Earlier today President Barack Obama, perhaps with the best of intentions, demonstrated that he is not all that familiar with the United States Patent and Trademark Office and how they handle patent applications. The short of it is that what President Obama said to tech executives was wrong on the facts, but at least partly correct in spirit. Essentially, President Obama said that the way the Patent Office handles electronically filed patent applications is to print them and scan them. Sadly, that is not true, or is at least extremely misleading. It is certainly true that the Patent Office used to do things that way, but since the new EFS Web system was unveiled on March 16, 2006, electronically filed patent applications are not printed and then scanned. Perhaps the President or his speech writers are readers of IPWatchdog.com and got the wrong impression when I lamented a few months ago that genius federal minds thought printing and scanning created a paperless system, or perhaps the White House has been spying on the PLI Patent Bar Review Course and listening to John White tell stories of the old days when printing and scanning of electronic filings was the rule. Whatever the case, the President was incorrect on the facts, but certainly correct to say that it is embarrassing that the Patent Office computer systems are woefully inadequate and behind the times.
First, what exactly did President Obama say? In prepared remarks at Opening Session of the Forum on Modernizing Government President Obama said:
Believe it or not, in our patent office — now, this is embarrassing — this is an institution responsible for protecting and promoting innovation — our patent office receives more than 80 percent of patent applications electronically, then manually prints them out, scans them, and enters them into an outdated case management system.
Once upon a time this was correct, and in fact was explained as the procedure for handling electronic applications in the Manual of Patent Examining Procedures, better known as the MPEP. Yes, once upon a time the United States Patent Office actually claimed to be paperless, the only problem being that under the previous Electronic File System the Patent Office would print the filing and then scan it back into electronic format. I wish I could tell you this is just a good story or fairy tale, but it was actually the sad truth. The USPTO’s idea of a paperless system was to print electronic filings, scan them and then destroy the printed copy. Obviously paperless filing was not intended to save trees or otherwise be environmentally friendly.
So how did President Obama get this so wrong? I am not sure, but in September of 2009, while on a rant about government ineptitude, after having professed hatred for Vista, I was lamenting the fact that there is no easy or real way to retrieve a forgotten PACER password. All riled up I explained:
No doubt this comes from the same genius federal mind that several years ago thought the Patent Office had a paperless system when they would print EFS filings and then scan them in because the front end system was not compatible with the back end system. And these people want to run health care?
Perhaps this is the genesis, I don’t know.
Perhaps President Obama or his speech writers obtained a copy of the PLI Patent Bar Review materials, or listened to John Whites lecture on a paperless system, believing what the USPTO tests must be the law, right? Well, no. The version of the MPEP that is actually tested by the Patent Office for those sitting for the Patent Bar Exam is MPEP Version 8, Revision 4, which was published in October 2005. At that time printing electronically filed patent applications only to scan them was how the Office, in its infinite wisdom, believed themselves to be paperless. So yes, this “paperless” electronic filing is still what is testable on the Patent Bar, but does not reflect current practice.
In any event, according the the Patent Office website, when users submit information using an EFS-Web fillable form, the information will directly load into the USPTO databases which will increase accuracy and facilitate faster processing. See General Information on EFS Web. The EFS FAQs explain that unlike with paper filings, most new applications submitted electronically can be viewed in Private PAIR within an hour after filing, which is no doubt due to the fact that the information is directly loaded into the USPTO databases. How “embarrassing” for President Obama to say it is “embarrassing” that the USPTO prints and scans, only to find out that they don’t really do that any more.
Well, not so fast. My sources tell me that the Patent Office does print and scan some stuff; specifically they have to print and scan faxes, which is why the Office has in the past considered prohibiting the filing of patent applications via fax, although there is not a current final rule addressing this issue.
Notwithstanding, pretty much everyone agrees that the USPTO computer systems are not what they should be, and that is “embarrassing.” According to Robert Budens, the President of the Patent Office Professional Association, which is an independent union of professional employees formed in 1964 to represent the interests of examiners, classifiers, computer scientists, and other patent professionals who work at the United States Patent and Trademark Office, some within the Patent Office are concerned that the USPTO computer network is “hanging on by bubble gum and bailing wire.” Not exactly a ringing endorsement of the state of IT at the agency responsible for innovation! Furthermore, the current EFS system, while thousands of times better than the old EFS system, is exceptionally difficult to use by any honest, operability standards. Saving a PDF to meet the needs of the Patent Office shouldn’t be so difficult. I only half jokingly say it is faster to print an application, drive across town to the Post Office, send the application via Express Mail and return to the Office. There has to be an easier, more usable system that even patent attorneys who are set in their ways can figure out!
Now, there was one thing that President Obama said that was not only incorrect in reality, but demonstrates he and his speech writers are completely clueless. The President reportedly said that the print and scan approach of the Patent Office “is one of the reasons why the average processing time for a patent is roughly three years.”
First, this can’t be true since the Patent Office does not print and scan applications electronically filed through EFS. Second, this statement demonstrates that the President doesn’t understand that it was the dysfunction of Patent Office circa 2005-2009 that caused an enormous backlog to grow and pendency to explode. How can it be that someone who blames President George Bush 43 for everything, even things that weren’t his fault, doesn’t blame Bush and the Dudas Patent Office for what is demonstrably and provably the fault of the Bush Administration? I almost feel like I have entered the twilight zone. At least the President is talking about patents, which the patent community should applaud, but if he so carelessly gets things wrong in an area I know intimately I have to wonder what else is he getting wrong in areas where I don’t have all the facts?
Join the Discussion
20 comments so far.
ODPFebruary 17, 2010 09:20 am
Obama definitely reads your blog. Definitely.
EGJanuary 18, 2010 04:16 pm
As noted by someone else on Patently-O, what Obama said is truly “dumb.” And for that reason, very unsettling as to what “rational” support Kappos and Company can expect from the White House.
MikeJanuary 18, 2010 10:03 am
I beg to differ. The system is OK compared to A) programs for doing and submitting taxes, B) the PCS-SAFE system, and C) court e-filing systems.
The USPTO has to balance ease of submission with protection from hackers, viruses, and ID10T errors. The simple PDF submission system with validation works well as a common ground that everyone can get to with either the USPTO software that has really poor resolution, any commercial PDF printer, or a simple scanner. The PDF system has one major hangup, the requirement for all fonts to be embedded. I believe, even though I don’t work there, that the fonts are required to ensure the PDF is not gibberish when they process it. If people could submit without embedding the font, they would get applications with symbols that showed up as boxes (we’ve all seen those), customized fonts that also aren’t readable, and fonts in odd sizes that would be poorly formatted. Remember the USPTO has to get a quality published patent out of these submissions with all of the patent formatting requirements.
The other problem the PTO has is slow servers at peak hours. But for the most part they have made submitting everything you need 24/7 possible, including accomodations for sequence listings and large tables.
My biggest recommendation for the USPTO is to accept text (TXT) applications, simply because any other document format could include viruses, but a TXT application would be a lot simpler to produce, could be easily imported into a database, would dramatically reduce bandwidth, and would completely remove optical character recognition (OCR) errors. They could add it by simply providing a application submission option for TXT files. They already accept TXT for sequence documents and tables.
Maybe a rating scale, 1-10, awful (1) to great (10), comparing the EFS system to other programs might help you quantify how bad the system is.
Program Ease of use Memory Requirements Security Help Comments
Microsoft 2 2 2 2 Oversized program clearly outsourced with mish-mosh menu system.
USPTO EFS 5 4 7 1 Hate the embed font requirement
TurboTax 7 5 3 3 Hate Taxes
Have a great Monday
Gene QuinnJanuary 17, 2010 10:12 am
The USPTO e-systems are definitely inadequate. I tried to make that clear in the article and comments above. The Office, however, does not print the e-filing and then scan it back in. That is what they used to do, and it was not paperless at all.
The reason that patent attorneys tolerate this EFS is not because it is good; by any evaluation it is dreadful. It is, however, 1,000,000 times better than the system in place prior to March 2006.
Ron KatznelsonJanuary 17, 2010 02:50 am
Gene: “At that time printing electronically filed patent applications only to scan them was how the Office, in its infinite wisdom, believed themselves to be paperless. …but does not reflect current practice.”
Gene, while significant improvements were made, you are being rather charitable in describing the Office’s IT advances. Today the Office does essentially the SAME thing electronically with identical results, while missing the whole purpose of electronic storage and retrieval. “In its infinite wisdom” the Office converts native electronic PDF files that we submit via EFS to bit map IMAGES. Your embedded text in the PDF is gone. The Office’s system does the same thing for every Office Action and BPAI decision that it originally produces as electronic text file. Have you ever tried to perform a text search on a PDF file stored in PAIR? It cannot be done. While it is true that some patent practitioners (particularly those using support staff with low computer proficiencies) print and scan their submissions, most produce the PDF directly from their native text file.
A native text PDF document having a size of 200kB is often converted by the Office into a bit-map PDF file that takes close to 5MB of memory. We were told that the PAIR system’s performance slowing necessitated banning automated search tools by the public because the PAIR server was overloaded. How much of that overload is due to retrieval and transfer bandwidths of 5MB items that should take only 200kB?
What document retrieval system designer would specify and design such a system in the 21st Century? Were there no hybrid solutions for storing images and electronic text when the requirements for the system were specified? What costs do we all incur now by having to OCR these documents and store them on our servers for our use?
The greatest losses inflicted by the inabilities to search text on this ridiculous system are (i) examiner and practitioner inefficiencies in crafting Office Actions and responses thereto, and (ii) lost treasure trove of prior art, which examiners could have used had the native electronic data been preserved. By their very interpretive nature, Office Actions, responses thereto and terms used in them provide a unique source of pointers to prior art with a built-in thesaurus for relevant terms that often do not exist in the text of the original reference document. Imagine how powerful a term search on all Office Actions and responses thereto could be!
Unfortunately, it may take years for someone at the USPTO to do anything about this “infinite wisdom” system. Until then, original text encoding of millions of documents will be lost.
MLSJanuary 15, 2010 04:49 pm
It seems to be that his remarks may be perfectly understandable once it is realized that so many of the members of the administration involved in patent law issues are academics who have never practiced and would likely have difficulty spelling MPEP is placed to the task (much less knowing what it is and what it says).
Gene QuinnJanuary 15, 2010 02:58 pm
This is exactly the type of nonsense that I hear about with great frequency. I think patent attorneys, paralegals and secretaries are just trained to expect the crazy when using EFS, and they do. I prefer to wonder what it would be like if the left and right hands were not meeting for the first time!
By the way, I may need to appropriate that quote!
Just visitingJanuary 15, 2010 01:47 pm
Recently, I filed an Appeal Brief on an application that had already received a decision from the BPAI. The BPAI rules require that a copy of all prior decisions be included within the brief. — why that is so (since the BPAI should already have a copy) is not the point of this post.
Anyway, I downloaded a copy of the decision from the BPAI decision from the BPAI website and attached the PDF file to my electronic submission. Lo and behold, it gets kicked back because it has embedded fonts that the EFS system doesn’t like. Thus, I have to take the PDF copy of the BPAI decision, convert it (using a PDF converter) into another PDF version (without the fonts) and then submit that version.
“Hello right hand, this is then left hand — nice to meet you for the first time.”
inventor-0875January 15, 2010 12:25 pm
Congress should immediately replace the ~$750M (plus interest) that was previously diverted from the patent office. Make it part of the stimulous funding, if necessary. This amount is roughly equal to the fees paid for the applications that are now waiting in the queue for examination to begin. [Basically, Congress took and spent the fees we paid for the queued applications.]
A solution: Create a rate smoothing buffer by escrowing the fees for queued applications (the work backlog). Establish flexible funding, so that as the backlog/queue is reduced, the corresponding escrowed fees (additional funds) become available for the patent office to use. With a rate buffer (escrow), patent office funding is insulated from short term variations in new application filings and the queue can be reduced as quickly as possible.
This is the rough idea … may need some tweaking.
MikeJanuary 15, 2010 10:58 am
I don’t see patent leather’s comment here, but I will note that the Application Data Sheet (ADS) satisfy all CFR 1.51(c) requirements. They actually have sent notice of incomplete filing for several applications where I included all information and more including mailing address, citizenship, and representative information on a coversheet. I have never gotten notice when including the ADS. If you submit the ADS with each application you will never have a problem. You must keep all information on the ADS correct including inventor order, middle initial, etc., because it is difficult to get any changes after the ADS is submitted no matter what the declaration says.
MikeJanuary 15, 2010 10:48 am
The current EFS system only accepts fully supported PDF’s, i.e. each font must be included. If the fonts are not included your PDF will be rejected. In these instances you have 3 options: 1) adjust the settings of you PDF program to include ALL fonts (normally Times, Arial, etc. are excluded), 2) create a PDF image by saving the PDF as a JPG, TIFF, etc, and converting back to PDF, or 3) scan a PDF image from the printout. There is never a time when the PDFs aren’t accepted (unless the system is down) but there are certain types of PDF that aren’t accepted. Unfortunately the default PDF created by Adobe excludes many common fonts.
This all stems from the USPTO requirement that all fonts be included. They do not want to get a PDF with a special symbol or foreign character font that will not display because the USPTO does not have the same font.
Gene QuinnJanuary 15, 2010 10:33 am
I have no problem with filing things in PDF, but in my experience what worked today might not work tomorrow. Admittedly, most of my problems with the EFS were when I was using Vista, and that could well be the major problem. So my gripe is that the system does not seem to be repeatable, which makes me wonder what is really going on. I have talked with other patent attorneys who experience the same problems, at least periodically. Murphy’s law being one of the universal truths in life, difficulty always seems to appear when time is of the essence. But then again when do we ever do anything when time is not of the essence?
The FAQs on how to use EFS and troubleshoot are just about the most difficult FAQs to follow that I have ever seen, and in my experience some PDF writers simply don’t work at all. I also had an experience recently where I tried to upload one of the USPTO’s own fillable EFS forms and I was continually told I needed to use the proper USPTO fillable form, which I was using. Errors like that have been extremely frustrating.
Given that PDFs are universal, and given that filling out forms and uploading data can be accomplished with ease by even the smallest of small businesses, it has always seemed peculiar that there are so many quirks. I also find it interesting that there is so much information about EFS on the website that it is almost impossible to find answers. Why can’t there be a simple YouTube-type tutorial that shows you what to do?
I definitely agree with you that when filing a provisional EFS should automatically generate a cover sheet. I used the new EFS the first week it was available to file 2 provisional patent applications and then got Notice of Missing Parts because I did not upload a PDF copy of the coversheet. I called the Office and said, “what did I do wrong?” After an Abbott and Costello routine ensued they told me I needed to upload a PDF copy. I pointed out that the screens ask for all the information on the coversheet, and that didn’t seem to matter. There is an FAQ about this, and I know other attorneys who made the mistake, so I guess many have fallen prey to believing the system generated a coversheet. It is stories like this that suggest that the EFS system could be and should be so much easier and more user friendly. It is a giant step in the right direction, but lags industry standards for electronic communication and data management by 100 country miles (in my humble opinion). The USPTO can and should do better.
MikeJanuary 15, 2010 09:37 am
We have our issues on the corporate side too. It took my company over a year to update the docket system. We had an old version that they had not maintained and was out of date. They had to transfer the data through 2 or 3 formats to get to the final version and the corporate IT monkeys had to have their hands in the mix to prove their worth.
I believe the USPTO needs to update the examiner’s tools and allow them peak performance, this goes with improving the examiner work environment.
By the way, I always break my applications into the appropriate sections when filing but it is nice to know those processing incoming applications have my back. Thanks USPTO!
Paul F. MorganJanuary 15, 2010 09:37 am
How much [purely clerical processing] time delay is there still now between an amendment or application paper or electronic submission to the PTO [especially reexamination papers] and its arrival on an examiners desk to be able to work on it?
yapexJanuary 15, 2010 09:21 am
Examiners’s computers are still running older versions of applications (IE, Word, browser add-ons such as Flash, etc.). When searching for prior art, it’s not uncommon to receive errors from websites about incompatible versions, that the version we’re using is too old, IE 6, whereas at least IE 8 is required. Word 2003 was finally available about a year ago, some 5 years later. Internal tools such as EAST and OACS crash erratically.
We are supposed to promote innovation, but we don’t set the example.
JohnJanuary 15, 2010 09:20 am
I agree with Mike. I just filed an amendment last night without leaving my home office. I remember having to race to a post office to get a date stamped, printing out all the documents and attaching a return postcard to prove you sent since the documents were not infrequently lost within the patent office, trying to find A4 paper for PCT applications, etc.
The EFS is a vast improvement of the old system. I think they did a great job, although it likely could be improved (works fine for me now).
I agree the focus should now be quality of examination. I think that remains the PTOs focus as well.
MikeJanuary 15, 2010 09:14 am
PS Yes they do need to increase the computing power, provide access for batch upload/download, and prevent the system from “FREEZING,” especially on Friday afternoon before a long holiday weekend. Oh yeah a text filing system would be nice too, no more PDF’s, thus no OCR errors, and the like.
MikeJanuary 15, 2010 09:10 am
The USPTO electronic filing system (EFS) has been a technology leader. I was submitting beautiful, perfect text and graphics, patent applications electronically while people were still forced to fax in blotchy, no contrast, black image, PCT applications.
The EFS takes in electronic applications and processes them very well. Submit a patent application as a “Misc Letter” without labeling any of the pages, claims, etc. See how long it takes them to process that application and properly delineate the abstract, disclosure, claims, drawings, declaration, application datasheet, preliminary amendments, etc. The USPTO processing is to be commended for their flexibility and ability to achieve a system that doesn’t require XML (as originally developed). The USPTO’s innovation encouraged other countries and the international PCT to accept electronic applications. It is not the processing of incoming patent applications that limits the USPTO.
The USPTO needs to hire good examiners, provide competitive pay, provide a good work environment and credit examiners for applications with 10,000 claims to examine (we do pay to have those excess claims examined). The only way to improve the USPTO is to improve the quality and number of applications examined.
step backJanuary 15, 2010 06:38 am
What’s a real embarrassment is how our government misunderappreciates the real problems.
patent leatherJanuary 15, 2010 12:50 am
“Furthermore, the current EFS system, while thousands of times better than the old EFS system, is exceptionally difficult to use by any honest, operability standards”
Usually I agree with your rants about the USPTO (especially your criticism of the Doll/Dudas era), but I think the EFS is the only thing Mr. Doll worked on that he got right (Doll was good at getting things done, but clueless as to what should be done). I think the current system (I agree that the former EFS was unusable) is pretty good and easy to use. If you are referring to the requirement of saving as a PDF first, well I think the reason is that Word documents can appear different on different systems, but PDF is a universal format. So I’m not sure how the current EFS could be any easier. While they could do away with the requirement of having to identify each document, having to do this never really bothered me that much. But perhaps you’ve had problems that I haven’t had. Having a good PDF writer avoids all verification errors (at least for me).
But the USPTO could improve on a couple things: 1) have a direct link from a patent/publication to its file history (not technically EFS but still worth a mention); 2) when filing a provisional, the EFS should automatically generate a cover sheet that satisfies 37 CFR 1.51(c)(1); 3) allow for a miscellaneous dollar amount (set by the applicant) to be paid as a fee (there are some odd situations that have arisen where a fee is to be paid that can’t be generated in EFS, thus requiring paper filing).