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Archived updates for Wednesday, April 13, 2005

Web-Based EFS Coming Soon

Carl Oppedahl reported yesterday on the EFS Listserve that the USPTO will be beta-testing a new e-filing system for patents during two months starting September 1, 2005. The new system will be web-based and will permit attaching PDF files. He thinks that it is likely to be well received and offers this brief report on the USPTO e-filing forum which took place on March 16, 2005:

USPTO really seems to have done quite a lot of thinking about how to
design a new e-filing system. I have the slides that were shown and if
it would be helpful, maybe we could set up a conference telephone call
in which people could all click through the slides while I narrate.
The chief developments are:

PDFs. USPTO continues (rightly I think) to worry about whether PDF is as unambiguous a format as people think. They are actively
soliciting for people to give USPTO examples of PDFs that led to surprises. For example we have an inventor's declaration which we tried to send to a client last fall -- and when we printed it we had two pages, and when the client printed it the client had three pages. The page breaks were not in the same place, depending on who was printing it. At USPTO's request we sent that PDF to USPTO to play with. Anyway, USPTO wants more from anybody who can help. Our listserv could help with this by doing outreach to our members and getting them to submit troublesome PDFs for this study.

Beta of web EFS. USPTO plans to release a beta of the new web-based EFS on August 1 (news flash -- the release has been postponed to September 1), with a pilot to run two months. Each submission in the pilot will be tended by hand by SIRA staff, meaning among other things they won't be able to let all and sundry join the beta as it would make too much work for the people doing the hand-tending. My impression is the beta will be limited to those who attended the March 16, 2005 forum.

Among many other nice features and capabilities, the beta
includes a way to submit IDSs electronically no matter what kind of
reference it is. As such, it largely satisfies the suggestions I made in my paper A Modest Proposal ( ). I believe that this will become a wildly popular thing with patent firms that have large prosecution dockets. The prospect of simply clicking a couple of times to file an IDS, rather than fussing with large stacks and boxes of paper, is extremely attractive to me and I predict others will feel the same way in their own practice.

As I think about this beta, I am reminded of what sometimes happens in human clinical trials for medical treatments. Sometimes the experimental treatment turns out to work so well that the researchers
conclude it would be unethical to continue the placebo part of the
trial and instead they release the drug (or whatever) to the general public and to all of the subjects who were on the placebo. I predict
that this beta will be so extremely well received by the users that the
following will happen:

a. at the law firms where there is a beta participant, the entirety of
the law firm will instantly switch over all of its paper filings to the beta web systems. There will be law firms that in the span of a month
will stop using the postal service or the fax machine to communicate
with theUSPTO. New patent filings as well as follow-on filings (IDSs,
responses to office actions) will all be e-filed by enthusiastic users.

b. the word will get around and law firms and corporations will be
clamoring to join the beta so that they can stop using fax and postal
service for communications to the USPTO.

c. the USPTO will be under great pressure not to end the beta when the end of the two-month period arrives.

I hope that other members of the listserv who were there will
offer your comments and recollections.

Thanks Carl!
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