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, 3745-3747 [2012-1404]
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Federal Register / Vol. 77, No. 16 / Wednesday, January 25, 2012 / Notices
prepare an environmental assessment or
environmental impact statement.
Concurrent with the publication of
this notice in the Federal Register,
NMFS is forwarding copies of this
application to the Marine Mammal
Commission and its Committee of
Scientific Advisors.
Dated: January 19, 2012.
P. Michael Payne,
Chief, Permits and Conservation Division,
Office of Protected Resources, National
Marine Fisheries Service.
[FR Doc. 2012–1566 Filed 1–24–12; 8:45 am]
BILLING CODE 3510–22–P
DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. PTO–T–2011–0050]
Establishment of a One-Year Retention
Period for Trademark-Related Papers
That Have Been Scanned Into the
Trademark Initial Capture Registration
System
United States Patent and
Trademark Office, Commerce.
ACTION: Notice.
AGENCY:
The United States Patent and
Trademark Office (USPTO) is
establishing a one-year retention period
that began on September 26, 2011, for
papers scanned into the Trademark
Initial Capture Registration System
(TICRS) prior to September 26, 2011, or
began or begins on a paper’s submission
date, for papers scanned into TICRS on
or after September 26, 2011. After the
expiration of the one-year retention
period, the USPTO will dispose of the
paper documents unless, within
sufficient time prior to disposal, the
relevant trademark applicant or owner
files a request to correct the electronic
record in TICRS, and the request
remains outstanding at the time disposal
would otherwise have occurred. The
one-year retention period for papers
scanned into TICRS will reduce the
costs currently associated with
indefinitely warehousing paper
documents, while permitting sufficient
time for the review and rarely needed
correction of the scanning of such paper
documents. The USPTO received no
comments to the notice published
September 23, 2011 on this proposal.
DATES: Applicability Date: For papers
scanned into TICRS prior to September
26, 2011, the one-year retention period
began on September 26, 2011. For
papers scanned into TICRS on or after
September 26, 2011, the one-year
retention period began or begins on the
paper’s submission date.
srobinson on DSK4SPTVN1PROD with NOTICES
SUMMARY:
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FOR FURTHER INFORMATION CONTACT:
Cynthia C. Lynch, Office of the Deputy
Commissioner for Trademark
Examination Policy, by telephone at
(571) 272–8742.
SUPPLEMENTARY INFORMATION:
Background
On September 23, 2011, the USPTO
published a notice and request for
comments on a proposal to establish a
retention period of one year for
trademark-related papers that have been
scanned into TICRS. See Request for
Comments on Establishment of a OneYear Retention Period for TrademarkRelated Papers That Have Been
Scanned Into the Trademark Initial
Capture Registration System, 76 FR
59114 (September 23, 2011), 1371 OG
168 (October 18, 2011). The USPTO
received no comments in response to
the notice.
The proposed change to the USPTO’s
past practice of indefinitely retaining
papers that have been scanned into
TICRS stems from the relatively small
number of paper trademark-related
submissions received at the USPTO and
the USPTO’s practice of scanning all
paper documents into TICRS, resulting
in paper documents that duplicate the
electronic record in TICRS. Moreover,
the USPTO’s multiple reviews of the
electronic record in TICRS to ensure
accuracy of the data have rendered the
practice of indefinite paper retention
unnecessary and not cost-effective.
Changes: One-Year Retention Period for
Paper Records
In view of the lack of any public
comments opposing the establishment
of a one-year retention period, the
USPTO is establishing a one-year
retention period for the retention of
paper records. Specifically, the one-year
retention period begins on: September
26, 2011, for papers scanned into TICRS
prior to September 26, 2011; or a paper’s
submission date, for papers scanned
into TICRS on or after September 26,
2011. TICRS is available to the public
through the Trademark Document
Retrieval (TDR) and the Trademark
Status and Document Retrieval (TSDR)
databases on the USPTO Web site. This
plan allows the USPTO and the public
sufficient time to review and determine
the accuracy of the record in TICRS/
TDR/TSDR and request any needed
corrections, thereby providing assurance
that the record is correct. The plan also
significantly reduces the costs currently
associated with indefinitely
warehousing duplicative paper records.
Paper filings with electronic and digital
media attachments are not subject to the
one-year retention period and will
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3745
remain retrievable, consistent with past
practice.
After the expiration of the one-year
retention period, the USPTO will
dispose of the paper records, unless a
request to correct the electronic record
in TICRS remains outstanding. Requests
to correct the electronic records in
TICRS should be emailed to ‘‘TM–TDR–
Correct@uspto.gov’’ using the subject
line ‘‘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.
The request should include: (1) The
serial number or registration number; (2)
the date and nature of the paper
document filed; (3) a description of the
error(s) in TICRS/TDR/TSDR; (4) the
name and telephone number of the
applicant or owner; and (5) a
replacement copy of the paper
document, if available. The USPTO will
review the request and update the
record within 21 days of receipt, if
appropriate. The applicant or owner
may check TICRS or TDR/TSDR
approximately three weeks after
submitting the request to verify entry of
the requested changes.
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. 2012–1437 Filed 1–24–12; 8:45 am]
BILLING CODE 3510–16–P
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
United States Patent and
Trademark Office, Commerce.
ACTION: Notice.
AGENCY:
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 patentrelated 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
SUMMARY:
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srobinson on DSK4SPTVN1PROD with NOTICES
3746
Federal Register / Vol. 77, No. 16 / Wednesday, January 25, 2012 / Notices
(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
IFWPaperRetention@uspto.gov, 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: https://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
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Jkt 226001
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.
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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
https://www.archives.gov/records-mgmt/
rcs/schedules/departments/departmentof-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 EFSWeb 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 oneyear 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
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Federal Register / Vol. 77, No. 16 / Wednesday, January 25, 2012 / Notices
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 10page 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
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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
§ 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
§ 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
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3747
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 § 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
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]]>Agencies
[Federal Register Volume 77, Number 16 (Wednesday, January 25, 2012)]
[Notices]
[Pages 3745-3747]
From the Federal Register Online via the Government Printing 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
IFWPaperRetention@uspto.gov, 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: https://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 https://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
