(184) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1, 2, and 10
[Docket No. 921061-2261]
[RIN 0651-AA50]
Electronic Filing of Patent and Trademark Applications
Agency: Patent and Trademark Office Commerce
Action: Advance Notice of Proposed Rulemaking
Summary: This advance notice of proposed rulemaking is to inform the
public that the Patent and Trademark office (PTO) is considering
amending its rules of practice: (1) to allow for electronic filing of
patent applications and trademark applications; and (2) to require
applications filed in paper form to follow a prescribed order and format.
The PTO anticipates that permitting electronic filing of applications
will improve the accuracy of the information relied upon in the
examination of patent and trademark applications, eliminate delays
caused by mailing and data entry, and, as a first step toward a
fully-automated processing system, ultimately provide considerable cost
savings. The cost savings realized could be used to help reduce the need
for future fee adjustments and/or fund improvements in the delivery of
services. Requiring applications filed on paper to follow a prescribed
order and format will enable the PTO to convert these applications to
electronic format.
The purposes of this notice are to: (1) invite interested parties to
participate in pilot programs involving electronic filing of patent and
trademark applications; and (2) encourage comments on this topic, in the
form of responses to the questions posed in this notice, from industry,
the patent and trademark bars, and members of the public.
Dates: Comments should be received on or before Feb. 28, 1993.
Addresses: Written comments should be addressed, if sent by mail, to the
attention of Edward R. Kazenske, Executive Assistant to the Commissioner
and Director of Interdisciplinary Programs, c/o Commissioner of Patents
and Trademarks, Washington, D.C. 20231. If delivered by hand, comments
should be brought to the Office of the Executive Assistant to the
Commissioner and Director of Interdisciplinary Programs, Room 906,
Crystal Park 2, 2121 Crystal Drive, Arlington, Va.
For Further Information Contact: Edward R. Kazenske, Executive Assistant
to the Commissioner and Director of Interdisciplinary Programs, (703)
305-8600.
SUPPLEMENTARY INFORMATION:
1. Pilot Programs
Currently, the PTO accepts patent and trademark applications delivered
by mail or in person. These applications are in paper form or, in the
case of patent applications for nucleotide sequences, a combination of
computer-readable (see 37 CFR 1.821-1.825) and paper form.
The PTO is initiating a pilot program that would permit electronic
filing of patent and trademark applications, using software now under
consideration by the PTO. Initially, it is anticipated that participants
in the pilot program would be required to use the PTO software to create
a diskette, which would then be mailed to the PTO along with the paper
application generated by the diskette. The diskette would serve the
limited function of eliminating the initial data entry of applications
into the PTO databases.
As part of a second pilot program, a separate group of participants
is being solicited to file paper applications following a prescribed
order and format. The paper applications would then be scanned and
converted to electronic format. Data collected from the pilot programs
will be evaluated to determine whether requiring submission of a paper
application in a certain order and format facilitates data entry;
whether any modifications to the electronic filing software are
required; and more fundamentally, whether electronic filing is a
feasible, cost-effective alternative to filing in paper form.
2. Paper Applications
The PTO contemplates that paper applications will be required to
follow the order and format of the data elements (e.g., inventor, foreign
priority information, in the case of a patent application; applicant,
mark, in the case of a trademark application) entered in the electronic
filing system. This would enable the PTO to scan and convert paper
applications to electronic applications upon receipt at the PTO. Once
the paper application is converted into electronic form, processing of
the application will be done in a purely electronic format. The
electronic form of the application would become the official file.
3. Electronic Filing
The PTO contemplates that applicants filing by electronic means would
be required to use an "Authoring Program" developed by the PTO, which will
be available to facilitate the preparation of an electronic submission
and record the submission on electronic media. This "Authoring Program"
will include a validation feature so that applicants, themselves, can
test whether an electronic submission complies with all requirements.
The "Authoring Program" software under consideration by the PTO will
be designed to be compatible with computers capable of creating files of
standard ASCII (American Standard Code for Information interchange) text
within one or more of the major operating systems environments (e.g.,
DOS, Windowsr, Unix R, and Apple MacIntosh R).
The format for text in patent applications will specify a set of
mandatory data elements, similar to those required under the Patent
Cooperation Treaty. The format for text in trademark applications will
specify a set of mandatory data elements, similar to those required of a
"written application" under 15 U.S.C. 1051. In both the patent and
trademark software, specific formats will be required for non-textual
elements, such as drawings, formulas, tables and specimens. These
non-textual elements would be submitted in separate computer files
called "Presentations," similar to the presentation of nucleotide
sequence information in accordance with 37 CFR 1.821-1.825.
The PTO also contemplates that certain individuals be designated by
the agency as qualified "electronic application transmitters." Upon
application to the PTO, unlimited parties meeting specified requirements
may be issued Personal Identification Numbers to enable them to transmit
applications in electronic form on behalf of themselves or other
individuals.
In an effort to facilitate public comment to the questions set forth
below, the following background information is provid- ed:
4. Background Specific to Electronic Patent Applications
Signature
Under 35 U.S.C. 111, a patent application must include an oath by
the applicant. 35 U.S.C. 25 permits a declaration in lieu of oath. The
applicant's signed oath or declaration is not required for receipt of a
filing date, but may be submitted, upon payment of a surcharge, within a
prescribed period.
Certified Copy of Foreign Patent Application
Under 35 U.S.C. 119, a U.S. patent application may be based on a
foreign patent application, thus, potentially, conferring the benefit of
the earlier foreign patent application's filing date. A certified copy
of the foreign patent application is required to be filed in the PTO
before the patent is granted.
5. Background Specific to Electronic trademark Applications
Signature
Under 15 U.S.C. 1051, a trademark application must be verified by the
applicant. Prior to implementation of the Trademark Law Revision Act of
1988 (TLRA) on Nov. 16, 1989, the PTO permitted verification of the
application to be provided at any time during the examination process.
With implementation of the TLRA, the PTO amended its regulations with
respect to the verification of an application. 37 CFR 2.21, which sets
forth the minimum requirements for an application to receive a filing
date, was amended to require that the application be signed by the
applicant at the time of filing.
Specimen
Under 15 U.S.C. 1051, a trademark application based on "use in
commerce" must include specimens or facsimiles of the mark as used. 37
CFR 2.21(a)(5) requires at least one specimen or facsimile to be
included with the "use" application in order to receive a filing date.
Applications filed based upon a "bona fide" intention to use the mark in
commerce, under 15 U.S.C. 1051(b), must be supplemented with specimens
or facsimiles before the registration issues. In order to meet the
minimum requirements for filing an amendment to allege use or statement
of use, one specimen or facsimile must be submitted. 37 CFR 2.76(e)(2)
and 2.88(e)(2).
Certification or Certified Copy of Foreign Registration
Under 15 U.S.C. 1126(e), "an application [based on a foreign
registration] shall be accompanied by a certification or a certified
copy of the registration of the country of origin of the applicant." 37
CFR 2.21(a)(5) requires the certification or certified copy to be
included with the application in order to receive a filing date.
6. Comments on the following Questions and Any Other Related Matters Are
Solicited
Questions Common to Patent and Trademark Applications
a. What benefits do you foresee for the applicant if electronic
filing is adopted? What disadvantages do you foresee?
b. Should the PTO require paper applications to be filed in a
specific order and format to facilitate conversion to electronic format?
What advantages and disadvantages do you foresee?
c. Should the electronic file become the official agency file?
d. Should electronic filing be expanded to encompass amendments and
other submissions to the PTO?
e. Should paper or electronic application filings receive a filing
date only if they meet order and format requirements, or should
compliance be subject to a surcharge?
f. Should the PTO accept electronic filing by diskette, on-line, or
both?
g. Should applications filed in paper form be converted to electronic
form by the PTO? Should the PTO charge a fee for this service?
h. If paper applications are converted to electronic form by the PTO,
should the PTO destroy or retain the paper applications?
i. Should fees be processed electronically?
j. Should the PTO create a registry of "electronic application
transmitters" capable of transmitting patent and trademark applications
for others? If so, what, if any, criteria should be established before
one could be "registered" as an "electronic application transmitter?"
Questions Related Solely to Patent Issues
k. Should the PTO require the oath or declaration to an
electronically filed patent application be filed on paper to
authenticate that applicants believe themselves to be original and first
inventors of the subject matter of the electronically filed application?
If not, how should the filing of the oath or declaration be
accomplished?
l. How should the filing of certified copies of foreign patent
applications be accomplished for an electronically filed patent
application?
Questions Related Solely to Trademark Issues
m. Should the PTO require electronically filed applications to
include a scanned, signed declaration in order to receive a filing date?
Should the PTO accept declarations in electronic form with some type of
electronic signature?
If not, should 37 CFR 2.21 be amended to permit unverified
applications to be accorded a filing date? if so, within what time period
must an unverified application be ratified by the submission of a signed
declaration?
How long should the PTO retain the signed declaration after it has been
scanned and merged into the electronic file?
n. Should "use" applications submitted without a specimen be
given a filing date?
If so, within what time period after filing must the
specimens be submitted?
Should the number of required specimens be reduced?
How long should the PTO keep the specimens after they are scanned and
merged into the electronic file?
o. Should Section 44(e) of the Trademark Act (15 U.S.C 1126(e))
beamended to permit applicants to submit a facsimile of the
certification or certified copy of the foreign registration?
Alternatively, should the statute be amended to permit Section
44(e) applicants to obtain a filing date absent a certification or
certified copy of the foreign registration? If so, within what time
period must a Section 44(e) application be supplemented with a
certificate or certified copy of the foreign registration?
How long should the PTO retain the certification or certified copy
after it has been scanned and merged into the electronic application?
7. Candidates for the Pilot Programs
Any person interested in participating in one of the pilot programs
identified above is requested to contact Edward R. Kazenske, Executive
Assistant to the Commissioner and Director of Interdisciplinary
Programs, c/o Commissioner of Patents and Trademarks, Washington, D.C.
20231. If delivered by hand, written statements of interest should be
brought to Suite 906, Crystal Park 2, 2121 Crystal Drive, Arlington, Va.
22202. Telephone: (703) 305-8600. Please indicate which pilot program
you wish to participate in and please be certain to include a telephone
number where you may be reached.
Nov. 23, 1992 DOUGLAS B. COMER
Acting Assistant Secretary
and Acting Commissioner
of Patents and Trademarks
[1145 TMOG 9]