USPTO builds a better e-filing mousetrap

Simplified process boosts electronic submissions

EFS-Web is 'so flexible. Use any word processor, and just hit that 'Save as PDF' tab.' ' John Doll, U.S. Patent and Trademark office

Rick Steele

Every time the paralegal left the office, according to a story common in patent circles, the young lawyer in a Chicago intellectual-property law firm was seized by panic attacks, terror-stricken at the thought of facing the U.S. Patent and Trademark Office's electronic-filing system ' alone.

USPTO's filing systems ' named ABX, PASAT and e-Pave in various incarnations ' put off even the most dedicated filers. John Doll, commissioner of patents at USPTO, described the systems as 'cumbersome, very difficult and dreadful.'

As recently as 2005, when the Internal Revenue Service had more than half of all taxpayers e-filing their returns, fewer than 2 percent of patent applications were submitted electronically.

'Our life in the electronic-filing world was almost nonexistent,' Doll said. The system 'was kludgy, with onerous security.'

Roll your own

Patent seekers had to build holes in their network firewalls to download special software from USPTO.gov. Then they had to create Extensible Markup Language documents, which they e-mailed to USPTO.

'That was a lot for most people,' especially patent attorneys, who are not the most computer-savvy people, Doll said.

It was difficult to get attorneys to use the systems, said Jon Meyer, senior vice president of intellectual-property law at Motorola, which is now one of the top three users of USPTO's new Web-based e-filing system, EFS-Web. The old systems weren't compatible with other industry-standard tools.

If an application had to be filed by a particular date, that meant getting the documents postmarked. Meyer often had to pay administrative assistants to drive in the evening from Motorola's offices in the Chicago suburbs to O'Hare Airport to get a document postmarked by midnight.

USPTO had to account for a wide variety of documents in designing the new system.
Patent applications can be as simple as one page of claims or as detailed as
500 pages of complex information about chemical compounds.

USPTO held a series of focus groups to learn what features would make it easier to file patents electronically. Agency officials sat down with their chief information officer, employees from the Office of Search and Information Resources Administration, and some of the most prolific patent filers, including Motorola.
'We drew up mock-ups of the screens,' Doll said. 'People said, 'If you do what you said you're going to do, I'll file 100 percent electronically.' '

As a result of the user groups, USPTO officials got rid of the downloadable software they had been using and switched to a Web-based portal. Users no longer had to translate applications into XML format but could simply attach a PDF file.
'You can wrap it in a PDF any way you like,' Doll said. 'It's so flexible. Use any word processor, and just hit that 'Save as PDF' tab.'

USPTO uses the same Secure Sockets Layer Version 3 security as e-commerce sites such as Amazon and eBay, Doll said.

EFS-Web also lets patent filers delegate others to file on their behalf. Users are authenticated through a notary public when they sign up, said Bill Stryjewski, program manager at USPTO.

EFS-Web 'absolutely meets Motorola's standards for information security,' Meyer said. 'We checked it with our IT professionals to make certain the transactions are fully secure.'

'This was a total in-house project,' Doll said. It was developed and deployed by USPTO employees.

Since EFS-Web went into full production March 16, 2006, USPTO has trained more than 30,000 people to use it. The new system has saved the patent agency about $7.8 million, Doll said.

Now, 60 percent of new patent applications are filed electronically. More than 850,000 applications and other documents have been filed through EFS-Web. Patent applications can be sent through any browser, and USPTO is now investigating whether they can be sent over an Apple iPhone.

USPTO's biggest customer, the intellectual-property law firm Oblon Spivak McClelland Maier and Neustadt, anticipates it will be close to meeting its goal of e-filing all its patent documents by the end of the year, said Jan Gardner, operations manager at the firm.

The firm uses EFS-Web to file its new patent applications and information disclosure statements.

Gardner and the law firm beta-tested the earlier versions of USPTO's e-filing systems and knew right away that the last version was going to work.

'The difference was the ease of usage,' Gardner said. The previous versions were designed more for small firms and lone inventors. USPTO made changes to EFS-Web based on feedback from intellectual- property lawyers.

Gardner likes that the new system is based on PDFs. 'We still get paper from some of our clients, so it's fairly simple to capture something as a PDF,' she said.
The bulk of the firm's clients are overseas, Gardner said. 'A lot of them are saying, 'We don't want paper, we want you to send us everything electronically.' That's the way the world is going, so we all have to move in that direction.'

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