Action:
The United States Patent and Trademark Office
(USPTO) has modified its Patent e-Government automation plans to deliver
an operational pipeline to process patent applications electronically
in image
format by the end fiscal year 2004, using the European Patent Office's
(EPO) ePHOENIX system. The USPTO will continue to collaborate with the EPO
to support processing using the ePHOENIX system.
Background Information:
The USPTO operates within a global community
of intellectual property offices and practitioners. We have worked extensively
with the Trilateral Offices (EPO, JPO (Japan Patent Office), and USPTO)
to achieve common goals.
By leveraging the ePHOENIX system, the USPTO
has an opportunity to pursue collaborative information technology development
with the EPO. ePHOENIX is an image archiving system designed to support
the EPO's Formalities Office. All processing by the EPO is based on the
electronic application contained in ePHOENIX, which serves as the official
legal application record. ePHOENIX, launched by the EPO in May 1998, provided
a solution to its paper handling problems in a geographically dispersed environment. Since
that time the EPO has made many modifications to the system including making
it portable to different physical environments.
Options Considered:
1. Status
quo: Follow the Tools for
Electronic Application Management (TEAM)
5-Year
Deployment Plan (version 1.0). Include the Patent e-Government initiative
in the fiscal year 2004 budget request. Plan to deliver the new system
in fiscal year 2006. Make no effort to collaborate with the Trilateral
Offices.
2. Procure the ePHOENIX system and modify the TEAM 5-Year
Deployment Plan, assuming additional funding is made available in fiscal
years 2004, to:
a) Deliver an operational end-to-end electronic patent application processing
pipeline for all applications in image format by the end of fiscal year
2004, including electronic capture of all incoming and outgoing paper documents;
b) Deliver the electronic pipeline capability
in phases, with a goal of eliminating the need to move pending paper application
files and documents to the new USPTO
Carlyle facility in Alexandria, Virginia; and
c) Work with Trilateral Offices to identify
technical opportunities to collaborate on electronic filing and processing,
and to develop an action plan for such collaboration.
USPTO Recommended Course
of Action:
Pursue Option 2.
Discussion:
The continued growth in USPTO workload cannot
be effectively managed in the current paper-based environment. Implementing
an e-Government strategy that includes electronic receipt, processing, reporting,
and publication will enable the USPTO to migrate to a more efficient operating
environment that supports our business goal of providing quality services
and products in a timely manner to our customers and stakeholders. Implementing
the ePHOENIX system to capture all new applications in image format and
create image file wrappers in fiscal year 2003 will be the first step in
implementing
that strategy.
The USPTO will take delivery of the first portion
of its new Alexandria campus (Carlyle) in the first quarter of fiscal year
2004. As USPTO operations are split between two campuses, the movement of
papers and paper application files will become increasingly more difficult
to manage and the cost associated with paper handling will increase dramatically. In
order to meet and overcome these operational challenges, the USPTO will move
forward using the ePHOENIX system integrated into USPTO legacy systems to
provide an electronic image-based file wrapper prior to the start of the
move. The USPTO will capture pending back files in order to eliminate
the need to move paper to the new campus.
It is critical that we move toward conducting
business in a completely electronic environment. In order to increase
the number of applications filed electronically, and gain greater user
acceptance
of electronic filing, the USPTO is working on various
e-filing initiatives. The USPTO has awarded
a contract with five vendors collectively known as the Electronic Filing
Partners (EFPs). The EFPs, in cooperation with the USPTO, are developing
software that will be used to electronically file eXtensible Markup Language
(XML)-based applications and follow-on papers via the Internet. All submissions
will be compliant with World Intellectual Property Organization (WIPO) Annex
F Document Type Definitions and protocols. The first deployment of these
products by EFPs occurred in March 2003. Future releases of the Electronic
Filing System (EFS) as well as EFP e-filing will incorporate the electronic
submission of follow-on papers (such as amendments) and provide the means
for transmitting outgoing USPTO generated correspondence to applicants.
Further collaboration with the Trilateral Offices
to achieve common goals is also under way. The USPTO has committed to
collaborate with the EPO on the development policy for the epoline® on-line
filing software.
With respect to electronic on-line filing, the
USPTO and EPO also agreed that USPTO would provide support to EPO's US
XML Plug-in development effort. This will allow users of epoline® to
file applications electronically in the U.S. The USPTO is also testing PatXML,
EPO's electronic filing authoring tool, with ePAVE, the USPTO's electronic
filing submission tool. These efforts will enable the USPTO to provide
its customers with multiple electronic filing tools.
It is believed that these efforts will increase
the number of applications filed electronically, provide greater user acceptance,
and move the USPTO to its ultimate goal of an end-to-end XML-based electronic
patent application processing pipeline from authoring and filing to publication.
The core of the e-Government initiative is the
TEAM project. TEAM was to provide a document management and workflow system
to electronically process a patent application; similar functionality will
now be provided by ePHOENIX. TEAM's 5-year plan has been modified to use
the ePHOENIX system as the central component to provide the capture of paper
documents in image and XML formats. Although not a part of the TEAM project,
ePHOENIX will be integrated with and capitalize on features from a variety
of information technology systems currently in use at the USPTO. New tools
will be developed in the TEAM project to provide functionality that is unique
to the USPTO business process. ePHOENIX will be incrementally integrated
into the USPTO environment, to better manage implementation risk.
The major elements of USPTO's e-Government initiative
include: EFPs, image file wrapper management using ePHOENIX, workflow capability
using the ePHOENIX messaging function, and integration of existing major USPTO automated information
systems using Enterprise Application Integration (EAI) technology. The use
of the ePHOENIX system allows the USPTO to accelerate its transition to a
completely electronic environment. This strategy
is likely to increase the return on investment and the net present value
from the original TEAM development approach. Relying on
e-PHOENIX to produce image based electronic
applications also reduces the dependency on increasing electronic filing
rates in the short-term, since all applications (even those submitted in
paper format) will be converted to electronic image format.
Proposed Plan Fiscal Year 2003:
While an image file wrapper prototype, utilizing
ePHOENIX, is under way in the USPTO, the EPO will build enhancements to
core ePHOENIX components to meet USPTO business and technical needs. These enhancements
will include ePHOENIX changes necessary to make this system viable in the
USPTO technical environment and allow it to handle the larger U.S. workload. While
the EPO is making changes to ePHOENIX, the USPTO will perform an initial
integration of ePHOENIX with its legacy systems. The work completed by the
EPO and the USPTO on ePHOENIX will be done collaboratively to ensure that
USPTO requirements are incorporated into the core ePHOENIX system. The
EPO will provide on-site support to the USPTO to install and configure
the ePHOENIX
system, as well as assistance with technical support in the integration
of ePHOENIX into the USPTO environment and legacy systems.
As stated earlier, integration into the USPTO
environment will be phased. The initial steps
to deploy an image file wrapper system based on ePHOENIX will reduce reliance
on USPTO's legacy Patent Application Capture
and Review (PACR) system.
The USPTO currently uses the PACR system
to capture images of all new applications as filed and provide limited
indexing of the new applications. The PACR system also provides the ability to rescan,
correct, and print images from the PACR database. The PACR components support
the PreGrant Publication System, License And Review System and Order Entry
Management System. The PACR system scanning and indexing functionality
will be replaced and enhanced with the ePHOENIX system. The ePHOENIX system
will be used to capture images of new applications, follow-on papers and
outgoing correspondence. These images will be indexed and made available
to the USPTO Patent Corps (examiners and support staff) for end-to-end processing. All
images currently stored by the PACR system will be migrated to the ePHOENIX
system. The PACR system components supporting the PreGrant Publication System,
License And Review System and Order Entry Management System will be modified
to retrieve images from ePHOENIX. New printing functions will be provided
through the ePHOENIX system.
The Patent Application Location and Monitoring
(PALM) system will be integrated with ePHOENIX so that both systems are
initialized simultaneously. Additional changes will be made in the PALM
system to store status information that was previously stored in the PACR
system, to provide
the ability to display side by side views of ePHOENIX and PALM system
data and to permit PALM system transactions to be entered via the keyboard
rather
than the current barcode entry.
The Patent Application Information Retrieval
(PAIR) system and the ePHOENIX File Inspection component will be integrated
to provide applicants access to their applications and status via the Internet.
The EFS will be
integrated, using Enterprise Application Integration, with ePHOENIX
and the PALM system. Bibliographic data will be automatically updated in
the PALM system and the electronically
filed applications will be automatically stored in ePHOENIX.
All incoming new paper applications will be
scanned into the image file wrapper system based on ePHOENIX beginning
in June 2003 in order to eliminate the need to move new paper applications
to the Carlyle site. Scanning
of existing pending applications into the image file wrapper system will
be phased in during the remainder of fiscal year 2003 and completed in
2004.
The USPTO will begin capturing pending backfile applications in June
2003. Technology Centers that are scheduled to be the first to move to the
new campus will have their pending backfiles
captured first. Capture of the backfile will be completed prior to the
move of the last Technology Center to the Carlyle site.
The USPTO will provide the capability to scan
documents, as necessary, in color. This will allow applications with
color figures/drawings or photographs to be stored in the image file
wrapper system.
Key Fiscal Year 2003 Functionality and
Assumptions:
· Accept
WIPO compliant Document Type Definitions, for routine, non-provisional
utility applications through the EFS authoring and submission tool.
- This
is a major step toward enabling our applicants to electronically author
applications once and file patent applications around the world.
· Initiate
an end-to-end electronic application processing pipeline for application
processing. Fiscal year 2003 functionality will be image-based electronic
processing.
· Capture
all application papers in image format, including follow-on papers, amendments
and USPTO outgoing correspondence generated during the course of examination
for Technology Centers prior to their move to Carlyle.
- This
greatly reduces the likelihood of lost application papers and increases
the USPTO's ability to reconstruct a file upon request from applicant.
· Initialize
the PALM system
with bibliographic and pre-grant publication data from electronic filings.
- This
eliminates data entry errors from keying the bibliographic information
and improves filing receipt quality for applicants.
· Provide
an electronic file to the patent publishing contractor.
- This
will improve data quality resulting in higher quality published documents.
· Provide
official contents of the file wrapper electronically to the Order Entry
Management System for order fulfillment.
- This
will improve quality and decrease turnaround time for customers when ordering
certified copies of application file wrappers.
· Provide
applicants with the ability to access images of their application papers
via the PAIR and ePHOENIX File Inspection systems.
- This
will leverage applicants' investment in Internet and World-Wide Web technologies
and allow customers on-line access to the official file including Office
actions, amendments, remarks, field of search and prior art.
· EFPs
first version of their e-filing products will be offered to the public.
- This
will increase the number and features for online electronic authoring and
filing of patent applications that are available to customers.
· USPTO
collaborates with the EPO on a U.S. National Plug-in
for epoline®.
- This
will permit EPO customers to use EPO epoline® software to
file US national applications.
· Incoming
U.S. patent documents submitted with new applications
will not be scanned.
· Copies
of U.S. patents and publications will not be sent
to applicants when cited in Office actions.
- This
will leverage the Internet to supply prior art and allow customers (i.e.,
applicants and their representatives) to share the prior art electronically. This
will also reduce mailing costs for applicants (i.e., attorneys will not
need to send paper copies of references to inventors).
· The
image file wrapper will serve as the official copy/legal record of the
application.
- This
will increase application file wrapper integrity.
· Printing
capability for the necessary components of an electronic file wrapper will
be provided.
· Some
dual entry between image file wrapper system and legacy systems will be
required.
· For
backfile applications, the file jacket cover information, including search
history and notes, will be copied and scanned into the image file wrapper
system.
- The
customer on-line access will include essential file wrapper data (e.g.,
field of search, examiner name), providing quick access to key application
information.
· For
new applications and for new entries to existing applications, the image
file wrapper system form and overlay capability will be used to capture
new file jacket information.
· The
ePHOENIX Madras Interface will be deployed to all Patents support staff who work
from images.
· The
USPTO customized image file wrapper interface
will be deployed to all Patent examiners and other staff to provide access
to messages and images.
· Rule
changes will be implemented for amendment processing of claims (full section
replacement).
· All
patent application papers, incoming and outgoing, will be scanned into
the image file wrapper system and then stored for eventual archive storage.
Proposed Plan Fiscal Year 2004:
The USPTO will collaborate with the EPO in the
design and integration of XML into ePHOENIX. During fiscal year 2004,
claims, specifications and abstracts will be rendered and stored as XML.
The USPTO will provide change requests to the
EPO for core ePHOENIX components. There will be two releases of ePHOENIX
each year. These change requests will be prioritized by the EPO in collaboration
with the USPTO and deployed in future releases.
The USPTO will continue its work with EFS, in
collaboration with the EPO, WIPO and the EFPs, to accept all incoming documents
authored as XML. The USPTO will provide Document Type Definitions that comply
with the WIPO electronic filing standards to the EFPs. As part of the WIPO
PCT-SAFE project, the USPTO has been working in collaboration with the EPO
and WIPO to produce an integrated system that will allow US applicants to
electronically author and file international applications. In support
of this functionality, the USPTO has tested, analyzed, and provided changes
required to support the unique needs of the U.S. environment for
the EPO's On-Line Filing and WIPO's PCT-SAFE products.
Additional integration work will be done with
the PALM system to automate many of the transactions that must be done
manually and in parallel during the initial release of the image file wrapper
system. The
PALM system will also be modified to soft-scan directly into the image
file wrapper system all Pre-Examination generated correspondence and to develop
XML-based correspondence.
The PAIR system will be upgraded and enhanced
to provide public access to all publicly available application papers stored
in the image file wrapper system.
The Office Action Correspondence System (OACS)
will be modified to soft-scan all office actions directly into the image
file wrapper system and to develop XML-based correspondence.
The PALM system and ePHOENIX will replace the Patent Cooperation Treaty
(PCT) Operations Workflow and Electronic Review system. The PCT Operations
Workflow and Electronic Review system will no longer be needed or maintained
after fiscal year 2004.
The image file wrapper system will replace the
PCT Operations Image System. All PCT applications will be stored in the
image file wrapper system. The PCT Operations Image System will no longer
be needed or maintained after fiscal year 2004.
The image file wrapper system will replace the
ReExamination Patent System. The ReExamination Patent System will no
longer be needed or maintained after fiscal year 2004.
The Electronic File Wrapper (EFW) Graphical
User Interface (GUI) will be enhanced to address Patent Business requirements. The
EFW GUI will provide the integrated view of application images and messaging,
PALM system docket and status information and access to other related automated
information systems.
Key Fiscal Year 2004 Functionality and
Assumptions:
· Provide
electronic exchange of priority documents with the EPO. This relieves
applicants of the burden of providing paper copies of the priority documents.
· Complete
electronic end-to-end application processing pipeline for all pending application
processing. Fiscal year 2004 functionality will be image-based electronic
processing.
· Begin
to integrate (end-to-end) XML functionality into the patent application
processing pipeline.
· Accept
WIPO compliant Document Type Definitions, for follow-on papers through
the EFS, EFPs, and epoline® authoring and submission tools.
· Render
currently stored images and incoming papers of claims, abstracts and specifications
as Annex F compliant XML.
· Soft-scan
all USPTO generated correspondence from OACS into the image file wrapper
system.
· Provide
access via Public PAIR to all publicly available application papers in
the image file wrapper system.
· Provide
examiners with enhanced access to patent information
using the EFW GUI.
· WIPO
Document Type Definitions will be available for all incoming application
paper and outgoing USPTO correspondence.
Proposed Plan Fiscal Year 2005:
The USPTO will continue collaboration with the
EPO in the design and integration of XML into ePHOENIX by rendering more
incoming paper submissions and currently stored images as XML. The
USPTO will continue its collaboration with the EPO in the design and development
of enhancements to ePHOENIX. Additionally it will continue collaboration
with the EPO and WIPO on changes to Annex F Document Type Definitions for
incoming papers and outgoing correspondence.
The USPTO will begin to develop automated processing
in support of XML using the EAI hub. XML automation work will begin
for:
- search
processing,
- formalities
review processing,
- amendment
processing, and
- creation
of a claims tool.
Additional work will be done to
provide electronic order processing of XML documents.
The USPTO will continue its work in collaboration
with the EPO, WIPO and the EFPs to transmit USPTO generated correspondence
electronically to the applicants.
The Revenue Accounting and Management (RAM)
system will be modified to accept payment information directly from EFS for
processing.
Key Fiscal Year 2005 Functionality and
Assumptions:
· Payment
information will be sent automatically to the RAM system for processing.
· Render
and store additional incoming paper submissions as Annex F compliant XML.
· Outgoing
correspondence will be sent electronically to applicants.
· Provide
initial automation of formalities review process.
· Provide
initial automation of amendment processing.
· Provide increased
automation of order processing.
· Provide
initial automation of search processing.
Proposed Plan Fiscal Year 2006 - Fiscal
Year 2008:
XML development will continue delivering enhanced automated,
formalities review; search processing; amendment processing; order processing
and appeals processing by the end of fiscal year 2008.
The USPTO will continue collaboration with the EPO
and WIPO on changes to Annex F Document Type Definitions for incoming papers
and outgoing correspondence.
Examiners will be provided with enhanced access to patent data and new functionalities
as they are identified.
The License and Review System will be modified to process electronically
received application papers that are in XML.
Patent e-Government Program Risks:
· Availability
of funding each fiscal year for continued development work.
· Maintaining
operational capability of automated systems in two locations during the
Carlyle move.
· Delays
in implementing a system backup/disaster recovery system.
· Changes
in current patent application business processes will impact both development
costs and system complexities.
Patent e-Government Program benefits:
· Improved
quality of bibliographic information in electronic databases - electronic
bibliographic data submissions will be entered as received.
· Elimination
of lost papers/files
for those papers filed or captured electronically.
· Prompt
access to new applications by applicants and examiners.
· Reduced
need to increase or decrease contractors and/or government employees to
handle variations in workload.
· Reduced
paper handling costs.
· Reduced
movement of paper between USPTO campuses.
· Leverage
existing USPTO automation infrastructure and systems.
· Provides
public access and review of application images.
· Provides
concurrent access to applications by multiple USPTO staff.
Proof of Concept:
A Proof of Concept of the image file wrapper
system is underway in three Art Units and Office
of Initial Patent Examination (OIPE) with a prototype that began in December
2002. This
prototype will allow Patents to identify and prepare changes to its current
business processes (i.e., preparation of a Business Process Description). Using
feedback from the participants throughout the prototype effort, change
requests will be identified for ePHOENIX that will be incorporated, as
required, based
on the priority of the request and time constraints.
This image file wrapper prototype will test the use of ePHOENIX
image technology to replace the standard paper processing of patent applications
currently used in the USPTO. The paper contents (including the specification,
oath or declaration, drawings, information disclosure statements, amendments,
Office actions, etc.) of pending applications assigned to the three participating
Art Units are
being scanned into ePHOENIX creating image files. All processing and
examination will be performed with the image file wrapper, instead of
the paper documents,
by the examiners, technical support staff and other
USPTO professional staff during the prototype.
The image file wrapper prototype will not impact applicants during the
patent application submission process. For applications assigned to the prototype
art units, the Office
has requested that amendments be submitted in a special format. Specifically,
the text of all pending claims, along with an indication of their status,
should be submitted with each amendment. This request is contained in
an information sheet attached to all outgoing
Office actions mailed during the prototype.
The technology and procedures for the image file wrapper prototype will
be similar to those used at the EPO, but adapted to the legal requirements
and existing systems of the USPTO. The Office intends to incorporate the
experiences and lessons learned from this prototype into a production system
for all new patent applications in June 2003. Business processes used
during the image file wrapper prototype 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 in electronic image format. The paper documents
that are the source of the image files will be separately maintained and
will comprise the official files at the USPTO. The paper file will be
used by parts of the Office not participating in the prototype.
Evaluation of the image file wrapper prototype will be an on-going process,
and will include statistical data as well as feedback from the users
and updates to the Business Process description. The feedback will be used
to identify any additional requirements that need to be incorporated by the
EPO into ePHOENIX or by the USPTO into legacy automated systems.
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business system 
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