ATTACHMENT 3
RFA Comments

Introduction

The USPTO published a draft Request for Agreements (RFA) in the Commerce Business Daily on April 5, 2000 requesting comments from interested parties about the substance of the proposal. Comments were received in paper form, via email and telephone.

Generally, the strategy was viewed as a very positive step, following the IRS RFA strategy, in promising the delivery of tools and support to the various segments of the USPTO customer community. It was recognized that this would serve customer needs and provide solutions integrating with the tools and products already in use and further provide multiple economically viable self-sustaining ways for applicants to create and submit documents to the USPTO with adequate specialized user support. There was a belief that the strategy would result in increased electronic filings with the USPTO by leveraging many of the products and services already in the marketplace as well as fostering the development of new products and services.

The comments and questions were analyzed and the original draft RFA was modified to reflect many of the suggestions. We summarize the major comments and provide a response to clarify the USPTO direction in moving forward with this initiative.

Comments and Responses

Comment: Several commentators asked if a solution to only part of needs identified in the draft RFA was an appropriate response. In particular, one comment asked if a solution focusing only on producing compliant trademark application and correspondence filings was within the scope of the RFA. Others asked if a solution focused on user tools or conversion services producing a compliant XML submission with no delivery strategy were within the scope of the RFA. Another comment found fault with what it believed was piece meal approach in that the RFA encouraged proposals that might only solve part of the overall electronic filing needs.

Response: The RFA scope would permit proposals of the kinds noted above. The most important feature of any proposal would be the strategy for producing the XML encoded documents in accordance with the USPTO DTDs but this may be focused on patent or trademark filings and may or may not include other features. This is not viewed as a piecemeal approach since many of the existing vendors focus on only part of the overall intellectual property community and their RFA proposal would be a natural extension of their existing business.

Comment: One commentator expressed concern about the requirements for project plans and other showings required for the RFA proposal evaluation process. In particular the monitoring and reporting requirements appeared to be too great a burden for a small company. Other comments thought that a business plan was a critical part of an RFA response since it would indicate that the proposed strategy was economically viable.

Response: The USPTO is concerned that the proposals are economically realistic and that the results be achievable by the proponent thus the requirement for a project plan and the other information required. The reporting requirements have been simplified somewhat to focus on the need for a showing of the existence or reasonable probability of a viable business model in a business plan as opposed to a detailed technical project plan.

Comment: One commentator asked if the solicitation was limited to one that simply filled in the TEAS application HTTP form that the USPTO makes available on its Internet site, or would other alternative processes of information collection and processing which resulted in the creation and filing of an XML document be proper RFA submissions. Another asked how different strategies would be integrated with the current USPTO TEAS and ePAVE and EFS strategies.

Response: The purpose of the RFA is to increase the use of electronic filing for both Trademark and Patent filings in the form of XML encoded documents. A process that results in the production of such XML encoded documents can be a stand-alone or web based software application that uses whatever data collection strategy the proponent thinks appropriate. This might include use of web based forms for collection of data that is use to create XML documents, the creation of the XML document using data bases of applicant information or a service for the conversion or word processing documents to XML compliant with USPTO DTDs. RFAís should not be limited to those that dovetail with current USPTO initiatives but should focus on the creation and delivery of the documents compliant with the USPTO XML DTDs. They should, however, explain what would be required at the USPTO to receive and acknowledge the XML encoded documents if an alternative to ePAVE is proposed for delivery.

Comment: Several commentators noted that their current business supported only part of the overall solution, for example, guided collection of data and advice re drafting to produce a patent or trademark application as a word processor document; XML conversion of word processor documents; secure authenticated delivery solutions, etc. The question was asked if the USPTO could facilitate the teaming of businesses to respond to the RFA.

Response: The USPTO cannot advise regarding business teaming arrangements but we note that we are keeping and making available a document similar to the bidders list for a procurement listing all who requested copies of the RFA or asked to be placed on the list. We have provided this list to those commentators who requested it. To be placed on the list, please contact Anice Ogden at 703-305-4175, or email at Anice.Ogden@uspto.gov.

Comment: One comment asked what advantages the obligations of the RFA had over simply waiting for the USPTO to publish the XML DTDs and proceeding to develop software independently.

Response: The USPTO will commit resources to support and cooperate with RFA activities by providing direct contact with the USPTOís technical developer and legal staff and will provide liaison with other Intellectual Property Offices and Organizations such as the European Patent Office and the PCT International Bureau as well as the American Intellectual Property Association and other groups that represent our customers. The USPTO will also provide links from the USPTO web site to the RFA partners as well as pointers to the RFA partners at USPTO presentations. The USPTO will also make the partners aware of scheduled USPTO training opportunities timing and location to help coordination of partners training with official USPTO presentations. The USPTO may also support additional means of authenticated electronic delivery under the RFA where such means benefit the USPTO and its customers.

Comment: One comment asked if the responses to the RFA would be held in confidence since they may disclose sensitive business strategy and financial information.

Response: The USPTO will treat as confidential any information marked as business confidential information. Each page that is considered proprietary should be clearly marked with: This document contains propriety information that may be subject to the Privacy Act or exemptions under the Freedom of Information Act and should not be released or made public except by the authorized Freedom of Information Act Officer in the USPTO Office of the Solicitor.

Comment: The USPTO view of the market segments viz. Independent Inventor of Trademark Owner; Trademark or Patent Attorney or Agent and PCT application filers might better be approached as two segments, i.e., the attorneys/agents who file large numbers of applications and the individual filers and others who file only a few applications since the needs of other USPTO identified filers would fall in one of the groups.

Response: The RFA did not intend to impose a hard and fast view of the market segments but merely to identify what the USPTO thought were segments that needed to be served and also emphasize that solutions focusing on one segment such as Trademark applications or Independent Inventors were also valid responses. An alternative view of the market segment or segments may be proposed in an RFA in view of the proponents view of the market they propose to serve so long as the identity of the market segment is clear and a showing of the viability of the business model for serving the identified segment or segments is made and the likelihood that XML electronic filings will increase.

Comment: A development strategy focused on the requirements of current customers of the commentatorís product was proposed.

Response: This is an acceptable strategy for development. It is our hope that the RFA will encourage organizations that already serve the intellectual property community to add the ability to produce the compliant XML for submission to the USPTO. However, the USPTO views end user requirements analysis, and software development and implementation strategy as a business decision and process involving the software vendor and its customers that may take place independent of the USPTO.

Comment: A question was asked regarding the USPTO strategy re validation, certification etc. of the software developed. One alternative was that the USPTO certify that the software as compliant with the USPTO standards while another would be that the files produced were compliant with the USPTO XML standards. An issue regarding coordination of USPTO and partnerís training was raised.

Response: The USPTO will work with the RFA partner to ensure that the production of XML for submission meets the USPTO technical standards and the partner may indicate membership in the USPTO electronic filing partnership and a link will be made from the USPTO WWW site to the partnership members. Official endorsement of the partnership product by the USPTO is forbidden by law. At this point in time, the USPTO plans to work with the partnership members to ensure that the files submitted are technically correct and to supply information to assure users of the fact.

Comment: Several comments were directed to the USPTO willingness to assist with the integration of the USPTO encryption software and digital certificate issuance initiatives already underway with software developed under the RFA proposals that will provide many practitioners with the ability to use the ePAVE validation and delivery engine.

Response: The USPTO is currently issuing digital certificates to registered patent practitioners and independent inventors after identity proofing and is willing to provide assistance under an RFA in integrating this effort into a vendorís solution if it is cost beneficial to the USPTO. The digital certificates are issued by an Entrust Certificate Authority and are stored in an Entrust Direct client on the userís desktop. Alternatives to the use of the USPTO delivery and validation engine ePAVE are acceptable as are alternative approaches to the authentication strategy and PKI that USPTO has implemented that may leverage the identity proofing done by the USPTO or the digital certificates issued by the USPTO. The only caveat is that there must be net benefit to the USPTO and its customers and the proposed strategy must show promise of increasing the level of electronic filing.

Comment: One comment suggested reduced filing fees for electronically filed applications and correspondence. It was believed that reduced fees would encourage the use of electronic communication and encourage the production of better quality software.

Response: The USPTO is not currently considering fee adjustments to encourage electronic filing.
The rules implementing pre grant publication also provide an incentive in requiring electronic filing to take advantage of certain of the provisions of the AIPA. The possibility of a surcharge for applications submitted in paper form has been suggested.

Comment: It was suggested that the USPTO change its rules to make electronic filing the equivalent of USPS express mail filings.

Response: TEAS provides the user with an immediate USPTO receipt including the assigned application number. Similarly, the ePAVE submission and validation engine produced and distributed by the USPTO provides an immediate receipt to the user for the electronically filed patent application. To a great extent these both provide the assurance of delivery and receipt that the USPS Express Mail is intended to provide.

Comment: An offer was made to work jointly with the USPTO to revise electronic filing rules and standards and discover end user requirements.

Response: Such activities would appear to violate the Advisory Committee Act. The USPTO, however, is always willing to receive comments on how it might improve its administrative and technical processes and better meet its customerís expectations.

Comment: A question was raised regarding the strategy for reconciliation of new RFA developed software and/or filing strategies and existing USPTO solutions such as TEAS and EFS and ePAVE.

Response: The USPTO will maintain the in-house efforts supporting electronic filing for at least the near future until it is clear that there is a viable competitive market for software that facilitates electronic filing and correspondence between the USPTO and its customers. The ability to accept XML encoded Trademark applications will be added as will the ability to accept validated signed XML submissions of Patent applications produced by RFA developed software. Every effort will be made to integrate different submission strategies, provided that there is net benefit to the USPTO and its customers. It should be noted that delivery and validation of the XML created by external software applications is currently done by ePAVE. Once the external software has created the XML, a solution that simply proposes using ePAVE or integrating ePAVE functionality would be acceptable in an RFA. Alternative signature and secure delivery strategies in a proposed RFA should be careful to note the net benefit to the USPTO and its customers. The USPTO Technical Standard and Guideline on Economic Analysis may be helpful in generation and organization of the likely benefits.

Comment: What is the USPTO plan for "digitizing" the patent prosecution process?

Response: The USPTO has produced a Strategic Information Technology Plan (SITP) which sets out the initiatives of the Office in automating the entire prosecution process. The SITP is available on the USPTO WWW site www.uspto.gov. At the center of the strategy is filing, processing, and publication which is based on the receipt of XML encoded documents that comply with USPTO developed DTDs for applications and various common correspondence between the applicant or her representative and the USPTO. The schedule for the total automation of the application process is heavily dependent on the USPTO budget process and may be negatively impacted by budget and spending ceilings.

Comment: What is the timeline for completion?

Response: The Government Paperwork Elimination Act sets a goal for the Federal Government of 2003 for implementing electronic filing and the USPTO plan is consistent with this. However 2003 should be viewed as the latest date. USPTO is pursuing an aggressive EFS schedule to support customers in meeting pre-grant publication needs under AIPA. The goal for beginning electronic filing of Patent applications is October 23, 2000. The USPTO expects to introduce EFS enhancements to support special filing requirements, and integrate any refinements to the initial EFS product, by March 2001. Trademarks are currently being filed electronically through TEAS. In the near term, the USPTO is especially interested in solutions for the conversion and validation of patent and trademark document word processor documents to XML compliant with the USPTO DTDs in a competent and user friendly manner.

Comment: What assurances will the USPTO give to vendors that the RFA will be implemented? Will
"accommodations" be made according to the commitment level of the vendor or will all vendors be treated the same?

Response: The RFA is an agreement between the vendor and the Government that the USPTO intends to live up to. The vendor should clearly set out what technical aid or other information it requests be provided. Each RFA will be treated and supported separately in an individualized manner in view of the specified commitments of both parties. Joint meetings with all accepted RFA vendors may be used at the option of the government to state or develop common technical base lines or impart general information regarding the patent law or technical standards in an efficient manner. It should be noted that proposed RFAs might necessitate further negotiation to reach a final agreement.

Comment: General inquires were made regarding the scope of what the USPTO might entertain in an RFA including alternate PKI implementations; secure extranet based delivery strategies which might require USPTO administrative or technical cooperation regarding identity proofing or providing a USPTO terminus for a secure vendor extranet.

Response: The USPTO solicits the widest possible range of creative technically sound proposals that will increase the quantity of electronic filings, noting that they will be judged on the net benefit to USPTO and its customers and viability of the business model and technical feasibility.

Comment: Several comments raised questions re USPTO financial arrangements or ownership interests in the products produced under an RFA.

Response: The RFA is an effort to harness the competitive user focused forces of the commercial sector. The USPTO would like to make clear that it does not desire ownership interests in any software or system developed nor does it foresee any payment to or from any of the partnership members except in the case where the RFA strategy requires the USPTO to build and maintain on site services to support the strategy proposed under an RFA such as the maintenance of the interface for a vendorís extranet connection to the USPTO. The USPTO desires to encourage the creation of the software to support the creation of XML documents in compliance with its DTD's and engage in marketing efforts that acquaint potential user of the existence and value of the partners software. Vendors should propose the desired level of USPTO involvement in their development effort or their overall implementation effort and bear in mind that the focus in evaluation will be the net value to the government and its customers.