electronic files is fine as long as a paper backup in class and subclass order is
maintained. Too many times the electronic database system is off line for either a number of hours or a
number of days. This would present a problem when an individual attempts to perform a search in the
USPTO's public search library. In this day and age of hackers and viruses, I feel the electronic system will
become more vulnerable to such events and a paper backup is the only option.

To recap, while I do support the action of creating and maintaining a state-of-the-art electronic system, I
think it would be in everyone’s best interest to maintain a paper backup just as you have for so many years.

Victor Manos
Public Searcher

Original Document Back to the Top

Comment

As requested, I am responding to your request published in the August 27, 2001 Official Gazette.

Replacing the paper files with electronic files is fine as long as a paper backup in class and subclass order is
maintained. Too many times the electronic database system is off line for either a number of hours or a
number of days. This would present a problem when an individual attempts to perform a search in the
USPTO's public search library. In this day and age of hackers and viruses, I feel the electronic system will
become more vulnerable to such events and a paper backup is the only option.

To recap, while I do support the action of creating and maintaining a state-of-the-art electronic system, I
think it would be in everyone’s best interest to maintain a paper backup just as you have for so many years.

Robert G. Lev
Reg. No. 30,280

Original Document Back to the Top

Comment

As requested, I am responding to your request published in the August 27, 2001 Official Gazette.

Replacing the paper files with electronic files is fine as long as a paper backup in class and subclass order is
maintained. Too many times the electronic database system is off line for either a number of hours or a
number of days. This would present a problem when an individual attempts to perform a search in the
USPTO's public search library. In this day and age of hackers and viruses, I feel the electronic system will
become more vulnerable to such events and a paper backup is the only option.

To recap, while I do support the action of creating and maintaining a state-of-the-art electronic system, I
think it would be in everyone’s best interest to maintain a paper backup just as you have for so many years.

James R. Harvey
Public Searcher

Original Document Back to the Top

Comment

As requested, I am responding to your request published in the August 27, 2001 Official Gazette.

Replacing the paper files with electronic files is fine as long as a paper backup in class and subclass order is
maintained. Too many times the electronic database system is off line for either a number of hours or a
number of days. This would present a problem when an individual attempts to perform a search in the
USPTO's public search library. In this day and age of hackers and viruses, I feel the electronic system will
become more vulnerable to such events and a paper backup is the only option.

To recap, while I do support the action of creating and maintaining a state-of-the-art electronic system, I
think it would be in everyone’s best interest to maintain a paper backup just as you have for so many years.

Fred Malek
Public Searcher

Original Document Back to the Top

Comment

As requested, I am responding to your request published in the August 27,200l Official
Gazette.

Replacing the paper files with electronic files is fine as long as a paper backup in class
and subclass order is maintained. Too many times the electronic database system is off
line for either a number of hours or a number of days. This would present a problem
when an individual attempts to perform a search in the USPTO’s public search library. In
this day and age of hackers and viruses, I feel the electronic system will become more
vulnerable to such events and a paper backup is the only option.

Why is it that the government always feels compelled to fix that which is not broken? If
you want to save the government money, eliminate personnel and spendirig, but not a
resource that the public is willing to pay to come to Washington, D.C. area and use.

To recap, while I do support the action of creating and maintaining a state-of-the-art
electronic system, I think it would be in everyone’s best interest to maintain a paper
backup just as you have for so many years.

Daniel H. Bliss

Original Document Back to the Top

Comment

As requested, I am responding to your request published in the August 27,200l Official
Gazette.

Replacing the paper files with electronic files is fine as long as a paper backup in class
and subclass order is maintained. Too many times the electronic database system is off
line for either a number of hours or a number of days. This would present a problem
when an individual attempts to perform a search in the USPTO’s public search library. In
this day and age of hackers and viruses, I feel the electronic system will become more
vulnerable to such events and a paper backup is the only option.

To recap, while I do support the action of creating and maintaining a state-of-the-art
electronic system, I think it would be in everyone’s best interest to maintain a paper
backup just as you have for so many years.

Michael S. Gzydowski

Original Document Back to the Top

Comment

This is in response to your request published in the August 27,2001
Official Gazette.

Replacing the paper files with electronic files is fine, as long as a paper
backup in class and subclass is maintained. Too many times, the electronic
database system is off line for either a number of hours or days. This
would present a problem when an individual attempts to perform a search in
the USPTO's public search library. In this day and age of hackers and
viruses, I feel the electronic system will become more vulnerable to such
attacks, and a paper backup is a necessary expedient.

To reprise, while I do support the proposal of creating and maintaining
a state-of-the-art electronic system, I think it would be in everyone's
best interest to maintain a paper backup - 'just as you have done, for so
many yearsl


Bernard J. Murphy
Reg. No. 24,006

Original Document Back to the Top

Comment

As requested, I am responding to your request published in the August 27,200l Official Gazette.

Replacing the paper files with electronic files is fine as long as a paper backup in class and subclass order is
maintained. Too many times the electronic database system is off line for either a number of hours or a
number of days. This would present a problem when an individual attempts to perform a search in the
USPTO’s public search library. In this day and age of hackers and viruses, I feel the electronic system will
become more vulnerable to such events and a paper backup is the only option.

To recap, while I do support the action of creating and maintaining a state-of-the-art electronic system, I
think it would be in everyone’s best interest to maintain a paper backup just as you have for so many years.

Respectfully yours,
Richard Kakareka
Public Searcher

Original Document Back to the Top

Comment

As requested, I am responding to your request published in the August 27,200 1 Official Gazette.

Replacing the paper files with electronic files is fine as long as a paper backup in class and subclass order is
maintained. Too many times the electronic database system is off line for either a number of hours or a
number of days. This would present a problem when an individual attempts to perform a search in the
USPTO’s public search library. In this day and age of hackers and viruses, I feel the electronic system will
become more vulnerable to such events and a paper backup is the only option.

To recap, while I do support the action of creating and maintaining a state-of-the-art electronic system, I
think it would be in everyone’s best interest to maintain a paper backup just as you have for so many years.

Israel Agranov
Public Searcher

Original Document Back to the Top

Comment

Please do not remove the paper search files in the public search room yet.
Removal at this time, before the present computer search system becomes complete
and user-friendly, presents a real hardship to out-of-town searchers and occasional
users.

It is my personal view that the changeover to an exclusively computer-based
public search system should come only when the computer search system can
retrieve all information currently accessible by manual search, and only after the
system becomes user-friendly and requires minimal training.

Very truly yours,

John Fernbacher
Patent Agent
Registration No. 32,895

Original Document Back to the Top

Comment

I have worked in the Intellectual Property field since 1988, and have been a registered
Patent Agent since 1992. My relevant experience includes several years of patent searching for a
local law firm, numerous years overseeing and coordinating various search staff for the same
local firm, and over nine years of patent prosecution experience. During this time, I have
extensively searched using the age-old "manual" search system of hard-copy patents and
literature classified according to the Manual of Patent Classification. I am also familiar with and
have hands-on experience with the various automated databases the U.S. Patent Office has
released over the years, including CASSIS, BIB, CLASS, APS, EAST and WEST. I have also
used various commercial patent databases from sources including Dialog, Orbit, Lexis, Westlaw,
Delphion, and others. Based on this experience, I have the following comments on PTO efforts
to phase out the current paper copy environment with a paperless counterpart.

The most recent EAST/WEST database is the closest thing yet to an electronic search tool
that can compete with a good manual search. While many patent databases can often find
relevant patents through "keyword" searching, we believe that there is no substitute for a good
"manual" search. This is because for most inventions, a picture is necessary to convey the
invention and because patent terminology may be purposefully creative to achieve either a very
generalized broad scope or to help distinguish an otherwise ordinary invention from prior art by
creating a new word for an old structure. As such, use of "keyword" searching with words that
may be common industry-standard words will often not result in a competent or conclusive
search outcome. The old saying "a picture say a thousand words" is true. For many types of
inventions, a reference can be readily discounted as irrelevant or flagged as interesting with just a
quick glance at the pictures. Thus, once a pertinent classification has been determined, "picture"
searching of front pages, titles and Abstracts is often the most efficient method to isolate relevant
from irrelevant patents or documents.

To achieve this efficiency and to maintain a similar structural flow to the old school
methods of patent searching, a successful electronic search tool much be capable of emulating or
improving upon such techniques. Such a system is believed to require at least: 1) a manageable
classification breakdown by technology (preferably retaining the current patent classification
scheme); 2) the ability to selectively search documents within one or more of these
classifications; 3) the ability to quickly index or "flip" front pages of such documents with at
least the speed and ease of the old "manual" system; 4) the ability to readily switch between
relevant sections of a reference of interest; 5) a reliable integrity of documents being reviewed;
and 6) a reliable availability of the research tool.

The current EAST/WEST system appears to meet most of these requirements. Some
areas where it may exceed the manual system are its near perfect patent classification integrity
compared to the manual counterparts, which often suffer from large integrity gaps for various
known reasons. This provides cost savings to searchers when performing high-importance
searches such as infringement searches that require integrity verification. EAST/WEST also
benefits from its ability to eliminate duplicate patents when multiple patent classifications are
combined for a large search. This also increases searcher efficiency. Additionally, its ability to
combine both viewing of patents by classification and further narrowing by keyword search
integration allows more focused searching to be performed that is cost effective for certain
specific searching needs.

While the current EAST/WEST is a great backup or extra resource tool that can
supplement a manual search, it also appears to possibly suffer in a few important areas: 1)
redundancy; 2) reliability; and 3) ability to support a varying number of users.

First regarding redundancy, there is redundancy built into the paper copy at the U.S.
Patent Office. There are at least two sets of paper documents classified in the manual system,
one in the public search room and one in the Examiner’s search room. Even if one is out for
reclassification, the other source is accessible. Further redundancy is in place by the ability to
access EAST/WEST for searching. However, in a paperless environment, this redundancy
becomes absent. There will be no back up system, unless there are multiple copies of the
database or multiple network options available to resolve network crashes or other typical
computer problems with availability. If the EAST/WEST system goes down, there is no real
backup. The PTO’s Internet site may be useful to pull patent copies or do assignment and
limited small searches. However, it is NO substitute for a manual search or an EAST/WEST
search. This is because the interface just does not work for real day-to-day searchers. As such,
the PTO’s website has only a niche functionality, much like the Patent Office’s CASSIS and
CLASS systems. Such systems do not provide redundancy, but instead specialization for
particular types of limited searching (i.e., searching for current classification, bibliography
information, etc.). Accordingly, systems need to be in place to provided redundancy so that
regardless of foreseeable problems, accessibility of the system by anyone who desires access will
not be compromised.

Second regarding reliability, this is the need for redundancy because computer systems
are inherently unreliable and subject to malfunction, glitch, network error, crash, virus, etc. As
such, there would need to be several mechanisms in place to ensure a seamless system that can
be switched to a backup system quickly so that accessibility by the public is not compromised.
The PTO must also be active in seeking and performing necessary system upgrades to ensure that
redundancy and reliability are attained.

Third regarding support, the current paper system is able to accommodate a very large
number of users. Thousands of people a day, both Examiners and public searchers are able to tap
into and use the paper files on any one given day. There is no real obstacle to access because of
the vast number of classes and subclasses, the odds of someone else using the particular subclass
you are looking for it quite small. Further, because of the redundancy in the paper system, there
is always a backup source to access even if someone is also viewing your desired materials.
With a paperless system, however, access is physically limited to the number of terminals
provided at the public search rooms and Examiner offices, unless outside dial-up access is used,
which creates its own problems with security, integrity, etc. Moreover, access is also physically
limited to the capabilities of the network serving the system. As such, it is critical that the PTO
at least maintain a sufficient number of available and operational terminals to meet ALL of the
needs of the public, including times of high occupancy. From available records, I am sure that
the PTO can properly determine the average and peak number of persons using the current
facilities in any given day. The paperless system must be capable of accommodating at least this
many people so that accessibility to proper patent research tools is not denied to various persons
seeking patent information.

While not a current problem, the PTO needs to ensure the integrity of the PTO database.
We are unsure what steps can be taken to continue to ensure the integrity of the system.
However, with more access, the chances for integrity problems due to system crashes, security
breaches, etc. are bound to increase. As such, fail-safe back-up systems and checks should be
performed routinely to ensure completeness of the database records.

The present EAST/WEST system appears to have adequate speed such that searching
electronically can be performed at nearly the same if not better speed at which manual searching
can be performed. That is, searchers are able to "flip" through patents in a desired patent
classification with relative ease. However, this is due in great part to the very limited
accessibility of the EAST/WEST system currently. To match current search demand for both
"manual" searchers and electronic searchers, there would be a very large increase in network
demand, which must have the effect of greatly slowing down the speed or accessibility of the
system. Much of these same problems have been faced by the various Internet Service Providers
(ISPs), when demand for services exceed system capabilities. As such, it will be critical for the
Patent Office to identify ways and mechanisms to keep the system accessible to all potential
searchers without reducing the access and system use speed to a level that it is inferior to the old
"manual" system.

Another requirement to make the paperless file comparable to the current system is to
fully continue to reclassify technology so that patent classes and subclasses have workable
numbers of patents to minimize search time and needless review of irrelevant art. That is, the
present Manual of Classifications should be carried forward to the paperless files and used
similarly. This is because functionally, narrowing down by relevant classification is most often
the most accurate and cost-effective way to isolate and conduct a thorough patent search and
clearly better than reliance on "keyword" searching.

Another important concern to all searchers is the availability of foreign patents and
literature because a patent search is only as good as the data that is being searched. Currently,
the paper system has various foreign patents and U.S. and foreign literature classified along with
the U.S. Patents. This information MUST also be provided to the public in full viewable form,
including not only text but drawings and MUST be classified for access along with the U.S.
Patents to ensure accessibility. The EAST/WEST system’s accessibility to European and
Japanese Abstracts is a start, but accessibility needs to be greatly expanded to include more
literature and patents, preferably full text with drawings.

In this regard, even the current paper files at the U.S. Patent Office are severely lacking in
relevancy and completeness. It has been years since the Patent Office took an active role in
accumulating and classifying non-US patents and literature. Many art units do not have any
relevant foreign art on newer technologies and others have never reclassified the foreign art so
that it only exists under a long since abandoned classification system. Such paper document
collections are near worthless because of their inaccessibility due to archaic classification and
incompleteness. It is believed that this lack of relevant and pertinent prior art leads to much
wasted expenses to patentees, the Patent Office and U.S court systems because there are ever
increasing possibilities that issuing U.S. Patents are invalid because relevant art was not before
the Patent Examiner and not accessible by the patentee.

The U.S. Patent Office needs to interface more with other Patent Offices around the
world and develop database sharing with other countries so that we can have additional research
tools at the public’s disposal. This is particularly important in today’s global economy. The
PTO may also considering going into partnership with one or more of the commercial
intellectual property database providers and seek access to their databases for Examiners as well
as the public. Particularly in the field of "business methods" and other hot patent fields, there
appears to be a lacking of relevant patent literature. Accessibility to other sources of this
information is critical to maintain a confidence in the patent system and to continue to place a
high presumption of validity to issued patents.

Another good and often overlooked research tool and the U.S. Patent Office is it’s
Scientific Library. I would hope that this great research tool remains in tact. If it too is going to
be phased out in favor of a paperless system, the level of accessibility must not decline. In fact,
if all of the vast book and magazine collections are scanned into a database for electronic
viewing, it would be beneficial for the PTO to make great efforts to modernize the system by
breaking down and classifying this information so that it can be more readily retrieved and used
to assist searchers in finding, relevant non-patent literature.

Please consider these comments when formulating the Patent Office’s plan for paper file
replacement.

Sincerely,
Stephen P. Catlin
Patent Agent
Acting Search Coordinator
OLIFF & BERRIDGE, PLC.
277 S. Washington St.
Alexandria, VA 223 14

The following views are personal views that also reflect the views of the author’s employer,
Oliff & Berridge, PLC, an Alexandria, Virginia-based intellectual property firm.

Original Document Back to the Top

Comment

This is in regard to the "Notice of Request for Comments on Development
of a Plan To Remove the Patent and Trademark Classified Paper Files From
the Public Search Facilities' appearing at 66 Fed. Reg. 45012

I am a solo IP practitioner in St. Paul MN, concentrating on chemical
patent practice. My personal views are set out below.

I commend the USPTO on its efforts to make text and image versions of
its paper files available both at the USPTO and over the Internet. I
use the USPTO's Internet-accessible searchable text files relatively
frequently. I use the Internet-accessible image files only
infrequently, for reasons explained below. When on business at the
USPTO, I sometimes use the classified paper files in the public search
room. I also often use electronic (PDF) copies of patents stored on my
network server, and frequently use paper copies of patents stored in my
prosecution files.

Paper is still the best way to address certain questions in a hurry.
However, when I can do so, I like to have electronic copies of patents,
and prefer to send electronic rather than paper patent copies to my
clients. My clients feel the same way. This makes it important to be
able to get electronic copies quickly and easily. Because I have a
chemical practice, I have to rely on images rather than ASCII text.

In connection with the USPTO's decisionmaking regarding its paper patent
collection, it should consider the shortcomings of its current
Internet-accessible image file collection. The image file collection
could be improved in two important respects. First, images must at
present be downloaded one page at a time. I usually have my Paralegal
do this when we need copies of an older patent that is not available
from a third party provider. Doing so takes a great deal of time, and
the resulting collection of images has to be somehow concatenated (e.g.
by scanning) if one wants to reassemble the original document in an
electronic form. It would be much more convenient if the entire patent
image could be downloaded as one document rather than as individual
pages.

Second, at present a TIFF viewer is required in order to see downloaded
images. Most of my clients do not have an appropriate TIFF viewer
installed on their computers. I recognize that the USPTO might like to
avoid using proprietary solutions. However, the Adobe Acrobat PDF
format is widely used by lawyers and their clients, enables relatively
easy viewing and retransmission of compact multiple page images, and
would be a much more useful solution than the current TIFF format.
A number of third party providers including MicroPatent and ReedFax
provide electronic patent copies in easily downloaded multiple-page
formats including PDF files. I use both of these third party services,
because they are much more convenient than the currently-available image
files provided by the USPTO. I do so even though the service providers
charge for downloading images of these otherwise freely-available public
documents.

In my view, the USPTO should provide images of patents, patent
applications, file histories and other non-copyrighted documents in a
multi-page, widely-used format such as the PDF format. This would be
much more user-friendly than the current system, and would be an
appropriate measure to take in view of the USPTO's plan to remove the
classified paper files from the public search room.

Thank you for considering this submission.

Best regards,
David R. Cleveland

David R. Cleveland, P.A.
Suite E-1324
First National Bank Building
332 Minnesota St.
St. Paul, MN 55101-1326

Tel: 651-251-2250 (office)
651-260-1440 (cellphone)
Fax: 651-251-2251

drcleveland@iplawmatters.com
www.iplawmatters.com

Original Document Back to the Top

Comment

I am writing as a member of the intellectual property community in response to your
recent request for comments. In my three plus years at the Office of Technology
Licensing (OTL) at the University of Washington (UW), I have regularly interacted
directly and indirectly with the USPTO. My interaction has largely involved patent
applications, and interference and opposition proceedings. My opinions expressed in this
letter are not necessarily those of OTL or UW.

I favor the premise of your plan to remove the paper records and make the information
available electronically. This plan is consistent with the American Inventors Protection
Act and with the overwhelming shift to electronic access of the relevant records. These
physical documents are only accessible in a very small area of the country, making access
realistically available only to those U.S. residents and global residents with the monetary
capacity to do so. I personally have been very pleased with the great leaps in electronic
access on your website, which I have used over the past few years.

However, I felt two key pieces of statistical information were missing from your request
for comments. To really understand the scope of what must remain physically, publicly
available until it is available electronically, we need to know 1. how many records are
referenced in subsequent patent applications, and 2. how often the non-electronically
available records were physically accessed in the past few years.

Access to these not yet electronically available records is essential for patent examiners,
attorneys, search firms, and individuals. If they are going to successfully research
whether there is prior art, this older information must be available. I do not believe that
these older, less accessed records should necessarily be made electronically available.
The decisive information on what cut off date should be implemented would, in my
opinion, come from a study of the frequency of information accessed. A cut off date will
need to be chosen that reflects the best balance of amount accessed, efficiency, and the
monetary expense, and which meets the NARA guidelines of maintaining records that
have been referenced in other patent applications.

The main tension that I see is that between disposing of the physical records and
maintaining the integrity of the electronic records. It is my understanding that 35 U.S.C.
§4745, does not allow relief of the Director’s responsibilities in any assignment or
delegation of his functions. Maintenance of records received or generated by the
USPTO, a federal agency, is one of those functions. However, the National Archives and
Records Administration (NARA) allows for disposal of records kept by federal agencies
under 44 U.S. §3302 and 36 C.F.R. §12. Therefore, the USPTO cannot transfer any
record to any other entity, including federal government, without first going through the
NARA prescribed disposal steps. The most relevant requirement is that any record that is
named in any patent application must be photographed or mimeographed before it can be
disposed of.

It is my interpretation that once the NARA prescribed requirements are met, that the
records can be disposed of and the Director’s responsibility for the records pertains solely
to the electronic versions. Therefore, in the interest of maintaining the integrity of the
electronic documents, I believe that only the electronic documents available from the
USPTO website should be allowed to be admitted as evidence or documentation in any
patent prosecution or proceeding. Once the physical documents are transferred to any
other entity, the Director releases control over those documents. If the USPTO wants to
maintain some level of control over those physical documents, perhaps it could consider a
licensing arrangement with the chosen entity that would provide for integrity-ensuring
measures.

As for the disposition of the records, the most preferable choice would be an arrangement
with a research university in the D.C. area. This would keep the records close to where
the patent prosecution and adjudication occurs, and would favorably draw individuals to
the university. Any payment for this sale, of course, has to be turned over to the
Treasury, as required by 44 U.S. §3313. A second option would be to take advantage of
the Record Center Revolving Fund and make the not yet electronically available records
available under a fee-for-service program (Public Law 106-58).

Obviously, all records must remain physically available until electronically available, as
prescribed by NARA. Otherwise, a person without access to this information is unable to
conduct a prior art search or prepare for an interference proceeding, opening him or
herself up to charges of malpractice by the client and frivolous patent prosecution under
Rule 103.

I hope that you find my comments useful and will give them consideration in the
formulation of your plan. I would be happy to provide any further information or
clarification, and can be reached via e-mail at n_brewster@hotmail.com.

Natalie R. Brewster

Original Document Back to the Top

Comment

Notaro & Michalos P.C. is an intellectual property law firm composed of five
registered patent attorneys who operate at offices In New York City and in Orangeburg,
New York.

It has been our policy to conduct patent searches for patentability, right to use,
validity, state of the art and other purposes utilizing the paper patent collections at the
public search room of the Patent and Trademark Office. We also utilize databases of
the Office as well as Internet resources and proprietary databases in connection with
various searches.

Our respective offices are equipped with broadband capability (cable and DSL),
and we operate on a Windows 2000 platform with dual servers with 1.8 gigabyte
capacity and most of our individual PCs have a 933 MHz operating speed.

We wish to express concerns that we have regarding the proposed elimination of
patent paper collections equipment.

Although we regularly utilize existing U.S. Patent and Trademark Office
databases, we find that it is very time consuming to access a patent, take it to an image
screen and review and/or print each imaged page. It is not unusual, in our experience,
to find that the Patent and Trademark Office web site is not available, or to find that our
cable or DSL provider is down, or to have a problem with our computer system.
Anyone of these events impedes our ability to search or otherwise use the Patent and
Trademark Office database.

In our experience, computer searching of patents, even at the Patent Search
Room, is much slower and, in many respects, less accurate, than paper searching.

The ability to quickly scan the entire history of a certain useful development, from
the earliest to the most current patents, cannot be reproduced or simulated by any
known computer search technique. Often, many class/subclass combinations must be
searched to conduct a proper novelty search. A validity or right-to-use search usually
requires access to an even greater number of subclasses. Subclasses which physically
follow or are before the specific subclasses of interest in the "stacks" also often yield
prior art of interest and an entire new avenue of search which had not occurred to the
"searcher" before. These and many other techniques of searching are not available
from any known computer search system.

Boolean searching is very limited to the use of key words and the like. Often the
drawings more quickly reveal the relevance of a patent. In certain arts, such as the
chemical arts, word searching is very efficient. In others, no unique words are
available. A valve, for example, may be called a gate, or a stop cock, or be described
in a hundred different ways by a hundred different patent attorneys, all correctly. One
drawing unifies the meaning of what has been shown, however, in a way that any
number of words cannot.

Aside from the clear limitations of all known computer searching techniques,
there is also the fact that no U.S. patents earlier than those Issued In 1976 can be
"word searched" and no foreign papers would be available.

The examiner's search rooms which have some foreign and non-patent
references at the end of most subclasses, and which have been available to the public
upon request, will have to become restricted (if they too are not also closed) since all
experienced searches will try for access if the public stacks are eliminated.

The following points correspond to the Issues Section of the Federal Register
Notice:

II A. Will the USPTO invest in disaster recovery/backup location services to
minimize downtime/loss of electronic records?

There are often several terminals which are "locked" by program errors -
how will these occurrences be minimized?

II B. In our opinion, there is no comparable functionality available at present for
search electronic records versus paper records. There is a fundamental
difference between reading paper and reading a computer screen in that
you cannot just flip to a page with the electronic screen--you have to
select a particular page and wait for it to be generated. Even with new,
fast computers and connections, viewing screen after screen of patent
images is simply not as fast or efficient as scanning through paper pages.
Although the computer screens In the PSR are large, it is still difficult to
get a 100% size image of each patent, making reading difficult or requiring
zooming in, which is more time consuming than putting paper closer to
your nose. Screen presentations of printed pages can be difficult to read
as well due to issues with screen resolution. There can be a significant
time delay between displays of images. Generally, reading a computer
screen image of a patent is more stressful on the eyes compared to
reading printed paper patents.

While a conventional search by reviewing each patent in a particular class
and subclass can be supplemented by using keyword searches to find
relevant patents, there is no substitute for physically reviewing each
patent due to differences in terminology between patentees and the fact
that patents prior to about 1976 are not available in full text search. Thus,
replacing the paper search files with electronic searches does not
increase the accuracy of searches beyond where it is now.

Finally, our searchers have found the two available systems, EAST &
WEST, to be very annoying to use. It is difficult to navigate and often
easier to start over than to try and backtrack to a previous search result.

II C. Obviously, electronic records can be reclassified in a fraction of the time
needed to do the same with paper records and from the same desk,
rather than physically moving anything--PTO saving effort on their part is
all that is going on here.

II D. Options Dl and D2 would be preferable to D3 and D4, so that the records
are still available for free to the public--keeps the spirit of the open
disclosure of inventions, as opposed to the only copies being available by
purchase and inspection only possible via electronic means or for pay for
access.

We thank you fori your consideration of the foregoing.

Respecffully submitted,
NOTARO & MlCHALOS P.C.
Angelo Notaro
For the Firm

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Comment

This letter is for purposes of comment on the proposal to
eliminate the paper files from the Public Search Facilities at
the United States Patent and Trademark Office.
By way of background, I am a registered patent attorney in
private practice in the Washington, D.C. area. Our office
routinely conducts patent searches on behalf of our clients as
part of our patentability, infringement and validity
investigations. Our experience concerning these matters leads us
to several conclusions regarding the patent files at the U.S.
Patent and Trademark Office.

First, the electronic records presently in use at the Search
Room for issued patents and maintenance fees status, are replete
with errors. These errors appear to be due to the technology
used by the Patent Office to scan the documents. Accordingly,
the paper copies must be considered the only accurate records of
the patents. If no accurate patent copies are available, then
Applicants must be forced to make decisions based upon inaccurate
data.

As a result, this will necessarily increase the costs for
preparing applications and funds which may otherwise be used for
venture capital must be expended due to problems caused by the
misinformation disseminated by the U.S. Patent Office.
The Patent Office must therefore maintain paper files until
such time as it is proven that the electronic records are as
accurate as the paper records.

In view of the above, we would therefore appreciate your
comments on any studies that you have conducted or will conduct
to ensure the proposed sole reliance on electronic records will
be at least as accurate as the paper records. We would also like
to know when you believe the electronic database will be as
accurate as the paper files. Also address how the Patent Office
can legally dispose of paper files when the counterpart
electronic databases are significantly less than one hundred
percent accurate equivalents to the paper files. Further comment
on the appropriateness of reducing the accuracy of an existing
publically available system (i.e. The Public Search Facility)
that is vital to economic and technological health of the United
States.

Thank you for your consideration of the above and we look
forward to receiving your reply.

Do not hesitate to contact us should you have any questions
regarding the above, prior to formally responding during the
extended comment period.

Very truly yours,
Michael M. Zadrozny /s/
SHLESINGER, ARKWRIGHT & GARVEY LLP

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Comment

Please accept and address our comments on the proposed
elimination of the paper files from the Public Search Facilities.

The current electronic records for issued patents and
Maintenance fees status, for example, are filled with errors. The
current electronic records are replete with errors because
scanning technology is inadequate to accurately scan documents,
such as patents.

Thus, the paper copies themselves are the only accurate
records of the patents.

And, if the paper records of the U.S. Patents in the Public
Search Facilities are discarded, the millions of dollars and tens
of thousands of hours of labor spent in sorting and shelving the
patents in the correct classification areas over the years will
be lost.

If no accurate patent copies are available, then Applicants
will make decisions based on inaccurate data.

Thus, future patent applications will be prepared at great
expense and venture capital money will be misallocated owing to
the electronic misinformation disseminated by the U.S. Patent
Office.

The Patent Office must keep all paper files until its
electronic records are as accurate as the paper records.

Please comment on when proper studies have been completed or
will be completed to ensure that the proposed sole reliance on
electronic records will be as accurate as the paper records.

Please address when the contents of the electronic database
will be as accurate as the paper files.

Please address how the Patent Office can legally dispose of
paper files when the counterpart electronic databases are much
less than one hundred percent accurate equivalents to the paper
files.

Please likewise comment on the appropriateness and legality
of reducing the accuracy of this publically available system
(i.e. The Public Search Facility) which is technically and
economically vital to U. S. inventors and businesses.

Please contact us should you have any questions regarding
the above, prior to responding during the extended comment
period.

Very truly yours,
Terrence L.B. Brown /s/
SHLESINGER, ARKWRIGHT & GARVEY LLP

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Comment

The Trademark Office Public User Society is an affiliation of professional trademark
research firms and individuals who make use of the United States Patent and Trademark
Office Public Search Facilities to conduct all manner of trademark research. Our
customers include practically all intellectual property practitioners and either directly or
by extension virtually every Fortune 500 entity. We submit the following comments on
behalf of the society to convey our grave concerns regarding the proposed elimination of
the classified paper files from the Public Search Facilities.

We believe that the request for comments is premature. The request should not be for
comments on the development of a plan to remove the files but rather whether the files
should be removed at all. As the electronic records and search systems for both patents
and trademarks are fraught with errors, omissions and search engine integrity issues, the
paper records constitute the only check on the veracity of the electronic data and are thus
essential to conducting a valid and reliable search. Given the problems and inaccuracies
of the eIectronic databases, any action by the Office to remove or otherwise make the
paper file less accessible to the public would result in searches replete with the database
errors and result in unnecessary litigation, infringement proceedings and questions of
liability, the ultimate cost of said proceedings being borne by any potential applicant
affected by said searches.

Although the total cost of such proceedings is inestimable, those costs pale in comparison
to the affiliated costs of advertising campaigns and materials, printing plates, etc. that will
have to be destroyed as a result of those search errors. Indeed, the aggregate
administrative, litigation, business costs are incalculable and do not include the additional
penalty of the loss of good will and brand identity in the market place.

As such, we advocate the retention of the paper file until such time as the integrity and
validity of the electronic record is the equivalent of a parallel search of both the paper and
electronic records.

Further, prior to any decision to remove the paper file, the Society believes that following
information should be released by the Patent and Trademark Office:

  1. The OMB analysis and comments of the notice, issues identified by OMB and the
    reasons for the ninety-day period between submission and publication of the notice.
  2. Any reports submitted to the Committees on the Judiciary of the Senate and the
    House of Representatives detailing the plan to eliminate the paper files.
  3. Details of the significant investment in the public search tools as it relates to
    trademarks as such information is not available in previously released budgets. Such
    details should include planned and actual expenditures from 1981 to 2001, identify
    each expenditure and its reIation to public search tools versus in-house PTO search
    tools, identify shared expenditures for public and in-house systems, identify exclusive
    expenditures for both public and in-house systems, identify PTO depository library
    expenditures by location, product, service expenditures, staff, staff support, consulting
    expenses and overhead for the years 1981-2001.
  4. Identify the USPTO portion of investment of fee income in the maintenance of
    trademark and patent databases as well as the development and enhancement of
    software and hardware search systems.
  5. Explain the rationale of eliminating the paper file while allowing patent examiners to
    retain some paper files for purpose of examining and approving applications for
    patents.
  6. Identify financial incentives, proposals and counter proposals offered to or by patent
    examiners to obtain their agreement on the phased elimination of the examiners’
    paper search files.
  7. Confirmation that the USPTO is on schedule to complete its relocation and
    consolidation at the Carlyle campus in 2004 and delineate what if any components of
    the agency will not be located at the new campus.
  8. Identify the amount of space to be allocated for the public search records and systems
    at the new campus and how the relocation will impact the maintenance of the public
    records.
  9. Provide all reports, white papers, memoranda and executive decisions regarding
    decisions or policies for the placement and maintenance of the public records at the
    Carlyle campus.
  10. Identify and provide details, including financial infrastructure, on the current USPTO
    planning approach to the dissemination of patent and trademark information and
    enhancements to patent and trademark databases.
  11. Identify and provide details on the electronic capture of trademarks to include the cost
    per page, average cost per file for each processing stage of the application process for
    both paper filings ,and electronic filings.
  12. Identify and provide detaiIs on the expected shelf life of digitized information by
    storage medium, plans for future technologies and expected changes to ensure the
    maintenance of digitized data for the next 25 years.
  13. Identify and provide details on plans to recapture data lost in any past or future data
    migrations from one medium to another.
  14. Identify what data has been lost by the USPTO in past data conversions or captiures.
  15. Identify the cost of maintaining digitized data by year for the years 1981-2001.
  16. Identify all software programs used by the USPTO for patent and trademark data for
    the years 1981-2001, the reasons why programs are no longer used, the shelf life of
    each program, and programs that were not used for their expected service life.
  17. Identify what programs did not meet their expected utility and the costs of each such
    program.
  18. Identify how many registrations, amendments, corrections, etc. are missing from
    USAMARK, the reasons for their omission and plans to capture the missing data.
  19. Identify and quantify the unavailability of the TESS and X-Search systems during the .
    years 1999,2000 and 2001 particularly noting the dates and number of hours for said
    dates that the systems were down.
  20. Identify the dates and numbers of hours for each instance when TESS and X-Search
    systems did not give complete or accurate search results or experienced data loss for
    the years 1999,2000 and 2001, and identify the reasons for such problems and how
    those problems came to the attention of the USPTO.
  21. Detail all USPTO efforts to inform the examining corps and the public of problems
    with USPTO data systems.
  22. Detail the USPTO estimation of the database search requirements and needs of the
    examining corps.
  23. Detail the USPTO estimation of the database search requirements and needs of the
    public.
  24. Detail the measures planned to ensure data quality upon elimination of the paper file.
  25. Detail plans to ensure that an archival record of all patents and trademarks is
    maintained.
  26. Identify each and every “non US trademark or service mark” mark required to be
    maintained on the register under 15 U.S.C. 11226(a) [44(a)] or by congressional
    statute, including WIPO and Fasteners Act. Explain which marks are and are not
    maintained on TESS and X-Search.
  27. Identify total funds collected through the Patent Search Room and the Trademark
    Search Library from 1981-2001, including photocopy and microfilm machine usage.
  28. Identify what assignments and recorded documents are not available on the PTO
    automated systems.
  29. Identify with specificity the trademark classified search files maintained in the search
    library.
  30. Identify with specificity all non trademark cIassified search files records maintained in
    the search library.
  31. Explain the PTO’s proposed backup system of search records in the event of
    unavailability of the automated records due to viruses or other contingencies.
  32. Explain why only a thirty-day comment period was originally set with the notice,
    given the public’s usage of the classified search files for over one hundred years.
We respectfully request that the comment period be extended at least for ninety days after
receipt of the answers to the above listed questions.

Sincerely yours,

Daphne Hammond, President

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Comment

We reference the recent notice in the Federal Register concerning an effort by
the Department of Commerce to eliminate the paper files at the U.S. Patent &
Trademark Office (Docket No. 010126025102501). This firm, which specializes in the
practice of Intellectual Property Law, believes that elimination of the paper files would
drastically impact our ability to conduct searches of the prior art. While the database
system provides value to us as a supplemental search tool, it does not provide the
equivalent of a manual search.

Very truly yours,

KELLEY BAUERSFELD LOWRY & KELLEY, LLP
Scott W. Kelley

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Comment

I am writing regarding the proposed disposition of paper files
proposed in the May 24, 2001 letter.

Regarding the D1 suggestion of offering the collection to another
governmental agency, this seems impractical. If any governmental agency is
to hold and maintain the collection it should be the PTO. The PTO already
has the expertise related to this unique collection. I agree with the
proposition that the collection is no longer needed for the PTO function and
could be eliminated. However if it merely is to be transferred to another
governmental agency, the actual transfer would incur senseless governmental
waste {as opposed to the sensible governmental waste we are accustomed to}.
The maintenance and rent cost associated with the housing and upkeep of the
collection can be transferred to the responsible agency so that this does
not effect the PTO budget.

Regarding D2, if there are educational facilities or other entities
willing to undertake this responsibility this would be a 'great option.
However, in time this third party, as did the PTO, may no longer find the
upkeep of this collection possible or viable. How long would the obligation
to maintain the collection be for? What happens after they are unable or
unwilling to continue in the upkeep?

Regarding D3-D4 seems to make sense if the collection cannot be
given to a party that would continue the function of the collection {i.e.
D2}.

I can attribute the opinions expressed only to me and indeed they
may be actually held by me alone.

Blynn L. Shideler
Reg. No. 35,034
The Webb Law Firm
700 Koppers Building
436 Seventh Ave.
Pittsburgh, PA 15219-1818
Phone (412) 471-8815
Fax (412) 471-4094

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Comment

I was responding to the notice of the possible elimination of the
paper files in the public search room. It seems that getting rid of the
paper files makes sense, specially since there does not seem to be any room
for much more in the current space. The East West system seems to work as a
superior replacement to the paper copies in the public search room. My
question is related. Is the east west system going to be made available at
the patent repository libraries around the nation. The system is much
faster and more efficient than searching via the Web page. If this is going
to be made available, what is the timetable. If not, why not. Since I am
in Pittsburgh, I would be most interested in when it will make it to the
Carnegie Library. Thank you for this information.

Blynn L. Shideler
The Webb Law Firm
700 Koppers Building
436 Seventh Ave.
Pittsburgh, PA 15219-1818
Phone (412) 471-8815
Fax (412) 471-4094

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Comment

The American Intellectual Property Law Association (AIPLA) appreciates the opportunity to
present its views on the Notice of Request for Comments on Development of a Plan To Remove the
Patent and Trademark Classified Paper Files From the Public Search Facilities, Federal Register, August
27,2001, pages 45012-45014.

The AIPLA is a national bar association of more than 13,000 members engaged in private and
corporate practice, in government service, and in the academic community. The AIPLA represents a
wide and diverse spectrum of individuals, companies, and institutions involved directly or indirectly in
the practice of patent, trademark, copyright, and unfair competition law, as well as other fields of law
affecting intellectual property.

The AIPLA understands the burden on the USPTO of maintaining both electronic and paper
collections of United States patents. We recognize that the USPTO must ultimately transfer or dispose of
its paper collection. The AIPLA also recognizes that the EAST and WEST electronic search systems are
a vast improvement over the former APS system. Our principal concern, however, is that we do not
believe that the USPTO has adequately informed the public about the merits of the electronic collection
and the increasingly limited ability of the paper collection. In order to obtain wide public acceptance of
this proposal, the plan which the USPTO is required to submit to the Senate and House Committees on
the Judiciary must address a number of public perceptions concerning the relative merits of the electronic
and paper collections.

The USPTO’s plan must address the perception held by some members of the public that the
electronic collections are in some ways inferior to the paper collections. For example, there is a belief
that certain classes/subclasses are still unavailable electronically, that the down time of the system is
excessive, that there are insufficient terminals, and that there are no foreign patents available
electronically. The Office should establish that its electronic collections are in fact complete and fully
searchable with little or no down time. The comparative integrity of its electronic and paper collections
should be publicized. The USPTO should also explain its plan for maintaining an adequate number of
terminals and the options available for searching the foreign art.

The USPTO’s plan must address the perception held by some members of the public that the
functionality of the electronic search tools may be inferior to searching by hand. A large part of the
public does not know that the Office has provided numerous search terminals with 21-inch monitors, that
drawing figures can be rotated and enlarged, that patent text can be enlarged or that patents can still be
searched by class/subclass just like the paper collection is searched. Some still believe that a fee is
charged for searching the electronic files. Thus, the Office must do a better job of publicizing the
capabilities of its electronic search facilities.

The USPTO’s plan should contain a commitment to provide adequate training of the public in the
use of the electronic search facilities, both to train new users and assist infrequent users. The USPTO’s
plan should also explain what backup systems will be employed in the event of a catastrophic failure.

We believe that the USPTO’s plan should set forth the steps it proposes to take to upgrade the
electronic searching facilities to include the full-text of U.S. patents prior to 1971. The plan should also
provide some reassurance to the public of its commitment to continue to provide for class and subclass
searching capability, a functionality which is critical for effectively searching in certain technologies.

There are those who make a living conducting searches, but who will never feel comfortable
using the electronic collections. AIPLA does not know how large this group is at this time. However,
before the USPTO transfers or discards its paper collections, the Office should make reasonable efforts
to ensure that the users of the paper collections are generally satisfied with the performance of the
electronic search facilities. We agree that reasonable efforts should be made to transfer the paper
collection to an entity that would maintain it before discarding the collection, but the failure to find a
third-party to assume maintenance of the paper collection should not prevent final disposition.

In summary, the USPTO’s plan should inform the public about the capabilities of the electronic
search collections and the electronic search tools, address the training of the public in the use of the
electronic search facilities, and explain its plans to enhance and improve the electronic searching
capabilities.

Sincerely yours,
Michael K. Kirk
Executive Director

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Comment

Electronic searches and paper searches provide overlapping-but-distinct,
qualitatively different kinds of search capability. In my own work, I
frequently find that an electronic search does not yield the very best
prior art. The electronic search usually gets me to the right subclass or
library shelf, but roughly half the time the truly best prior art that
makes the case for me is on the same shelf, or same shoe, but would have
been missed if I had not followed up the electronic search with a manual
search.

The figures provide a search mechanism that simply cannot be duplicated
electronically, at least not with today's technologies and IP bandwidths.

Based on my experience, both missions of the patent Office -- good
examination of patent applications and providing a searchable library to
attorneys and engineers -- would be seriously compromised if paper files
are not made fully available to both examiners and the public.

David Boundy

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Comment

The United States Patent and Trademark Office (USPTO) is established as an office in
the Department of Commerce, where records, books, drawings, specifications, and other papers
and things pertaining to trademark registrations shall be kept and preserved, except as otherwise
provided by law. 35 U.S.C.S 0 §1 (LEXIS 2001). Prior to passage of the American Inventor’s
Protection Act (AIPA) in 1999, title 35 of the United States Code simply provided that the
USPTO should maintain paper or microform collections of patents and trademark registrations
for public use. Section 4804(d)(2) of the AIPA now provides a procedure by which the Under
Secretary of Commerce for Intellectual Property and Director of the United States Patent and
Trademark Office may cease to maintain paper or microform collections. Once the public has
had an opportunity to comment the Under Secretary and Director shall submit a report to the
Committees on the Judiciary of the Senate and the House of Representatives detailing his/her
plan to cease maintaining paper or microform collections, including a description of the
mechanisms in place to ensure the integrity of such collections and the data contained therein, as
well as to ensure prompt public access to the most current available information, and certifying
that the implementation of such plan will not negatively impact the public. AIPA § 4804 (d) (2)
(1999). Furthermore, the transfer of the paper collections will likely require approval from the
National Archives and Record Administration (NARA). 44 U.S.C.S. § 2107 (l), § 3103 (LEXIS
2001).

Non-concerns:
(a) The transfer of ownership: The copies of any records, books, papers, or drawings
related to marks, and copies of registrations, maintained by the USPTO belong to the USPTO. 15
U.S.C.A § 1057 (f) (West 2001). The paper collections are copies of originals. Only these copies
are owned by the USPTO, and only the future of these copies is the subject here. Copies of these
copies are already being sold on a daily basis. Once the USPTO is authorized by Congress to
cease maintenance of the paper collections, it may transfer ownership in the paper collections.

(b) Prompt public access: Electronic access to the electronic collections, whether via the
Patent and Trademark Public Search Facilities or the World Wide Web, is likely to ensure
prompt public access to the most current information. Moreover, the microform collections will
be maintained.

CONCERNS:
(a) THE INTEGRITY OF THE PAPER COLLECTIONS: The plan for paper
disposition must include a mechanism to ensure the integrity of the paper collections and the data
contained therein. AIPA § 4804 (d) (2) (1999). Unfortunately, it is impossible to avoid the reality
that any physical transfer is likely to jeopardize integrity of the paper collections. Under the

assumption that the collections will be physically moved, the focus must be on ensuring their
integrity once the move is complete. The transfer to an entity similar to the USPTO, such as
another government entity entrusted with the maintenance of large amounts of paper, will most
likely ensure integrity. The transfer of segments of the collections to different entities is by
definition a failure to ensure the integrity of the paper collections. So, unless integrity of
segments of the collections is sufficient by law, the paper collections must be transferred as a
whole to one entity with facilities on par with the USPTO.

(b) THE POTENTIAL NEGATIVE IMPACT ON THE PUBLIC: There are two
possible readings of the last sentence of section 4804 (d) (2) of the AIPA - "that the
implementation of such plan will not negatively impact the public." A narrow reading would
limit the impact on the public to the impact on the public’s access to information maintained by
the USPTO. However, such a limit is likely already contained in the preceding language - "to
ensure prompt public access to the most current available information." The drafters of the Act
were more likely referring to the general public, and a transfer of the paper collections may
negatively impact the general public. By its own admission, unlike most Federal government
agencies, the USPTO is able to fully fund its operations. Most Federal agencies are funded by the
Federal government, which is, in turn, funded by the public - the taxpayers. Therefore, while the
transfer of the paper collections from the USPTO to any other government agency is likely to
reduce the expenses of the USPTO, and perhaps to a limited extent of those sections of the public
interested in utilizing its services, overall it will likely increase the funding required from the
government, indirectly burdening the taxpayer.

The Department of Commerce 2002 Budget allocates a $100 million increase in funding
to the USPTO. Aside from being an apparent contradiction to the agency’s statement that it is
fully self-funded, arguably this amount could be reduced if the cost of maintaining the paper
collections is transferred. However, the increased funding appears earmarked for further
development of "electronic" access systems, and is therefore not likely to be reduced by a
transfer of the paper collections.

(c) THE POTENTIAL FOR INCREASED COSTS TO ACCESS COLLECTIONS:
Under section 41 (i) (1) of title 35 of the United States Code the Director may not impose fees
directly for the use of any of the collections, or for the use of the public patent or trademark
search rooms or libraries. However, under section 41 (i) (3) the Director is authorized to charge
for access by the public to the automated search systems of the Patent and Trademark Office.
These automated search systems include electronic bulletin boards and remote access by users.
35 U.S.C.S. § 41 (i) (2) (LEXIS 2001). Presumably this includes access via the World Wide
Web. Once the paper collections are transferred most use is likely to be via automated search
systems. Therefore, despite the hardship exception, the overall cost to interested users may
increase should the Director elect to charge for the use of any automated search systems.

SPECIFIC COMMENTS ON THE FOUR OPTIONS FOR PAPER DISPOSITION:
D. 1 Offer the collections to the NARA or some other government agency (Federal
or state):
The NARA is authorized to accept records from a Federal agency either for historical
preservation or when the head of the agency determines it is in the agency’s financial interest. 44
U.S.C.S. § 2107 (1) and § 3103 (LEXIS 2001). The NARA is certainly likely to be in a position
to ensure the integrity of the paper collections. After all, it is the protector of the original
constitution and the bill of rights. However, a transfer of the paper collections to NAM is likely
to require an increase in funding, which may negatively impact the public in the form of higher
Federal taxes. Unlike most Federal government agencies, including the NARA, the USPTO is
able to fully fund its operations. Most Federal agencies are funded by the Federal government,
which is, in turn, funded by the public - the taxpayers. Therefore, the transfer of the paper
collections will likely increase the overall funding required from the government, indirectly
burdening the taxpayer.

D.2 Transfer ownership of the collections to an educational or not-for-profit entity
that agrees to keep them current and to make them available to the public (no exchange of
money).
The transfer of ownership to an educational or not-for-profit entity as stated raises the
issue of integrity of the paper collections. This issue will depend on the nature of the entity. For
example, many universities maintain significant paper collections, and would likely be quite
capable of ensuring the integrity of the USPTO paper collections. The transfer to a statewide
university system, such as the University of California, would offer extensive facilities and a
search system available to the public. Any transfer of ownership to a public or educational entity
will likely also require the approval of the NARA, and also the approval of Congress. 44
U.S.C.S. § 2107 (3) (LEXIS 2001). A physical transfer without a transfer of ownership may be
as attractive to an educational entity, would likely be less controversial, and would likely save
time.

D.3 Offer the collections for sale. The transfer of ownership by sale is likely the most
attractive option for the USPTO, as the collections would be another source of funds, with which
to further enhance the automated search systems, which in turn carry the potential of producing
income to the agency. Again, the main issue is the integrity of the collections may be
jeopardized. Presumably the sale would transfer the collections to a private entity. The continued
existence of a private entity is likely less certain than that of a government agency or even a
university. The terms of the sale would have to provide for the integrity of the collections in the
event the entity ceases to exist and in the event it transfers ownership of the collections. As with
option D. 2 the terms of sale would also have to provide for public access at a level similar to
that provided presently by the USPTO.

D.4 If necessary for disposition, divide the collections and permit the transfer/sale of
different segments to different organizations/businesses.
Any division of the collections will
threaten the integrity of the collections, and decrease accessibility. Moreover, such a disposition
will likely require the continued involvement of USPTO staff to ensure, to the extent possible,
the integrity of the various segments, that they are current, and that any further transfers of
ownership are recorded.

Conclusion:
The ideal disposition, as far as the USPTO is concerned, would likely involve the transfer
of ownership of the entire paper collections by sale to one privately funded entity with collection
facilities similar to those of the USPTO, and capable of offering convenient public access
comparable to that presently offered by the USPTO. With the appropriate contingencies in place,
this option would likely neither negatively impact the integrity of the collections, nor negatively
impact the general public. However, the more realistic disposition option, and that preferred by
this writer, is the physical transfer to a university with the Federal government retaining
ownership. A transfer to the NARA would possibly negatively impact the general public.
However, if such a transfer is possible without such impact, the collections would remain with
the Federal government, and access to them would likely not change significantly. Finally, the
fourth option would appear to be contrary to the statute, and should probably not be considered.

I am a law student at Seattle University. This comment reflects only my personal views on the
matter of D. Paper Disposition.

Markus B.G. Oberg

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Comment

These comments are presented in response to the Notice of Request for Comments
published in the Federal Register on August 27,2001. It is our understanding that the time for
submission of comments was extended for thirty days due to the tragic events of September 11,
2001.

The Patent Office Professional Association is an employee organization that represents
the approximately 3300 patent professionals at the USPTO. The vast majority of the employees
we represent are engineers, scientists and lawyers who work as patent examiners and patent
classifiers. These comments are submitted on behalf of the Association.

Although the Federal Register Notice assumes that the paper public search files will be
removed, the Association believes that this decision should be revisited. It was assumed by many
in our Association that the paper public search files would continue to be available as a backup to
our electronic database and would be available for use by the patent examiners when needed.

The Association recommends that the USPTO retain paper files in the public search
facility for at least the next ten years to both act as a backup to the electronic file and to provide
an alternative search capability for those situations in which a paper search file is more effective
and efficient.

Our members report that paper files are used to obtain copies of patents when the
electronic system generates a "no document is available" message or when the image of the
electronic document is unreadable. Waiting until the system malfunction is corrected is usually
an undesirable option since there is so much pressure to produce work quickly and since
examiner productivity is measured in six minute increments delays of days or even hours are
unacceptable.

In addition, the Association recommends that the documents now in the examiner search
files be used to replace the documents in the current public search room so as to preserve the
extensive annotations that the examiners have made to the documents over the years. In some
areas, some examiners have taken the initiative to color code elements or flow patterns in the
drawings. Other examiners have noted critical features in the drawings that are significant search
aids to often lengthy documents. Having these annotations continue to be available with that
information will maintain the efficiency and effectiveness of searches where that information is
critical. We hope that you can maintain the availability of this information until it can be
economically captured by a future electronic enhancement.

Considering that patent examiners will be potential users of any retained paper patent
files in the public search facilities, we strongly recommend that the location of those paper patent
files be no more than a short walk from the buildings housing the examiners.

Respectfully submitted,
Ronald J. Stern,
President
Patent Office Professional Association
Tel. (703)308-0818

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Comment

I am a professional patent and trademark researcher employed by several intellectual property research firms in Arlington,
VA. These comments are my personal views and have been developed as the result of fifteen years searching the USPTO
records and meetings with employees of all branches of the Office.

Upon examination of the notice, I have found several factual inaccuracies and omissions that need to be addressed. Firstly,
the e-mail address originally given for comments appears to be non-functional and has resulted in an untold number of
responses being returned to the senders. Secondly, although the X-Search system does contain the "text and image of over 2.7
million trademark applications and registrations" it is missing in excess of 577,000 cancelled or expired registrations. In like
fashion, X-Search does not contain the images or data of thousands of "informal applications", data that is present in a
searchable format in the paper records. Neither fact was published in the notice. Similarly, USAMark is missing
approximately 2-3% of all trademark registration images and suffers from severe programming errors that result in an
inability for the search engine to locate thousands of images present in the database . Further, the assertion that the
Trademark Electronic Search System (TESS) is a "searchable database including the full text and clipped images of all
trademarks" is fraudulent. TESS is missing the same registrations that are absent from X-Search and suffers from the same
coding errors, scanning errors, data entry errors and a more lamentable search engine.

The Office should be reminded that it is mandated to not only "maintain, for use by the public, paper,
microform, or electronic collections of United States patents, foreign patent documents, and United States trademark
registrations" but also that those records must be "arranged to permit search for and retrieval of information".(emphasis
added) Given the Office’s abysmal record of maintaining a complete, accurate and searchable database for either patents or
trademarks, I believe that the request for comments is premature. The request should not be for comments on the
development of a plan to remove the files but rather whether the files should be removed at all. As the electronic records and
search systems for both patents and trademarks are fraught with errors, omissions and search engine issues, the paper records
constitute the only check on the veracity of the electronic data and are thus essential to conducting a valid and reliable search.
Given the problems and inaccuracies of the electronic databases, any action by the Office to remove or otherwise make the
paper file less accessible to the public would result in searches replete with the database errors and result in unnecessary
litigation, infringement proceedings and questions of liability, the ultimate cost of said proceedings being borne by any
potential applicant affected by said searches.

Although the total cost of such proceedings is inestimable, those costs pale in comparison to the affiliated costs of advertising
campaigns and materials, printing plates, etc. that will have to be destroyed as a result of those search errors. Indeed, the
aggregate administrative, litigation, business costs are incalculable and do not include the additional penalty of the loss of
good will and brand identity in the market place.

The fact that the Office has invested "a substantial portion of its fee income in the maintenance of patent and trademark
electronic databases and the development and enhancement of software search vehicles", databases and search vehicles that
have proven to be inaccurate and of poor quality, should not in and of itself be a justification for the removal of the paper
search file. The cost of maintaining the paper search file is a mere fraction of the Office’s expenditures on electronic systems,
many of which do not work properly, are not fully deployed or cancelled when almost fully developed, i.e.: TRAM++. In fact
the cost of maintaining the paper search files for a year is often less than the litigation costs of a single high-profile patent or
trademark infringement action, actions that the paper file helps prevent. Furthermore, the expense of operating the public
search room has historically been offset by the fees collected by the Office for copies produced in the search rooms. The
Office should thus publish the amount it costs the agency to maintain both the paper and electronic records as well as the
amount of fees collected for the use of each.

Similarly, the assertion that the phased elimination of the patent examiners’ paper search files is a result of the patent
examiners’ increased reliance on automated searching is disingenuous as the elimination of those records was the result of a
labor negotiation. As detailed in the "Agreement on Initiatives for a New Millennium Between the United States Patent and
Trademark Office and The Patent Office Professional Association" in exchange for a reduction in the paper search files,
POPA members received a 10-15% salary increase, dependent on grade, and upgraded computer equipment.

Further, I believe the actions delineated in the notice are in violation of the provisions of OMB Circular A-130 in that the
agency has failed to:

Adequately consider the effects of their actions on members of the public and ensure
consultation with the public as appropriate. (8a(1)(b))

Protect government information commensurate with the risk and magnitude of harm that could
result from the loss. misuse, or unauthorized access to or modification of such information. (8a
(1)(g)

Ensure the ability to access records regardless of form or medium. (8)a(4)(b))

Establish and maintain communications with members of the public and with State and local
governments so that the agency creates information dissemination products that meet their
respective needs. (8a(6)(i))

Inform the public as to the limitations inherent in the information dissemination product (e.g.
possibility of errors, degree of reliability, and validity) so that users are fully aware of the
quality and integrity of the information. (Appendix IV)

Lastly, given the threat of cyber terrorism, denial of service attacks, computer viruses and the unknown shelf life of electronic
data in any format, the paper record stands as the only search system immune to technological failure or sabotage. Surely,
given the increasing number of online attacks, the cost of maintaining the paper record can be justified if it serves no other
purpose than to provide an option in the event of catastrophic data loss.

As such, I strongly endorse the retention of the paper file until such time as the integrity and validity of the electronic record
is the equivalent of a parallel search of both the paper and electronic records and all of the provisions of OMB Circular A-130
have been fulfilled.

In the event the Office wishes to pursue their elimination, I advocate the republication of a more factually accurate and
complete Notice of Request for Comments replete with full disclosure of the cost of maintaining the paper files as well as the
expenditures for the last ten years on the development and maintenance of the electronic search systems and databases.

Sincerely yours,
Robert B. Weir

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Comment

I wish to place myself on record that I, an independent inventor,
am vehemently opposed to this plan.

My affiliation as an inventor is that I am the CEO of NICTRONIX, Inc.
which held U.S. Patent 3,210,631, the brushless DC motor whis now
the workhorse motor used in all space vehicles, inasmuch as the fact
that other D.C. motors cannot operate in the vacuum of outer space.
I also hold three other patents and, after retiring, did patent
searching for patent attorneys for many months. This experience in
patent searching qualifies me as being more knowledgeable than most
independent inventors regarding the problems encountered in searching.

The following comments represent my personal views:

  1. For the past several years I have been handicapped in using a
    computer keyboard. My hands suffer from "intention tremor" which
    prevents me from using a sensitive keyboard because my fingers
    will sometimes cause the key to be struck more than once before I
    can withdraw my finger. Correcting the error thus caused takes
    extra time and requires me to monitor every stroke, thus causing me
    to take an inordinately long time to make a selection.
  2. Computer readouts allow only one page at a time to be examined.
    When a patent has one or more drawings, usually several of them
    with their individual numbered or lettered parts, it is much less
    cumbersome to flip pages back and forth between the text and the
    indicated parts while holding pages bound together than re-entering
    a computer display, especially if the searcher has an imperfect
    short term memory. To me this is the most important argument of all in
    favor of keeping the stacks. The time required to review one patent
    will be multiplied excessively.
  3. The computer necessarily narrows down to the exposure of one
    patent at a time and does not expose the searcher to the broad
    field in which a patent is filed in a shoe in a subclass in the
    search room. One advantage that the search room possesses is
    the educational advantage of being exposed to a wide range of ideas
    as the searcher views related state-of-the-art patents as he flips
    through a shoe for a whole subclass.
  4. The most compelling argument against relying on the computer
    only is the incompleteness of filing patents in all of the
    classifications in which a patent should be filed. For example,
    although my motor was not filed under motors with permanent
    magnet rotors although that was a major characteristic. It is an
    almost impossible requirement of classifiers that they cover all
    characteristics and file them in all the classes and sub-classes
    to which they pertain given the fact that educational backgrounds
    of classifiers can not be sufficient to the task - it is too big.
    If they all did a perfect job the total mass of the patents would
    be huge. In this respect the computer has an advantage, but
    searching time would be magnified.
  5. If the stacks were to be located elsewhere, the examiner's search
    rooms would be overtaxed to meet the demand.
  6. If the stack's were to be located elsewhere the inconveniences of
    running back and forth between examiners and the stacks location
    thus increasing the time and expense of processing a search,
    especially when a professional searcher is assigned to multiple
    cases.
  7. Clients would find it difficult to communicate with their
    searcher because the searcher is not always available at a central
    location.
  8. The added expense in time and money could discourage some
    inventors from pursuing a patent.
  9. The overall expenses of pursuing a patent would be shifted from
    the USPTO to the general public, thus providing no over-all savings.
Respectfully submitted,
Wesley O. Niccolls,Sr.

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Comment

As a self-employed patent agent active as well as a patent investigator I wish to state my
personal view with respect to the proposed file removal plan.

Inasmuch as the patent automation system as currently embodied by the EAST/WEST
classed search and image retrieval systems allows us to conduct patent investigations in
a vastly more efficient manner yielding additionally vastly increased integrity results, I do
not see a problem with the removal of the paper files.

What I would like to stress however is that (a) it is of uttermost importance that funding
be allotted to the maintenance and ever continuing refinement of the extremely valuable
USPC (United States Patent Classification) system for which there exists no
"replacement", (b) that funding be allotted for the provision of access to the foreign art
data bases beyond the limited access to European and Japanese patent abstracts, and (c)
that funding be allotted for the improvement of the quality of the EAST/WEST systems
particularly as relates to (i) image and text resolution quality and (ii) accommodation of
work station quality.

With respect to item (c)(ii) it is noted that it is only in the CSIR facility in the Crystal Mall
building that the accommodations are set up in the manner that is proper for high quality
professional patent research. The PSR stations do not provide sufficient space for
professional researchers to place background documentation relevant to a search, do not
provide the adequate privacy required for said mostly confidential background
documentation placement, and furthermore in the PSR environment the rules of proper
silence that are expected in such a patent research center are not adequately enforced.
(socializing conversations and cell phone conversations continue to constitute a source of
distracting acoustic pollution unbecoming of such an environment).

Your attention to these comments is appreciated.

Sincerely,
Alfred Gluecksmann
Patent Agent (34,993)

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Comment

I am writing in response to your request for comments on the issue relating to
your plans to remove the patent paper files from the public search room of the USPTO.
The elimination of the paper files is a goal that is not in the best interest of the public.
The paper files of the public search room are a valuable and unique national resource that
should not be removed. Their removal will be an increased barrier to our nations
technology and innovative progress and productivity.

Currently the Public Search Room is the only single location with paper patents
classified and cross referenced by subject. This provides a valuable resource for
inventors, researchers and attorneys that are not matched by any existing physical
collection or database in the world. The paper files allows for productive and efficient
researching relating to the novelty of inventions that is not closely matched by the
electronic document systems.

The current electronic document systems are useful for increasing the productivity
for some types of evaluations, such as determining best classifications for subsequent use
in a paper search. When used exclusively, the electronic systems have many shortfalls.
It is often necessary to look at the particular shape, element, construction or circuit that is
key to the innovation of an invention. Thumbing through the paper files provides an
efficient and productive source for research; a keyword search using the electronic
system yields very unproductive results. Mouse clicking through the electronic
documents is cumbersome and more time consuming.

Additionally, as a frequent user of the public search facility, it is typical to spend
days or weeks intensively reading patent documents. The current technology of the
computer monitors do not match the optical contrast that is displayed from paper
documents. Just as electronic books have not yet become practical, CRT and LCD
screens do not allow for safe prolonged reading of documents and result in known health
problems such as eyestrain.

The library of paper documents provides a secure hardcopy for the collection.
Electronic documents are often lost, dependant on power and quickly become obsolete
with frequent changes in formats. The long-term security of the documents is best
preserved by maintaining a paper file backup.

The electronic system provides certain benefits and best is used in conjunction
with the paper files but are not a sufficient replacement for them. The Paper files of the
Patent Offrce are a unique and valuable national resource. Ease of research provided by
use of the paper files has allowed for the transfer of knowledge contributing to our
nations technological advances and innovations. The paper files should remain intact as a
valuable asset to benefit future research and progress.

Sincerely,
David Goldstein

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Comment

I am sure that various reasons have been presented by others for
retaining the paper files (file integrity of the paper files, integrity of
the data base, etc.) and I will not reiterate them here.

I believe that an undesired deterioration in the PTO patent
classification is due in part to heavy reliance on computer searching based
on key words, forward citation, classification searching and the other tools
available with computer searching. While I do not know the history involved
in making a transition from paper to computer searching, I suspect that
decisions made in anticipation of a functioning computer search system
started the deterioration process.

This deterioration is evidenced by 1) Class definitions which provide
less information, 2) poor classification of individual patents and 3) new
Examiners who do not know the classification of their own arts.

In some ways, the most significant proof is the lack of concern and
awareness by the PTO of the deterioration.

Looking at these points:
>>> Point 1) Class definitions which provide less information
There was a time when the definitions of the subclasses provided much
more information than appeared on the schedule sheets. The definitions for
any art collection reclassified in the last 10 or so years often do no more
than take the words appearing on the schedule and make them into a complete
sentence. Further, it is now uncommon for the class definition for a
particular subclass to suggest a possible search in another subclass or
subclasses -- at one time, most subclass definitions in some classes would
suggest other subclasses which might be searched and very often the line or
conditions which would make a search in the suggested subclass advisable.
Generally, any class which has been reclassified within the last 10 years
appears to have this problem.

Proof of point 1) will be self evident with any comparison of old and new
class definitions.

>>> Point 2) poor classification of individual patents
I have only anecdotal experience to offer on this point. I know that
patents found in a computer search and issued more-than about 10 years ago
are more likely to have cited references of interest than are patents issued
more recently. I attribute this in part to a heavy dependence on hand
searching in the past and a greater awareness by Examiners of other arts --
which awareness comes in part from hand searching paper files.
More recently issued patents are less likely to be cross referenced
adequately. I believe that this results from Examiners who do not appreciate
the potential of good classification (see point 3) below).
Poor classification of individual patents would not be a serious problem
if patents could be assuredly found in a computer search. Unfortunately, a
good computer search makes use of classification criteria.

>>> Point 3) new Examiners do not know the classification of their own arts
-- the Examiners do not know the classification of their own arts any
better than does a searcher. When I first started searching in 1972 and went
to an Examiner for assistance, only the most junior Examiners ever looked in
the Manual of Classification or the Class Definitions unless he was offering
help in an art in which he had no experience (the expert Examiner was
unavailable) or he was proposing a search in another class and he wanted to
suggest a field of search in that class.

Patent searching by classification is a useful way to "thin" an answer
set of patents which have been collected by a key word or other computer
search scheme. However, computer searching does nothing to give the Examiner
an awareness, a feel, for the classification of those patents which he or she
finds. The Examiner who depends on computer searching does not have an
awareness of the importance of classification and is unskilled in suggesting
where an issued patent should be classified. Since the Examiner finds
patents using a computer in his office, he gains so feel or sense of the
physical location and the relation of that patent to other art which comes
with finding a patent in an unchanging stack of patents (the stack being
defined by the classification for that stack)

The classification system at one time was much more useful than it is
today. More specifically, the classification system was much more specific
with respect to defining where a given patent should be classified.

Retention of the paper files does not by itself solve the problem -- but
loss of the paper files would make it impossible to correct the problem in
the future by a simple change in training and required search procedures.

Thomas S. Moseley
Patent Searcher

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Comment

Thank you for the opportunity to respond to the notice announcing plans to remove the
Classified paper files from the Patent and Trademark libraries. The National Intellectual
Property Researchers Association (NIPRA), a non-profit organization, represents the
more than 150 professional researchers, including Patent Attorneys and Agents, engineers
and scientists, who are daily, heavy users of the Public Search facilities of the USPTO.
Our members represent, and conduct research for, thousands of companies, inventors,
and law firms in the US and abroad, all of whom are the USPTO’s customers. The views
in this letter are those of the organization and its members. Legal issues, including OMB
(Circular A-130) requirements, among others, are beyond the scope of this letter, and will
be addressed in letters from individual members of NIPRA.

Although some other responding organizations may be considerably larger than NIPRA,
our members are the only full-time users of the USPTO’s Public Search facilities. The
requirements of our members for a complete and organized collection of Patents and
Trademarks exceed even that of USPTO Examiners: the burden of finding all relevant
references is considered by clients to be a check on the Examiners’ search. Indeed, most
of our efforts are directed to finding better art than that found by the Examiner. Such
thoroughness is demanded by our clients to protect them from the high costs of litigation,
and results in a higher standard of patent and trademark quality at no cost to the USPTO.

Accordingly, NIPRA wishes to voice its strongest objection to any plans to dismantle, or
even downgrade, either the Patent or Trademark Classified Paper Libraries. Both
collections, having evolved over a great many years, represent both the creative output of
200 years of invention, as well as the thoughtful deliberation by PTO examiners in
classifying each into a system that is unique in all of technical literature. The Patent
Library and the Trademark Library are working collections, heavily used by thousands of
Examiners and Public Searchers daily.

The decision to remove the Libraries while the computer system, known as EAST /
WEST, X-Search, and TESS, has yet to prove itself as a replacement, is premature to say
the least: problems with the systems are experienced on an almost daily basis, sometimes
lasting for many hours. Nonetheless, many users have observed an intentional
disintegration in care of the paper files of both the Patent and Trademark Libraries that
has amounted to a form of sabotage of the paper files: as the files become more
disorganized, and as parts of the collections are purged (e.g. foreign patents and literature
on the Patent side, and the Classified Drawing Collection in Trademarks), researchers are
forced to become reliant on the computer systems. But the public is not being told by the
USPTO that both the Patent and Trademark computer databases are flawed and
incomplete; the public requires 100% integrity of the files they use.

Knowledgeable examiners and searchers alike attest to the attraction of computer
searching: the increased speed in locating some results, even if not complete or the best;
and the ease of sitting in one place to locate results, as opposed to seeking out paper files.
The EAST/WEST system offers a shortcut to locating some patents, but routinely fails to
provide thorough results equal to those of the traditional paper search. Examiners, public
searchers, and attorneys alike are aware of the differences:

1. The use of EAST/WEST for searching patents has caused a migration from
concept searching to word searching, and the results are totally dependent on the
ability (or luck) of the searcher to match his choice of terms with those chosen by
the writers of the patents he seeks. This disparity has been recognized for years by
professionals in database technology: in databases such as NIH’s Medline, journal
articles and studies are indexed by experts to avoid the mismatch in terms-sought
and terms-written. The lack of any form of indexing in the Patent database
increases the gulf between Classification based searching and text searching to the
point that there is often little similarity in results between a search conducted in
the Classified paper files and the same search conducted using text.

2. Computer searching does not lend itself to locating chemical structural formulae
or their equivalents.

3. Patents located during a computer text search often, after caretil study, fail to be
substantial enough to stand as references, as their basis for a "hit" came from a
term found in, for example, listed background material in a patent.

4. The resolution of monitors employed at workstations is too low to enable the
study of text and drawings needed to conduct a typical in-depth patent search. As
a result, user fatigue sets in long before a difficult search can be completed. Users
report abandoning a search before completion, and often printing large numbers
of patents to more conveniently read in print form.

The Classified Libraries offer a number of advantages:

1. Paper files offer a cross-check for computer search results in both Patent and
Trademark matters. Some computer search results are flawed to the extent that,
especially in Trademark searches, the results cannot be relied on until duplicated
in the paper files.

2. Paper patents are the basis for the Classification System. The fear of most serious
searchers and examiners is that, with the loss of paper, Classification will be
neglected and then disappear. Already, some subclasses have grown to over 4000
patents, and according to the Commissioner’s recent House testimony, the use of
text searching makes further breakdown of large subclasses unnecessary.

3. Location of the Libraries in the immediate vicinity of workstations and examining
groups facilitate efficient location of needed material, and allow collaboration
among users.

4. Finally, the Classified Libraries are by far the cheapest and most reliable system
for searching patents and trademarks, and as such, are the best backup system
available for a computer system subject to hardware / software / network / storage
media failure, and hacker / terrorist attacks. The computer downtime, which is
now considered routine, is more expensive in computer systems personnel and
lost user time than the Classified Library costs to maintain.

Costs to maintain the Classified Libraries, a small fraction of computer development and
maintenance costs, are totally covered by Applicant fees.

NIPRA recommends that the Examiner collections and the Public collection be combined
into one Library accessible to both groups. The combination would include Foreign and
Literature collections. The combination would take up slightly more than half of the
present total space required, would cost less to maintain, allow for better organization,
and in the process give more time to develop alternative solutions.

In summary, NIPRA’s position is that Examiners and Public alike are best served by the
combination of a well maintained paper library, and a well-designed and dependable
computer system. The Classified Paper collection of Patents and Trademarks must be
retained and restored to the level of completeness needed to have confidence in the work
performed.

Sincerely,
NIPRA
Christopher E. Kondracki,
President

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Comment

On October 9, 2001, the American Intellectual Property Law Association (AIPLA) submitted its
views regarding the plan to remove patent paper files in response to the Notice of Request for Comments
on Development of a Plan To Remove the Patent and Trademark Classified Paper Files From the Public
Search Facilities, 66 Fed. Reg. 45012 (August 27, 2001). We are now in a position to augment those
views with our comments on the plan to remove the trademark paper files.

The AIPLA is a national bar association of more than 13,000 members engaged in private and
corporate practice, in government service, and in the academic community. The AIPLA represents a
wide and diverse spectrum of individuals, companies, and institutions involved directly or indirectly in
the practice of patent, trademark, copyright, and unfair competition law, as well as other fields of law
affecting intellectual property.
As with the patent paper files, the AIPLA understands the burden on the USPTO of maintaining
both electronic and paper collections of United States trademarks. We recognize that the USPTO must
ultimately transfer or dispose of its paper collection.

With regard to the integrity of the data, it appears that most trademark attorneys, trademark
owners and other interested members of the public are already, and have been for years, relying on the
data in the automated systems. This is because the majority of persons and companies that conduct
trademark searches prior to adopting a trademark do so either by using the USPTO’s web-based
automated systems or by employing private trademark search firms that maintain databases compiled
from electronic data purchased from the USPTO. A smaller number of users use the automated systems
available on terminals and workstations in the public search library. So the vast majority of PTO
customers and users of their data are already relying on the automated data to make important decisions
regarding trademarks.

The USPTO has embarked on a program to encourage its customers to file trademark applications
and other papers electronically and, in fact, has recently published a Federal Register notice seeking
comment on its plans to make electronic filing of these documents mandatory. Currently about 25% of
all applications are filed electronically. As the number of electronically-filed applications increases,
either through voluntary use of the Office’s electronic filing system, or if e-filing becomes mandatory, it
makes less sense to maintain the paper file, as the source of most records will be electronic, not paper. In
fact, the classified paper records in the public trademark search library are currently printed from the
USPTO’s electronic records.

The functionality and reliability of the systems and equipment used to access the data has been
improved over the years and appears to be adequate. The USPTO’s trademark examining attorneys rely
on it exclusively when performing pre-allowance searches of newly filed applications. The functionality
of the systems allows searching that is more efficient and flexible than in the paper file, where a manual
alphabetical search must be performed.

It must be noted that a relatively small number of trademark practitioners and searchers, primarily
based in the Washington, D. C.--Northern Virginia area, still use the paper file, generally in conjunction
with the electronic systems, to perform searches and look-ups. While the USPTO should work to
address any lingering concerns that those users may still have about the adequacy of the automated
systems, the fact that most users in the US currently rely on the automated systems and records is
powerful evidence of the sufficiency of those systems. At the very least, the USPTO should ensure that
there will be an adequate number of terminals and workstations available to meet the additional demand
caused by removal of the classified paper files.

Finally, it must be noted that the cost of maintaining the paper records is for the most part funded
by application fees paid by all trademark owners. This money would be better spent in improving the
Office’s automated systems. In that regard, while this Association believes that the electronic systems
and data are sufficiently accurate and reliable to allow elimination of the classified paper records, clearly
the systems and data are not perfect and can be improved.

For the foregoing reasons, the AIPLA supports the USPTO’s plan to eliminate the classified
trademark paper records from the public search library.

Sincerely yours,
Michael K. Kirk
Executive Director
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Comment

These are the comments of Fross Zelnick Lehrman & Zissu, P.C., a New York-
based law firm that practices extensively in the field of trademark law, in response
to the Request for Comments on Development of a Plan to Remove the Patent and
Trademark Classified Paper Files from the Public Search Facilities (the "Notice").
The initial comment period was scheduled to end September 26,2001, but was
extended to October 29,200l.

The Notice states that the agency "intends to formalize a plan to eliminate the
paper collections of patents and trademark registrations and is providing the public
with an opportunity to comment on the appropriate scope and contents of the plan
that the USPTO is required to submit to the Committees on the Judiciary of the
Senate and House of Representatives".

However, on October 18,2001 - during the pendency of the public comment
period on this issue - the Office issued a notice entitled "Discontinued Support for
the Paper Classified Drawing Collection" which states it intends to discontinue
adding drawing pages from new applications to the paper classified files, effective
November 5,200l. We do not understand how such an action can be taken when
no plan for eliminating the paper files has yet been developed or submitted to
Congress for approval. This action will immediately undermine the classified
paper files collection, before the Office has demonstrated that its electronic
systems are a suitable and sufficient replacement.

Moreover, the October 18 memo reminds patrons that a form entitled the "On-
line/Electronic Database Discrepancy Form" exists for correcting "discrepancies
found in the various products". By making such a form available, the Office
acknowledges that its electronic systems, like all such databases, are vulnerable to
errors and omissions. It may be more difficult to reconcile these discrepancies if
the paper classified files are not maintained.

Any plan to eliminate the classified paper files must provide a means for the
Office to demonstrate that its electronic systems are complete, accurate, reliable,
safely backed-up at one, or more off-site locations, immune to attacks by hackers,
and readily available to the public in a cost-effective fashion. The classified paper
files, including the Paper Classified Drawing Collection, should be maintained
until the Office demonstrates that its electronic systems satisfy these criteria.

These comments were prepared by J. Allison Strickland and other partners of the
firm. Thank you for the opportunity to submit these comments.

Respectfully submitted,
FROSS ZELNICK LEHRMAN & ZISSU, P.C.
866 United Nations Plaza
New York, NY 100 17
212-813-5900
fzlz@frosszelnick.com

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Comment

We are members of a law firm that specializes in trademark law. Members of our
firm have been using the Trademark Search Library of the United States Patent and
Trademark Office since 1939. In addition, members of our family have been associated
with the USPTO and its predecessor agencies since 1909. Therefore, we have had a close
relationship with the workings of the trademark search facilities for close to a century.

Based on our knowledge and experience, we are very aware of the value of the
data contained in the public search records. We are familiar with the many reasons that
the public needs and uses the information contained in the records through our
continuous relationships with and representations of individuals as well as small and
large companies and corporations. In addition, we are and have been the Washington
associates for many U.S. and international firms. We understand the need for
maintaining the integrity of the valuable resources located in the public records of the
USPTO. As a result of our constant daily working with the records, both automated and
paper, maintained by the agency, we have been able to study the benefits and the
problems that appear in each of the formats.

We do not object to the development of a plan to remove the trademark classified
paper files from the public search facilities, provided that prior to the plan's
implementation and removal of any paper files, the USPTO must completely demonstrate
to the satisfaction of the user-public and the Congress that the automated records that
replace the paper files are complete, up-to-date and reliable with respect to all of the data
currently maintained in the non-automated records
. At the present time, the USPTO is
unable to demonstrate this to the necessary extent.

The following issues are illustrative of the points that should be addressed prior to
making a final decision:

Discrepancies in search results

In order to provide our clients with the most comprehensive and accurate
information from the public records, we conduct searches of the paper and the automated
records currently maintained in the Trademark Search Library. We continue to find
discrepancies in both formats. We have documented and reported thousands of references
in the paper records that are incorrect or inexplicably missing from the automated
records. The problem is caused by several factors, including input errors, data
maintenance and the limited capability to retrieve the information from the automated
search systems. We have also discovered that information has been inexplicably purged
from the automated search system. When inquiry has been made to USPTO officials, it
is apparent that the problem had not been discovered internally and probably would not
have been addressed if our inquiry had not been made.

Prior to the TICRS system, classified drawings for trademark applications
covering stylized and design marks were, in many instances, clearer and easier to search
in the paper records than in the automated search systems. While the manual and
automated application drawings use the same TICRS drawing for 761 and 781 series, the
search systems are different and present different searching capability. The high
incidence of keystroke error in data entry permanently "misfiles" alphabetical based
marks and fails to give notice by the automated system of the claimed trademark rights to
the public. The design search system utilized in the classified paper records provides a
quality control that enables correction of the design coding problems that have been
described in the past as a "disaster" by Robert Anderson, now Deputy Commissioner of
Trademarks. As noted above, we conduct search of both the paper and automated
search records available in the Trademark Search Library. The PTO has made
improvements in the automated system that aid searching and, in some search strategies,
enhance search capabilities. At the present time, however, our clients will be damaged by
the elimination of the classified paper drawings and registrations because the automated
records alone fail to give notice of trademark rights.

It should be noted that commercial trademark search firms, which purchase the
electronic data from the Office, place disclaimers on search reports that they are not
responsible for "incomplete or inaccurate data provided by the U.S. Patent and
Trademark Office."

Rise in Section 2(d) errors by examining attorneys


Moreover, at the Trademark Public Advisory meeting held earlier this month,
comments were made by PTO officials pertaining to the rise in Section 2(d) errors by
examining attorneys. Has the agency adequately reviewed this trend to see if the reason
for the increase relates to the sufficiency of the automated search system? According to
your notice, "the trademark examining attorneys rely solely on electronic records for
examining and approving marks for Federal registration." Has the Office recently done
any comparative searches of the paper classified records with searches of the electronic
search records? We suggest that this would be a great tool to see the adequacies of both
systems.

Incompatible electronic search systems

When we talk about the adequacy of the electronic records, which records are we
discussing.

One of the problems with the PTO’s automation projects centers on the existence
of too many different and in most instances incompatible systems. According to a
memorandum dated October l8, 2001 signed by Catherine Hollan, Manager Public
Search Facilities, "in an effort to improve the quality of our products and services,
Trademark Search Library patrons are reminded that discrepancies found in the various
products can be reported using the ‘on-line/electronic database discrepancy form’ located
at the information counter." Discrepancy forms are also available to report data
difference in the paper and the automated search systems. Therefore, the public is
providing quality control assistance and providing the Office with data to assist in the
subject decision. Has this information been tabulated?

What information is needed by the public

In our opinion, officials looking into the subject issue do not fully understand how
the Trademark Search Library is used. The Office is only concerned with 2(d) citations.
They do not have any use for information relating to abandoned applications or cancelled
or expired registrations; therefore, they do not maintain this information indefinitely in
the automated records. It is maintained, however, in the paper records and the microfilm
records in the Search Library. These records provides valuable information in the areas
of possible common law use, marks that have run into problems in the past and
ownership questions. We have been asked to find out about old marks. For example, we
have been asked, "Who filed for this mark? Did anyone ever have a registration for this
mark? or Did someone in Cuba or Czechoslovakia own a registration for this mark prior
to the country falling to a communist rcgime?" A significant portion of this "old"
information was never entered into the automated search systems. As time goes by, will
the Office delete similar information from its electronic databases as it was forced to do
with the previous X-search system when it reached "data saturation?" If so, where will
the permanent and complete records be maintained? Will the Office microfilm the paper
classified registrations that have been marked cancelled or expired and the classified
application drawings for marks abandoned since 1990 (the last time the records were
purged) before disposing of the paper records? The microfilming of such records is a
policy that has been in place for decades.

Past decisions made without proper data backup

Previously, the Office decided that it no longer wanted to maintain the original
records for assignment and other changes in title recorded prior to 1955. The records
were forwarded to the National Archives and Records Administration. The PTO did not
make microfilm copies of the documents prior to forwarding them to NARA. Recently,
we attempted to obtain copies of the documents. We made inquiry at the PTO and we
were told that the assignment records in question were "no longer our records" and the
PTO was "no longer responsible." Further, we were told that the Office did not know the
location of the records.

Therefore, it was necessary for us to make numerous phone calls to locate the
documents. When we finally contacted a person with knowledge of the records, we were
told that she was unavailable for three weeks and because no one else knew how to use
the records, we would have to wait until her return. We were also informed that the
Archive records were not open to the public for search purposes; therefore, only by
requesting specific documents, were we able to obtain the needed copies. The process
took four months.

This proves that the Office must and should make complete federal trademark
records available to the public in one place. If the Office completely satisfies the public
and the Congress that the classified paper records may be disposed, the collection should
be maintained intact. Transfer of the documents to the NARA will limit the public’s
access. What is the rationale for transferring the documents to another federal or state
government agency that does not have any expertise in the area? This does not seem like
an appropriate suggestion. Offering the collections for sale will limit the availability of
the collection to the public and is not an appropriate alternative. Dividing the collection
is not an option. The remaining alternative, transfer ownership of the collection to an
educational or not-for-profit entity that agrees to keep them current and to make them
available to the public (no exchange of money), may be a possibility; however, specifics
must be outlined.

Good Faith Issue

We are deeply disappointed by the attitude recently shown by the agency as
evidenced by the notice posted in the Trademark Search Library on October 18, 2001.
Prior to the closing of the comment period for the above noted subject, the agency has
already announced the "discontinued support for the paper classified drawings, also
referred to as the pending drawings digest, effective November 5, 2001. After this date,
no new information will be added to this collection. The paper classified drawings will
be retained until the space is needed for other uses. Paper copies of classified trademark
registrations will continued to be maintained in the Trademark Sesrch Library until
further notice."

Query: has the decision already been made?

For centuries the intent of a trademark from common law to statutory protection is
to give notice of claimed rights. For over one hundred years the agency has maintained
the paper classified records. The paper classified drawings have been maintained for
public searching over half of a century since Commissioner Daphne Leeds recognized the
importance of application drawings as an integral part of the Federal Register.
Commissioners Samuels and Hampton, as former and future practitioners, continued the
tradition to treat the drawings as part of the Register. It should also be noted that the
former Patent and Trademark Commissioners faced extraordinary budgetary and agency
constraints and, through their leadership, still managed to prioritize the needs of
trademark notice to the public over internal agency desires to reduce such responsibility.
Indeed, no practitioner would limit a search to registrations and no trademark examining
attorney would either. It is incomprehensible that the agency would make the specious
and insidious argument that it is not necessary to maintain the pending paper classified
drawing records. It is also very strange that an administration would make such a finding
and not proudly announce it to the bar or publish it in the Official Gazette. Indeed the
Office has continued to maintain the paper classified drawings after implementation of
the American Inventors Protection Act, thereby continuing the true spirit of the Lanham
Act and giving practitioners reliance on the Office’s actions. Congress has also made its
intentions clear in letters from Representatives Howard Cable and Howard L. Berman to
Acting Under Secretary Godici, that the paper classified records were to maintained and
any review of the maintenance was for the next permanent Director when appointed, not
the interim administration. This view was reiterated by former Director Q. Todd
Dickinson when he stated in San Francisco that the review of the paper classified papers
was a task for the next Director.

Paper Record Singular Importance

As discussed above, the paper classified records maintain registration certificates
application drawings and registration and application status data that are not available in
the automated system, but they also maintain amendment, correction and status
information that the Office has failed to capture and maintain in the automated search and
status systems. Again, Mr. Anderson has discussed problems with such amendment and
correction certificates that were filed in the search records but that all other copies were
destroyed. The paper classified records also maintain 44(a) statutory required information
that is not available and/or searchable in the automated records. We also agree with other
comments made to the superiority of the paper classified records for searching
nontraditional trademarks. We add that the paper classified search system is of such
flexibility that new non-trademark search categories such as Fasteners or Indian Tribal
Symbols can be easily initiated, maintained and reviewed.

Conclusion

Because the USPTO has not completely demonstrated to the satisfztion of the
user-public and the Congress that the automated records that replace the paper files are
complete, up-to-date and reliable with respect to all of the data currently maintained in
the non-automated records, it is premature for the agency to cease to maintain, for use by
the public, paper classified application and registration records, and it is premature to
plan the removal of the records.

These comments were prepared by Ellsworth M. Jennison, Kathryn Jennison
Shultz, John N. Jennison, Carl E. Jennison and other staff of the firm. Thank you for the
opportunity to submit these comments.

Respectfully submitted,
Law Offices of
Jennison & Shultz, P.C.
2001 Jefferson Davis Hwy.
Suite 1102
Arlington, Virginia 22202
(703) 415-1640
JennisonLaw@aol.com

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Comment

In a Federal Register Notice dated August 27, 2001, the PTO requested public comments on its
development of a plan to remove the classified patent and trademark paper files from the PTO
Public Reading Room in Crystal City, Virginia. The purpose of this letter is to present the
comments of the Section of Intellectual Property Law of the American Bar Association (IP Law
Section of the ABA) on the PTO request.

The PTO requested comments on the following points:

A. Measures required to ensure the integrity of electronic records.
B. Comparable functionality for searching and retrieving information from
electronic records
C. Re-classification of the patent electronic file
D. Paper Disposition

The IP Law Section of the ABA opposes the removal of the paper files. The members of the IP
Law Section believe that the paper files are an important tool for searching patents, particularly
in the mechanical and chemical arts. The paper files contain easy access to drawings and
chemical structures that are often difficult to review on the available patent databases. At
present, many of the patent databases require additional software or additional downloading
steps to view the chemical structures or drawings of patents. The electronic records are simply
not as efficient as a manual search in some cases.

In addition, the paper files may serve as a check or additional source if there is an error in the
electronic records. For example, if page images in electronic copies are incorrect because the
document was improperly scanned or read, the paper copies can serve as a source for correction.
The IPL Section also encourages the PTO to make the electronic records more complete. Thus,
certificates of corrections and reexamination certificates should be easily accessible from the
original patent.

In response to A, the IPL Section encourages the PTO to ensure the highest integrity and quality

for the electronic records. It is crucial that the electronic records be maintained up to date, and in
searchable form.

In response to B, it is important that there be greater access to the electronic records, with easy
and quick access to non-text images, including drawings and chemical structures. Without the
ability to review these parts of the patent, any electronic access is insufficient and cannot replace
the paper files. It is preferred that the available search engines be able to allow for use of
wildcards, truncators, expressions, and the (and) and (or) functions.

In response to C, the IPL Section favors continuation of the present classification system, since it
is familiar to patent practitioners.

In response to D, the IPL Section favors options Dl or D2, that is to transfer the paper records to
another government agency or a not-for profit organization that will promise to keep the paper
files up to date. It is preferred that the organization keep at least one set of the paper copies
available in classified form during regular business hours, preferably in the Washington, D.C.
metro area.

Thank you for providing the IP Law Section of the ABA the opportunity to comment on the
development of a plan for the PTO to remove the patent and trademark classified paper files
from the Office’s public search libraries. If you have questions regarding these comments, please
contact me or one of the co-chairs of our Committee on Patent and Trademark Office Affairs-
Patents. They are John C. Todaro (telephone 212 527-7659; e-mail jtodaro@darbylaw.com) and
Mark Garscia (telephone 626 795-9900; e-mail meg@cph.com).

Sincerely,
Charles P. Baker
Chair
Section of Intellectual Property Law
American Bar Association

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Comment

As a patent agent and searcher for the past 25 years, I am deeply disturbed by the proposed
elimiuation of the paper search files at the USPTO. The request for comment in the August 27,2001
Federal Register indicates that the PTO has decided to eliminate the paper records and that the request for
comments is directed at how to rather than whether to eliminate the paper files. This issue has not been
decided outside the USPTO. Congress has informed to PTO that this is a policy issue to be decided not by
the PTO alone but by Congress with input from all sides.

It would be a tragic error to eliminate the paper files because:

1. Computer systems go down, have software errors that "hide" data, and require
training to use.
2. The public, at large, will be prohibited from coming to the PTO to search. Any
WEB terminals in the searchroom? -NO.
3. The PTO collection is the only classified collection in existence. To eliminate it
would be to destroy it forever. Just as the examiners’ collections of foreign art and
literature has been mined by an ill-informed administration and can never be rebuilt
so will the US paper file be gone forever, an error from which we can never recover.
4. We, the public, search very differently from the Examiners at the PTO. At times, big
money rides on our work. We read claims for 8 to 10 hours some days. We search
for 12 hours some days. It cannot be done at a computer terminal. Many studies
bear this out. Keyword searching is a small part of good patent searching. The PTO
sees it as an end-all. The validity of issued patents suffers as a result.
5. It is not a matter of budget but a matter of convenience that has resulted in the
possible (probable) removal of the paper files. Convenience has never been the
measure of success. If the US is to remain the premiere Intellectual Property
repository of the world, please do not take the easy way out. Serious searchers need
the paper files to complement the undeniably valuable computer systems developed
in recent years. But the computer systems are one tool, not the only tool.

I commend the PTO for its work in developing the computer systems presently deployed. I
commend you more for the maintenance of the paper flies for the last two hundred years. Why
stop now when we have the best system on the planet to sadly end up, paperless, like everyone
else?

Wait, I have an idea.. . why not remove all the seats in the search
room and put the paper files there? Your concern for the public is
admirable. Thanks .

Jeffrey M. Ketchum
2001 Jefferson Davis Highway, Suite 1210
Arlington, VA 22202
301-537-7236. email- jeffketchum@yahoo.com

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Comment

The undersigned write in opposition to the proposal to eliminate the classified paper search
files from the Public Search facilities as proposed.

From a review of the written comments received on this subject to date by your office it is
clear that many of the comments have been submitted by ‘secondary information disseminators’ who
are among the most knowlegable of the users of the PTO information services. These comments are
nearly unanimous in their opposition to the elimination of these unique classified paper records.

We would summarize and agree with the reasons expressed to date for this opposition as
three-fold: 1) the classified paper records offer uniquely valuable methods of accessing relevant
information in ways not available or not cost-effectively available by electronic systems; 2) there
have been and no doubt will continue to be a variety of technical shortcomings in electronic search
systems, including, but not limited to: computer down time during which no searches can be
conducted; errors and omissions of data; un-user friendly search parameters and limitations; 3)
concerns over the security of the electronic search systems fiom electronic terrorism andor computer
viruses or the functional equivalent.

We would add to these reasons as follows:

By way of example, the classified trademark records both pending and registered as
maintained in the PTO facilities in Arlington include various categories of data that are not cost
effectively searchable under ANY electronic search system developed to date, public or private.
Trademark records are such that, by their very unique and sometimes perverse nature, as a whole
they defy standard rules of ‘boolean logic’ or even constructed “design codes” and thus cost
effective electronic searching. As to word mark searching, during a search the paper files educate
the searcher as to various aspects of the word(s) in question more effectively than do electronic
systems by providing the researcher a 'birds eye' view of the word(s) spanning product and
classification categories. That is not to say that at some time in the future cost effective and
improved electronic search systems may not be devised such that the classified paper search records
will no longer be a unique and thus incalculably valuable national resource.

Thus, at present, and for the forseeable future, there are several levels of unique information
available within the classified paper files utilized every day in the search libraries of the PTO.
Especially as regards searches of designs and certain other non-word marks (such as product
configurations and trade dress) conducted without access to those records, a greater increase of risk
of missed references arises which in turn can result in unquantifiable cost to American [and
international] business in the form of otherwise avoidable conflict and infringement litigation. The
avoidance of such conflict is the raison d 'eke of the information dissemination function of both the
PTO and secondary information disseminators.

The foregoing is the reason the Office of Management and Budget (OMB) places such
importance on the opinions of 'secondary information disseminators' where information
dissemination policy is being formed or is under review.
Appendix 4 to OMB Circular no. A-130 reads in part:

"Section 8a(5)(d)(iii), requiring agencies to take advantage of all dissemination channels,
recognizes that information reaches the public in many ways. Few persons may read a Federal
Register notice describing an agency action, but those few may be major secondary disseminators
of the information. They may be affiliated with publishers of newspapers, newsletters, periodicals,
or books; affiliated with on-line database providers; or specialists in certain information fields. While
millions of information users in the public may be affected by the agency's action, only a handful
may have direct contact with the agency's own information dissemination products. As a deliberate
strategy, therefore, agencies should cooperate with the information's original creators, as well as with
secondary disseminators, in order to further information dissemination goals and foster a diversity
of information sources. An adjunct responsibility to this strategy is reflected in Section 8a(5)(d)(iv),
which directs agencies to assist the public in finding government information. Agencies may
accomplish this, for example, by specifying and disseminating "locator" information, including
information about content, format, uses and limitations, location, and means of access. "

In this situation, it is clear that those secondary information providers who have submitted
comments to date overwhelmingly oppose the elimination of the unique classified paper files. We
join that opposition for the reasons stated above and since to eliminate those records at this time
would be to seriously undermine effective information dissemination to the American public in a
manner which would add significantly to intellectual property conflict and litigation costs to
American and international business interests.

Respectfully submitted,
Brian D. Anderson
Roberta S. Bren
Kathleen Cooney-Porter
Colette Durst-Barkey
P. Jay Hines
Jonathan Hudis
Jeffrey H. Kaufman
David J. Kera
Jordan Weinstein
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Comment

The following comments, directed primarily toward patent considerations,
but also having some bearing on trademark considerations, are submitted pursuant
to the above-identified notice and are my personal views based on over forty-five
(45) years of experience in the intellectual property field, first as an Examiner and
subsequently as a patent agent, with primarily a search practice. I have also been
granted, as sole inventor, over a dozen US patents.
Before any plan is submitted to the judiciary committees at least the
following items should be addressed and rectified as necessary.

1. Public Patent Electronic Search Systems Reliability

The subject systems are still exhibiting considerable down time and other
problems.

It is recommended that the trouble-log-keeping by the Patent Public Search
Room (PPSR) PTO personnel at the CSIR and PPSR control desks be made more
rigorous; be compared monthly with logging kept by the Chief Information
Officer’s technical staff; and that an analysis of such log keeping and comparison be
made public each month.

Such a system would give the public and probably also the PTO a better
understanding of the search systems’ reliability than they now have. Such logging
should apply to all PPSR electronic search systems including CASSIS.

Related to the above, how would PTO PPSR users be accommodated (in the
absence of paper files) if some or all of Patent Electronic Search Systems were
down.

2. How does the PTO plan to accommodate first time or seldom-seen PPSR
users in the absence of paper files, in particular if the novice or seldom-seen user is
not computer literate?

It is noted that many walk-in visitors come to search one time only. With
paper files the instructions by the PTO PPSR Technical Information Specialists
(TIS) before the novice is able to search is short. Since the PPSR electronic search
systems have a rather complex keyboard command requirements, would the PTO
plan to have the TIS personnel key-board for the novice or seldom-seen user? If so
would it offer such service at no charge, (as paper pre-search instructions have
always been given)?

3. How would any PTO plan justify or rationalize that less searching
resources (i.e. searching without paper files) are better than more, particularly
when the US paper classified patent files are an obvious bargain compared to the
electronic systems. PTO could prepare an annual cost chart of paper versus
electronic systems, say 1988 to date so the judiciary committees and the public
generally could know budgetary facts of life.

4. What system or improvements should the PTO put in place to ensure the
integrity of the content of their computerized databases relative to the US paper
patent classified files before considering removing or destroying these files.
East/West are known to have considerable disintegrity versus the paper files. Here
are a few examples of patents found in the subclasses noted in the paper files, which
will not be found in subclass searching on the PPSR electronic systems:

US Patent 2,816,361 in Class 33, subclass 5; 4,579,479 in Class 404, subclass
103 & US 3,851,084 in Class 426, subclass 808.

Many other instances of paper subclasses versus computerized subclasses
disintegrity are also known to exist with the computerized subclasses sometimes
lacking only single US patents found in the paper files and sometimes several patents.

5. East/West currently lacks the ability to allow full-text searching of the
content of about 4,500 Re-examination Certificates. These certificates by their very
being are some of the most strongly prosecuted items in the US patent literature, the
results of their re-examinations are often of vital interest to various segments of the
intellectual property community. How does the PTO plan to make these re-exams
and other after original issue materials full text searchable?

6. How does the PTO plan to expand or modify it’s electronic systems
security measures in view of the recent (September 11th) Pentagon terrorism (which
only missed the PTO Crystal City complex by about a mile), and in view of the
Examiners’ work-at-home arrangement. It would seem that this latter arrangement
could offer miscreants opportunities to compromise the PTO’s electronic systems
that did not exist before such arrangement.

7. How does the PTO plan to address the on-going decrease in re-
classification efforts, which is leading to larger and larger subclasses? (This, of
course, impacts both electronic and paper searching.)

8. Ancillary to paper removal it is questioned on what grounds, in view of the
statutory section quoted in the subject Federal Register notice, the PTO has failed to
maintain the microfilm (or microform) collection of patents subsequent to
December 1999 since it is believed that no plan to stop maintaining this resource has
been submitted to the judiciary committees.

9. Professional searchers of my acquaintances, almost without exception,
have expressed to me their feelings that, while computer searching is and will no
doubt continue to improve as a useful adjunct to paper searching, paper is still their
resource of choice, particularly where long and often tedious searching efforts such
as encountered in infringement and validity searching are concerned. Such
searchers have also expressed their feeling that higher quality search results flow
when paper is one of the searching resources used. I agree strongly with both of
these just-mentioned feelings.

10. It is believed that multiple site public hearings should be conducted on
the PTO’s plan after it is developed, but before it is sent to the judiciary committees,
whereby the public can critique and possibly cause the PTO to re-consider or
amend same.

11. With regard to any paper removal/disposition decision, it is strongly
suggested that any final decision in this regard should be postponed until the move
to the new PTO location is imminent. Further, it is suggested that any
removal/disposition be confined to the local area and preferably to a location readily
available to the new PTO location, and that such decision not include destruction or
dismemberment of the US paper files resources. Respectfully submitted, Glenn E. Wise Registration No. 19,370


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