Strategic Plan > Index to Action Papers > Post Grant Patent Review E-Processing

Action:

If the USPTO adopts the Post Grant Patent Review process, it needs to provide for e-filing and handling of the request.

Background Information:

Under the proposed plan, the Board of Patent Appeals and Interferences (Board) will be charged with conducting patent review proceedings.  The current proposal calls on the Board to decide such cases in one year; it is expected that the availability of such an option will generate demand for inter partes proceedings substantially beyond that now experienced in interferences.

Handling such cases without e-filing and handling will pose substantial costs and make expedited proceedings more difficult.  The Board's past experience in inter partes proceedings shows that files in such proceedings can be very voluminous and, thus, require contracting personnel to move the files due to their substantial size, as well as substantial storage space.  However, with the creation of an electronic filing system, the office space rental costs for storing paper files can be minimized.  In addition, the Board's flexi-place (including work-at-home) program is an essential part of its strategy for retaining a senior cadre of Administrative Patent Judges (APJs); an integrated electronic system would allow such cases to be handled effectively by APJs on that program.

A similar system has been designed for ex parte and inter partes proceedings in the Trademark Trial and Appeal Board (TTAB) and a similar system for inter partes proceedings in the Board could be installed independently of the e-filing program for patent applications.  The Board of Patent Appeals and Interferences Information System (BPAIIS) would provide automated support and internal controls while enabling the Board to:

1)     Institute patent review proceedings*

2)     Process patent review proceedings*

3)     Enable expeditious document text search and retrieval for USPTO users across multiple proceedings*

4)     Allow on demand optical character recognition, annotation capability highlighting and marking of documents*

5)     Enable storage of multimedia exhibits and records 

6)     Provide online access of proceedings to the parties involved in a proceeding* 

7)     Support, provide and promote online work at home capability for board personnel and access to all electronic records in a proceeding

8)     Provide online collaboration of APJs 

9)     Enable submission and collection of payments by interfacing with existing USPTO financial systems*

Minimal requirements for any functional system are identified by asterisk.  Item (4) may in large part be available through currently installed systems.

·       Option 1:  No e-processing/filing (no BPAIIS system)

·       Option 2:  Develop e-processing/filing system (BPAIIS) that already meets minimal requirements

·       Option 3:  Develop e-processing/filing system (BPAIIS) that accommodates home access

USPTO Recommended Course of Action:

With the exception of a pilot program discussed with the proof of concept below, the Board is currently handling interferences under Option 1.  Thus, it is feasible to continue with paper operations.  That approach, however, will add to paper handling and storage costs and will make it less likely that the Board will meet an expedited goal for handling these cases.  Showing from the outset that the Office is able to handle these matters more quickly than the courts would be an important aspect of establishing reviews proceedings as a preferred route for deciding issues concerning validity of claims.

Adopting Option 2 is in keeping with the Office of Management and Budget's (OMB's) direction that the Patent Operation should learn from the Trademark Operation's experience with e-Government.  Although the TTAB's e-filing system does not provide a complete model for a similar BPAI system, the lessons learned from that installation may be more readily transferable to a BPAI system than are lessons learned in patent application e-filing.  An e-filing system that did not allow full home access would diminish the return on investment of the Board's flexi-place program particularly as an inducement to retain senior staff. 

Option 3, on the other hand, incorporates the benefits of Option 2 and provides for full home access.  This option makes the USPTO's flexi-place more efficient as a mode of work, contributes to its efficacy as a retention program for the Board, allows management maximum flexibility in assigning APJs to these new proceedings, and furthers the Office's telecommuting initiative.  Option 3 will be pursued.

As an action plan, development should commence immediately to permit adequate resources to be allocated to this endeavor.  Testing and implementation should take place before October 2004, when we would expect post-grant review legislation to become effective.

Details:

The new system would provide an electronic file from which APJs can retrieve documents and all related documentation to perform adjudication functions in patent review proceedings.  The system will enable the Board to receive, store and retrieve electronic, text-searchable records; receive and file multimedia records; and store and transmit USPTO correspondence to the parties involved in a proceeding.  

Specifically, the system would provide the following automated functionalities:

·       File uploading processing - Insert electronically submitted documentary and evidentiary files; index supporting documents in a centralized document repository; link these files to the corresponding proceeding record in a database.

·       Bibliographic data collection - Collect and store data inserted by involved parties to a proceeding regarding contact information and related files.

·       Generate file receipt notification - Generate a filing receipt notification of receipts of a document by the system.

·       Search application - Query and print proceeding information based on search criteria.

·       Search document - Text search and retrieve documents within database.

·       Proceeding management - Prepare correspondence and merge bibliographic data, provide online collaboration between judges involved in a proceeding. 

·       Access control management - Controlling access to the system and to privileged functions based on the user role (identified by his user identification cross referenced to his password) and workstation.

·       Mail and form management - Generate and record mail and required forms.

The system would increase accuracy and enhance system security through access management and desktop availability of application data and support documentation. 

Timing:

An e-filing system at the Board is part of the Office's e-Government strategy.  The prospect that review proceedings may be implemented in fiscal year 2005 makes it preferable to implement the system concurrently with that new jurisdiction.  This is an

e-Government initiative that can be pursued on a different track than the Patent

e-Government initiative, since unlike appeals (and, to a lesser extent, interferences) e-filing for a review proceeding need not depend on receiving an electronic file wrapper during patent prosecution.  Installing e-filing contemporaneously with beginning review proceedings would reduce the need to plan for storage facilities at the new USPTO Carlyle facility in Alexandria, Virginia, and the burdens of developing both a work flow system and paper files that would thereafter become outmoded. 

Risks:

The risks associated with not having an electronic filing system are significant.  Lack of such system jeopardizes the Board's ability to meet a goal for concluding a review proceeding in one year.  Meeting the one-year goal will be crucial to making the review proceeding a credible institution worthy of support and use by the patent bar.  Further, failing to have such a system in place creates burdens for the agency by:

·       Requiring recruitment of additional personnel to perform clerical tasks.

·       Requiring office space for such personnel.

·       Requiring space to store the files.

·       Requiring the move of the files upon relocation of USPTO to the Carlyle site.

·       Requiring reconstruction of lost or damaged files.

·       Placing additional burdens on employees' ability to work at home.

The principal risks that we identify with adopting such a system on the proposed schedule are that (1) adopting an e-filing system for a new proceeding before we have experience with the proceeding may lead to the need to make some adjustments in the system later; and (2) Board personnel, including APJs, would be learning both a new adjudication process and a new e-filing system at the same time.  We regard the former risk as less costly than the other risks and the latter risk as potentially also being a benefit.

Estimated Benefits:

Most of the benefits associated with implementing such a system are automated support, instant availability of documents to APJs whether from the USPTO or a flexi-place location, eliminating the need for storage of paper files and the costs associated with locating lost files, repairing damaged files and reconstructing files.  The capability of text searching documents across multiple proceedings will enable APJs to increase their efficiency since text searches reduce the amount of time needed to locate a particular document.  The ability to mark a document for further reference would further increase judicial efficiency.  This project will enable the USPTO and the patent bar to interact electronically.  Using the Internet from anywhere in the world, counsel will be able to file documents with the USPTO electronically.

The following are detailed benefits for BPAIIS to USPTO, the public and the legal community:

·       Accessibility - The ability to view, file and retrieve documents 24/7 (every day of the year, 24 hours a day) for USPTO users and the public.

·       Instant notification - The ability to receive immediate notice of new filings with the USPTO.

·       Low cost to users - Use of standard Internet software would minimize out-of-pocket expenses, attorney travel time, postage costs, and the expense of maintaining and storing paper files.

·       Information - The information concerning the filing of cases would be timely and accurate and will enable the Chief Judge, managers and administrators of the Board to make effective business decisions.  APJs would also be able to access information relating to their proceedings in a highly expeditious manner.  Bibliographic data about the parties will be collected via public user input into the system and will thus enhance data collection and management.

·       Storage space - The system, by creating a paperless electronic environment, would eliminate the need for storage space for paper files. 

·       Potential expandability - The system would potentially be expanded to provide generation of statistical reports, workflow functions, and online collaboration within the Board.

·       Human Resources and their required office space - The system would eliminate the need to hire additional personnel to find and locate paper files, to match papers with files, to reconstruct and repair files and the office space that would be required for such employees.

Proof of Concept

Within the USPTO's Office of General Counsel (OGC), the Board is currently testing this concept through three initiatives.  First, in July 2002, the Board instituted a pilot program in which parties to interferences who agreed to participate could make their filings via e-mail.  Second, at the same time, the Board began to scan in and distribute electronically all filings in newly declared interferences.  Feedback from parties and APJs on these new functionalities should provide the Board a good basis for determining the requirements for an expanded program.  Third, the TTAB, as of December 2002, began an e-filing program fully integrated with its automated workflow system.  It expects this system to be fully implemented by November 2003.  OGC's ongoing review of TTAB's installation will permit the Board to refine its requirements to best meet public and employee needs before the Board fully implements a similar system.  In addition, the Board will review the capabilities described in the Patents e-Government initiatives to evaluate the extent to which solutions developed for the application process can be adopted to Board inter partes proceeding.

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