Introduction

As many of you may know, the USPTO has recently established a strategic information technology goal of conducting business electronically with its customers (yes, that includes us patent attorneys) over the Internet. While the PTO still devotes significant resources to converting much of the information provided by its customers and partners into an electronically processable format, its goal is to electronically transact 80% of its business by the year 2003. With the tremendous growth in application filings for both patents and trademarks, and the inability of the PTO to hire and keep a sufficient number of employees to match that growth, the PTO continues to face serious challenges in processing patent and trademark filings in a timely manner and providing satisfactory service to its customers.

The USPTO has undertaken a number of pilot projects related to electronic filing of patent and trademark application information. As you hopefully know by now, on the trademark side, electronic filing of applications and other items has become quite popular. The PTO has implemented the Trademark Electronic Application System (or "TEAS"). TEAS allows the user to complete a trademark application, check it for completeness, and submit the completed validated application directly to the PTO over the Internet (you could also print out the completed form using PrinTEAS and send the application to the PTO via "snail" mail). The applicant may pay the necessary fee(s) using an on-line credit card transaction or a PTO deposit account. Effective August 1, 2000, if you file a trademark application via TEAS, the PTO will no longer mail a paper filing receipt for electronically-submitted applications. Instead, you will receive an email summary of the application data, which will serve as your official filing receipt.

In addition to applications, you may also file the following trademark-related items electronically via TEAS: (a) Statement of Use; (b) Amendment to Allege Use; (c) Request for Extension of Time to File a Statement of Use; (d) Section 8 Declaration; (e) Section 15 Declaration; (f) Combined Section 8/15 Declaration; and (g) combined Section 8/9 Renewal Declaration.

On the patent side of things, however, the process has moved much slower. Of course, the primary reason for this delay cannot be blamed on the PTO (for once). Rather, it is due to the confidential nature of patent applications (a concern not presented by trademark applications). The PTO has been working to address the confidentiality and integrity issues involved in transmitting sensitive information, such as a patent application, over the Internet.

In December 1999, the PTO received its first patent application filed in electronic form. The representing law firm successfully transmitted the appropriate form, a fee transmittal, a complete specification of 29 pages with claims, 7 sheets of informal drawings, and a signed declaration and power of attorney. All were received in complete and readable form, and a filing date was granted. That accomplishment came on the heels of a successful electronic filing of a gene sequence listing for a pending biotechnology application - a filing which inaugurated EFS-BIO, one of the components of the evolving electronic filing system, EFS-BIO eliminates the cost and delay of physically handling, processing, and delivering gene sequence listings.

It has just been announced that beginning this fall, the USPTO will make software available to allow the preparation and filing of patent applications via the Internet. The USPTO's Electronic Filing System ("EFS") software will accomplish the assembling of all the various components that make up a patent application. The EFS software will also calculate fee information, validate application content and enable the application to be compressed, encrypted and transmitted to the USPTO. This development could have a tremendous impact on each of our day-to-day practices. Soon the days of going through a large stack of formal papers, preparing return postcards, etc., may be a thing of the past.

In late October 2000, the basic EFS software will be available from the EBC website for anyone who wishes to begin taking advantage of this new option for filing patent applications. Then, in early November 2000, the USPTO will begin mailing EFS CD packets containing a comprehensive suite of materials: a complete set of software, instructions manuals, quick reference guides, instructional videos, and sample materials to help in developing your patent applications for electronic submission.

Other than concerns of security, user-friendliness, etc. that I am sure all of us may experience to some degree or another, one concrete obstacle to being able to take advantage of electronic patent filing is that you must first obtain a customer number and a digital certificate. These two items are the keys to ensuring that EFS transmissions to the PTO are encrypted and secure. The PTO is advertising that "sensitive patent application information [will be] digitally encrypted from your PC all the way to the USPTO's Electronic Mailroom."

If you do not already possess a customer number and would like to be able to use the EFS software, it is recommended that you apply for a customer number as soon as possible. If you are a registered patent attorney or patent agent, your registration number must be associated with a Customer Number. Forms are available on the PTO web site if you do not have a Customer Number but would like to obtain one (form PTO/SB/125A), or have a Customer Number but would like to update the information associated with it (form PTO/SB/124A). It took me a month and a half to obtain a customer number, so you may want to consider requesting one now rather than waiting until you actually desire to make use of the patent Electronic Filing System.

For more information on the Electronic Filing System, obtaining a customer number and obtaining a digital certificate, visit the Patent Office's Electronic Business Center (EBC) at http://www.uspto.gov/ebc/index.html. With your customer number and digital certificate, you will also immediately be able to access status information about your current pending patent applications via the Patent Application Information Retrieval (or "PAIR") program, 24 hours per day, seven days per week (see PAIR-ing Up With the USPTO, in this Newsletter).

You don't want to be left out in the cold when electronic patent application filing becomes available, as it will only be a matter of time before clients come to expect all patent attorneys to be capable of providing that service.