IFW Final RuleJune 30, 2003 1

Image File WrapperFinal Rule

Prepared by:Office of Patent Legal Administration (OPLA)Robert J. Spar, Director (703) 308-5107, Bob.Spar@USPTO.gov

IFW Final RuleJune 30, 2003 2

The Office is implementing the Image File Wrapper (IFW) system which is an image technology system for storage and maintenance of records associated with patent applications.

The IFW system will replace the standard paper applications in paper file wrappers.

Paper components of the application file contents (including the specification, oath or declaration, drawings, information disclosure statements, amendments, Office actions, and file jacket notations) of pending applications will be scanned into the IFW system as electronic image files.

Image File Wrapper– Final RuleIFW Implementation

Image File Wrapper– Final RuleIFW Implementation

IFW Final RuleJune 30, 2003 3

The electronic image files in the IFW system will be the official records of the applications (the transition will begin on 6/30/03).

See Notification of United States Patent and Trademark Office Patent Application Records being Stored and Processed in Electronic Form, 1271 Off. Gaz. Pat. Office 100 (June 17, 2003).

All processing and examination will be performed with the electronic image files, instead of paper source documents, by all Office personnel.The IFW system is consistent with the data processing system used by the European Patent Office (EPO). Office plans to increase information exchange by leveraging common storage architecture.

Image File Wrapper– Final Rule IFW Implementation

Image File Wrapper– Final Rule IFW Implementation

IFW Final RuleJune 30, 2003 4

Applicants may continue to file applications and correspondence in paper form.Alternatively, applicants may use the Office electronic filing system (EFS) for new application filings and certain information disclosure statement (IDS) submissions.

Copies of U.S. patents and U.S. patent application publications are not required under §1.98 if the references are being submitted in an e-IDS.

Image File Wrapper– Final Rule IFW Implementation

Image File Wrapper– Final Rule IFW Implementation

IFW Final RuleJune 30, 2003 5

The Office will supply copies of U.S. patents and U.S. patent application publications to applicants for applications in IFW until the Office implements a system to permit applicants via PAIR to access these documents electronically.

Foreign patent documents and non-patent literature will still be provided.U.S. patents and application publications are currently available on the USPTO website at http://www.uspto.gov/patft/index.html

Image File Wrapper– Final Rule IFW Implementation

Image File Wrapper– Final Rule IFW Implementation

IFW Final RuleJune 30, 2003 6

Electronic Maintenance of Application RecordsIncreases the integrity of the Office records;Reduces the potential for loss of records and misfiling; Allows parallel processing of the application by various parts of the Office; andFacilitates intra-Office access to an application file and to other authorized parties.

Applicants may electronically access their applications in the IFW system via private side of Patent Application Information Retrieval (PAIR) system. The contents of published applications that are in the IFW system will be viewable by the public through the public side of PAIR in FY04.

Image File Wrapper– Final Rule Advantages of IFW

Image File Wrapper– Final Rule Advantages of IFW

IFW Final RuleJune 30, 2003 7

All new applications are being scanned, and indexed, into the IFW system.The backfile of existing applications will be scanned, and indexed, into the IFW system. A schedule for capturing the backfile of existing applications linked to art units has been established.When a paper for an existing application in a designated art unit is recognized, the paper and the application will be scanned into the IFW system.

Image File Wrapper– Final Rule IFW Implementation

Image File Wrapper– Final Rule IFW Implementation

IFW Final RuleJune 30, 2003 8

Prototype Electronic Image File Wrapper ProgramSee USPTO ANNOUNCES PROTOTYPE OF IMAGE PROCESSING, 1265 Off. Gaz. Pat. Office 87 (Dec. 17, 2002).

By December of 2003, 1,700 examiners (from TCs 1600, 1700 and 2800) are expected to be working in IFW environment with all their applications scanned into the IFW system.

Examiners will be trained to use IFW desktop tools, messaging system, and desktop application navigator to bring up examiner’s docket and any application on their docket.Examiners may print out a working paper file consisting of selected parts of the application (e.g., the specification, drawings, or most recent claim set.)

Image File Wrapper– Final RuleIFW Implementation

Image File Wrapper– Final RuleIFW Implementation

IFW Final RuleJune 30, 2003 9

Proposed RuleSee Changes to Implement Electronic Maintenance of Official Patent Application Records, 68 FR 14365 (Mar. 25, 2003), 1269 Off. Gaz. Pat. Office 166 (Apr. 22, 2003).

Major changes proposed involved:Amendment Practice - §1.121

Application format requirements - §§1.71, 1.72, 1.75,

and 1.823

E-IDS - §§ 1.97 and 1.98

Access and status information - §1.14

Image File Wrapper– Final RuleIFW Rule Making

Image File Wrapper– Final RuleIFW Rule Making

IFW Final RuleJune 30, 2003 10

Final Rule – Effective date: July 30, 2003See Changes to Implement Electronic Maintenance of Official Patent Application Records, 68 FR 38611 (June 30, 2003), xxxx Off. Gaz. Pat. Office xxx (July xx, 2003)(final rule).

The Office received 20 written comments from intellectual property organizations, law firms, and patent practitioners in response to the notice of proposed rulemaking.

The comments are posted at http://www.uspto.gov/web/offices/pac/dapp/opla/comments/index.html

Image File Wrapper– Final RuleIFW Rule Making

Image File Wrapper– Final RuleIFW Rule Making

IFW Final RuleJune 30, 2003 11

Elimination of Return of Non-entered PapersThe rules have been revised to eliminate Office’s return of certain papers because of the costs for locating, and the limited availability of, post-scanned papers.Where permitted by statute, the final rule has adopted the public comments to provide notification of non-entry of papers under §1.3, “Business to be conducted with decorum and courtesy”, and §1.59, “Expungement of information or copy of papers in application file”, (but not for §1.99, “Third-party submission in published application”).The non-entered papers may be returned if the contents of the application have not been captured as image files.

Image File Wrapper– Final Rule37 CFR 1.3, 1.59, and 1.99

Image File Wrapper– Final Rule37 CFR 1.3, 1.59, and 1.99

IFW Final RuleJune 30, 2003 12

Section 1.9, “Definitions”, has been amended to clarify that the word “paper” and “papers” refer to a document or documents, which may be electronic records or physical paper sheet(s).

Section 1.14, “Patent applications preserved in confidence”, has been revised to provide clarity and expand the rule to provide for electronic files.

Image File Wrapper– Final Rule37 CFR 1.9 and 1.14

Image File Wrapper– Final Rule37 CFR 1.9 and 1.14

IFW Final RuleJune 30, 2003 13

Separate paragraphs in §1.14(a) were established to state what access or information is available in specific situations:

Patented applications and statutory invention registrations (SIR). (§1.14(a)(1)(i))Published abandoned applications. (§1.14(a)(1)(ii)) Published pending applications. (§1.14(a)(1)(iii))Unpublished abandoned applications (including provisional applications) that are identified or relied upon. (§1.14(a)(1)(iv))Unpublished pending applications (including provisional applications) whose benefit is claimed. (§1.14(a)(1)(v))Unpublished pending applications (including provisional applications) that are incorporated by reference, or otherwise identified. (§1.14(a)(1)(vi))

Image File Wrapper– Final Rule37 CFR 1.14(a)

Image File Wrapper– Final Rule37 CFR 1.14(a)

IFW Final RuleJune 30, 2003 14

Request for Accessunder 37 CFR 1.14(a)(1)(iv)

Applicants are encouraged to use Form PTO/SB/68 which has been revised to include explanatory notes concerning when access is available.

IFW Final RuleJune 30, 2003 15

Electronic access to an applicationWhere a copy of the application papers or access to the application is available pursuant to §§ 1.14(a)(1)(i) through 1.14(a)(1)(vi), the Office may at its discretion provide access only to an electronic copy of the file contents of the application.

Image File Wrapper– Final Rule37 CFR 1.14(b)

Image File Wrapper– Final Rule37 CFR 1.14(b)

IFW Final RuleJune 30, 2003 16

Papers may not be permanently boundPapers must be readily separable for scanned entry into the image system.

The use of binder clips or standard office staples will generally be acceptable.

Image File Wrapper– Final Rule37 CFR 1.52

Image File Wrapper– Final Rule37 CFR 1.52

IFW Final RuleJune 30, 2003 17

Each section of a patent application is required to start on a separate sheet and include no other portions of the application or other material.

The application will be electronically scanned and each section of the application (e.g., text of the specification, abstract, claims) will be indexed separately in IFW.

Presentation of other material on the same page makes the electronic indexing of the application more difficult.

Image File Wrapper– Final Rule37 CFR 1.71, 1.72, 1.75, and 1.823Image File Wrapper– Final Rule37 CFR 1.71, 1.72, 1.75, and 1.823

IFW Final RuleJune 30, 2003 18

Elimination of the prohibition on using the abstract to interpret the claims

§1.72(b) has been amended to delete the last sentence in the rule (“The abstract will not be used for interpreting the scope of the claims.”) to be consistent with Hill Rom Co. v. Kinetic Concepts, Inc., 209 F.3d 1337, 1341 n.*, 54 USPQ2d 1437, 1440 n.1 (Fed. Cir. 2000).

Image File Wrapper– Final Rule37 CFR 1.72

Image File Wrapper– Final Rule37 CFR 1.72

IFW Final RuleJune 30, 2003 19

Electronic Information Disclosure Statement (eIDS)Section 1.98 has been amended to provide that the requirement for a copy of U.S. patents and application publications does not apply to any IDS submitted electronically in compliance with the Office’s EFS. Also see 1262 OG 94 (9/17/02).Only U.S. patents and application publications may be submitted with eIDS.eIDS may be submitted with original application or later.eIDS may be submitted even where application was not submitted by EFS.eIDS automatically loads patent citations for examiner with EAST & WEST search tools

Image File Wrapper– Final Rule37 CFR 1.97 and 1.98

Image File Wrapper– Final Rule37 CFR 1.97 and 1.98

IFW Final RuleJune 30, 2003 20

For the present time, the Office did not adopt:The proposed changes to §1.14(e) and §1.19(b) concerning electronic document exchange; and

The Office will consider further rule changes pending negotiation and implementation of appropriate agreements.

The proposed changes to §1.14(f) concerning any action of the Board of Patent Appeals and Interferences (BPAI) or decisions by the Director

These changes are not necessary for the IFW implementation. The Office may reconsider the changes in future rule making.Note: the former §1.14(g) has been redesignated as §1.14(e).

Image File Wrapper– Final RuleImage File Wrapper– Final Rule

IFW Final RuleJune 30, 2003 21

The Office also did not adopt:The proposed changes to §1.97(c) to reduce the time period in §1.97(c) by one day.

The Office will consider posting any outgoing correspondence in PAIR on the next business day after the mailing date of the correspondence.

Image File Wrapper– Final RuleImage File Wrapper– Final Rule

IFW Final RuleJune 30, 2003 22

Office of Patent Legal Administration – (703) 305-1616 or e-mail to Patent Practice@USPTO.gov

IFW – Final Rule – Jay Lucas (703) 308-6868, Robert Clarke (703) 305-9177, or Robert Spar (703) 308-5107Amendment Practice – Elizabeth Dougherty (703) 306-3156, Eugenia Jones (703) 306-5586, or Joe Narcavage (703) 305-1795Access under 37 CFR 1.14 - Karin Ferriter (703) 306-3159, or Michael Lewis (703) 305-5585 Reexamination- Jerry Dost (703) 305-8610 or Ken Schor (703) 308-6710Reissue- Joe Narcavage (703) 305-1795Electronic Filing, CDs – Michael Lewis (703) 305-5585 or Jay Lucas (703) 308-6868

Information ContactsInformation Contacts

IFW Final RuleJune 30, 2003 23

Image File Wrapper - http://www.uspto.gov/web/patents/ifw/index.html

Recent Patent-Related Notices (published in O.G., F.R., etc.)-

http://www.uspto.gov/web/offices/pac/dapp/ogsheet.html

Questions of a General Nature - Inventors Assistance Center- 800-PTO(786)-9199

Electronic Business Center – Customer Numbers, PAIR, EFS - http://www.uspto.gov/ebc/ or (703)305-3028

The American Inventors Protection Act of 1999 in general-

http://www.uspto.gov/web/offices/dcom/olia/aipa/index.htm

Further Information ContactsFurther Information Contacts

IFW Final RuleJune 30, 2003 24

Thank you