1.0 INTRODUCTION

The United States Patent and Trademark Office (USPTO) has established a strategic information technology goal of conducting business electronically with its customers over the Internet. Current plans call for expanding its electronic commerce offerings by adding electronic filing and communication with customers. USPTO is offering the opportunity for partnerships with industry to stimulate electronic filing and correspondence in regard to patent and/or trademark application filing with the release of USPTO's first Request for Agreements (RFA). This is a solicitation of proposals for non-monetary agreements only. No proposal for funding will be considered. In general, "agreements" are defined as non-monetary arrangements between two parties (commercial firm, not-for-profit organization, or any federal agency) and the USPTO. In this instance, any commercial or not-for-profit organization or federal, state or local government may submit proposals. Internal Revenue Service RFA for Electronic Filing was used as a model for this RFA.

1.1 Background

The PTO is one of the world's largest Intellectual Property Offices, processing in excess of 400,000 patent and trademark applications and in excess of 1,600,000 transactions in connection with these applications in 1999. These largely paper-based transactions include receiving and processing applications, responses to office actions, amendments, petitions, status inquiries, payments and other correspondence.

While some of the transactions are electronic, the PTO still devotes significant resources to convert much of the information provided by its customers and partners into an electronically processable format. There were 272,221 patent applications, 295,165 trademark applications, and 501,052 assignments of intellectual property rights filed in 1999. A total of 20,610 electronically filed trademark applications and a small number of patent applications were received in 1999. The USPTO Office is experiencing tremendous growth in application filings for both patents and trademarks. The patent filing growth rate for the previous five years has been 8 percent annually. In fiscal year 1999, however, PTO experienced almost a 13 percent growth rate. Similarly, the growth rate in the trademark area for the previous few years has been about 12 percent annually. Then, in fiscal year 1999, trademark filings went up over 25 percent. For 2001, the PTO is forecasting utility, plant, and reissue patent applications of 335,400 and trademark applications of 363,700. If these forecasts are realized, they will mean that patent applications have increased by more than 75 percent in five years and that trademark applications have more than doubled in six years. Such growth rates have presented challenges as well as opportunities to the USPTO and will continue to do so.

The USPTO has undertaken a number of pilot projects related to electronic filing of patent and trademark application information. The Electronic Application System (EASY) project was an early effort to implement the use of specific data tags and structured formats at the point of patent and trademark application creation and to submit structured patent application information in electronic form to USPTO using portable media (i.e. diskette). Based on USPTO customer response to the EASY pilot, the USPTO revised its electronic filing strategy to define "what" - data as defined in Document Type Definitions (DTD) - must be filed and not the "how," thus avoiding a system that requires proprietary hardware and software to operate. Many USPTO customers use commercial-off-the-shelf (COTS) intellectual property (IP) management software products. The USPTO goal is for vendors of COTS IP management software products to enhance their offerings with tools that will enable IP practitioners to prepare electronic applications and other correspondence as XML documents in compliance with USPTO DTDs that can be accepted by USPTO.

USPTO has implemented electronic filing over the Internet for trademark applications and has also implemented an Electronic Filing System (EFS) pilot for patent applications that uses a USPTO software application ePAVE for validation, signature and secure delivery of a patent application which is discussed below in 1.1.1.2. USPTO can share the electronic filing approach and provide assistance to the COTS IP management software vendors for integrating these features into their products.

Recently, the USPTO in cooperation with the European Patent Office, Japanese Patent Office and World Intellectual Property Organization agreed upon common standards for the XML DTDs and electronic filing standards for International Applications filed under the Patent Cooperation Treaty. It was further agreed that Offices would accept national applications in the same format and complying with the same electronic filing standard. See sections 1.3.3 and 1.3.4.1 below. This will lead in the near term to a single format and system for the electronic filing of International Applications and USPTO national and EPO applications. Over time, through application of the Patent Law Treaty (PLT), these standards will become mandatory for national electronic filings in PLT signatories.

1.1.1 USPTO Electronic Filing Initiatives

1.1.1.1 Trademark Filing

The USPTO has implemented the Trademark Electronic Application System (TEAS). TEAS allows the applicant to complete a Trademark application, check it for completeness, and submit the completed validated application directly to the USPTO over the Internet. The applicant may pay the necessary fee(s) using an on-line credit card transaction or a USPTO deposit account. In April 2000 the USPTO added additional business transactions to TEAS and will implement electronic correspondence using e-mail in the fall of 2000. XML DTD's have been defined for the 7 most common Trademark transactions. These are listed in Attachment 1. TEAS is available at http://www.uspto.gov/web/menu/tmebc/index.html

1.1.1.2 Patent Filing

Currently four projects, in various states of development, are designed to accept Patent related electronic materials in a manner that can be used by the USPTO's offices.

1.1.1.3 Assignments of interests in Patents and Trademarks

A patent or trademark is personal property and may be sold to others or mortgaged; it may be bequeathed by a will, and it may pass to the heirs of a deceased owner. The USPTO records and acknowledges assignments of interest, a security interest, a merger, a lien or a free-format explanation that describes the transfer. The assignment documents along with a recordation cover sheet are scanned or faxed into the Patent and Trademark Assignment System (PTAS) and then stored (no paper is handled for faxed-in documents) until they are ready to be mailed back to the customer with either a notice of recordation or a notice of non-recordation. In 1999 USPTO conducted a pilot test for electronic submission of assignments and plans to implement a production system in October 2000. The recordation form will be part of the EFS ePAVE production release in late October 2000. XML DTDs are being defined to support electronic filing of assignments. They are listed in Attachment 1.

1.1.2 Statutory Changes- General

Recent changes in the statutes have specifically enabled the USPTO to accept and promulgate documents in electronic form.

Public Law 106-113, known as the American Inventors Protection Act of 1999, included specific language in Section 4804 to authorize the electronic means of filing documents and issuing publications by electronic means. Specifically, §4804 (a) changed 35 USC §22 to read:

Section §4804(b) of the same law change 35 USC §11(a) to read:

Title 17 of the Public Law 195-277 is known as The Government Paperwork Elimination Act, enacted on October 21, 1998. In that title, §1707 read as follows:

These laws form a statutory framework authorizing the promulgation of regulations to facilitate electronic receipt and publication of patent applications, patents and related materials.

Because the participation in agreements will not entail the expenditure of appropriated funds, the agreements do not meet the definition of "acquisition" in Federal Acquisition Regulation (FAR) 2.101. Therefore, the FAR does not apply to this RFA or the resulting agreements.

1.1.3 USPTO Electronic Filing and Communication Goals

Electronic filing and correspondence over time will include the two-way electronic exchange of information that the USPTO has with individual applicants and inventors, corporate filers, registered patent attorneys and agents, legal representatives, and government entities.

The USPTO has based its electronic filing and business communication initiatives on Extensible Markup Language (XML)-tagged documents and has developed standard formats for applications and most applicant/USPTO correspondence received and sent by the USPTO during the prosecution of a patent as well as post grant correspondence. Similarly, the USPTO has developed XML DTDs for trademark applications and for required post application and post registration filings. At this time some 23 patent related and 8 trademark XML documents have been defined of which a smaller number have been validated through use. The list of Trademark and Patent XML DTDs appears in Appendix 1.

The focus of this USPTO program is to encourage COTS IP software management companies to include the ability to produce the XML encoded application documents compliant with the USPTO DTDs as part of, or as an extension to, existing software products. The USPTO also solicits proposals that focus on the implementation of the full range of XML DTDs supporting two-way correspondence as well as proposals including secure electronic delivery to the PTO. (Note: Secure electronic delivery is not requirement for trademark correspondence and, for other than credit card transactions, currently trademark Internet communications are not encrypted or otherwise secured.) The USPTO includes solicitation of proposals from corporate customers and consortia that involve the addition of the ability to produce XML encoded applications to planned or existing corporate or consortia software. It should be emphasized that a proposal that relies on the USPTO ePAVE software for delivery and validation would be acceptable, as well as, one that integrates the validation and delivery as part of a vendor software application.

The goal is to provide the mechanisms to companies, independent inventors, patent and trademark practitioners, and other information exchange partners to file applications, make payments, record assignments of patents and trademarks, exchange office actions and other correspondence, and retrieve forms, publications, and other information from the USPTO with a minimum reliance on paper. Proposals including services that convert word processor documents or that include other strategies for collecting information for producing the XML documents for delivery to the USPTO are within the scope of this solicitation.

The goal of the USPTO is to improve customer service, improve quality of our work products, reduce cycle time for examining patent and trademark applications, and lower costs. Strategies include:

• Making electronic filing of applications and correspondence, payment, and communication so simple, inexpensive, and trusted that customers will prefer these to calling or filing paper documents and mailing;
• Providing through RFAs for private sector XML encoding software to facilitate preparation of documents and methods for electronic filing, payment, as well as support for the full range of two way communication with the USPTO;
• Aggressively protecting transaction integrity, authenticity and confidentiality where appropriate and required by law;
• Substantially reducing electronic filing processing costs;
• Seeking the best people, ideas and partners to assure our success; and,
• Delivering the highest quality products and services as promised.

The USPTO faces the challenge of eliminating barriers by providing incentives and using competitive market forces to make progress towards: 1) USPTO's goal to electronically transact 80% of all USPTO business by the year 2003 and to receive 75% of patent applications in electronic form by 2006; and, 2) the interim goal that, to the extent practicable, most applications prepared electronically without complex work units should be filed electronically by the year 2002. Currently 68% of published patent applications have no complex work units so that these applications can be rendered as text only documents. About 40 percent of Trademark applications typically include a single image illustrating the mark while patent applications may include multiple sheets of drawings.

1.2 Scope of Request for Agreement (RFA)

The USPTO includes in the scope of this RFA the full range of two-way communication with the USPTO in support of USPTO business although a given RFA may choose to address only a portion of the full range of needs. For the purposes of this RFA, the Government will focus on the following program needs:

• · Patent and Trademark application, assignment and correspondence preparation and output as an XML document complying with the appropriate USPTO's XML DTD's (8 Trademark related and 23 Patent related and 2 Assignment related) focused on the independent inventor, trademark owner, corporate patent and trademark practitioner and patent and trademark attorneys using a personal computer which may be in a networked environment.

• · RFAs may be limited, in the case of patent applications, to production of XML patent applications that do not have complex work units (CWU) but the PTO solicits proposals that deal with some or all of the listed CWU. It should be noted that USPTO does not consider drawing figures to be CWUs and that 80% of Patent applications and nearly 100% of Trademark applications have drawing figures and that RFAs must address the incorporation of drawings as tiff images.

• · RFAs may include electronic filings of assignments and other documents that transfer or grant interests in patents and trademarks in image form in fax format that feed into the recently implemented PTAS workflow system that automates the flow of assignment documents through the Assignment Services Program.

• · RFAs may include payment solutions and document and product ordering that integrate with the USPTO's Revenue Accounting and Maintenance (RAM) system and the Order Entry Management System (OEMS)

• · RFAs proposing electronic filing and communication programs supporting two-way communication with the USPTO using technical solutions other than the USPTO EPAVE delivery engine are solicited, if coupled with support of creation of the XML filing and correspondence DTDs. It should be noted that the USPTO, in support of the confidentiality and authentication needs associated with Patent application filing and correspondence, has implemented an Entrust based solution with USPTO required and supported identity proofing and grant of USPTO Certificates to authorized parties. Thus RFAs should address the use of the USPTO granted Certificates or otherwise leverage the Certificate grant to avoid the need for duplicating identity-proofing steps. This requirement applies only to Patent application and correspondence related communication RFAs.

• · RFAs may address all or only one type of the three major filing categories, i.e., patents, trademarks, and/or assignments.

RFAs addressing trademark filing should use the current TEAS application as the benchmark for proposals. The development of the ability of the USPTO to receive complete XML encoded Trademark applications and correspondence in a manner similar to the patent application filing strategy may be assumed. However, it should be noted that trademark applications do not have the same requirements for confidentiality that patent applications have and that the level of confidentiality provided by a PKI solution is not implemented in the existing USPTO TEAS submission model.

Details of the above mentioned systems and information technology programs are available in the USPTO Strategic Information Technology Plan, which will be made available to bidders at their request, in redacted form. The redacted security related materials may be made available to the extent necessary to those successful bidders who are proposing alternative secure filing methodologies or services upon execution of appropriate security agreements.

Offerors are invited to propose a cooperative development and marketing campaign to communicate key messages to the public concerning the USPTO electronic filing programs stated above and to publicize and encourage the use of electronic filing products in return for whatever the Offeror may suggest. The USPTO will consider all suggestions, including financial incentives to USPTO customers or changes to Rules of Practice, that are supported with convincing analysis and that credibly demonstrate the likelihood of increased volumes of electronic filings of patent and trademark applications for the USPTO.

For example, an Offeror may suggest the inclusion of the PTO electronic filing logo on software packaging, message boards, educational material, or links from the PTO WWW site to the Offerors WWW site or other USPTO notification that the Offeror provides USPTO XML compliant electronic filing services or XML conversion tools. An example of this is the IRS e-file program. See http://www.irs.gov/elec_svs/partners.html

The USPTO encourages Offerors to submit any and all suggestions for consideration. To facilitate this effort, USPTO will provide results from the following market research: demographic and attitudinal studies, and focus group results as well as the XML DTD's and other information developed in support of electronic filing of patent and trademark applications and the full range of two way correspondence with our customers both for US national filings and for application filings under the Patent Cooperation Treaty (PCT). In particular, the USPTO has gained considerable experience in the development of XML conversion of word processor documents and the user needs and challenges in conversion.

1.3 Existing PTO Programs Customers

Following is a brief synopsis of the customer groups that this RFA focuses on:

1.3.1 The Independent Inventor or Trademark Owner

The independent inventor or trademark owner is an individual who may choose to prepare his patent or trademark application himself using commonly available personal computing equipment. They may be inexperienced in the legal requirements for the preparation of a patent or trademark application and thus may require more assistance to prepare their application.

1.3.2 Trademark Attorney or Patent Attorney or Agent

The Intellectual Property practitioner, the patent attorney or agent or attorney filing trademarks may work in organizations ranging from a sole practitioner with little technical support or minimal background in the details of patent or trademark practice to a law firm or corporate environment providing a high degree of technical support with substantial knowledge of USPTO practice. Typically these environments will support personal computers in a networked environment.

1.3.3 Filers of Patent Cooperation Treaty Applications

The Patent Cooperation Treaty permits a single application to be filed which may lead to patent rights in over 100 countries. Such PCT applications are usually prepared in the corporate or law firm environment. The option to create national applications for filing with the USPTO and other nations at the same time as creating the PCT application has been an expressed desire of the USPTO customers for some time. XML DTDs defining the PCT application have been developed and will be made available. The USPTO functions as a Receiving Office for patent applications filed under the PCT. In 1999 the USPTO Receiving Office processed 29,463 international Applications, which was 39.8% of the world total. In 1999, there were 74,023 international applications filed with PCT receiving Offices worldwide, which are 7,016 (10.5%) more than in 1998. The number of international applications received has increased significantly each year since 1978.

The following table shows the country of origin and quantity of the worldwide PCT filings:

Comprehensive information regarding PCT filing statistics and practice is to be found at www.wipo.int, the web site of the World Intellectual Property Organization.

The USPTO, the European Patent Office (EPO), the Japan Patent Office (JPO), and the World Intellectual Property Organization (WIPO), are jointly developing document-type definitions (DTDs) for use with the electronic filing of Patent Cooperation Treaty (PCT) applications. When finalized in 2001 December, these DTDs will enable applicants to create extensible-markup language (XML) international patent applications that can be processed by computer.

In 2001 April, the USPTO, EPO, and JPO agreed that they will accept national applications filed electronically using the same international patent application formats. This will enable applicants to create an application once and submit it to EPO, JPO, USPTO, and PCT (WIPO) with, at most, only minor modifications.

The USPTO plans to accept national electronic applications using the PCT DTDs through its electronic filing system (EFS) starting in 2002 October. The USPTO plans to publish patent applications and grants using new publishing DTDs based on the PCT filing DTDs starting 2003 January.

The current draft of the PCT DTDs can be found at http://pcteasy.wipo.int/efiling_standards/schemaDocs/schemaDocs4.htm

with further information about their use at http://pcteasy.wipo.int/efiling_standards/EFPage.htm

1.3.4 Highlights of Current and Planned Product Developments

1.3.4.1 Electronic Filing System

Currently, the USPTO's customers submit paper copies of patent applications. A crucial goal of the Patent Business is to receive these applications electronically. In order to accomplish this goal, the Patent Business plans to implement an Electronic Filing System (EFS). The Electronic Filing System will be one of several Electronic Commerce automated services provided to patent business customers.

The current approach to supporting electronic filing for the applicant community derives from several research and demonstration efforts that the USPTO engaged in the last six years. The USPTO initiated the Electronic Filing System (EFS) project in July 1998 to provide a means for patent applicants or their representatives to submit patent applications and related papers to the USPTO using the Internet. EFS is designed around a common "submission engine" EPAVE that presents an electronic form to the applicant to collect bibliographic data and allow the applicant to attach the specification, claims, drawings and other files needed to complete the application as well as submit fees by credit card. The submission engine combines the files into a single compressed file, encrypts and digitally signs the file, and transmits the file to the USPTO over the Internet. The electronic filer will be able to develop the complex parts of the application using an authoring tool based on commercially available software products and then attach those files to create a submission package. Genetic sequence data files authored using PatentIn or other acceptable sequence listing authoring editors can be attached to the patent application submission package and submitted along with the application related electronic files using the EFS submission engine known as the electronic packaging and validation engine.

The longer-term goal is to implement the 24 XML DTDs defining the correspondence and assignment with the USPTO and supporting a full range of two-way business communication with the USPTO.

Recent international agreements on technical and legal procedures for electronic filing impose common standards that will be used for filing in many countries, not just the United States. These standards, which are originally mandatory for International Applications filed under the Patent Cooperation Treaty (see above), are being adopted by the USPTO for all electronically filed applications, especially national filings. This is in anticipation of their being made mandatory for national filings by the upcoming Patent Law Treaty.

The result will be that the same filing software will be used for electronic filing of US national applications, foreign national or regional applications and international applications. By operation of the PCT, PCT Receiving Offices that accept electronic submission will comply with the uniform filing standards. This will help broaden the potential market for both XML conversion or production software or services and electronic filing software.

1.3.4.2 Trademark Electronic Application System (TEAS)

This Trademark Electronic Application System (TEAS) project provides for the implementation of an electronic communication capability with trademark customers using the Internet. The final system is intended to support the receipt of all Trademark forms electronically through standardized transactions using XML.

The initial focus of the project was on the submission of application data to the USPTO. Later enhancements permitted electronic submission of forms required to complete intent-to-use processing and post registration processing. The USPTO will implement a program in the fall of 2000 that will provide for data transmission from the USPTO to customers for Office actions created during the prosecution of a case and post-registration actions using e-mail for the transmission and receipt of documents. The USPTO is currently completing work on a new system that will allow all electronic correspondence, including e-mail correspondence, to be linked to the basic application or registration. This project is the first step towards a complete electronic workflow solution for Trademark prosecution.

The current strategy is to leverage the technologies and capabilities of mainstream World Wide Web browsers and e-mail as a means for interacting with Trademark customers. The final goal is to make all transactions and interactions with Trademark customers electronic. Near term steps involve implementation of the 8 XML DTDs defining various post examination and post registration filings to the USPTO and support of the full range of two-way business communication with the USPTO using e-mail.

1.3.4.3 PatentIn

The USPTO receives about 6,000 initial submissions annually of nucleic and amino acid sequence data as part of biotechnology patent applications. This data is required to be submitted as a Sequence Listing in both paper and computer readable form and must conform to current sequence submission rules pertaining to accepted values and data format. The PatentIn software program provides an efficient and convenient means through which applicants may create the Sequence Listings to comply with U.S. and international filing requirements for biotechnology patent applications containing nucleic and amino acid sequence information.

Following the initial deployment, the PatentIn 3.0 software will be enhanced to support the Electronic Filing System (EFS) project to support the secure electronic submission of the Sequence Listings over the Internet to the USPTO Electronic Mailroom

1.3.4.4 Patent and Trademark Office Assignment System

During 1999, the USPTO improved PTAS electronic workflow software, incorporated automated processing of fax submissions, and conducted a pilot electronic submission of assignments over the Internet. In 2000 the USPTO plans to implement Internet submission for Assignments. XML DTDs have been defined for registering assignments of patent and trademark rights.

1.3.4.4 PCT EASY; Electronic Filing of patent Applications filed under the PCT

PCT EASY is a program that assists in the completion of validated Applications in compliance with the formalities required of such applications. In 1999, of the 74,023 international applications received, 9,610 (13%) were prepared using the PCT-EASY software. There was an increasing share of filings containing a PCT-EASY request as the year progressed, and in the second half of the year, such filings accounted for 18.8% of all PCT filings. Currently, the applicant submits a paper application with a diskette. Future plans call for electronic submission over the Internet.

1.4 USPTO Media Plans for 2000 and forward.

USPTO's communication goals are to increase awareness and appeal of electronic application filing with the ultimate goal of creating positive intent-to-use and actual usage. In order to generate customer interest for the product; raise awareness of the product and make it desirable; satisfy customer need via product attributes and product developments; reach people in such a way that they are receptive to our message and take advantage of enhanced USPTO customer service orientation, the USPTO has enhanced its approach to marketing and promotional plans including expanded public meeting presentations, print and media buys.

The best media fit that USPTO will pursue in 2000 and forward includes:

• Print (General, Intellectual Property Practitioner and Inventor Magazines)
• National meetings attended by independent inventors and patent practitioners.
• Use of the USPTO World Wide Web site