A Review of USPTO Electronic Office Action Delivery

In December 2006, the USPTO launched a beta test of its system of electronic office action delivery system. Under the new system, USPTO customers receive an email message from USPTO mentioning the serial number of the case that has received an Office Action. If the customer fails to log in and view the Office Action within a week, the USPTO drops a post card in the mail reminding the customer that the Office Action is there in Private PAIR, waiting to be viewed. If the customer subsequently views the Office Action within the one-week period, then no post card gets mailed.

Carl Oppedahl's firm is part of the test and he has offerrd these initial impressions on the EFS-Web list serv:

I would guess that of the last twenty Office Actions we received, we received ten post cards. In fifty percent of cases, our firm never got around to looking at the Office Action in IFW after receiving the email notification. In fifty percent of cases, USPTO found itself having to physically mail a post card to us.

How can that possibly be? How can a seemingly alert patent firm fail, in fifty percent of cases, to go look at an Office Action after receiving USPTO's email notification about the Office Action?

The answer is Partridge. We run Partridge every day, and when it says we have an Office Action, we go look in IFW and we download and view the Office Action. And we docket it, and we report it to the client, and we load the image of the Office Action into our database.

Most Office Actions are in cases that have been published (or to say this in different words, it is extremely rare that USPTO gets around to examining a case sooner than 18 months after filing). And USPTO says you are not allowed to install its crypto software on more than two computers. So sometimes the person in our office who downloads the Office Action into our
system is doing that using Public PAIR and not Private PAIR. Of course it does occasionally happen that an Office Action cannot be seen in Public PAIR but requires a secure login to see it -- a design case, or a US case in which there had been a Request Not To Publish. Or against all odds a case might get
examined sooner than 18 months. In those cases the only way to see the case is to log in to Private PAIR.

Anyway, we obtain an image of the Office Action, because Partridge told us it is there. The a day or two or three later (and it is *always* at least a day later) comes the email message from USPTO telling us about the Office Action. Well, at that point we have already viewed the Office Action so there is no reason for us to view it *again*, none at all. So a week later the post card gets mailed. Partridge, of course, sees this event in PAIR and
Partridge tells us that a post card was mailed to us. Three days later, the post card shows up in the mail. We haven't really made a decision around the office what to do with these post cards. As I say, out of the last twenty Office Actions, I think we received about ten post cards. We haven't quite decided whether to simply throw them away, or whether to carefully file them in our files.

Partridge tells us about the Office Action at least a day sooner than the beta-test email system, and often two days earlier. We have seen instances where it tells us three days earlier. There is no way we would willingly give up this extra day or two or three. We want to know of an Office Action as soon as is humanly possible, so that we can docket it sooner, and report it to the client sooner. And respond to it sooner (sometimes if the issues are formal issues we can respond the same day) and the patent gets issued sooner.

A second reason we would never give up Partridge is that it tells us a wealth of things that the email system does not. Partridge will tell us that an IDS has been considered, and that very fact tells us that the Examiner has picked up the case and is examining it, and likely as not we will see a first Office Action within a week or two. Partridge will tell us that the Examiner has changed, so we know to ring up the new Examiner to introduce ourselves and keep the case moving along. Partridge will tell us that a case that had a filing date has lost the filing date (because OIPE pulled the case back) and we know to start pestering OIPE to restore the filing date. Partridge will tell us that a case has received a filing date, so that we know
we can now for the first time order the urgently needed certified copy for Paris purposes. Partridge will tell us that a case has gained or lost some item of continuity data or foreign priority, so we know to get on it right away if OIPE has mistyped a serial number or overlooked some item of priority.

Partridge will tell us if a continuation or divisional has been filed, which is of particularly great interest to us if we did not ourselves file that continuation or divisional application. One wonders what might be done differently in future so as to reduce the number of unnecessary mailed post cards.One thing is that (as far as we can tell) the setting of the one-week timer is presently getting triggered by the mailing of the email message. Maybe it would be better if the setting of the one-week timer were triggered instead by the loading of the Office Action
into IFW. If USPTO were to do that, then when we learn of the Office Action by means of Partridge and download the Office Action from IFW, that would clear the timer and no post card would be needed. Of course this only works if the way we obtained the Office Action from IFW is from Private PAIR. If in a particular case we obtain the Office Action from IFW from public PAIR, then USPTO has no way to know who exactly it is that downloaded the Office Action and thus ought not to clear the timer.

But I suppose maybe it is two-thirds of the time that when we download an Office Action from IFW, it is from Private PAIR and not Public PAIR. And so it would be possible for USPTO to detect that we downloaded the Office Action, and thus it would be possible for USPTO to clear the timer, and then USPTO would not need to mail the post card. Importantly, it would not even be needed for USPTO to send the email notification.