Patent Office plans new e-filing system

Gripes about existing process, which requires downloading software, prompt work on a Web-based replacement.

Anne Broache Staff Writer, CNET News.com
Anne Broache
covers Capitol Hill goings-on and technology policy from Washington, D.C.
Anne Broache
3 min read
ALEXANDRIA, Va.--The U.S. Patent and Trademark Office plans to overhaul its oft-maligned electronic patent filing process, starting with beta testing of a new, Web-based system in December and going live in March, an agency official said Friday.

The office is looking to boost the less than 2 percent of patent filings--or slightly more than 7,000 this year--that currently arrive electronically, Acting Commissioner for Patents John Doll told attendees at the Independent Inventor Conference on the USPTO's new campus.

The push to go increasingly digital reflects the office's drive to get through a backlog of about 850,000 pending applications as the number continues to rise. The office recently spent 18 months digitizing 250 million pages of paper records. (Now paper applications are scanned within days of when they arrive). It also plans to hire 950 new examiners this year and more than 1,000 each year for the next several years "until we catch up," Doll said.

Most applicants currently send their forms the old-fashioned way. In fact, the Patent Office is the "largest recipient of overnight mail in the world," said Margaret Focarino, deputy commissioner for patent operations.

The Patent Office has been talking about going paperless for years and received its first application in electronic form during a pilot test in 1999.

The current e-filing system requires would-be filers to download and install five separate pieces of software, which occupy about 51MB of hard-drive space. From there, a multistep, complex process remains: Filers must use authoring software to fill out forms describing their invention and then export those files to a separate program to continue the submission process.

According to system requirements, that software works only on computers running Windows 2000 or Windows XP, along with Internet Explorer. But using outside software to prepare the filings may cause them to be unreadable, the Patent Office Web site cautioned.

In an interview with CNET News.com, Doll variously described the existing e-filing system as "cumbersome," "very difficult" and "dreadful."

Doll said a patent filer for a major technology company once griped that he could not download the necessary software through his company's firewall, so he had to retrieve it at home and tote it to work on a disc.

The new system, by contrast, is a "client-light, Web-based portal," Doll said. That means that rather than downloading software, users would log into a Web-based Patent Office database, complete and save all of their work on the Patent Office's server, and submit it when they're ready. They would also have the ability through the system to circulate that work to others.

Doll said the office had hoped for a 4 percent electronic filing rate this year, up from its typical 2 percent to 3 percent, but fell short even with new versions of software released last December and in April. For now, "technogeeks" who have learned tricks to mastering the system and swap tips with each other via online bulletin boards are the primary users, Doll said.

The drop in usage led the Patent Office to convene, over the last nine months, three public forums that brought together a cross-section of users--mostly lawyers--to vent and offer candid suggestions.

From there, officials reached one conclusion: "Everybody hates the current system," Doll said, adding that even cutting filing fees wouldn't convince many companies to use the electronic filing system as it stands now.

They wanted to see an easy-to-use process that offered, for example, drop-down menus offering frequently used options that one would normally have to type manually.

About 80 beta testers pulled from the public forums will begin trying out the system from Dec. 1 until March 16, 2006. The Web system is scheduled to be accessible to the public on March 17, 2006, a Patent Office representative said.

It's important to note that the Trademark Office, by contrast, has had more success with its own electronic system. Doll said more than 90 percent of trademark applicants submit at least their initial forms electronically, and about 30 percent conduct the entire process digitally. That larger volume, Doll said, is owed largely to the trademark application process' shorter, less complex forms.