United States Patent and Trademark Office OG Notices: 07 May 2002
DEPARTMENT OF COMMERCE Patent and Trademark Office RIN 0651-AB34 Proposed Plan for an Electronic Public Search Facility AGENCY: Patent and Trademark Office, Commerce. ACTION: Notice of public hearing and request for comments on the proposed plan for an electronic public search facility SUMMARY: The United States Patent and Trademark Office (USPTO) is proposing a plan to eliminate the paper patent and trademark registration collections from its public search facilities and to transition to electronic patent and trademark information collections. The USPTO has determined that paper patent and trademark registration collections are no longer needed for public reference because of the availability of mature and reliable electronic search systems in its public search facilities. The USPTO is seeking public comment on issues related to this proposed plan. The USPTO is also seeking input on whether any governmental entity or non-profit organization is interested in acquiring the paper patent and trademark registration collections to be removed from the USPTO's public search facilities. DATES: A public hearing will be held on May 16, 2002, starting at 9:30 a.m. and ending no later than 5 p.m. Those wishing to speak must request an opportunity to do so no later than April 30, 2002. Speakers should provide a written copy of their remarks for inclusion in the record. To be ensured of consideration, written comments must be received on or before May 16, 2002. Any interested governmental entity or non-profit organization should contact the USPTO on or before May 24, 2002, to indicate a desire to acquire the paper patent and trademark registration collections to be removed from the USPTO's public search facilities. ADDRESSES: The public hearing will be held in the Patent Theater located on the second floor of Crystal Park 2, Room 200, 2121 Crystal Drive, Arlington, VA. Any request to speak at the public hearing must be submitted by electronic mail message over the Internet to firstname.lastname@example.org or by facsimile to (703) 308-7792, marked to the attention of Ronald Hack, Deputy Chief Information Officer for Information Technology Services. Comments should be sent by electronic mail message over the Internet addressed to: email@example.com. Comments may also be submitted by mail addressed to: Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Washington, D.C. 20231, marked to the attention of Ronald Hack, Deputy Chief Information Officer for Information Technology Services, or by facsimile to (703) 308-7792. Although comments may be submitted by mail or facsimile, the USPTO prefers to receive comments by electronic mail message over the Internet. The USPTO also prefers that the comments be submitted as machine-readable submissions provided as unformatted text (e.g., ASCII or plain text), or as formatted text in Microsoft Word (Macintosh, DOS or Windows versions) or WordPerfect (Macintosh, DOS or Windows versions) format. If submitted by mail, machine-readable submissions may be provided on a 3 1/2-inch floppy disk formatted for use in either a Macintosh or MSDOS-based computer, and must be accompanied by a paper copy. Any governmental entity or non-profit organization interested in acquiring the paper patent and trademark registration collections to be removed from the USPTO's public search facilities should contact Ronald Hack, Deputy Chief Information Officer for Information Technology Services by facsimile marked "ATTN PAPER COLLECTIONS" at (703) 308-7792. FOR FURTHER INFORMATION CONTACT: Ronald Hack by telephone at (703) 305- 9095, by facsimile at (703) 308-7792, by electronic mail at firstname.lastname@example.org; to Martha Sneed by telephone at (703) 308-5558, by facsimile at (703) 306-2662, by electronic mail at email@example.com; or by mail addressed to the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Washington, DC 20231, marked to the attention of Ronald Hack, Deputy Chief Information Officer for Information Technology Services. SUPPLEMENTARY INFORMATION: The USPTO proposes a transition to electronic patent and trademark information collections in its on- campus public search facilities in Crystal City, Arlington, Virginia, by eliminating the classified paper patents and trademark registrations from the Patent Search Room located in Crystal Plaza 3/4, 2021 South Clark Place, and the Trademark Search Library located in the South Tower Building, 2900 Crystal Drive. The USPTO has determined that these collections are no longer needed for public reference because of the availability of mature and reliable replacement in-house electronic search systems in its public search facilities. The USPTO has devoted significant resources to the successful development of electronic search systems now widely used throughout the USPTO public search facilities. They provide equivalent functionality to the paper files and superior storage, maintenance and efficiency features. The paper classified files are incomplete by nature of the format. There may be missing or misfiled documents, potentially impacting search results which rely only on the paper classified files. Replacement of paper collections provides the USPTO the ability to migrate away from reliance on paper-based resources in its public search facilities and focus its limited resources on increased support of the electronic resources. I. Introduction Section 41(i)(1) of Title 35, United States Code (U.S.C.), requires the USPTO to maintain for use by the public collections of United States patents, foreign patent documents, and United States trademark registrations arranged to permit search for and retrieval of information. See 35 U.S.C. 41(i)(1). Section 4804(d)(1) of the American Inventors Protection Act of 1999 (AIPA) amended 35 U.S.C. 41(i)(1) to allow the USPTO to maintain an electronic collection of these documents, in place of the former requirement in 35 U.S.C. 41(i)(1) that the USPTO maintain a collection of these documents in paper or microfilm. See Public Law 106-113, 113 Stat. 1501, 1501A-589 (1999). Section 4804(d)(2) of the AIPA, however, provides that the USPTO shall not: cease to maintain, for use by the public, paper or microform collections of United States patents, foreign patent documents, and United States trademark registrations, except pursuant to notice and opportunity for public comment and except that the Director shall first submit a report to the Committees on the Judiciary of the Senate and the House of Representatives detailing such plan, 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. See Public Law 106-113, 113 Stat. at 1501A-590. Section 41(i)(2) of Title 35, U.S.C., also provides that: The Director shall provide for the full deployment of the automated search systems of the Patent and Trademark Office so that such systems are available for use by the public, and shall assure full access by the public to, and dissemination of, patent and trademark information, using a variety of automated methods, including electronic bulletin boards and remote access by users to mass storage and retrieval systems. The USPTO has been actively engaged in a program to automate access to U.S. patents and to U.S. trademark registrations for a number of years. The first automated search systems were publicly deployed in 1985 for U.S. trademarks and 1989 for U.S. patents and have been upgraded and enhanced to the extent that they now meet or surpass the U.S. paper collections in completeness and timeliness of newly added material, and provide equivalent or better functionality in search strategy. Patent examiners and trademark examining attorneys have used these systems daily since their inception. As a result, the USPTO has had feedback on the operation of these systems and knows that the systems perform to the task and are user friendly. A selected inventory of publicly available USPTO searchable databases is included in the Appendix. These replacement electronic search systems now provide the USPTO the ability to migrate away from reliance on paper-based resources in its public search facilities and focus its limited resources on increased support of the electronic resources. The use of electronic systems has increased by public searchers to such a degree that the number of workstations in the public search facilities have increased from 33 in 1999 to 122 in 2002 to meet significantly higher demand. In fiscal year 2001, online system hours used by the public in USPTO's public search facilities totaled 90,990 hours, an increase of 36,357 hours over the previous fiscal year. Therefore, consistent with the AIPA, this is the USPTO's proposed plan for an electronic public search facility. To accomplish a transition to electronic resources, the USPTO proposes to remove the two paper collections of search files currently available in the USPTO on-campus public search facilities. One collection consists of U.S. patent copies arranged by technology in accordance with the U.S. Patent Classification System. The other collection consists of U.S. trademark registration copies arranged by components specific to the registration. II. Background The Public Search Facilities of the USPTO serve as the on-campus facilities for the public to access United States patent and trademark information collections, and obtain training on and assistance with using these collections. All industrialized countries provide similar facilities or functionality at or through their respective national intellectual property offices. At the USPTO Public Search Facilities, patent and trademark information is provided to the public in a number of formats including the online examiner search systems, paper search files in classified and numeric sets, and multiple formats of source documents and additional data made available for a wide variety of research purposes. The public search facilities for patents and trademarks are physically separate. The Patent Search Facilities consist of the Patent Search Room (PSR) where there are multiple formats of patent data including paper files and automated systems; the Patent Search and Image Retrieval Facility (PSIRF), which is a center for all electronic patent search and retrieval activities; and the Patent Assignment Search Room (PASR), which contains microfilm of ownership deed assignment, card files and automated search systems. The Patent Search Facilities provide public users access to classified paper files, numeric microfilm files, CD-ROM search collections, assignment systems, and the examiners' automated search systems, Examiner Automated Search Tool (EAST) and Web-based Examiner Search Tool (WEST). Numbers of public users in these facilities have been tracked since October 1999. Highest concurrent use in the Patent Search Facilities occurs at approximately 2 p.m. each day with 135 users. Online statistics show a daily high of 256 unique users in the PSR and PSIRF combined. The Trademark Search Library (TMSL) provides public user access to paper classified and numeric files as well as the automated search systems used by examining attorneys: X-Search, the USPTO's administrative database for tracking trademark applications and registrations, the Trademark Recording and Monitoring system (TRAM), and finally, the system that retains copies of all incoming applications, Trademark Information Capture and Retrieval System (TICRS). Data collections are maintained in several formats including paper, automated, microfilm, and CD-ROM. The trademark assignment of ownership collection is also available in the TMSL. There are approximately 35 public users daily in the TMSL. The USPTO Public Search Facilities serve users who are highly skilled professional searchers conducting searches for law firms, business entities, and individuals. There is also a steady stream of new customers who use the facilities for a very limited time and for purposes of a fairly narrow scope. There are approximately 300 new users every month. Although paper files have been available throughout the deployment of our electronic search systems, use of electronic search systems has increased beyond our expectations. We have responded by adding extra workstations to ensure ready availability of the electronic search systems for all users. The ability to conduct a complete patent or trademark search depends as much on the capability of the searcher as it does on the availability and completeness of the data. Expert searchers are not limited to residing in the Washington, DC area; nor are they limited to using the resources available in the USPTO on-campus search facilities. Electronic patent and trademark searching is also not a new phenomenon. Commercial online databases first appeared in the early 1970's. The USPTO has over 16 years of experience in providing online access to the public for its searchable databases. These 16 years have seen tremendous change and significant improvement in the systems available from the USPTO. It should also be mentioned that the AIPA amended 35 U.S.C. 122 to provide for the publication of pending patent applications, with certain exceptions, promptly after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought ("eighteen-month publication"). See Changes to Implement Eighteen-Month Publication of Patent Applications, 65 FR 57023, 57024 (Sept. 20, 2000), 1239 Off. Gaz. Pat. Office 63, 64 (Oct. 10, 2000) (final rule). The Office has been publishing patent applications ("patent application publications") electronically under the eighteen-month publication provisions of the AIPA since March of 2001. The Office does not maintain paper copy collections of these patent application publications in either the Public Search Room or the examiners' search rooms. The Office expects that, due to their earlier publication date, these patent application publications will over time replace patents as the primary prior art and technology dissemination document. See Changes to Implement Eighteen-Month Publication of Patent Applications, 65 FR at 57042, 1239 Off. Gaz. Pat. Office at 79 (response to comment 27). Thus, a complete prior art search must include a search of relevant patent application publications. Therefore, for the prior art search to be complete, any person conducting a prior art search must conduct an electronic search of these patent application publications. The USPTO has invested, and continues to invest, a substantial portion of its appropriation in the maintenance of patent and trademark electronic databases and the development and enhancement of software search vehicles. As a result, trademark examining attorneys rely solely on electronic records for examining and approving marks for Federal registration. Additionally, in view of patent examiners' increasing reliance on automated searching, the USPTO began phased elimination of paper copies of U.S. patents from examiner search files beginning in October 2001. It is anticipated that by the time the agency completes its relocation and consolidation at the Carlyle campus in Alexandria, Virginia, in 2005, a substantial portion of the patent examiner paper search files will have been eliminated. The USPTO's current planning approach to the dissemination of patent and trademark information is to continue enhancing its electronic databases that capture the content of patents and trademarks, and to continue to support the USPTO Web site, the network of 87 Patent and Trademark Depository Libraries, and the sale of its data products. III. Proposed Plan for an Electronic Public Search Facility A. Status of Replacement Electronic Search Systems The U.S. patent image database contains the complete printed patent of all patents granted from 1790 to date, including bibliographic information, specifications, drawings and claims. Extensive efforts over a number of years have been undertaken to ensure that this database is as complete as possible. As patents issue each week on Tuesday, this database is updated the same day with that week's issue of patents. The U.S. patent image database is available in the public search facilities through the WEST and EAST search systems, and at no cost for search time. Both offer the ability to mimic the search through paper classified files by allowing users to retrieve patents by technology in accordance with the U.S. Patent Classification System. It provides a quick flip rate through the documents, the same way that one would conduct a search through a stack of paper patents. But unlike the paper file, the patent image database remains complete at all times and available to multiple users simultaneously. The primary search tool used for trademark searches called X-Search, includes a reproduction of the mark, as well as other information, from every pending application and active registration. It also includes the mark, and other information, from any abandoned application, or any canceled or expired registration, unless the application was abandoned or the registration was expired or canceled before March 1, 1983. The database also includes the marks protected under Article 6ter of the Paris Convention for the Protection of Industrial Property. This database can be searched using a variety of approaches, e.g., by mark, by owner name, by filing date, etc. The database is updated daily, with new information concerning pending and registered trademarks. It surpasses the completeness and timeliness of the paper classified trademark registrations because, among other things, the paper document must be printed from the same system that uploads the data to the trademark database. Then the paper copies must be marked for filing, and then filed. This additional processing needed to maintain the paper classified trademark registration collection makes it a less timely collection, and therefore, less accurate to search. In addition, pending applications that abandoned after 1983 and before 1990 have been purged from the paper files but remain available in the electronic files. This makes the electronic search systems more comprehensive in scope. The electronic systems that would replace the paper collections in the search facilities were developed specifically for use by USPTO examiners using a well-defined and long established process that guides and controls the development and implementation of information technology initiatives. The USPTO, in making these systems available in the public search facilities, recognized that there might be different requirements for public access. The USPTO makes an effort to obtain public user requirements from internal and external sources, although enhancements required to achieve improved examiner productivity have priority. Enhancements to systems are announced in the search facilities and are often available for demonstration to the public prior to deployment. USPTO electronic search systems are well supported in the event of unscheduled downtime. Service goals for the public as well as the examining corps are in place and supported by USPTO management. Each step taken to correct an unscheduled interruption in service is documented, shared widely internally, and tracked for completion. Redundant formats of source documents are readily available in the public search facilities in microfilm, CD-ROM, DVD-ROM, and numerically arranged bound paper format, in the event of system downtime. Searchers may also utilize resources on the USPTO Web site. Like paper files, errors can occur in electronic search systems. However, mechanisms are in place for tracking, reporting and fixing errors that are made as a result of internal processes. The paper classified files are incomplete by nature of the format. There may be missing or misfiled documents, potentially impacting search results which rely only on the paper classified files. The USPTO follows the regulations and requirements of Federal agency records management, and the agency provides for effective controls over the maintenance of its records, in all media, paper and electronic, in accordance with 44 U.S.C. 3102. The agency has established effective controls for electronic information. Controls are in place throughout the life cycle of any information system that contains and provides access to computerized Federal records and nonrecord information. The USPTO is committed to ensuring the integrity of data when changes in media and format occur. B. Paper Records Identified for Removal The USPTO proposes to remove the following paper collections of patents and trademark registrations, located on USPTO premises in Arlington, Virginia, at the earliest time permitted by law. The descriptions and associated dispositions of these two collections are cited from the Comprehensive Records Schedule maintained by the agency as a records management requirement of National Archives and Records Administration (NARA). 1. Patent Classified Search Files (Patent Search Room, Crystal Plaza 3/4, Lobby Level-Room 1A01, 2021 South Clark Place) Copies of printed domestic patents. Domestic patents are arranged first by group and then by subgroup. These copies are used to facilitate public patent searches by class and subclass. Disposition Nonrecord: Destroy when no longer needed for public reference. 2. Registered Trademarks (Trademark Search Library, South Tower Building, Room 2B30, 2900 Crystal Drive) Trademarks registered by the USPTO for national and international business, government, membership, and service organizations. Records consist of individual sheets by registration number cross-filed in the appropriate design categories and in the following groups: words, international registrations, art of manufacturing, and color marks. Includes foreign marks submitted under the Paris Convention by the WIPO and government agencies which entered their logos and weapons names into the search files under Executive Order 11628, FR vol.36, No. 203, Oct. 20, 1971. Covers records from 1870 to the present for paper copies. Used as the public reference copy. Disposition Nonrecord: Destroy when no longer needed for public reference. The USPTO has determined that these collections are no longer needed for public reference because of the availability of mature and reliable replacement in-house electronic search systems in its public search facilities already described. C. Public Comment The USPTO undertook, as required by AIPA, a period of public comment on issues related to the removal of paper. See 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 (Aug. 27, 2001), 1250 Off. Gaz. Pat. Office 137 (Sept. 25, 2001). The original deadline for comment was September 29, 2001. The notice was subsequently reopened for comment on October 4, 2001, with a second deadline of October 29, 2001. A total of 49 responses were received. Both the original notice and all responses are available for viewing on the USPTO Web site at www.uspto.gov. The USPTO received a number of comments that did not pertain to the paper removal plan. They included comments regarding patent text searching, foreign patent documents, non-patent literature, and questions that appear to be requests for information under the Freedom of Information Act, and are therefore not germane to the issue. The notice particularly solicited input on the following items: a. Measures required to ensure the integrity of electronic records. b. Comparable functionality for searching and retrieving information from electronic records. c. Reclassification of the patent electronic file. d. Paper disposition. D. Timetable for Removal of Paper Collections The USPTO proposes to begin the removal of paper classified U.S. trademark registrations and U.S. patents at the earliest time permitted by law. It is anticipated that one collection would be completely removed before the removal of the other collection begins although no determination has yet been made about which of the two identified collections would be removed first. All paper identified for removal would be removed by the time the new electronic search facility opens in the USPTO's consolidated facility on the Carlyle site in Alexandria, Virginia, which is currently under construction. The space for the electronic search facility is expected to be available in the fall of 2004. The removal of paper would be handled in such a manner as to cause as little inconvenience and disruption to public users as possible. E. Interim Steps The USPTO, working with guidance from NARA, proposes to seek a governmental entity or non-profit organization to accept the two paper collections and assume the responsibility for their update and maintenance. Failing interest, the USPTO would seek opportunities for sale of the collections. At the time the USPTO begins seeking a governmental entity or non-profit organization to accept the two paper collections, the USPTO will stop adding any more weekly patent issues or trademark registrations to the collections. In addition, the USPTO would also begin moving certain paper collections from the public search facility for storage pending their transfer, sale, or destruction. The USPTO would continue to add workstations for the public to search databases as demand increases. The USPTO would continue to offer public training in all of its electronic search systems for varying levels of expertise. The USPTO would continue to offer specialized reference services tailored to the particular needs of novice users in patent and trademark searching. The USPTO would continue its efforts to comply with ergonomic design standards for computer workstations. The USPTO would continue to advise the public in the search facilities about progress regarding paper removal through a series of posted public notices, similar to public notices that have been posted in the past regarding equipment, systems and other issues impacting the public. The USPTO would continue to refine its planned electronic public search facility for the new space in Alexandria to reflect ongoing developments in public use of the current facilities such as reducing wait times for system access and designing sufficient work and table spaces to maximize terminal use. F. Final Status At the completion of the removal of the two identified paper collections, the USPTO would consolidate its patent and trademark public search facilities into one consolidated electronic public search facility with the full complement of well-supported electronic search systems, trained staff, and ergonomic workstations. Fees to access USPTO electronic search systems were temporarily suspended in the USPTO public search facilities beginning October 1, 1999. These fees would be permanently waived at the time of the disposal of the classified paper files so that access to all USPTO electronic search systems in the public search facilities would be free. Charges for printing hard copies would remain in place. Numeric sets of U.S. patents and U.S. trademark registrations would continue to be maintained in combinations of various formats including paper, microfilm, CD-ROM and DVD-ROM. IV. Conclusion The USPTO is mandated to operate in a cost-effective manner, and to continue moving toward an online environment for service delivery to its customers. The USPTO has devoted significant resources to the successful development of electronic search systems. These systems are now widely used throughout the USPTO public search facilities. They provide equivalent functionality to the paper files and superior storage, maintenance and efficiency features. The USPTO proposes to eliminate the classified paper patents and trademark registrations from the Trademark Search Library located in the South Tower Building, 2900 Crystal Drive, and the Patent Search Room located in the Crystal Plaza 3/4, 2021 South Clark Place. Elimination of these paper files is consistent with the USPTO's goals, strategic information technology plans, and the agency's operational practices. V. Issues for Public Comment A. To Present Written Comments The USPTO wants to obtain comments and suggestions on the proposed plan for an electronic public search facility. Interested members of the public are invited to present oral or written comments on any issues they believe relevant to the proposed plan. The USPTO reserves the right to limit the number of public comments presented if necessary due to time constraints at the hearing, but will accept and consider all written comments submitted. In your response, please include the following: name and affiliation of the individual responding; clear identification of the matter being addressed; an indication of whether comments offered represent views of the respondent's organization or are the respondent's personal views; and if applicable, information on the respondent's organization, including the type of organization (e.g., business, trade group, university, non-profit organization). B. To Request an Opportunity To Speak at the Hearing Persons interested in speaking should send their request by electronic mail message over the Internet to: firstname.lastname@example.org. Requests to speak should include: name and affiliation of the individual requesting the opportunity to speak; the organization represented by the respondent; contact information (address, telephone, e-mail); information on the specific focus or interest of the respondent or the respondent's organization. Speakers should provide a written copy of their remarks for inclusion in the record. VI. Interest in Acquiring the Paper Patent and Trademark Collections To Be Removed From the USPTO's Public Search Facilities Any donation of the paper patent or trademark registration collections must comply with the NARA regulations for the donation of temporary records which are set out in 36 CFR 1228.60. For example, the donee must be a governmental entity or non-profit organization and must agree not to sell the patent or trademark registration collections except as wastepaper, the donation must be made without cost to the United States Government, and NARA must provide written approval of the donation. Thus, even if there is interest by a governmental entity or non-profit organization in acquiring the patent or trademark registration collections removed from the USPTO's public search facilities, the USPTO may still dispose of these collections as wastepaper if the USPTO cannot donate them to the governmental entity or non-profit organization in a cost-effective manner or if the USPTO cannot obtain written approval for the donation by NARA in a timely manner. Finally, as the USPTO will not be conducting a file integrity review of the patent or trademark registration collections as they are being removed from the public search facilities, the USPTO cannot assure that the patent or trademark registration collections being removed the public search facilities are complete. April 3, 2002 JAMES E. ROGAN Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office Appendix; Selected USPTO Electronic Databases and Search Tools Made Publicly Available In the Public Search Facilities: Public EAST & WEST Systems: the full text of over 2.5 million U.S. patents issued since January 1971; the full images of over 6.5 million U.S. patents issued since 1790 and over 14.5 foreign patents; English translations of 5.1 million Japanese patent abstracts; and English translations of 3.1 million European patent abstracts. X-Search System: text and image of over 2.7 million trademark applications and registrations (including active, canceled, expired, and abandoned). Cassis2: A suite of optical disc products providing access to patent and trademark search tools, patent classification data, and selected bibliographic data. USAPat: Facsimile Images of United States Patents on DVD-ROM and CD-ROM USAMark: Facsimile Images of United States Trademark Registrations on CD-ROM On the USPTO Web site: Trademark Electronic Search System (TESS): searchable database including the full text and clipped images of all registered trademarks; U.S. patents issued from 1790 through 1975 - searchable by patent number and current U.S. patent classification; U.S. patents issued from 1976 to the most recent issue week - searchable by full-text fields that now include current U.S. classification data; Published applications; and Patent and trademark manuals and search tools.