Issue 147 | January 6, 2004
E-Patent Reference Pilot Project
 On December 1, 2003, the United States Patent and Trademark Office announced that it was immediately providing electronic access and downloading capabilities for all U.S. patent references that are cited in Office actions mailed through February 2, 2004. This "E-Patent Reference" pilot project will allow authorized users of the private Patent Application Information Retrieval (PAIR) system to download some, or all, U.S. patent references that are cited by an examiner on form PTO-892, as well as those submitted by applicants on form PTO/SB08 as part of an Information Disclosure Statement. These documents will be retrievable separately, or simultaneously, as concatenated Adobe Portable Document format (".pdf") files, rather than the page-by-page, tagged image file (".tif") format being used with other USPTO systems.

Public comments that are received during the two-month test period will be used to evaluate the the E-Patent Reference feature while copies of U.S. patent references cited by examiners continue to be mailed with Office actions. However, the USPTO plans "in the near future" to cease mailing copies of U.S. patent references unless they are cited during reexamination or the international stage of an international application under the Patent Cooperation Treaty. According to the Notice, applicants and registered practitioners "are encouraged to experiment with the feature, develop a proficiency in using the feature, and establish new internal processes for using the new access to the cited U.S. patents and U.S. patent application publications to prepare for the anticipated cessation of the current Office practice of supplying copies of such cited references." Copies of cited foreign patent documents, as well as non-patent literature, will continue to be mailed until such time as substantially all applications have been scanned into the Image File Wrapper system.

The USPTO's "Notice of Office Plan to Cease Supplying Copies of Cited U.S. Patent References With Office Actions, and Pilot to Evaluate The Alternative of Providing Electronic Access to Such U.S. Patent References" is available at http://www.uspto.gov/web/offices/
. Got more questions about electronic correspondence with the USPTO? Send them to the author of this update, Bill Heinze (bill.heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley in Atlanta, Georgia USA.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.