United States Patent and Trademark Office OG Notices: 17 December 2002

                 USPTO Announces Prototype of Image Processing

   The United States Patent and Trademark Office (USPTO or Office)
is pleased to announce that a prototype of electronic image processing
of patent applications will commence in December, 2002. Three art units
in Technology Centers 1600 and 2800 will participate in this prototype,
as well as sections of the Office of Initial Patent Examination (OIPE)
and other related processing divisions.


   This prototype program will test the use of image technology to
replace the standard paper processing of patent applications currently
used in the USPTO. The paper document contents (including the
specification, oath or declaration, drawings, information disclosure
statements, amendments, Office actions, and file jacket notations) of
pending applications assigned to the three participating art units will
be scanned into electronic image files. All processing and examination
will be performed with the image files, instead of the paper source
documents, by the examiners, technical support staff and all other
USPTO professional staff during the prototype.

   The prototype will not affect applicants during the patent
application submission process. Some changes in amendment practice will
be requested from applicants on a voluntary basis in making replies to
applications assigned to the affected art units (please see details in
the WAIVER section below). Upon commencement of the prototype, the
Office will request amendments in a special format in all pending
applications assigned to the three participating art units. The request
will be included in an information sheet attached to all Office actions
mailed by the three participating art units during the prototype, and
also included in a separate notice.

   In addition to the changes to the amendment process, applicants
in the participating art units will not be sent paper
copies of US patent and published application references. The
information sheet attached to each office action will guide applicants
to receive electronic copies of US patent and published application
references cited by the Office. These cited references will be
available from the USPTO web site. Paper copies of the references will
be available on request. Cited foreign patents, foreign published
applications and non-patent literature will be mailed in conventional
paper form.

   The technology and procedures for the prototype program are
similar to those used at the European Patent Office, but adapted to the
legal requirements and existing computer systems of the USPTO. The
Office intends to incorporate the experience and lessons learned from
this prototype program into a production system for all patent
applications in the near future. Business processes used during the
prototype program will be analyzed and modified as needed for the
production system.

   New utility applications and pending applications in the
participating art units will be processed during the prototype program
in electronic image format. The paper documents that are the source of
the image files will be separately maintained and constitute the
official files at the USPTO. The official paper file will be used by
parts of the Office not participating in the prototype program (e.g.
the Board of Patent Appeals and Interferences.)

   It is expected that the prototype program will incrementally
migrate into a production system, with the goal of eliminating paper
patent applications in the near future.


   37 CFR 1.121 requires that amendments to the specification and
claims be provided as a clean copy of the replacement paragraphs,
sections or claims and be accompanied by a marked up copy of the
paragraphs, sections or claims showing the changes made to the original
specification or section, or to the prior version of the amended claim,
by the amendments. The USPTO, however, would prefer that applicants use
a special amendment process on a voluntary basis for applications
assigned to the three participating art units. The requirements of 37
CFR 1.121 will be waived for applications assigned to the three
participating art units, provided that applicant follows the
instructions for amendments that will be included in all Office actions
issued in applications assigned to the three participating art units
(also posted on the USPTO web site (www.uspto.gov)). In
general terms, those instructions will provide for a new complete claim
set with changes marked in strikeouts (for deletions) and underlining
(for additions) for each amendment. While claims that are not amended
would be submitted as part of the claim set, no clean copy of the
claims that were amended would be necessary. Amendments to paragraphs
or sections of the specification will continue to follow the
requirements of 37 CFR 1.121, to include a clean version in addition to
the marked-up version.

   We welcome your comments on the prototype of image electronic
processing of patent applications. For further information on the
prototype, please contact the Search and Information Resources
Administration at: image.processing@uspto.gov. For
information on the waiver or legal aspects of the prototype, please
contact Jay Lucas (jay.lucas@uspto.gov), Rob Clarke
(Robert.clarke@uspto.gov) or Joseph Narcavage

                                                           STEPHEN G. KUNIN
                                                    Deputy Commissioner for
                                                  Patent Examination Policy