[Federal Register Volume 77, Number 16 (Wednesday, January 25, 2012)]
[Notices]
[Pages 3745-3747]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2012-1404]


-----------------------------------------------------------------------

DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

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


Establishment of 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: Notice.

-----------------------------------------------------------------------

SUMMARY: The United States Patent and Trademark Office (USPTO) 
published a notice on August 29, 2011 requesting comments on a proposal 
to establish 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). The USPTO has 
considered the comment and is establishing a one-year retention period 
that: (1) Began on September 1, 2011, for papers scanned into IFW or 
SCORE prior to September 1, 2011; or

[[Page 3746]]

(2) began or begins on 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 will 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. The one-year retention period for papers scanned into IFW or 
SCORE replaces the USPTO's past practice of indefinitely retaining the 
papers, which has been rendered unnecessary and not cost-effective by 
improvements in scanning and indexing.

DATES: Effective Date: January 25, 2012. Applicability Date: For papers 
scanned into IFW or SCORE prior to September 1, 2011, the one-year 
retention period began on September 1, 2011. For papers scanned into 
IFW or SCORE on or after September 1, 2011, the one-year retention 
period began or begins on the paper's submission date.

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: In August 2011, the USPTO published a notice 
requesting comments from the public on a proposal to establish a 
retention period of one year for patent-related papers that have been 
scanned into IFW or SCORE. See 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, 76 
FR 53667 (August 29, 2011), 1370 Off. Gaz. Pat. Office 211 (September 
17, 2011). The August 2011 notice explained the USPTO's past practice 
of indefinitely retaining papers that have been scanned into IFW or 
SCORE. The August 2011 notice set forth in detail the USPTO's reasons 
for wanting to establish a one-year retention period for patent-related 
papers that have been scanned into IFW or SCORE, including how 
improvements in scanning and indexing have rendered the practice of 
indefinite paper retention unnecessary and not cost-effective.
    The USPTO received one comment in response to the August 2011 
notice. Specifically, the comment urged the USPTO to extend the 
retention period beyond one year. The comment expressed concern that 
the USPTO's system of scanning documents originally filed in paper may 
introduce a subtle error that may not become apparent until more than a 
year after filing. The comment noted that resolution of the error could 
require referring to the application papers as originally filed to 
prove that the papers were filed without the error.
    The USPTO appreciates the comment and has considered it. However, 
as stated in the August 2011 notice, the number of issues that arise 
which actually require the USPTO to reference application papers as 
originally filed has steadily declined in the years since the USPTO 
started scanning, in part due to continued improvements in indexing 
techniques and scanning quality, to the point that continued indefinite 
retention of papers is not cost-effective. Furthermore, the August 2011 
notice sets forth a procedure for resolving disputes concerning the 
content of papers as filed versus the content of papers as scanned, 
including any such disputes which arise beyond one year, i.e., after 
the USPTO has likely disposed of the relevant originally filed papers 
under the one-year retention period.
    Therefore, the USPTO is establishing a one-year retention period 
for papers that have been scanned into IFW or SCORE. Specifically, the 
USPTO is establishing a one-year retention period that: (1) Began on 
September 1, 2011, for papers scanned into IFW or SCORE prior to 
September 1, 2011; or (2) began or begins on the paper's submission 
date, for papers scanned into IFW or SCORE on or after September 1, 
2011. The one-year retention period is consistent with the USPTO's new 
USPTO-specific records disposition authority N1-241-10-1, item 4.4, 
which was approved by the National Archives and Records Administration 
(NARA) on October 27, 2011, and is available at http://www.archives.gov/records-mgmt/rcs/schedules/departments/department-of-commerce/rg-0241/n1-241-10-001_sf115.pdf. Papers that have not been 
scanned into IFW or SCORE, such as certain papers placed into Artifact 
Folders, are not subject to the one-year retention period and remain 
retrievable consistent with past practice. The procedures from the 
August 2011 notice for the USPTO to dispose of the paper, and to 
resolve disputes concerning the content of papers as filed versus the 
content of papers as scanned, are reiterated below.
    After the expiration of the one-year retention period (after 
September 1, 2012, or later), the USPTO will 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 the paper 
would have been scheduled for disposal. Filers of requests to correct 
the electronic record are 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.
    During the one-year retention period, a patent applicant, patent 
owner, or reexamination party who 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, is 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

[[Page 3747]]

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 will 
be that the electronic record of the paper in IFW or SCORE is accurate 
and correction is not merited. The USPTO will check to see whether it 
has the paper at issue. If the USPTO has the paper, the USPTO's version 
of the paper will either support the request for correction, in which 
case the request will be granted, or the USPTO's version of the paper 
will not support the request, in which case the request will 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 can 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 serves 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 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 
will provide a two-month period to file a request for reconsideration 
of the decision, in accordance with 37 CFR 1.181(f).
    The USPTO will 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 
is 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 is not 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 remains 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.
    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, is 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.
    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 will 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 will 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 will be a black and white image of the paper in 
IFW that can be used to corroborate any submitted evidence.
    The 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 is not 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 should 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 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 is 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 
procedure set forth in this notice is not 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 cannot be reasonably effected.

    Dated: January 17, 2012.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2012-1404 Filed 1-24-12; 8:45 am]
BILLING CODE 3510-16-P