[Federal Register Volume 76, Number 167 (Monday, August 29, 2011)]
[Notices]
[Pages 53667-53670]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2011-21964]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No. PTO-P-2011-0032]


Establishing a One-Year Retention Period for Patent-Related 
Papers That Have Been Scanned Into the Image File Wrapper System or the 
Supplemental Complex Repository for Examiners

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Request for Comments.

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SUMMARY: The United States Patent and Trademark Office (USPTO) is 
considering establishing a retention period of one year for patent-
related papers that have been scanned into the Image File Wrapper 
system (IFW) or the Supplemental Complex Repository for Examiners 
(SCORE). Specifically, the USPTO is considering establishing a one-year 
retention period that begins on September 1, 2011, for papers scanned 
into IFW or SCORE prior to September 1, 2011; or a paper's submission 
date, for papers scanned into IFW or SCORE on or after September 1, 
2011. After the expiration of the one-year retention period (after 
September 1, 2012, or later), the USPTO would dispose of the paper 
unless, within sufficient time prior to disposal of the paper, the 
relevant patent applicant, patent owner, or reexamination party files a 
bona fide request to correct the electronic record of the paper in IFW 
or SCORE, and the request remains outstanding at the time disposal of 
the paper would have otherwise occurred. Establishing a one-year 
retention period for papers scanned into IFW or SCORE would replace the 
USPTO's past practice of indefinitely retaining the papers, which has 
been rendered unnecessary and cost-ineffective by improvements in 
scanning and indexing.

DATES: Comment Deadline Date: To be ensured of consideration, written 
comments must be received on or before October 28, 2011. No public 
hearing will be held.

ADDRESSES: Comments concerning this notice may be sent by electronic 
mail message over the Internet addressed to 
[email protected], or submitted by mail addressed to: Mail 
Stop Comments--Patents, Commissioner for Patents, P.O. Box 1450, 
Alexandria, VA 22313-1450. Although comments may be submitted by mail, 
the USPTO prefers to receive comments via the Internet.
    The comments will be available for public inspection at the Office 
of the Commissioner for Patents, located in Madison East, Tenth Floor, 
600 Dulany Street, Alexandria, Virginia, and will be available via the 
USPTO Internet Web site (address: http://www.uspto.gov). Because 
comments will be available for public inspection, information that is 
not desired to be made public, such as an address or phone number, 
should not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Raul Tamayo, Legal Advisor, Office of 
Patent Legal Administration, Office of the Associate Commissioner for 
Patent Examination Policy, by telephone at (571) 272-7728, or by mail 
addressed to: Mail Stop Comments-Patents, Commissioner for Patents, 
P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of 
Raul Tamayo.

SUPPLEMENTARY INFORMATION: IFW is the USPTO's system for electronically 
storing and maintaining the files of patent applications and 
reexamination proceedings. The image files in IFW for patent 
applications and reexamination proceedings are the official records of 
those patent applications and reexamination proceedings. See Changes to 
Implement Electronic Maintenance of Official Patent Application 
Records, 68 FR 38611 (June 30, 2003), 1272 Off. Gaz. Pat. Office 197 
(July 29, 2003). The USPTO stores in IFW documents it receives over the 
Electronic Filing System--Web (EFS-Web). In particular, the USPTO 
converts Portable Document Format (PDF) files submitted by users into 
Tagged Image File Format (TIFF) image files and then stores the TIFF 
image files in IFW as part of the official record for the relevant 
patent application or reexamination proceeding. The USPTO also stores 
in IFW as part of the official record of a patent application or 
reexamination proceeding the image files that it creates when it scans 
documents filed in paper, i.e., filed by mail, at the USPTO's Customer 
Service Window, or, when permitted, facsimile. After being scanned into 
IFW, the papers are no longer part of the official record.
    Since July 1, 2003, the USPTO has been scanning into IFW newly 
received patent applications filed in paper. 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). In particular, the USPTO since July 1, 2003, has been 
scanning into IFW newly received, paper-filed (1) Nonprovisional 
applications under 35 U.S.C. 111(a), (2) provisional applications under 
35 U.S.C. 111(b), (3) plant applications under 35 U.S.C. 161, (4) 
design

[[Page 53668]]

applications under 35 U.S.C. 171, and (5) reissue applications under 35 
U.S.C. 251. Newly received, paper-filed nonprovisional applications 
under 35 U.S.C. 371 have been scanned into IFW as of November 30, 2005, 
and newly received, paper-filed international applications under the 
Patent Cooperation Treaty have been scanned into IFW as of January 1, 
2007. In addition, the USPTO since August 2004 has been scanning into 
IFW newly received, paper-filed requests for reexamination.
    Once an application or request for reexamination has been scanned 
into IFW, follow-on documents that are filed in paper for the 
application or reexamination proceeding are scanned into IFW. Follow-on 
documents are documents filed after the initial submission of the 
application or request for reexamination which include, but are not 
limited to, the following: amendments, information disclosure 
statements (IDS), replies to Office actions and notices, evidence, 
petitions, and other documents filed after the filing of an application 
or request for reexamination. Additionally, the USPTO scans into IFW 
all USPTO communications for applications and requests for 
reexamination that have been scanned into IFW.
    The USPTO has also scanned into IFW the paper file wrappers, i.e., 
all of the papers, including the initial applications or requests for 
reexamination, follow-on documents, and USPTO communications, of many 
applications filed prior to July 1, 2003, and many requests for 
reexamination filed prior to August 2004. For example, between 2003 and 
2005, the USPTO physically moved its principal office to Alexandria, 
Virginia. During that period, the USPTO scanned into IFW the paper file 
wrappers of many of the then-pending 600,000 patent applications. 
Further, the USPTO routinely scans into IFW the paper file wrappers of 
applications filed prior to July 1, 2003, that were not pending during 
the 2003-2005 transition. For example, such scanning occurs when a 
document, e.g., a request for patent term extension under 35 U.S.C. 
156, is filed that necessitates repeated viewing of the paper file 
wrapper by one or more USPTO employees.
    Not all documents filed via EFS-Web or in paper are stored in IFW. 
For example, grayscale and color images are converted to black and 
white images when stored in IFW. Accordingly, documents such as 
photographs and color or grayscale drawings, which would be degraded if 
stored in IFW as black and white images, are not stored in IFW. Prior 
to 2007, documents that would be degraded if stored in IFW as black and 
white images were placed into Artifact Folders, and Artifact Sheets 
were then scanned into IFW as placeholders. By 2007, the USPTO had 
fully deployed SCORE, a data repository system designed to augment IFW 
with the capture and retrieval of non-standard content, such as color 
and grayscale drawings, complex tables, and sequence listings. Thus, 
since 2007, the USPTO stores in SCORE as part of the official record 
documents that would be degraded if stored in IFW as black and white 
images. In addition, the USPTO since 2007 scans into SCORE as part of 
the official record documents that were previously in Artifact Folders 
when, for example, an examiner makes a request to do so. When a 
document is stored in SCORE, a black and white copy of the document is 
stored in IFW along with a SCORE placeholder sheet.
    Sequence listings and computer program listings, as well as 
documents that should not be entered initially (and must be filed in 
paper), such as trade secret, proprietary and/or protective order 
materials, are other examples of documents not stored in IFW, at least 
initially. Prior to the deployment of SCORE, sequence listings and 
computer program listings were placed into Artifact Folders with 
Artifact Sheets then scanned into IFW as placeholders. Since the 
deployment of SCORE, the USPTO has been storing sequence and computer 
program listings in SCORE as part of the official record. Documents 
that should not be entered initially (and must be filed in paper) are 
placed into Artifact Folders, and Artifact Sheets are then scanned into 
IFW as placeholders. If it is later determined that they should be 
entered into the official record, they are taken out of the Artifact 
Folders and scanned into IFW.
    The USPTO stores in boxes the papers that it scans into IFW or 
SCORE. Scanned papers are boxed and stored in the order that they are 
scanned. A sample storage box of scanned documents may contain: newly 
received applications; follow-on documents for previously submitted 
applications; and USPTO communications for applications. It may also 
contain paper file wrappers of applications filed prior to July 1, 
2003, that for some reason, e.g., documents were filed that 
necessitated repeated viewing of the papers by one or more USPTO 
employees, were scanned into IFW at the time the box was being filled. 
Thus, while the image files of IFW are organized by application number 
or reexamination control number, paper sources of the image files are 
not. An application filed in paper in 2006 can be in one box, a follow-
on document filed in paper in 2007 for the application can be in a 
second box, a 2008 USPTO communication for the application can be in a 
third box, etc.
    To date, the USPTO has not disposed of any of the boxes of papers 
that it has scanned into IFW or SCORE, even though the scanned papers 
are no longer part of the official record. In total, the USPTO has 
accumulated approximately 235,700 boxes and stores them at a repository 
near Springfield, Virginia.
    By not disposing of the boxes, the papers have remained available 
for comparison purposes in limited circumstances when issues arise 
concerning the electronic records of the papers in IFW. However, the 
number of issues that arise which actually require the USPTO to 
retrieve a box from storage has steadily declined in the years since 
the USPTO started scanning. The USPTO can identify two principal 
reasons for this declining trend: (1) Indexing techniques and scanning 
quality have improved over the years; and (2) the increased use of EFS-
Web has led to a decrease in the amount of paper that is filed, thus 
leading to a decrease in the amount of paper that is scanned (the 
submission rate through EFS-Web has increased from 14% in 2006 to 90% 
in 2010).
    In 2004, the USPTO scanned a total of 195,829,268 pages, and 17,363 
issues arose which could have required the USPTO to retrieve a box from 
storage. In 2010, the total number of pages scanned by the USPTO fell 
to 24,895,341, and only 1,581 issues arose which could have required 
the USPTO to retrieve a box from storage. Furthermore, the USPTO was 
able to remedy most of the 1,581 issues without actually retrieving a 
box. The 1,581 issues that could have required the USPTO to retrieve a 
box from storage required the retrieval of only 225 boxes.
    The 225 boxes which required retrieval from storage represent less 
than 0.10% of the USPTO's total of approximately 235,700 boxes. 
Furthermore, the content of the papers in the box most often (116 out 
of the 225 boxes) matched the content of the image files in IFW. Of the 
225 boxes retrieved from storage by the USPTO in 2010, only 109 were 
used to scan one or more papers into IFW or SCORE or to create an 
Artifact Folder (impacting a total of 87 patent applications). For 45 
of the 109 boxes, papers were scanned into SCORE or placed into 
Artifact Folders, usually because the papers were inadvertently not 
scanned into SCORE or placed into Artifact Folders in the first place. 
For 36 of the 109 boxes,

[[Page 53669]]

papers were scanned into IFW because IFW did not contain image files 
for one or more pages of the papers. For 21 of the 109 boxes, papers 
were re-scanned into IFW due to quality issues with the initial image 
files in IFW. Under the assumption that there was one scanned image 
problem for each of the 21 boxes, the image scanning quality rate is 
99.999916% ((24,895,341-21)/24,895,341), which exceeds Six Sigma 
quality standards. Finally, 7 of the 109 boxes were retrieved to 
address indexing errors for very large submissions.
    While the number of issues that arise which actually require the 
retrieval of a box from storage has steadily declined, the cost of 
storing the boxes is high and will only increase if the USPTO's past 
practice is left unchanged. At present, the annual cost of storing and 
maintaining the boxes is approximately $701,000. Thus, in 2010, the 
cost of correcting the 87 total applications impacted by the 225 box 
retrievals exceeded $8,000 per application. Additionally, the space 
currently used to store the boxes is projected to reach its capacity by 
mid-year 2012. At that time, more warehouse space will need to be 
acquired, further increasing the USPTO's storage costs. The USPTO's 
past practice of indefinitely retaining the boxes of papers that it 
scans into IFW or SCORE is therefore not cost-effective.
    Establishing a definite period of retention for papers scanned into 
IFW or SCORE would address the cost-ineffectiveness of the USPTO's past 
practice and yield other advantages. For example, it would further 
encourage the use of EFS-Web. In addition, by providing paper filers 
with a definite period during which they may review and determine the 
accuracy of the electronic record and request any needed corrections, 
both the USPTO and the public benefit from greater assurance that the 
official record in IFW is correct.
    For the foregoing reasons, the USPTO is considering establishing a 
one-year retention period for papers that have been scanned into IFW or 
SCORE. Specifically, the USPTO is considering establishing a one-year 
retention period that begins on: (1) September 1, 2011, for papers 
scanned into IFW or SCORE prior to September 1, 2011; or (2) the 
paper's submission date, for papers scanned into IFW or SCORE on or 
after September 1, 2011. A one-year retention period would be 
consistent with the USPTO's currently pending request to the National 
Archives and Records Administration (NARA) to transition from general 
records disposition authority GRS 20, item 2a(4) to the new USPTO-
specific records disposition authority N1-241-10-1, item 4.4. Papers 
that have not been scanned into IFW or SCORE, such as certain papers 
placed into Artifact Folders, would not be subject to the one-year 
retention period and would remain retrievable consistent with past 
practice.
    The USPTO considers the one-year retention period proposed in this 
notice to be preferable to shorter or longer retention periods. 
Retention periods of less than one year would not adequately meet the 
USPTO's objective of giving paper filers sufficient time to review 
their files and request corrections. Retention periods of more than one 
year would not sufficiently meet the USPTO's objectives of reducing 
storage costs and improving the quality of the official record in IFW. 
The USPTO considers that a retention period of one year would strike 
the best balance between these competing objectives. Moreover, a one-
year retention period would be consistent with the USPTO's goal of 
reducing first action pendency to an average of 10 months by 2015.
    If the USPTO adopts the one-year retention period proposed in this 
notice, the USPTO would dispose of the paper after the expiration of 
the one-year retention period (after September 1, 2012, or later), 
unless within sufficient time prior to disposal of the paper, the 
relevant patent applicant, patent owner, or reexamination party files a 
bona fide request to correct the electronic record of the paper in IFW 
or SCORE, and the request remains outstanding at the time the paper 
would have been scheduled for disposal. Filers of requests to correct 
the electronic record would be strongly advised to file their requests 
by EFS-Web using the document description ``Electronic Record 
Correction'' at least one month prior to the expiration of the one-year 
retention period to allow sufficient time to process the request. 
Requests that are not filed at least one month prior to the expiration 
of the one-year retention period may not be acted upon in time.
    If the USPTO adopts the one-year retention period proposed in this 
notice, a patent applicant, patent owner, or reexamination party who, 
during the one-year retention period, is considering filing a request 
to correct the electronic record of a paper, and who believes that the 
evidence establishes that the need for correction was caused by the 
USPTO, would be advised to consider whether the initial submission date 
of the paper needs to be secured for the information being corrected. 
Such situations could involve (1) Adding information that would not 
otherwise be supported by the original specification, (2) avoiding a 
reduction in patent term adjustment, or (3) avoiding an impact on the 
timeliness of an information disclosure statement under 37 CFR 1.97. If 
the initial submission date of the paper does not need to be secured 
for the information being corrected, the patent applicant, patent 
owner, or reexamination party should simply submit a corrective 
replacement document and accept the date of such submission for the 
corrective replacement document. If, however, the initial submission 
date of the paper needs to be secured for the information being 
corrected, a request for correction based on the initially submitted 
paper should be filed as a petition under 37 CFR 1.181. The request 
should specifically point out the error(s) in the electronic record of 
the paper in IFW or SCORE and be accompanied by a replacement copy of 
the paper, along with (1) Any evidence to establish (a) that the need 
for correction was caused by the USPTO, and (b) the proper submission 
date of the original paper, and (2) a statement that the replacement 
copy is a true copy of what was originally filed.
    When making a decision on the request, the USPTO's presumption 
would be that the electronic record of the paper in IFW or SCORE is 
accurate and correction is not merited. The USPTO would check to see 
whether it has the paper at issue. If the USPTO has the paper, the 
USPTO's version of the paper would either support the request for 
correction, in which case the request would be granted, or the USPTO's 
version of the paper would not support the request, in which case the 
request would be dismissed.
    On the other hand, if the USPTO does not have the paper, e.g., the 
paper has been lost, the presumption that the electronic record of the 
paper in IFW or SCORE is correct could be rebutted where the evidence 
submitted with the request is sufficient to overcome the presumption. A 
postcard receipt which itemizes and properly identifies the items that 
have been filed would serve as prima facie evidence of receipt in the 
USPTO of all the items listed thereon on the date stamped thereon by 
the USPTO. However, while a postcard receipt may be the only evidence 
needed for the USPTO to accept, for example, the missing tenth page of 
a 10-page document that has been properly identified on the postcard as 
a 10-page document, the postcard receipt may be insufficient, on its 
own, for the USPTO to accept a replacement tenth page of a properly 
identified 10-page document, where all 10 pages were actually

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received by the USPTO and, for example, a sentence is missing on one 
page or a chemical structure is thought to have been changed.
    Any decision dismissing a request to correct the electronic record 
would provide a two-month period to file a request for reconsideration 
of the decision, in accordance with 37 CFR 1.181(f).
    The USPTO would not dispose of a paper for which, within sufficient 
time prior to disposal of the paper, a bona fide request to correct the 
electronic record of the paper has been filed and remains outstanding 
at the time the paper would have been scheduled for disposal. A request 
would be a bona fide request when it specifically points out the 
error(s) in the paper and is accompanied by any necessary evidence. A 
general allegation that a paper requires correction filed without 
evidentiary support would not be a bona fide request. It would be 
inadequate to stay the disposal of the paper and would be dismissed. 
Once filed, a bona fide request to correct the electronic record would 
remain outstanding unless the USPTO has either (1) Issued a decision 
granting either the original request or a request for reconsideration 
of the original request, or (2) issued a final agency decision denying 
a request for reconsideration of the original request.
    If the USPTO adopts the one-year retention period proposed in this 
notice, a patent applicant, patent owner, or reexamination party who is 
considering filing a request to correct the electronic record of a 
paper, but who cannot establish that the need for correction was caused 
by the USPTO, would be advised to not file the request. Other options 
for relief may be available when it cannot be established that the need 
for correction was caused by the USPTO. For example, an amendment under 
37 CFR 1.57(a) may be filed to address the problem of an application 
filed with inadvertently omitted material when the application contains 
a claim under 37 CFR 1.55 for priority of a prior-filed foreign 
application, or a claim under 37 CFR 1.78 for the benefit of a prior-
filed provisional, nonprovisional, or international application. See 
MPEP Sec.  201.17. As another example, an amendment may be filed to 
correct an obvious error, along with any evidence, such as an expert 
declaration, necessary to establish that one of ordinary skill in the 
art would recognize both the existence of the error and the appropriate 
correction. See MPEP Sec.  2163.07, II.
    If the USPTO adopts the one-year retention period proposed in this 
notice, a patent applicant, patent owner, or reexamination party may 
file a request to correct the electronic record of a paper after the 
one-year retention period, if the evidence is believed to establish 
that the need for correction was caused by the USPTO, and the initial 
submission date of the paper needs to be secured for the information 
being corrected. The USPTO likely would have disposed of any paper for 
which a request to correct the electronic record is filed after the 
one-year retention period. Therefore, the typical request for 
correction filed after the one-year retention period would have to 
overcome the presumption that the electronic record of the paper in IFW 
or SCORE is accurate and correction is not merited. For certain 
instances, e.g., when a paper was inadvertently not scanned into SCORE 
or placed into an Artifact Folder, there would be a black and white 
image of the paper in IFW that could be used to corroborate any 
submitted evidence.
    The proposed procedure set forth in this notice for filing a 
request to correct the electronic record of a paper that has been 
scanned into IFW or SCORE would not be a replacement for the USPTO's 
established procedure for responding to a notice (e.g., a ``Notice of 
Omitted Item(s) in a Nonprovisional Application'') from the Office of 
Patent Application Processing (OPAP) indicating that the application 
papers have been accorded a filing date, but are lacking some page(s) 
of the specification or some of the figures of drawings described in 
the specification. Applicants would continue to follow the procedure 
set forth at Change in Procedure for Handling Nonprovisional 
Applications Having Omitted Items, 1315 Off. Gaz. Pat. Office 103 
(February 20, 2007), when responding to such a notice from OPAP.
    In addition, the proposed procedure set forth in this notice for 
filing a request to correct the electronic record of a paper that has 
been scanned into IFW or SCORE would be generally applicable only to 
situations in which a certain document, or one or more pages of a 
certain document, contains an error caused by the USPTO that requires 
correction. The proposed procedure set forth in this notice would not 
be a replacement for the USPTO's file reconstruction procedures (37 CFR 
1.251 and MPEP Sec.  508.04). Paper sources for the image files in IFW 
are boxed in the order that they are scanned, rather than by 
application number or reexamination control number, such that a request 
to correct requiring the retrieval of papers from multiple boxes could 
not be reasonably effected.

    Dated: August 17, 2011.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2011-21964 Filed 8-26-11; 8:45 am]
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