PTO-Patent Reengineering - Applicant Feedback Word Validation Tool

Script for eFiling Concept Demonstration

Welcome! The US Patent and Trademark Office is in the process of modernizing the tools for patent examination. These changes will help improve the process of filing and prosecuting patents both for applicants and for patent examiners and other staff at USPTO.

One important idea that we are exploring is to enable applicants to file their applications as original text documents, rather than as pdfs. No matter what word processing program you use, you will be able to use this facility.

This video walks through an envisionment of how filing a patent application with the USPTO might work for someone using Microsoft Word, WordPerfect, Open Office or any word processing application that uses the ISO/IEC 29500 Open XML standard.

(Maybe a brief and simple explanation of Open XML)

Our goal is to make this process as easy for you, the applicant, as possible, and to minimize the changes you would have to make to your standard work processes. In fact, this new facility is likely to reduce the number of steps you have to take, and improve the fidelity of the information that the USPTO receives from you.

(Discuss steps eliminated)

Let’s take the simplest case first. Say you have prepared your patent application in Word. Now all you have to do to file it is login to EFSWeb as usual, and upload your file. If you’ve formatted the file using a few simple rules, you have completed the process.

Now we know that some of you are concerned about giving a Word document to the USPTO because you might inadvertently share private information that is hidden in the metadata of the document. So we have developed a prototype of a validator tool that you can run right in your web browser, locally on your own computer, that checks to be sure that you have not inadvertently left private information in the metadata.

The program checks over your file on your machine before it ever goes to the USPTO. If you have accidently left private information in the metadata, the program gives you a warning and tells you how to run the appropriate tools in Word to remove that information.

Another issue is that there are a few features in Word that you might have used and that the USPTO does not want to see in a patent application. The validator tool also checks for these features, and alerts you if it finds any of them (Show a couple of examples here.)

Finally, it is important that the USPTO knows where the different major sections of the application are in your document (claims, abstract, specification, and drawings, if present). We propose to handle this as follows.

First, we ask that you follow a very simple rule when creating the patent application document. We simply ask that you put the name of the section on its own line in the document. For example, the word “Abstract” or (other options here) goes on its own line, as does the word “Specification” or (other options here) for that section, and on the same for “Claims” and “Drawings”.

A second method to identify or ‘index’ to coin an EFS-WEB acronym, is to use a special set of headings to indicate the start of the section.

When you run the validator tool, it checks to be sure that it can recognize where each section starts. If the tool is unsure, it lets you know and you have the choice of either using the tool to mark the boundaries or editing your document as described above and rerunning the validation tool.

Once your application passes validation you can login to EFSWeb and upload the file, and that’s it!

As an added bonus, if you like, you can have the validator check for certain types of formalities as well, such as limits on abstract length and (discuss others)

There are many benefits to this set up for you. First, you don’t have to convert your file to pdf and worry about problems that can occur with that. Second, you can always retrieve a copy of your Word document from the USPTO, so you’ll have access to the version you sent to us in softcopy form.

This will greatly accelerate pre-exam processing at the USPTO. We won’t have to pay a contractor to retype the text that you have scanned in, as we do today. This will reduce costs and errors. Although the version you send us will be frozen and unchangeable in our official records, we will be able to load a copy of the text right into our new, modern patent examination system that allows the examiners to operate right on the text, rather than on an image of the patent. This way examiners can resize the text to make it easier to read, highlight the text, take notes on it, copy and paste sections into search engines and office actions, thus increasing the time they can spend on the substance of the patent examination process.

As an added bonus, as part of this project we are developing technology that will make it much easier for you to upload non-patent literature and transfer NPL from one case to another. Rather than scanning in your NPL, you’ll be able to look it up in our internal database and simply select those articles that are relevant for your case. And if you’ve got a similar case on file, you can transfer the NPL from one case to another.

Many other time-saving, quality-improving ideas are on tap for the patent system modernization effort. (enable applicants to self correct pre-grant publication and issue publication, upload and download office actions in text (this is also a cost savings to the PTO), and most importantly decrease patent pendency because the pre-examination and examination process will be more efficient)

We thank you so much for your time and hope you’ll share your unvarnished views of these ideas with us.

[Participants will be asked to answer pre-video questions]

[Participants will watch the demonstration video]

[Participants will be asked to answer the post-video questions]

Wrap up the session