The EFS-Web listserv is a place where US patent practitioners discuss problems and sometimes help each other to solve problems. (To learn more or to join the listserv, click here.) Here was a question posed today by one of the members of the listserv:
Apologies for the interruption/venting, but I’ve reached somewhat of a breaking point with errors in official Filing Receipts. My understanding was that fillable ADS forms were being used to expedite entry of data by the Office. However, based on the number of typos and missing information we are seeing on an ongoing basis, I imagine someone is manually typing this information in Office side. Is this still the case?
Sure we have a form request for obtaining a corrected filing receipt, we say the original ADS had the correct information, we show the corrections on the receipt, etc., but addressing Office errors is becoming a time sink. This is separate from the time we take to cross-check every receipt that comes in, which is redundant of the time we take in reviewing the original ADS to begin with.
Is there something that I am missing?
If it matters, these are 371 filings and I confirm that fillable forms are submitted via EFS, i.e., they are not scans/images. Any insight is much appreciated.
This listserv member is right, of course. USPTO mistakes in official Filing Receipts impose a substantial cost upon patent practitioners. In this blog article I will talk about some of the sources of USPTO mistakes and what the patent practitioner can do to try to reduce the number of such mistakes.
When I started my firm (more than twenty years ago), there was no e-filing. All patent applications were filed at the USPTO on paper (by Express Mail). The official Filing Receipts were printed using the Palm system at the USPTO. The way that the bibliographic data got into Palm was that USPTO people hand-keyed the bib data into Palm.
At my firm we did what everybody did in those days. We received the Filing Receipts and we proofread them. And in those days, the USPTO success rate at mailing an error-free Filing Receipt was around 20%. By this I mean that about 80% of the time, we found it necessary to file a request for a corrected Filing Receipt.
In those days, what we found in the corrected Filing Receipts was that about 50% of the time, the corrected Filing Receipt would show a correction of the initial mistake, and would contain at least one new mistake. I can’t shake the suspicion, even now, that the way it worked in those days was that a request for a corrected Filing Receipt would often prompt someone at the USPTO to retype everything rather than only changing the thing that needed to be changed.
There was a failed experiment that old-timers like me will recall. USPTO came up with an elaborate specification for a way that the user could generate an application data sheet (ADS) in the word processor. This was the “double colon” ADS, so nick-named because each data field was preceded by two colons (“::”). So you might type two colons and a text tag like “inventor” and then the inventor’s name, and so on through the entire ADS, with various tags for the various items of bib data. And the “double colon” ADS would get loaded into some specially programmed OCR scanner at the USPTO and supposedly the bib data would get auto-loaded into Palm. Anyway it was a complete failure and it got scrapped after a couple of years.
Anyway eventually ePave came along. ePave provided a way for filers to provide the bibliographic data in computer-readable form. The only problem was, ePave was a complete failure. It only achieved about a 2% penetration. By the time the USPTO scrapped the ePave system, still about 98% of applications were being filed on paper.
Oh, and I was astonished to learn that in the first few months of ePave, the workflow at the USPTO was that someone would physically print out the ePave submission and it would get inserted into the paper workflow and someone at the USPTO would hand-key the bib data into Palm.
Anyway eventually USPTO scrapped ePave and launched EFS-Web. And USPTO came up with computer-readable ADSs (application data sheets). The user would hand-key the bib data into the ADS which was a fillable PDF form. The user would upload the PDF ADS into EFS-Web and ideally the result would be that all of the bib data would auto-load into Palm. The result would be error-free Filing Receipts. The promise to users was that if the user could successfully hand-key the bib data into the PDF ADS, then the Filing Receipt would be error-free.
Importantly, this auto-load would only happen in the special case where the PDF ADS happened to be in the initial e-filing package. By this is meant the e-filing package that for the first time gave you a patent application number.
Equally importantly, this meant that if you somehow failed to get the PDF ADS into the initial e-filing package, the result would be a hand keying of all of the bib data. So for example if your EFS-Web session were a session in which you type in an application number and confirmation number, it was already too late to be handing in an ADS and to expect it to auto-load.
The other aspect of this is that lots of practitioners in the early days of EFS-Web did not provide the fillable form PDF version of an ADS. They would print out an ADS and sign it with ink and then scan it and e-file the scanned PDF. This guaranteed a failure of any auto-loading. This guaranteed that the data would be hand-keyed.
But anyway in those early days, the practitioner who was disciplined enough to make sure that the ADS was in the initial filing package, and who was further disciplined enough to make sure that the ADS was a fillable PDF ADS, would enjoy a real treat, namely error-free Filing Receipts.
This happy state of affairs did not last. Starting maybe eight years ago, some decisionmaker at the USPTO started chipping away at what would auto-load and what would not. The first thing to go was the foreign priority information. About a year later, not only did the foreign priority information not auto-load, but the domestic benefit information no longer auto-loaded. Then depending on the particular type of filing (national phase, provisional), even less information would auto-load.
I am astonished to be able to report that within about the past year, the pendulum seems to have swung back. Some decisionmaker at the USPTO has decided to restore most of the auto-loads. For example in recent months the foreign priority information is again auto-loading.
Back to the unhappy listserv member whose comment in the listserv prompted me to write this blog article. Yes, the listserv member might be carefully employing the fillable PDF version of the ADS. But one question is, is the listserv member e-filing that PDF ADS in a second or subsequent filing? If so, then that would explain the many typing errors by USPTO personnel.
The practice tip is to use the fillable PDF ADS form, and to include it in the initial filing. These days that will lead to quite a lot of bib data getting auto-loaded into Palm, what with the recent pendulum-swing back toward more stuff auto-loading instead of less.
Another option is to use the web-based ADS. This has a first drawback that if EFS-Web crashes for you during the web-based process, then you lose your work. This has a second drawback that you can’t use XML to preload the PDF ADS (a subject for a separate blog article, I think). This has a third drawback that if your own computer crashes during the web-based process, then you lose your work. For all of these reasons we usually use the fillable PDF ADS.
A related practice tip has to do with the EFS-Web screen fields that duplicate information that you would provide in your fillable PDF ADS. For example one of the first EFS-Web screens invites you to provide the title and the inventor name right there on the web page. But of course you are providing the same information in the PDF ADS that you will upload on the subsequent web page. And the practice tip is, don’t bother to waste any time providing the title and inventor name on that web page. Just type in periods or something to fake out the page as if you had provided the title and inventor name. The auto-loading of the fillable PDF ADS will fill in the title and inventor name.
What do you think about ADSs and auto-loading and USPTO mistakes in Filing Receipts? Please post your comments below.