Promote the Progress

Have you heard?  The Patent and Trademark Office is scheduled to release its next-generation e-filing system for patent applications on March 17th.  The new system, EFS-Web, appears to be a quantum leap forward and is likely to prove to be a practice-changing technology.

The Rethink(IP) crew (Doug Sorocco, Steve Nipper and me) wanted to learn more about the new system and do something to get the word out....before it is launched.  The result is the fifth installment of our Rethink(IP) Aloud podcast.

For this podcast, Steve and I had a very informative conversation with Carl Oppedahl, a recognized leader on PTO technology issues.  Carl has been beta-testing the new system...and tells all the gory details about his experience in the podcast. 

What can you do to get ready?  Why start e-filing?  What benefits does the new system offer?  Listen in, and you'll get answers to all of these questions and more.

You can listen to the podcast by streaming and/or downloading it here.  An RSS feed of the Rethink(IP) Aloud podcast series is available here.

Steve has the information on the PTO online product launch for EFS-Web scheduled for March 20th here.

Posted by J Matthew Buchanan at 12:40 PM | Permalink

The Patent and Trademark Office just finished an online presentation of the major features of the newest version of Private PAIR (dubbed “Private PAIR 6.0”).

Later this afternoon, the presentation will be available here for review:  http://webex.client.ninesystems.com/uspto.

The Office deserves kudos for this release of Private PAIR.  The new version has a great interface, is entirely web-based (goodbye USPTO Direct!  and good riddance!), and has a slew of new features that should prove helpful (including a first action predictor that is pretty slick and appears fairly accurate).

Steve and I watched the presentation (and even skyped messages back and forth during; we are hopeless nerds…).  Our “on the fly” notes are available via Rethink(IP) RSS mojo here.

As an added bonus, the presenters dropped several hints about the soon-to-be-released new electronic filing system (estimated date of arrival is currently March 17, 2006).  If their hints prove accurate, the new system just might be what the community has been looking for – a simple solution to electronic filing of paperwork in patent cases.

Look for an online presentation from the Office on the new e-filing system soon.

Posted by J Matthew Buchanan at 03:22 PM | Permalink

From the conclusion of the GAO’s report on USPTO patent automation systems:

“…[A]fter spending over a billion dollars on its efforts, the agency is still not yet effectively positioned to process patent applications in a fully automated environment; moreover, when and how it will actually achieve this capability remains uncertain.”

I can hear it now:  “Yeah, we should give these guys more money….”  Great.  Just great.

Posted by J Matthew Buchanan at 08:10 AM | Permalink

The Government Accountability Office has issued a report of its review of the progress of the USPTO on its various patent automation projects, including the Image File Wrapper (IFW) system and the Electronic Filing System (EFS).

View and/or download a .pdf of the report here.

The Report is harshly critical of the Office, noting top-level failures:

“USPTO’s ineffective planning and management of its patent automation projects, in large measure, can be attributed to enterprise-level, systemic weaknesses in the agency’s overall information technology investment management processes.”

The recommendations of the report are equally harsh.  One is that the Office reassess and, where necessary, revise its approach for implementing information systems that support automation of the patent process.  In essence, the GAO is recommending that the Office return to the drawing board to rethink the way it implements IT before it proceeds with any new initiatives.

I’ve been critical of the USPTO EFS and IT systems generally for some time.  I think this negative report is a positive for the community as it may serve as an impetus for changes.

But, then again, maybe it won’t.  Jon Dudas, in his written comments that are included in the report, concluded that “[i]n light of the progress that the USPTO has made even during the period of GAO’s assessment, we do not believe that such significant gaps exist as to warrant a pause and reassessment of our key management processes.”  Dudas did acknowledge some weaknesses and described changes that have already been made.

At it’s best, the Report will cause delays in planning and implementation of new systems at USPTO, such as a simplified EFS that can be used by everyone. At it’s worst, the Report might give appropriators pause before allocating additional funding to the Office.

Posted by J Matthew Buchanan at 10:16 AM | Permalink

The FY2006 budget request for the United States Patent and Trademark Office includes some amazing statistics on adoption rates for electronic filing:

For 2004 (estimated figures), a full 75% of trademark applications were filed electronically -- three of every four. On the patent side, only 4% were filed through the Electronic FIling System (EFS).

I've always known the adoption rates of electronic filing were vastly different, but I had no appreciation for the spread until I saw those numbers in black and white. Will the patent system ever reach such high adoption rates? As I've said before, I don't think it will even come close as long as the current Electronic FIling System (EFS) is in place. Under the current system, most practitioners have zero incentive to file patent applications electronically. I seriously doubt the system will even see the 10% projected for next year without a serious overhaul.

Posted by J Matthew Buchanan at 11:11 AM | Permalink

According to Government Computer News, President Bush's FY2006 budget request includes $80M for the Patent Automation System to develop an electronic process for patent applications.

What in the world does that mean? On first glance, this snippet gave me hope that an improved electronic filing system (EFS) is on the way (I'm looking for reasons to have hope these days...). But, after thinking about it for awhile, I'm a little confused. The money goes to the "Patent Automation System." I have no idea what this "system" does or who has access to it. Is it an umbrella term that encompasses the EFS and other electronic systems at the office? A Google search of uspto.gov for the PAS gives only two results, neither of which provide much insight.

Does anyone have any insight on the PAS and its purpose? An idea on what these monies would be used for would be a bonus...

Thanks to Nipper for the tip.

Posted by J Matthew Buchanan at 10:47 AM | Permalink

Last year, I used the Electronic Filing System of the US Patent and Trademark Office to file patent applications electronically for the first time. I was intrigued by the process and system and decided to put in the effort necessary to use the system despite the limited benefits I could see at the time.

I think I filed close to ten applications using the EFS system last year. With practice, I became somewhat efficient in the process. But, I couldn't get rid of the nagging question -- what benefit is this providing (besides elimination of the express mailing charge). The more I focused on that question, the complexity of the process became more of an issue for me. Then, in late December, I noticed that the software wasn't configured to recognize the new fee structure (it wouldn't let you pay the correct amounts!). I added comments to my filings regarding the issue. Finally, the PTO responded with a mandatory download of new software. Arggh!

I chose not to download the new software. I had gotten the old package "settled in" on my system and did not want to introduce new variables (this was no small task as the old sotware requires Microsoft Word 2000. My upgrade to Office 2003 required me to keep an old copy of Word on my system just for EFS. Each time I used Word 2003, it went through the install routine. Each time I used EFS, Word 2000 went through the install routine).

Simply put, the system is too complicated, even for a computer geek like me. I beleive the current system is doomed to be one that is tried, occasionally, by early adopters and curiosity-seekers. It will not enjoy widespread use by the patent bar, and the experimentation rate will dwindle over time as the experimenters, like me, become more and more frustrated with the system.

Thankfully, as Dennis Crouch has previously posted, the PTO appears to be considering simpler alternatives.

My message to the PTO is this: If electronic filing is a priority, and it should be, please consider the simplicity of the alternative -- paper filing by Express Mail is unbelievable easy, and inexpensive too. If you design a new system that is even easier than the paper alternative, patent professionals will adopt it in droves.

Isn't it ironic that the electronic trademark system is winning awards while the patent system stands as curiousity on the sidelines?

Posted by J Matthew Buchanan at 09:56 AM | Permalink | Comments (1) | TrackBacks (1)

As promised, the US Patent and Trademark Office has made the latest version of its EFS software available for download. The new version corrects a problem of the old -- it didn't recognize the new fee structure and only allowed for payment of the old fees on filing.

Because of this fix, the new version is now the only version that can be used to file electronically.

From the Office's Electronic Business Center:

Download Required as of 23DEC2004: Submissions after 1:00 AM on 23 December 2004 will require that the user install and use an updated version of EFS software. Users wishing to make submissions via EFS must install and use ABX v1.2, EFS-ABX PDF Writer and ePAVE 5.2, available from the EFS Downloads page.

Users must download and install three separate programs: ABX, ABXPDF, and ePAVE.

Posted by J Matthew Buchanan at 09:36 AM | Permalink

Today, while filing a provisional application using the electronic filing system, I discovered that the ePAVE software does not reflect the new fees made effective on December 8, 2004. Not a big deal, since you can (and I did) 'check the box' to authorize any additional necessary fees.

The Patent Office has announced that new version 5.2 of ePAVE will be available on December 23, 2004. The new version will include the new fee structure, and the Office warns:

"Once ePAVE version 5.2 is available for download from the USPTO web site, eFilers will be able and required to submit the appropriate fees associated with their eFiling. If eFilers then attempt to use ePAVE version 5.1(e) they will receive a Version Synco Error message from the USPTO and the eFiler will not be allowed to continue with their eFiling until the proper version of the software has been installed."

So, eFilers must download the new software to continue efiling after December 23. And you thought you were leaving the office early on Christmas eve....

The Consolidated Appropriations Act for 2005 continues to expand its reach....

Posted by J Matthew Buchanan at 04:05 PM | Permalink