Issue 41 | November 26, 2002
USPTO to Test Image Processing of Patent Applications
 Starting December 2002, the USPTO will begin testing the use of electronic imaging technology to replace the standard paper processing of patent applications in Technology Centers 1600 (Biotechnology, Organic Chemistry) and 2800 (Semiconductors, Electrical and Optical Systems and Components), the Office of Initial Patent Examination (OIPE), and other related processing divisions.

The paper documents for pending applications (including the specification, oath or declaration, drawings, information disclosure statements, amendments, Office actions, and file jacket notations) assigned to these art units will be scanned to produce electronic image files. All processing and examination will then be performed with the image files, rather than the paper source documents. Nonetheless, the paper source documents will be separately maintained as the official files at the USPTO and used by units of the Office that are not participating in the prototype program, such as the Board of Patent Appeals and Interferences.

The requirements for obtaining a filing date will not change. However, the Office will request that any amendments be filed in a special format described in an information sheet attached to all Office actions mailed by the three participating art units during the test program. Compliance the formatting guidelines is voluntary.

In addition, applicants in the participating art units will not be sent paper copies of US patent and published application references. Instead, the information sheet will ask applicants to obtain electronic copies of US patent and published application references from the USPTO web site. Nonetheless, paper copies of the references will be available on request and cited foreign patents, foreign published applications, and non-patent literature will be mailed in conventional paper form.

The technology and procedures for the prototype program are similar to those used at the European Patent Office, but adapted to the legal requirements and existing computer systems of the USPTO. It is expected that the prototype program will incrementally migrate into a production system, with the goal of eliminating paper patent applications in the near future.

For general information about the test program, contact the Search and Information Resources Administration atimage.processing@uspto.gov. For information on legal aspects of the program, contact Jay Lucas (jay.lucas@uspto.gov), Rob Clarke (Robert.clarke@uspto.gov) or Joseph Narcavage (Joseph.Narcavage@uspto.gov).

To discuss this topic further, please contact the author, Bill Heinze, at Thomas, Kayden, Horstemeyer & Risley. 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.