APLF: USPTO Launches Electronic Patent Assignment System ("EPAS")

On May 10, 2004, the Office of Public Records at the U.S. Patent and Trademark Office launched its new Electronic Patent Assignment System (or "EPAS") at http://epas.uspto.gov/. Similar to the Electronic Trademark Assignment System ("ETAS") at http://etas.uspto.gov/, EPAS allows users to create and submit a Patent Assignment Recordation Coversheet with supporting legal documentation uploaded in Tagged Image File Format ("TIFF").

Properties may be identified by U.S. Patent Application Serial Number, US Patent Number, or US PCT number. However, only one such number should be entered for each property because, although the system will prevent duplicate entries of the same number, it does not have the ability to determine the relationship between numbers assigned to the same patent property. Data from a submission can also be downloaded as a template to re-use in future submissions.

Applicants may use preformatted designations for the nature of the conveyance -- "Assignment," "Merger," "Change of Name," "Nunc Pro Tunc" -- or select "Other" and enter up to 120 characters that describes the transaction to be recorded. However, the USPTO does not examine the substance of documents submitted for recording. In fact, according the the on-line help file, "The act of recording a document is a ministerial act, and not a determination of the document's validity or of its effect on title to an application or registration. The Office will determine the effect of a document only when an assignee attempts to take an action in connection with an application or registration (e.g., when an assignee files a statement of use or an affidavit or declaration of use under 15 U.S.C. §1058). 37 C.F.R. §3.54."

The TIFF files containing the conveyance must be letter size (8.5"x11"), 300 dpi, single-page, black and white images with portrait orientation. The size of an image file must be 2550 by 3300 pixels, within a 5% deviation. Most TIFF format encodings, such as Uncompressed, RLE, Packbits, Deflate, CCITT Group3 and Group4, are recognized by the system and transformed to CCITT Group 4 TIFF files.

During the submission process, when the system successfully recognizes an uploaded TIFF file, a thumbnail image will be displayed at the bottom of the attachments web page indicating successful attachment/upload of the file. If the server does not recognize the tiff image an error message will be displayed on the web page, indicating the file has not be uploaded as an attachment to the assignment.

Fees may be paid using a credit cards, electronic fund transfer, or through an existing USPTO deposit account. All forms will be marked with a U.S. Eastern Time timestamp when received on the USPTO server. Upon completion of the fee payment process, a Confirmation of Receipt will be displayed and the time stamp will be applied to the submission. Once submitted, a filing can not be cancelled unless the request fails to satisfy the minimum filing requirements.

For more on the latest USPTO procedures contact Bill Heinze (bill.heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA and via the new "I/P Updates" news service at http://billheinze.blogspot.com (RSS/Atom feeds).