PTO to start from scratch on e-filing

Currently, only 2 percent to 3 percent of patent applications are filed electronically.

'PTO director James Rogan

The Patent and Trademark Office has set its sights on building new and expanded systems for processing patents and trademarks electronically.

PTO's existing systems are 'not user-friendly and [are] cumbersome,' director James Rogan said.

Currently, only about 2 percent to 3 percent of patent applications are submitted electronically, via the Electronic Filing System.

The Commerce Department agency wants to achieve electronic end-to-end processing of trademarks by October 2003 and patents by October 2004, Rogan said during a teleconference earlier this month.

PTO plans to use commercial systems and coordinate its IT makeover with patent officials in Europe and Japan. The European Patent Office now uses a system known as epoline.

'The technology already exists,' Rogan said. 'Their system is far more user-friendly. We would like to piggyback on their efforts and develop it jointly.'

Wes Gewehr, deputy CIO for systems modernization, said PTO has agreed to abide by systems standards adopted by the World Intellectual Property Organization. The European, Japanese and U.S. patent offices developed the standards.

'We are planning to work with the European Patent Office to find common filing tools and software,' Gewehr said. 'Our main goal is to provide a seamless system to American innovators so they can write an application and file it in many places without significant adjustment.'

Epoline will replace EFS.

The lack of EFS' success is well known.

PTO senior computer scientist Arthur F. Purcell, speaking last month at the eSecurity Conference and Expo in Vienna, Va., discussed the low use rate of EFS.

So far PTO has issued about 10,000 digital certificates, most of them to the 17,000 registered patent lawyers, he said. But many certificates are in use only to access the Patent Application Status Information system, which received 2 million queries last year. Only a fraction of actual applications are electronic.

In 1999, 20,610 out of 295,165 trademark applications arrived in that form, plus a small percentage of 272,221 patent applications. EFS submissions peaked last year at about 300 per month, Purcell said.

The technology exceeds the comfort level of most patent lawyers' offices, he said. Extensible Markup Language authoring tools are complicated, and software to link law office systems to EFS has not developed as expected, Purcell said.

A patent lawyer for a major Washington law firm acknowledged that colleagues, after an initial rush of interest, have shunned EFS. 'For something to work, you would have to have access through the Web,' the lawyer said.

'The problem is with the interface,' he said. 'It is really hard to get it up and running.' But the lawyer questioned whether the multinational systems could be electronically coordinated because of legal differences.

PTO's plan also calls for the agency to hire more contractors to examine applications for conflicts with existing patents. It also would change the fee structure to reward applicants for filing electronically and create a process to speed some applications.

The reforms are intended to reduce the backlog and processing time for patents, which now stand at 408,000 applications and two to three years in processing time, Rogan said.

The plans drew fire from Ronald J. Stern, president of the Patent Office Professional Association, which represents about 3,400 patent examiners. 'It is not obvious that the European system is compatible with our system,' he said.

Stern also raised questions about funds already allocated to EFS. 'What Rogan said is that he wants to use epoline and commercial software,' Stern said. 'What he did not mention was the millions they have spent on EFS.'

PTO's plans to adopt epoline also call into question the future of two other projects, the Tools for Electronic Application Management system and the Trademark Information system.

Agency officials said they would release details on the transition to epoline and its relation to existing systems in coming weeks. The patent office had requested $20 million for fiscal 2003 to develop TEAM.

GCN staff writer William Jackson contributed to this story.

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