Intellectual Property: Key Processes for Managing Patent	 
Automation Strategy Need Stengthening (17-JUN-05, GAO-05-336).	 
                                                                 
The volume and complexity of patent applications to the U.S.	 
Patent and Trademark Office (USPTO) have increased significantly 
in recent years, lengthening the time needed to process patents. 
Annual applications have grown from about 185,000 to over 350,000
in the last 10 years and are projected to exceed 450,000 by 2009.
Coupled with this growth is a backlog of about 750,000		 
applications. USPTO has long recognized the need to automate its 
patent processing and, over the past two decades, has been	 
engaged in various automation projects. Accordingly, GAO was	 
asked to, among other things, assess progress to date and any	 
problems facing USPTO as it develops the capability to		 
efficiently handle patent information electronically.		 
-------------------------Indexing Terms------------------------- 
REPORTNUM:   GAO-05-336 					        
    ACCNO:   A26937						        
  TITLE:     Intellectual Property: Key Processes for Managing Patent 
Automation Strategy Need Stengthening				 
     DATE:   06/17/2005 
  SUBJECT:   Electronic forms					 
	     Enterprise architecture				 
	     Information technology				 
	     Intellectual property				 
	     Internal controls					 
	     Management information systems			 
	     Mechanization					 
	     Patents						 
	     Strategic information systems planning		 
	     Strategic planning 				 
	     Systems design					 
	     Trademarks 					 
	     PTO Automated Patent System			 

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GAO-05-336

                 United States Government Accountability Office

                     GAO Report to Congressional Committees

June 2005

INTELLECTUAL PROPERTY

    Key Processes for Managing Patent Automation Strategy Need Strengthening

                                       a

GAO-05-336

[IMG]

June 2005

INTELLECTUAL PROPERTY

Key Processes for Managing Patent Automation Strategy Need Strengthening

                                 What GAO Found

As part of its strategy to achieve a paperless, electronic patent process,
USPTO had planned to deliver an operational patent system by October 2004.
It has been able to deliver important capabilities, such as allowing
patent applicants to electronically file and view the status of their
patent applications and the public to search published patents.
Nonetheless, after spending over $1 billion on its efforts from 1983
through 2004, the agency's existing automation has not provided the fully
integrated, electronic patent process articulated in its automation plans,
and when and how this process will be achieved is uncertain. Key systems
that USPTO is relying on to help reach this goal-an electronic application
filing system and a document imaging system-have not provided capabilities
that are essential to operating in a fully electronic environment.
Contributing to this situation is that the agency took an ad hoc approach
to planning and managing its implementation of these systems, in which it
lacked effective analysis of system requirements, alternatives, and costs;
made acquisition decisions based on management judgment; and acquired
software that did not meet its needs.

USPTO's ineffective planning and management of its patent automation
initiatives, in large measure, can be attributed to enterprise-level,
systemic weaknesses in its information technology investment management
processes. Although the agency had begun instituting essential investment
management mechanisms, such as its enterprise architecture framework, it
had not yet finalized its capital planning and investment control process
nor established necessary linkages between the process and its
architecture to guide the development and implementation of its
information technology. The Under Secretary of Commerce for Intellectual
Property and USPTO's chief information officer acknowledged the need for
improvement, but specific plans for resolving problems have not yet been
developed.

Actual and Projected Patent Applications, Fiscal Years 1994-2009
Applications in thousands

500

400

300

200

100

0 1994 2004 2009

Actual applications (includes utilty, plant, and reissue patent
applications) Projected applications (includes utilty, plant, and reissue
patent applications)

Source: USPTO data.

                 United States Government Accountability Office

Contents

  Letter

Results in Brief
Background
USPTO Continues to Pursue a Fully Automated Patent Process, but

Is Not Effectively Managing Its Strategy for Achieving This Capability
USPTO's Patent Automation Is Not Supported by Essential

Information Technology Investment Management Processes Conclusions
Recommendations for Executive Action Agency Comments and Our Evaluation

1 2 4

9

17 20 21 21

Appendixes

     Appendix I: Scope and Methodology 26 Appendix II: Comments from the U.S.
           Patent and Trademark Office 28 Appendix III: GAO Contact and Staff
                                                           Acknowledgments 34

Figures Figure 1: USPTO Actual and Projected Patent Applications, Fiscal

Years 1994-2009 5

Figure 2: USPTO's Patent Process 7

Figure 3: USPTO's Patent Automation Progress 11

Contents

Abbreviations

APS Automated Patent System
OCIO Office of Chief Information Officer
OCR optical character recognition
PDF portable document format
SIRA Search and Information Resources Administration
TEAM Tools for Electronic Application Management
USPTO United States Patent and Trademark Office

This is a work of the U.S. government and is not subject to copyright
protection in the United States. It may be reproduced and distributed in
its entirety without further permission from GAO. However, because this
work may contain copyrighted images or other material, permission from the
copyright holder may be necessary if you wish to reproduce this material
separately.

A

United States Government Accountability Office Washington, D.C. 20548

June 17, 2005

The Honorable Frank R. Wolf

Chairman

Subcommittee on Science, the Departments of State, Justice, and Commerce,
and Related Agencies Committee on Appropriations House of Representatives

The Honorable F. James Sensenbrenner, Jr.
Chairman
Committee on the Judiciary
House of Representatives

The United States Patent and Trademark Office (USPTO) helps to promote
industrial and technological progress in the United States and to
strengthen
the national economy by administering the laws relating to patents and
trademarks. A critical part of the agency's mission is to examine patent
applications and issue patents. However, the rapid growth in both the
volume and complexity of applications to USPTO has lengthened the time
necessary to process patents and raised concerns about the quality of the
patents that are issued. The number of patent applications filed annually
has increased 91 percent over the last 10 years, from about 185,000 in
1994
to over 350,000 in 2004. Coupled with this growing workload is a 28-month
backlog of approximately 750,000 applications.

USPTO has long recognized the need to improve its patent processing
capability and, for the past two decades, has engaged in various efforts
to
automate its patent process. In light of the agency's actions, at your
request, this report describes USPTO's strategy for automating its patent
process and assesses its progress and any problems faced in developing
and using electronic information and systems to achieve this capability.
We
plan to issue a separate report that will address the agency's progress in
achieving its strategic milestones and maintaining a qualified workforce.1

To accomplish this objective, we reviewed USPTO's current and selected
past initiatives to develop and implement automated patent processing
capabilities. We analyzed programmatic and technical documentation

1GAO, Intellectual Property: USPTO Has Made Progress in Hiring Examiners,
but Challenges to Retention Remain, GAO-05-720 (Washington, D.C.: June 17,
2005).

describing the agency's patent process, current electronic processing
capabilities, and plans for future automation. We also evaluated available
project management documentation, such as project plans, time lines, and
status reports, to determine its progress in implementing a fully
automated patent process. In addition, we assessed the agency's
consideration of key information technology investment management
processes and practices in planning and managing the patent automation
initiatives. Further, we reviewed agency information on the cost of its
automation efforts; however, we did not verify the accuracy of the cost
data. To supplement our analysis, we interviewed senior patent officials,
including the Deputy Commissioner for Patent Resources Planning and the
USPTO chief information officer and, as part of a series of focus groups,
selected patent examiners regarding the implementation and use of the
systems supporting USPTO's patent process. We also discussed the patent
automation efforts with the Under Secretary of Commerce for Intellectual
Property (who serves as the director of USPTO). We conducted our study
from June 2004 through April 2005 in accordance with generally accepted
government auditing standards. Appendix I contains a detailed discussion
of the scope and methodology of our review.

Results in Brief	USPTO is pursuing a long-standing strategy to implement a
paperless, electronic patent process, with the goal of replacing the
manual processing of applications with capabilities for electronically
researching patent information and viewing and manipulating application
text throughout all processing phases. To achieve this electronic process,
the agency plans to integrate its existing systems that enable
capabilities such as electronic filing of applications with new document
imaging and text processing and sophisticated document management and
workflow capabilities. As part of its 21st Century Strategic Plan, issued
in 2002, the agency announced an acceleration of its goal of delivering an
operational system to electronically process patents-from fiscal year 2006
to October 1, 2004.

USPTO has made progress in delivering functionality through information
systems that it has implemented, such as electronic filing and patent
application classification and search, as well as Internet access for
patent applicants and the public, respectively, to view the status of
their applications and to search existing published patents. Nonetheless,
collectively, these automated functions have not provided the fully
integrated end-to-end patent processing capability articulated in USPTO's
automation plans. Two of the primary systems that the agency is relying on
to enhance its capabilities-its electronic filing system and a document

imaging system that it acquired from the European Patent Office called
Image File Wrapper-have not yielded processing improvements that the
agency had deemed essential to operate successfully in an electronic
environment. Specifically, patent filers have stated that the electronic
filing system is cumbersome, time-consuming, and costly, and does not meet
their business and technical needs; thus, fewer than 2 percent of all
patent applications are submitted to USPTO electronically. In addition,
the Image File Wrapper has experienced performance problems and, according
to patent officials, has not provided many of the capabilities deemed
essential to eliminating manual actions and improving worker productivity.
Contributing to this situation is that the agency took an ad hoc approach
to planning and managing its implementation of these systems. Information
technology best practices emphasize the need for agencies to undertake
projects in a disciplined manner based on well-established business cases
that articulate agreed-upon business and technical requirements; include
analyses of project alternatives, costs, and benefits; and include
measures for tracking project costs, schedules, and performance through
their life cycle. However, patent officials did not rely on such critical
measures to guide their implementation of these key initiatives.

USPTO's ineffective planning and management of its patent automation
projects, in large measure, can be attributed to enterprise-level,
systemic weaknesses in the agency's overall information technology
investment management processes. A key premise of the Clinger-Cohen Act of
19962 is that agencies should have established processes, such as capital
planning and investment controls, to help ensure that information
technology projects are implemented at acceptable costs and within
reasonable and expected time frames, and contribute to tangible,
observable improvements in mission performance. In addition, as our
Enterprise Architecture Framework3 stresses, information technology
projects should show evidence of compliance with the organization's
architecture. Although USPTO had begun instituting certain essential
information technology investment management mechanisms, it had not yet
finalized its capital planning and investment control process nor
established necessary linkages between the process and its enterprise
architecture to ensure that projects will comply with the architecture.
Further, a study

240 U.S.C. sec. 11312.

3GAO, Information Technology: A Framework for Assessing and Improving
Enterprise Architecture Management (Version 1.1), GAO-03-584G (Washington,
D.C.: April 2003).

commissioned by the agency in 2004 found that its Office of Chief
Information Officer was not organized to help accomplish the automation
goals set forth in its strategic plan and that the agency's investment
management processes did not ensure appropriate reviews of automation
initiatives. As a result, USPTO had not rigorously assessed its patent
systems' compliance with the enterprise architecture, and it lacked
reliable experience-based data to consistently demonstrate the costs and
benefits of its systems.

In light of the problems that USPTO has encountered with its existing
capabilities, we are recommending that the agency, before proceeding with
any new patent automation initiatives, (1) reassess, and, where necessary,
revise its approach for implementing and achieving effective uses of
information systems supporting a fully automated patent process; (2)
establish disciplined processes for planning and managing the development
of patent systems based on well-established business cases; and (3) fully
institute and enforce information technology investment management
processes and practices to ensure that its automation initiatives support
the agency's mission and are aligned with its enterprise architecture.

In its written comments on a draft of our report (reprinted in app. II),
USPTO generally agreed with our findings, conclusions, and
recommendations. The agency acknowledged weaknesses in its processes used
to manage patent automation and agreed with the need for key improvements,
such as (1) developing architectural linkages to the planning process, (2)
implementing a capital planning and investment control guide, and (3)
completing planned organizational changes. Nonetheless, the agency stated
that it only partially agreed with several material aspects of our
assessment. For example, the agency pointed to our awareness of it having
initiated a review of the architectural linkages to its investments and
key decision-making processes. However, during our study, agency officials
did not inform us of any specific actions that had been taken in this
regard. As the agency moves forward with actions to improve its patent
automation, having firmly established and enforced investment management
practices will be essential to achieving more effective use of its
information technology.

Background	A patent is a property right granted by the U.S. government to
an inventor who secures, generally for 20 years from the date of initial
application in the United States, his or her exclusive right to make, use,
offer for sale, or

sell the invention in exchange for disclosing it.4 As indicated in figure
1, the number of patent filings to USPTO continues to grow and, by 2009,
the agency is projecting receipt of over 450,000 patent applications
annually.

Figure 1: USPTO Actual and Projected Patent Applications, Fiscal Years
1994-2009

Applications in thousands

500

400

300

200

100

0 1994 2004 2009

Actual applications (includes utilty, plant, and reissue patent
applications)

Projected applications (includes utilty, plant, and reissue patent
applications)

Source: USPTO data.

USPTO has repeatedly cited the growing workload of patent applications and
the difficulty in managing the volumes of paper associated with patent
processing as impediments to carrying out its mission.

Patent processing essentially involves three phases: pre-examination,
examination, and post-examination. The process begins when an applicant
files a patent application and pays a filing fee. As part of the
preexamination phase, USPTO staff document receipt of the application and
process the application fee, scan and convert the paper documents to

4According to 35 U.S.C. sec. 154(a)(1), a patentee may also exclude others
from importing the patented invention into the United States.

electronic format, and conduct an initial review of the application and
classify it by subject matter. During the subsequent examination phase,
the application is assigned to a patent examiner with expertise in the
subject area,5 who searches existing U.S. and foreign patents, journals,
and other literature (called "prior art") and sometimes contacts the
applicant to resolve questions and obtain additional information to
determine whether the proposed invention can be patented.6 Examiners
document their determinations on the applications in formal
correspondence, referred to as office actions. Applicants may abandon
their applications at any time during this process. After the examiner has
determined that a patent is warranted, a supervisor reviews and approves
the determination and the applicant is informed of the outcome. The
application then enters the postexamination phase. Upon payment of an
"issue fee," a patent is granted and published. To keep the patent active,
the patentee must pay maintenance fees at 3.5 years, 7.5 years, and 11.5
years. Historically, the time from the date that a patent application is
filed to the date that the patent is either granted or the application is
abandoned has been called "patent pendency." Figure 2 summarizes USPTO's
patent process.

5USPTO has eight technology centers that define its subject areas as
follows: Biotechnology and Organic Chemistry; Chemical and Materials
Engineering; Computer Architecture, Software, and Information Security;
Communications; Semiconductors, Electrical and Optical Systems and
Components; Designs for Articles of Manufacture; Transportation,
Construction, Electronic Commerce, Agriculture, National Security and
License and Review; Mechanical Engineering, Manufacturing, and Products.

6A proposed invention is patentable if it is a new or useful process,
machine, manufacture, or composition of matter, or any new and useful
improvement thereof.

Figure 2: USPTO's Patent Process

Issuance and publication of patent

Source: USPTO.

In 1999, Congress gave USPTO broad responsibility for managing its
operations and controlling its budget allocations and expenditures,
personnel decisions and processes, procurement, and information technology
operations.7 USPTO's Search and Information Resources Administration
(SIRA) within the Office of Patent Resources Planning, along with its
Office of Chief Information Officer (OCIO), are responsible for ensuring
that the agency's goal of providing an automated patent process is met.
SIRA is responsible for identifying patent processing business needs,
ensuring that the systems developed meet those needs, and providing
program resources. OCIO determines how best to use information technology
to fulfill the identified business needs and is responsible for the
acquisition, development, and integration of the information systems.

7The American Inventors Protection Act of 1999, 35 U.S.C. sec. 1(a) gave
USPTO greater flexibility and independence for decisions regarding the
management and administration of its operation, while the Secretary of
Commerce retained policy direction. In addition, 35 U.S.C. sec. 2(b)(2)(F)
empowered the USPTO director to establish regulations that provide for the
development of a performance-based process that includes quantitative and
qualitative measures and standards for evaluating cost-effectiveness and
is consistent with principles of impartiality and competitiveness.

Because of long-standing concerns about the increasing volume and
complexity of patent applications, USPTO has been undertaking projects to
automate its patent process for about the past two decades. One of the
agency's most substantial undertakings was the Automated Patent System
(APS)-a project begun in 1983 with the intent of automating all aspects of
the paper-intensive patent process. With this system, USPTO anticipated
significant improvements in patent quality and productivity. APS was to be
deployed in 1990, maintained through 2002, and, when completed, consist of
five integrated subsystems that would (1) fully automate incoming patent
applications; (2) allow examiners to electronically search the text of
granted U.S. patents and access selected abstracts of foreign patents; (3)
scan and allow examiners to retrieve, display, and print images of U.S.
patents; (4) help examiners classify patents; and (5) support on-demand
printing of copies of patents.

In reporting on APS more than 10 years following its inception, we noted
that USPTO had deployed and was operating and maintaining certain parts of
the system, supporting text search, limited document imaging, orderentry
and patent printing, and classification activities.8 However, it had not
yet developed the system that was expected to fully automate incoming
applications and the management of these applications as they moved
through USPTO, and the estimated date for full deployment of APS had been
delayed 7 years, to 1997.

Our report raised concerns about USPTO's ability to adequately plan and
manage this major project, pointing out that the agency's processes for
exercising effective management control over APS were weak. We noted that
the agency lacked reliable, experience-based data to show that patent
quality had improved and expected benefits were being achieved and its
officials were relying on management judgment alone in setting APS
development and deployment priorities. In light of these concerns, we
recommended to the Secretary of Commerce that USPTO establish a process
for identifying and measuring expected benefits to users of the system,
implement a systematic and repeatable process for estimating the system's
costs, and monitor progress against baselines. USPTO agreed with the need
for such measures.

8GAO, Patent and Trademark Office: Key Processes for Managing Automated
Patent System Development Are Weak, GAO/AIMD-93-15 (Washington, D.C.:
Sept. 30, 1993).

Through 2002, the agency continued to enhance its capabilities enabling
examiners to search patent images and text, and upgraded its patent
application classification and tracking systems.9 It also began providing
electronic bibliographic information from patents to the public.
Nonetheless, USPTO never fully developed and deployed APS to achieve the
integrated, end-to-end patent processing system that it envisioned. The
agency reported spending approximately $1 billion on the initiative from
1983 through 2002.10

In 1998, the agency added to its automated capability by implementing an
Internet-based electronic filing system, enabling applicants to submit
their applications online. It further enhanced the electronic filing
system in 2002, and again in 2004. USPTO reported spending a total of $10
million for this system.

  USPTO Continues to Pursue a Fully Automated Patent Process, but Is Not
  Effectively Managing Its Strategy for Achieving This Capability

Recognizing that growth in the number and complexity of patent
applications has outpaced its ability to meet demands and effectively
manage its workload in a paper-based environment, USPTO has continued to
pursue a strategic agenda emphasizing paperless, end-to-end, automated
patent processing, as was its intent with APS. However, while progress has
been made, the agency has not yet achieved a fully electronic patent
processing capability. Key systems that USPTO is relying on to help
achieve this capability have not yielded essential processing
improvements, in part resulting from the agency's ad hoc approach to
planning and managing their implementation. Contributing to this situation
is that USPTO has not yet fully instituted disciplined processes and
practices for managing its information technology investments.

    USPTO's Strategy Called for a Fully Electronic Patent Process

As part of its automation strategy, USPTO planned to develop and integrate
multiple systems that are intended to move all of its critical patent
processing components to an electronic business environment. To support
this strategy, in 2001, the agency undertook its Tools for Electronic
Application Management (TEAM) automation project with the intent of

9The initial deployment of USPTO's patent tracking system occurred in
1980. This system provides workflow tracking, status reporting, and
examiner production information.

10The reported cost included system enhancements and maintenance through
the end of the project's life cycle in 2002.

delivering an end-to-end capability to process patent applications
electronically by fiscal year 2006. TEAM was to support the entire patent
application process in electronic mode, beginning with the filing of an
application and proceeding through pre-examination, examination, and
post-examination to electronic records archiving.

Under the TEAM concept, the agency had planned to integrate its existing
electronic filing system and the classification and search capabilities
from the earlier APS project with new document management and workflow
capabilities, and with image-and text-based processing11 of patent
applications to achieve a sophisticated means of handling documents and
tracking patent applications throughout the examination process. By
implementing image- and text-based capabilities, USPTO had anticipated
that patent examiners would be able to view and process applications
online, as well as manipulate and annotate text within a patent
application, thus eliminating manual functions and improving processing
accuracy, reliability, and productivity, as well as the quality of the
patents that are granted.

In 2002, USPTO altered its approach to accomplishing the patent automation
with the issuance of its 21st Century Strategic Plan.12 Developed partly
in response to a recognized need to improve patent quality, aggressively
implement electronic government,13 and reduce the number of patent
applications pending at any one time, the strategic plan identified, among
other factors, the agency's high-level information technology goals for
fully automating the patent process as part of an aggressive 5-year
modernization effort. The plan incorporated the automation concepts from
the TEAM project, but announced an accelerated goal of delivering an
operational system to electronically

11Image-based processing uses a graphic representation of documents
produced by scanning paper documents or by converting electronic documents
into images. To transform image content into text, optical character
recognition (OCR) software is used to derive text from the image. OCR can
convert image documents to hidden text, which is searchable. In text-based
processing, the words and sentences in the document are retained as text
and can be stored, processed, and retrieved by a document management
system. Unlike imagebased processing, text-based processing allows the
text to be searched and extracted.

12USPTO's 21st Century Strategic Plan was originally released in 2002 and
updated in 2003.

13Electronic government refers to the use of information technology to
enhance the access to and delivery of government information and service
to citizens, business partners, and employees, and among agencies at all
levels of government.

process patent applications earlier than had been scheduled under TEAM-by
October 1, 2004.

    Progress Made, but Ad Hoc Implementation of Key Systems Has Prevented
    Achieving Full Electronic Processing of Patent Applications

In carrying out its patent automation plans, USPTO has made progress
toward delivering important processing capabilities through the various
information systems that it has implemented. For example, an automated
search capability, available since 1986, has eliminated the need for
patent examiners to manually search for prior art in paper files, and the
classification and fee accounting capabilities have helped with assigning
applications to the correct subject areas and with managing collections of
applicable fees. In addition, using the electronic filing system that has
existed since 1998, applicants can file their applications with the agency
via the Internet. Also, using the Internet, patent applicants can review
the status of their applications online and the public can electronically
access and search existing published patents. Further, as a result of an
imaging system implemented in August 2004, known as the Image File
Wrapper, USPTO currently has the capability to scan patent applications
and related documents, which can then be stored in a database and
retrieved and reviewed online. Figure 3 illustrates the agency's progress
in implementing its automated patent functions.

                  Figure 3: USPTO's Patent Automation Progress

Source: USPTO.

1986 1987 1988 1989 1990 1991 1992 1993 1994 1995 1996 1997 1998 1999 2000 2001 2002 2003 2004 

Nonetheless, even with the progress that has been made, collectively,
USPTO's automated functions have fallen short of providing the fully
integrated, electronic patent processing capability articulated in the
agency's automation plans. Two of the key systems that it is relying on to

further enhance its capabilities-the electronic filing system and the
Image File Wrapper-have not yielded the processing improvements that the
agency has deemed essential to successfully operate in a fully integrated,
electronic environment.

Specifically, in implementing its electronic filing system in 1998, USPTO
had projected significant increases in processing efficiencies and quality
by providing patent applicants the capability to file online, thus
alleviating the need for them to send paper applications to the agency or
for patent office staff to manually key application data into the various
processing systems. However, even after enhancements in 2002 and 2004, the
electronic filing system has not produced the level of usage among patent
filers that the agency had anticipated. While USPTO's preliminary
justification for acquiring the electronic filing system had projected an
estimated usage rate of 30 percent in fiscal year 2004, patent officials
reported that, as of April 2005, fewer than 2 percent of all patent
applications were being submitted to the agency via this system. As a
result, anticipated processing efficiencies and quality improvements
through eliminating the manual rekeying of application data have not yet
been realized.

In September 2004, USPTO convened a forum of senior officials representing
the largest U.S. corporate and patent law firm filers to identify causes
of patent applicants' dissatisfaction with the electronic filing system
and determine how to increase the number of patents being filed
electronically. According to the report resulting from this forum, the
majority of participants viewed the system as cumbersome, timeconsuming,
costly, inherently risky, and lacking a business case to justify its
usage. Specifically, among the barriers to system usage that the
participants identified were (1) users' lack of a perceived benefit from
filing applications electronically, (2) liability concerns associated with
filers' unsuccessful use of the system or unsuccessful transmission of
patent applications to USPTO, and (3) significant disruptions to filers'
normal office/corporate processes and workflow caused by factors such as
difficulty in using the automated tools and the inability to download
necessary software through firewalls.

Further, forum participants identified features that they considered
critical to increasing their use of the electronic filing system. These
included implementing a more user-friendly system supported by Web-based
processes; introducing a system that accepts portable document format

(PDF) files;14 and enabling electronic filing of all documents, versus
requiring paper filings of certain parts of the application, as is
necessary with the current system. As incentives to increasing system
usage, the participants suggested, among other strategies, that USPTO make
electronic filings of applications a priority over paper filings, reduce
the fee for electronic filings, and confirm the date on which the agency
receives electronic applications.

Several concerns raised during the forum mirrored those that USPTO had
earlier identified in a 1997 analysis of a prototype for electronic
filing. However, as of April 2005, the agency had not yet completed plans
to show how they would address the concerns regarding use of the
electronic filing system.

Beyond electronic filing, the Image File Wrapper also has not resulted in
critical patent processing improvements. Patent officials explained that,
to meet the accelerated date for delivering an operational system as
outlined in the strategic plan, the agency had decided in 2002 to acquire
and use a document-imaging system owned by the European Patent Office,
called ePhoenix, rather than develop the integrated patent processing
system that had been described in the agency's automation plans. The
officials stated that the director, at that time, had considered ePhoenix
to be the most appropriate solution for further implementing USPTO's
electronic patent processing capabilities given (1) pressures from
Congress and from customers and stakeholders to implement an electronic
patent processing system more quickly than originally planned and (2) the
agency's impending move to its new facility in Alexandria, Virginia, which
did not include provisions for transferring and storing paper patent
applications.15

Accordingly, in November 2002, patent officials had signed a memorandum of
agreement with the European Patent Office, in which that office agreed to
provide USPTO with a license to use its patent processing software and to
provide technical assistance in customizing the software to meet USPTO's
needs. In turn, USPTO agreed to reimburse the European Patent

14PDF is a file format that helps reduce errors when files are transferred
from one user to another. A PDF file can contain fonts, images, printing
instructions, keywords, and other information related to document
production.

15In December 2003, USPTO began relocating its headquarters from Arlington
(Crystal City), Virginia, to Alexandria, Virginia, with the intent of
consolidating all of its major operations in a central facility. The
agency anticipates completing this move in approximately July 2005.

Office for the cost of modifying the software. It began deploying the
system-which it renamed Image File Wrapper-in July 2003 and completed
implementation in August 2004, at a reported total cost of approximately
$14 million.16

The system includes image technology for storage and maintenance of
records associated with patent applications and currently provides the
capability to scan each page of a submitted paper application and convert
the pages into electronic images. According to comments made by patent
examiners in a majority of the focus groups that we conducted, the system
has provided them with the ability to easily access patent applications
and related information. In addition, patent officials stated that the
system has enabled multiple users to simultaneously access patent
applications.

However, patent officials acknowledged that the system has experienced
performance and usability problems. Specifically, in speaking about the
system's performance, patent officials and agency documentation stated
that, after its implementation, the Image File Wrapper had been
unavailable for extended periods of time or had experienced slow response
times, resulting in decreased productivity. In commenting on this matter,
the USPTO director stated that the system's performance has improved over
the last 6 months. Further, in discussing the system's performance, OCIO
and patent officials acknowledged this system problem, and told us that
they had recently taken measures to alleviate its impact by, for example,
developing a backup tool, which can store images of an examiner's most
recent applications so that the applications can be accessed when the
examiner cannot use the Image File Wrapper. However, given the recent
(February 2005) implementation of this tool, the officials were not able
to show any quantitative benefits from its use.

Regarding the usability of the system, patent officials and focus group
results indicated that the Image File Wrapper does not fully meet
processing needs. Specifically, the officials stated that, as an
image-based system, the Image File Wrapper does not fully enable patent
examiners to electronically search, manipulate, or track and log changes
to application text, which are key processing features emphasized in the
agency's automation plans. The agency's documentation also indicated that
patent examiners have to print images to paper to perform certain
functions such

16The $14 million represents a compilation of costs-provided by USPTO-for
the Image File Wrapper system.

as signing their names to office actions. The examiners commented that a
limited capability to convert images to text, which was intended to assist
them in copying and reusing information contained in patent files, is
errorprone, contributing to their need to download and print the
applications for review. In addition, examiners in the focus groups
expressed concerns about the Image File Wrapper's capability to manage
their workload and route documents to and from examiners, noting that
these capabilities are confusing and difficult to use. Further, because
the office's legacy systems are not integrated with the Image File
Wrapper, examiners are required to manually print correspondence from
these systems, which then must be scanned into the Image File Wrapper in
order to be included as part of an applicant's electronic file.

Patent and OCIO officials largely attributed the system's performance and
usability problems to the agency's use of the software that it acquired
from the European Patent Office. They indicated that the original design
of the ePhoenix system had not been compatible with USPTO's technical
platform for electronic patent processing. Specifically, they stated that
the European Patent Office had designed the system to support only the
printing of files for subsequent manual reviews, rather than for
electronic review and processing. The officials also stated that the
system had not been designed for integration with other legacy systems or
to incorporate additional capabilities, such as text processing, with the
existing imaging capability. Further, an official of the European Patent
Office noted that ePhoenix had supported their office's much smaller
volume of patent applications.17 Thus, with USPTO's patent application
workload being approximately twice as large as that of its European
counterpart, the agency placed greater stress on the system than it was
originally designed to accommodate. OCIO officials overseeing the Image
File Wrapper told us that, although they had tested certain aspects of the
system's capability, many of the problems encountered in using the system
were not revealed until after the system was deployed and operational.

The European Patent Office official serving as liaison to USPTO identified
similar technical problems with the Image File Wrapper. The official
acknowledged that the version of the ePhoenix software that USPTO had
acquired did not provide some of the capabilities that the agency wanted,
such as text processing. He added that the European Patent Office was

17Over the past 2 years, the European Patent Office reported processing
about 160,000 to 170,000 patent applications per year using ePhoenix.

developing a newer version of the software that would include text-and
image-based processing capabilities. At the time of our discussion, the
official said that USPTO officials had not informed them of their plans to
use the newer version of the software.

Patent and OCIO officials acknowledged the problems with the Image File
Wrapper and that the agency had acquired ePhoenix, although senior
officials were aware that the original design of the system had not been
compatible with USPTO's technological platform for electronic patent
processing. They stated that, despite knowing about the many problems and
risks associated with using the software, the agency had nonetheless
proceeded with this initiative because senior officials, including the
former USPTO director, had stressed their preference for using ePhoenix in
order to expedite the implementation of a system. The officials also
acknowledged that management judgment, rather than a rigorous analysis of
costs, benefits, and alternatives, had driven the agency's decision to use
the system.

In January 2005, patent officials told us that, given the performance and
usability problems, they planned to begin replacing the Image File Wrapper
in September 2005 with a system that would provide the capabilities,
including text-and image-based processing, that were outlined in the
agency's automation plans. Preliminary information that the agency
provided about the replacement system indicated that it would cost
approximately $56 million over 6 years, and would not include continued
use of the European Patent Office's software. However, while having made
this determination about a new system, the agency had not developed a
supporting business case-based on requirements, cost/benefit, and
alternatives analyses-to justify this particular acquisition, or a project
plan to guide the system's implementation. Thus, it is difficult to gauge
the soundness of this planned investment or how it will enable USPTO to
accomplish its automation plans. In response to our concerns about the
lack of project documentation to support the planning and management of
this initiative, the officials stated that they would reconsider their
approach to planning and carrying out this project.

USPTO's difficulty in realizing intended improvements through its
electronic filing system and Image File Wrapper can largely be attributed
to the fact that the agency has taken an ad hoc approach to planning and
managing its implementation of these systems, driven in part by its
accelerated schedule for implementing an automated patent processing
capability. The Clinger-Cohen Act, as well as information technology best

practices and our prior reviews, emphasize the need for agencies to
undertake information technology projects in a disciplined manner, based
on well-established business cases that articulate agreed-upon business
and technical requirements; effectively analyze project alternatives,
costs, and benefits; include measures for tracking projects through their
life cycle against cost, schedule, benefit, and performance targets; and
ultimately, provide the basis for credible and informed decision making
and project management. Yet, patent officials did not rely on established
business cases to guide their implementation of these key automation
initiatives.

With its ad hoc approach to implementing the electronic filing system and
the Image File Wrapper, USPTO has continued a practice of ineffective
project management that characterized its implementation of APS of two
decades ago. The absence of sound project planning and management for
these initiatives has left the agency without critical capabilities, such
as text processing, and consequently, impeded its successful transition to
an integrated and paperless patent processing environment. By continuing
to implement information systems in this manner, USPTO undermines the
intent of its patent automation strategy and jeopardizes its credibility
regarding improving the efficiency of the patent process. At the
conclusion of our review, the Under Secretary of Commerce for Intellectual
Property, who also serves as the director of USPTO, stated that he
recognized and intended to implement measures to address the weaknesses in
the agency's planning and management of its automated patent systems.

  USPTO's Patent Automation Is Not Supported by Essential Information Technology
  Investment Management Processes

USPTO's ineffective planning and management for its patent automation
projects, in large measure, can be attributed to enterprise-level,
systemic weaknesses in the agency's information technology investment
management processes. A key premise of the Clinger-Cohen Act is that
agencies have established processes, such as capital planning and
investment control, to help ensure that information technology projects
are implemented at acceptable costs and within reasonable and expected
time frames, and contribute to tangible, observable improvements in
mission performance. Such processes guide the selection, management, and
evaluation of information technology investments by aiding management in
considering whether to undertake a particular investment in information
systems and providing a means to obtain necessary information regarding
the progress of an investment in terms of cost, capability of the system
to meet specified requirements, timeliness, and quality.

Further, as emphasized in our Enterprise Architecture Framework,
information technology projects should show evidence of compliance with
the organization's enterprise architecture, which serves as a blueprint
for systematically and completely defining an organization's current
(baseline) operational and technology environment and as a roadmap toward
the desired (target) state. Effective implementation of an enterprise
architecture can facilitate an agency by serving to inform, guide, and
constrain the decisions being made for the agency, and subsequently
decrease the risk of buying and building systems that are duplicative,
incompatible, and unnecessarily costly to maintain and interface.

At the time of our study, USPTO had begun instituting certain essential
information technology investment management mechanisms, such as a
framework for its enterprise architecture and components of a capital
planning and investment control process. However, it had not yet
established the necessary linkages between its enterprise architecture and
its capital planning and investment control process to ensure that its
automation projects will comply with the architecture or fully instituted
enforcement mechanisms for investment management. For example, USPTO
drafted a capital planning and investment control guide in June 2004 and
issued an agency administrative order requiring unit heads to use the
guide in February 2005. However, according to senior agency officials,
many of the processes and procedures in the guide had not been completed
and fully implemented. In addition, while the agency had completed the
framework for its enterprise architecture, it had not aligned its business
processes and information technology in accordance with the architecture.
Also, according to OCIO officials, the architecture review board
responsible for enforcing compliance with the architecture was not yet in
place; thus, current architecture reviews are only of an advisory nature
and are not required for system implementation. Our analysis of
architecture review documents that system officials provided for the
electronic filing system and Image File Wrapper confirmed that the agency
had not rigorously assessed either of these systems' compliance with the
enterprise architecture.

Beyond these concerns, USPTO lacked reliable, experienced-based data and a
process for consistently demonstrating that expected benefits of the
systems are being achieved. As noted in our prior work, key system
development decisions should be based on reliable data showing that
resource investments will produce commensurate value, and as systems are
developed, expected benefits and estimated costs should be periodically
validated through actual experience. Although patent officials

asserted that processing improvements had resulted from the automation
that had been implemented, they acknowledged that the agency had not
established performance metrics to aid in measuring the impact of the
automation or validated actual experiences against established baselines.
Rather, patent officials told us, they had based their accounts of
performance improvement, such as reductions in the number of lost or
destroyed paper patent applications as a result of the Image File Wrapper,
largely on ad hoc occurrences and/or feedback from patent examiners and
clerical and administrative staff. As a result, the agency lacked a basis
for substantiating benefits from its automation efforts.

In addition, USPTO lacked reliable cost data for the patent automation
initiatives due to weaknesses in the agency's processes for tracking and
reporting project expenses. Our guide on agencies' information technology
investment decision-making stresses the need for reliable and current
project cost data to aid management in making critical investment
decisions.18 While the agency had systems in place to track the costs of
specific tasks, particularly those assigned to its contractors, it did not
have an effective means of providing aggregate cost information for its
overall patent automation effort. Patent officials stated that they faced
difficulties in accessing and providing comprehensive cost information for
the patent systems because the agency had modified its approach to
capturing and reporting cost information, along with the information
systems containing this information. The difficulty that USPTO management
faced in providing comprehensive information on its patent automation
costs could compromise the agency's ability to provide a credible
accounting for its investments and make informed management decisions
about them.

Adding to these conditions, a study commissioned by USPTO's senior
management in 2004 found that OCIO was not organized to help USPTO achieve
its mission or accomplish the goals set out in its automation strategy.19
The study, undertaken by an independent contractor, noted that the
agency's investment management processes did not ensure appropriate
reviews of automation initiatives and that the chief information officer's
organization lacked sufficient credibility with its business units to
ensure an effective partnership. During our review, USPTO's director made

18GAO, Assessing Risks and Returns: A Guide for Evaluating Federal
Agencies' IT Investment Decision-making, GAO/AIMD-10.1.13 (Washington,
D.C.: February 1997).

19We did not independently assess the results of this study, but USPTO's
chief information officer generally concurred with its findings.

changes in key leadership positions within OCIO and the Patent Resources
and Planning Office, which he considered essential to defining and
implementing the patent automation strategy and bringing stability to the
agency's operations. However, officials had not yet begun to improve the
investment management processes to ensure appropriate reviews of the
agency's automation initiatives.

USPTO has an explicit responsibility for ensuring that the automation
initiatives that it is counting on to enhance its overall patent process
are consistent with the agency's priorities and needs and are supported by
the necessary planning and management to ensure that they are successfully
accomplished. USPTO's 21st Century Strategic Plan was intended to help the
agency accomplish a smooth transition to performance-based operations, and
having firmly established and enforced investment management practices
will be crucial to achieving this. At the conclusion of our review,
USPTO's director and the new chief information officer, appointed in
February 2005, told us that they were aware of organizational and
management weaknesses within OCIO and acknowledged the need to strengthen
the agency's investment management processes and practices and effectively
apply them to USPTO's patent automation initiatives.

Conclusions	USPTO has been attempting to implement an integrated,
paperless patent process for about two decades and, in the process, has
delivered important automated capabilities. Nonetheless, after spending
over a billion dollars on its efforts, the agency is still not yet
effectively positioned to process patent applications in a fully automated
environment; moreover, when and how it will actually achieve this
capability remains uncertain. System performance and usability problems,
resulting largely from ineffective planning and management of its
automated capabilities, have limited the effectiveness of key systems that
the agency has implemented to support critical patent processes. USPTO's
director and new chief information officer have recognized the need to
improve the agency's planning and management of its automation
initiatives. However, weaknesses in key information technology management
processes needed to guide the agency's investments in patent automation,
such as incomplete capital planning and investment controls and a lack of
reliable cost data, could preclude its ability to successfully accomplish
this. Under such circumstances, USPTO risks continuing to implement
information technology that does not support the agency's needs, and that
threatens its overall goal of achieving a fully electronic capability to
process its growing patent application workload.

  Recommendations for Executive Action

To more effectively position USPTO to achieve key patent processing
improvements through the use of information technology, we recommend that
the Secretary of Commerce direct the Under Secretary of Commerce for
Intellectual Property to take the following actions before proceeding with
any new patent automation initiatives:

o 	reassess, and where necessary, revise the approach for implementing and
achieving effective uses of major information systems to support a fully
automated patent process, including electronic filing and imageand
text-based patent processing capabilities;

o 	establish disciplined processes for planning and managing the
development of patent systems based on well-established business cases
that articulate agreed-upon business and technical requirements; include
analyses of project alternatives, costs, and benefits; and include
measures for tracking projects through their life cycle against cost,
schedule, benefit, and performance targets; and

o 	fully institute and enforce at the enterprise level, information
technology investment management processes and practices to ensure that
automation initiatives support the agency's mission and are aligned with
the agency's enterprise architecture, to include (1) finalizing and
implementing a capital planning and investment control guide, (2)
establishing an architecture review board and requiring its oversight of
major information technology investments, (3) establishing a process to
identify expected benefits to internal and external users of information
systems and to measure performance against expected benefits, and (4)
establishing a process for tracking and reporting aggregate cost
information for automation initiatives.

  Agency Comments and Our Evaluation

In written comments on a draft of this report, the Under Secretary of
Commerce for Intellectual Property and Director of USPTO generally agreed
with our findings, conclusions, and recommendations. The agency
acknowledged weaknesses in its processes used to manage patent automation
and agreed with the need for key improvements, such as (1) developing
architectural linkages to the planning process, (2) implementing a capital
planning and investment control guide, and (3) completing planned
organizational changes. The Under Secretary emphasized that USPTO had
already initiated reforms to ensure more effective implementation of its
automation projects, including personnel

changes in key patent-management positions, and indicated that the agency
would rely on the results of our study in conjunction with other
assessments that have been conducted to further improve management
processes guiding the agency's use of information technology.

Nonetheless, the agency only partially agreed with several specific
aspects of our assessment. The Under Secretary pointed out, for example,
that in February 2005, USPTO had issued an agency administrative order
covering its information technology investment review board and
reemphasizing its commitment to integrated investment decision practices.
In addition, the agency pointed to our awareness of it having also
initiated a review of the architectural linkages to its investments and
key decision-making processes being implemented. Further, it stated that
it had instituted investment decision papers to provide its investment
review board members with improved documentation, including more thorough
financial, technical, and alternatives analyses, to assist in making
appropriate investment decisions.

The actions that USPTO stated that it has taken could help to improve its
overall investment management and decision making. In mid-April 2005,
patent officials provided us with a finalized copy of the agency
administrative order requiring unit heads to use the capital planning and
investment control guide in selecting, controlling, and evaluating
information technology investments. However, they stated that the agency
had not yet completed the capital planning and investment control
processes and procedures. Nonetheless, we have revised our report to
reflect the agency's issuance of this order. Further, during our study,
agency officials did not inform us of any specific actions that had been
initiated to review architectural linkages to investments and gave no
indication that the agency had instituted investment decision papers to
improve information technology investment documentation and related
decision making. Therefore, we lack a basis for evaluating and/or
commenting on these particular actions.

USPTO also provided comments on the recommendations contained in our
report. Specifically, regarding our recommendation to reassess, and where
necessary, revise the approach for implementing and effectively using
information systems to support a fully automated patent process, the
agency commented that it was changing the method of implementing and
achieving effective use of its information technology. The agency stated
that it had chosen to follow a more systematic and phased approach to
using information technology, in which alternatives are thoroughly

considered and evaluated against architectural standards, implementation
costs, and the ability to effectively meet users' needs, and that detailed
investment decision papers are being prepared for all major investments.
It added that future patent development initiatives, including those for
electronic filing and text-based processing capabilities, would be
subjected to this approach to ensure that automated systems are used most
effectively to achieve patent program goals. As the agency takes action to
achieve more effective use of its information technology, we look forward
to monitoring its use of these measures to successfully implement future
patent automation initiatives.

Regarding our recommendation to establish disciplined processes for
planning and managing the development of patent systems based on
wellestablished business cases, USPTO stated that it was in the process of
improving its capital planning and investment control process. For
example, it stated that an already-established committee had proposed a
format for developing improved business cases that would articulate
business needs and expected benefits, require consideration of alternative
solutions, and reflect compliance with the agency's enterprise
architecture. As stressed in our report, such measures are essential to
ensuring effective management of the agency's information technology
initiatives and to achieving patent processing improvements through the
use of information technology.

Finally, in commenting on our recommendation that the agency fully
institute and enforce information technology investment management
processes and practices at the enterprise level, USPTO (1) reiterated its
actions toward improving its capital planning and investment control
process; (2) stated that its Office of Applications Architecture and
Services functions as the agency's architectural review board with
responsibility for ensuring that information technology systems' designs
comply with the enterprise architecture; (3) stated that it would, upon
completion of its capital planning and investment control guide, formally
establish procedures for reviewing its investments' performance against
expected benefits; and (4) stated that it is refining its tools to more
completely capture the total cost of its information technology
investments.

Such measures, if successfully applied, could substantially improve
USPTO's accountability for its information technology investments.
However, it is important to note that, during our study, the agency could
not provide evidence of a functioning architecture review board. Patent
officials told us that such an organization had not been established and
that

reviews had not been required to ensure that planned information
technology projects were consistent with the enterprise architecture. As
stated earlier in this report, our analysis of documentation supporting
the electronic filing system and Image File Wrapper determined that the
agency had not rigorously assessed either of these systems' compliance
with the enterprise architecture. Given this finding, we continue to
stress the need for the agency to enforce its architecture review board's
oversight of major information technology initiatives.

Beyond these points of discussion, USPTO offered detailed comments on its
Image File Wrapper. While agreeing with the need for more rigorous
decision making to support its implementation of this system, the Under
Secretary nonetheless believed that moving forward with this initiative
was an appropriate step that had fulfilled the agency's promise to provide
electronic (paperless) processing of patent applications, and that had
provided numerous benefits for the agency in a short period of time. For
example, the Under Secretary stated that the Image File Wrapper had
eliminated the agency's need for space to house paper patents and, in
conjunction with Internet access to patent applications, had alleviated
problems associated with lost application files and file integrity. As
such, the agency did not see a need to assess the key management processes
guiding its decision to undertake this investment.

As reflected in this report, we recognize that the Image File Wrapper,
along with Internet access to patent applications, has provided USPTO with
important capabilities to support the processing of patents. However,
patent officials and examiners acknowledged that performance and usability
problems had rendered the system incapable of fully meeting processing
needs. Further, patent and OCIO officials had largely attributed the
system's problems to known limitations in the design of the software that
the agency had acquired from the European Patent Office. They added that,
given the performance and usability problems, the agency planned to
replace the Image File Wrapper. Thus, while certain benefits should be
inherent from having this system in place, in our view, the agency could
nonetheless take important lessons from the ad hoc approach in which this
investment was undertaken. USPTO opted to undertake this initiative in a
manner that did not ensure that it had fully evaluated its patent
processing requirements against the most cost-efficient and effective
solution for addressing its needs. Moreover, in undertaking the initiative
without full consideration of potential alternatives, costs, and benefits,
the agency put itself at risk of not fully realizing desired outcomes in
terms of improved processing of patent applications.

Appendix II contains the text of USPTO's comments on our draft report. The
agency also provided technical comments, which we have incorporated, as
appropriate.

We are sending copies of this report to the Secretary of Commerce, the
Under Secretary of Commerce for Intellectual Property, and the Director,
Office of Management and Budget. Copies will also be available at no
charge on our Web site at www.gao.gov.

Should you have any questions on matters contained in this report, please
contact me at (202) 512-6240. I can also be reached by email at
[email protected]. Contact points for our Office of Congressional Relations
and Public Affairs may be found on the last page of this report. Key
contributors to this report are listed in appendix III.

Linda D. Koontz Director, Information Management Issues

Appendix I

Scope and Methodology

To accomplish our objective, we reviewed USPTO's 21st Century Strategic
Plan, Tools for Electronic Application Management project documentation,
and related information technology plans to determine the agency's vision
for and approach to automating its patent process. We also assessed
current and selected past initiatives that USPTO has undertaken to develop
and implement its automated patent processing capabilities. Specifically,
we analyzed programmatic and technical documentation describing the
agency's patent process, current electronic patent processing
capabilities, and plans for future automation. We evaluated available
project management documentation, such as project plans, time lines, and
project status reports to determine the agency's progress in implementing
a fully automated patent processing system. In addition, to assess key
decisions and actions related to the USPTO's development and use of
specific electronic information and systems to support patent processing,
we examined the agency's consideration of key information technology
investment management procedures and practices, such as capital planning
and investment control, enterprise architecture, and risk management, in
planning and managing the patent automation initiatives. Further, we
examined cost information for USPTO's patent automation initiatives, as
provided by the agency; however, we did not verify the accuracy of this
reported information.

As part of our review, we also examined internal reports documenting an
independent contractor's assessment of USPTO's information technology
organization. We did not independently validate the findings contained in
the reports; however, in discussing their contents with us, USPTO's chief
information officer generally concurred with the findings. In addition, we
reviewed relevant reports discussing the patent operations that had been
prepared by the Department of Commerce's Office of Inspector General.

To supplement our analysis, we interviewed senior patent officials,
including the Deputy Commissioner for Patent Resources Planning; the
Administrator, Search and Information Resources Administration; and the
USPTO chief information officer, who was appointed in February 2005. We
also discussed the agency's patent automation efforts with the Under
Secretary of Commerce for Intellectual Property, who serves as the
director of USPTO. In addition, we met with relevant systems officials who
were involved in or knowledgeable about the development and implementation
of the automated patent capabilities and with patent managers in charge of
the systems' operations. We also interviewed officials of the European
Patent Office who worked with USPTO on its implementation of the Image
File Wrapper and representatives of the

Appendix I Scope and Methodology

patent examiners union. In these interviews, we discussed USPTO's strategy
and supporting plans for automating the patent processes and elicited
their views about and understanding of key management decisions and
challenges associated with the automation initiatives.

Further, as part of a series of 11 focus groups undertaken by GAO, we
obtained patent examiners' views of and experiences with the automated
patent processes. The focus groups consisted of from 6 to 11 employees
each and included supervisory patent examiners (3 groups) and patent
examiners (8 groups). In total, 91 examiners participated in the focus
groups. The 91 participants were randomly selected from the seven
technical areas at USPTO's two locations (in Crystal City and Alexandria,
Virginia), and all participants had been employed at the agency for at
least 9 months. A GAO facilitator led each focus group. The responses were
then systematically analyzed using a content analysis.

We conducted our study from June 2004 through April 2005, in accordance
with generally accepted government auditing standards.

Appendix II

Comments from the U.S. Patent and Trademark Office

Appendix II
Comments from the U.S. Patent and
Trademark Office

Appendix II
Comments from the U.S. Patent and
Trademark Office

Appendix II
Comments from the U.S. Patent and
Trademark Office

Appendix II
Comments from the U.S. Patent and
Trademark Office

Appendix II
Comments from the U.S. Patent and
Trademark Office

Appendix III

                     GAO Contact and Staff Acknowledgments

GAO Contact Linda D. Koontz (202) 512-6240

Staff 	In addition to the individual named above, Valerie Melvin, Mary J.
Dorsey, and Vijay D'Souza made significant contributions to this report.
Evan

Acknowledgments	Gilman, Nancy Glover, and J. Michael Resser also
contributed to this report.

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