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Information for the Public Referenced Items (61, 62, 63, 64, 65)
(65)                     Improved Pre-Exam Notices to
                       Result From the Deployment of the
                  Patent Application Location and Monitoring
                  (PALM) Migration Pre-examination Subsystem


The Patent Application Location and Monitoring Migration (PALM-MG)
pre-examination subsystem in the Patent and Trademark Office (PTO) is
scheduled to be deployed in February, 2000. Under PALM-MG, all notices
issued by the Office of Initial Patent Examination (OIPE) regarding new
application filings shall no longer be manually completed on pre-printed
forms. Instead, all such notices shall be computer generated and only
include application specific information. Further, the information on
and the format of filing receipts issued by the PTO shall change. The
changes are expected to result in notices and filing receipts which are
simpler, easier to understand and of higher accuracy.


The Patent and Trademark Office (PTO) expects to deploy the first stage
of a modernized Patent Application Location and Monitoring system (PALM)
in February, 2000. This first stage is part of a larger PTO redesign
project, known as PALM Migration, that will replace the existing PALM
system, in stages, over the next few years. The first stage of PALM-MG
implementation involves using the PALM-MG pre-examination subsystem in
the Office of Initial Patent Examination (OIPE). OIPE will use the
PALM-MG pre-examination subsystem to: (1) complete the pre-examination
processing of U.S. national applications; (2) support the patent
application formalities review process and the generation of
correspondence with applicants; and (3) record most of the routine
events that occur during the pre-examination processing of a patent
application which, for example, will result in a record of documents
received and notices sent. U.S. national stage applications under 35
U.S.C 371 are processed by PCT Operations, not by OIPE.

Specifically, OIPE will use the PALM-MG pre-examination subsystem when
performing the patent application formalities review process of filed
application papers to determine whether (1) the papers are sufficient so
an application filing date can be granted; (2) the appropriate filing
fee and oath or declaration have been filed; or (3) any pages of
specification or figures of drawings have been omitted. The PALM-MG
pre-examination subsystem will then be used to generate all outgoing
correspondence related to the pre-examination processing of the filed
application papers. From the public's perspective, the most apparent
change resulting from OIPE's use of PALM-MG will be that the notices
(e.g., the notices used to inform an applicant if his/her application is
incomplete and/or has missing parts or omitted items) and filing
receipts issued by OIPE will look different. The PTO expects that the
use of PALM-MG will result in greater clarity and higher accuracy in the
information communicated in the notices and filing receipts issued by


OIPE currently uses standardized pre-printed notices to inform an
applicant when his/her application (1) is not entitled to a filing date
(e.g., "Notice of Incomplete Application" - PTO 1123), or (2) is
entitled to a filing date but does not include the appropriate filing
fee and/or oath or declaration (e.g., "Notice to File Missing Parts of
Application" - PTO-1533), and/or omits any of the pages of
specification or figures of drawings (e.g., "Notice of Omitted Items" -
PTO-1669). The standardized pre-printed notices are also used to inform
an applicant about other informalities in the application papers, such
as an application filed in a language other than English without a
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certified translation. As the PTO's existing PALM system is only capable
of printing header information (which includes basic application
identifying information and the correspondence address) on pre-printed
notices, the balance of these pre-printed notices must be manually
completed by checking of one or more appropriate blocks or hand-writing
in information. In some circumstances, more than one such manually
completed notice is necessary.

Under the new PALM-MG pre-examination subsystem, however, all notices
shall only include application specific information that is computer
generated. First a formalities examiner in OIPE will review the
submitted application papers and complete a detailed on-line checklist.
Then the PALM-MG pre-examination subsystem will process the information
from the completed checklist and determine whether a notice to the
applicant is necessary. If it is, the PALM-MG pre-examination subsystem
will generate a single comprehensive notice customized to that
application. Thus, the notice will include only the paragraphs and
information applicable to that application, including any fee amounts
that are due, which will be calculated by the PALM-MG pre-examination
subsystem taking into account whether the applicant has small entity
status, the type of application, the number and types of claims, and any
fee amount already paid. The PALM-MG pre-examination subsystem will also
be used to generate customized notices when notifying an applicant about
abandonment, termination of proceedings, or new or changed data related
to a Customer Number.


After implementation of the PALM-MG pre-exam subsystem, the PTO will
continue to issue filing receipts; however, the previous two-sided blue
filing receipt will be replaced by a white filing receipt with two holes
punched in the top, printed on only one side, with additional pages
when necessary. Other visible changes in filing receipts are as follows:

   1. The field for attorney docket number has been expanded to 25
alphanumeric characters, and can accommodate mixed case letters, spaces,
and commas (not previously acceptable). The attorney docket numbers
which appear on customers' monthly deposit account statements, however,
will not reflect these changes since the financial accounting system is
a separate automated system. An updated version of the Revenue and
Accounting Management (RAM) system expected to be released in the
current fiscal year 2000 and will include an expanded attorney docket
number field consistent with the PALM-MG pre-examination subsystem;

   2. All the remaining fields of data printed on the filing receipt will
be in mixed case letters rather than all in upper case letters as
before; and

   3. An asterisk shall appear next to any continuity data to indicate when
applicant's continuity data differs from the PTO's data. When an
applicant claims priority of a previously filed application, the PALM-MG
pre-examination subsystem will be used to check the data on the
previously filed application and whether the PTO has recorded any
continuity data for the previously filed application. Thus, the PALM-MG
pre-examination subsystem will retrieve all the continuity data on all
prior applications when recording continuity in the application claiming
priority. The formalities examiner, when completing the detailed
checklist, will compare the retrieved PTO data with the data submitted
by applicant. Any inconsistencies in the data involving the filing date,
patent number or status of any priority application will be entered into
the system, and result in an asterisk being printed next to the
continuity data on the filing receipt, along with an explanatory note
indicating that the continuity data is inconsistent with PTO records.
Any request for correction of continuity data for a previously filed
priority application must be directed to the priority application whose
data is incorrect and not to the application for which the filing
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receipt was issued.


OIPE currently issues a filing receipt at the time an application is
accorded a filing date, and issues an additional filing receipt, without
charge, if the filing fee and/or oath or declaration are submitted after
the filing date of the application. The PTO also issues a corrected
filing receipt, without charge (regardless of fault), when correction of
a filing receipt is requested by the applicant.

OIPE has recently taken steps to expedite the process of handling
requests for corrected filing receipts. Previously, it was necessary to
locate and retrieve the application file in order to make corrections.
The new process involves viewing a scanned image of the application
documents, as filed, thereby eliminating the need to retrieve the
application file. If desired corrections and/or changes to a filing
receipt are based on information that was not present in, or has changed
from, the application, as filed, applicant should submit supporting
documents (e.g., the executed declaration) and a marked-up copy of the
filing receipt along with the request for corrections. Whenever
possible, applicants should submit requests for corrected filing
receipts along with the reply to an OIPE notice since an additional
filing receipt is automatically generated when the reply is processed.


The PTO strongly encourages the use of Customer Numbers in order for
applicants to obtain even greater accuracy in their filing receipts and
notices. A Customer Number may be used to designate the address
associated with the Customer Number as the correspondence address of an
application or the fee address of a patent, and to submit a power of
attorney in an application or patent to the registered practitioners
associated with the Customer Number. See MPEP 403. Since the use of a
Customer Number significantly reduces the amount of data that must be
entered into the PALM-MG system, the data in the PALM-MG system and the
correspondence address appearing on the filing receipt and any notices
should be more accurate. The use of a Customer Number also permits a
change of correspondence address or a change in practitioners of a law
firm to be made in multiple applications through a single paper directed
to the Customer Number, rather than separate papers directed to each

Questions regarding this change in procedure should be directed to the
Office of Initial Patent Examination Customer Service Center at (703)

February 9, 2000                                         NICHOLAS P. GODICI
                                              Acting Assistant Commissioner
                                                                for Patents

                                 [1231 OG 122]