(Note: this tripwire feature is feature request FR7. The “last 30 ack receipts” feature is feature request FR4.)
(Update: Ideascale does not seem to work any more. For example this very suggestion by the person mentioned below is no longer to be seen in the Ideascale system.)
In this posting I will talk about three things — a feature that USPTO ought to implement in EFS-Web and in Patentcenter alpha — and a reminder of the existence of the Ideascale system which USPTO has set up for receiving suggestions — and a thanks to a member of the patent community who used Ideascale to offer up the feature that I am now going to write about.
The feature is, USPTO ought to set it up in EFS-Web and in Patentcenter so that it is possible to set up tripwires. By tripwire I mean a function so that in an automatic way, any new filing of a document by a filer would get communicated to some particular pre-established email address.
First, let’s talk about this much-needed “tripwire” feature. What is the problem for this this “tripwire” feature would be the solution?
The problem is that with EFS-Web, and with Patentcenter alpha (the alpha-test version of Patentcenter), it is all too easy for a user at a firm or corporate patent department to carry out an e-filing submission that nobody else at the firm or department will ever learn about. (For the remainder of this discussion I will use the word “firm” but we will understand that I might be talking about a corporate patent department as well.)
The normal workflow in any firm is, of course, that after some task gets done by one person at the firm, there will be other people at the firm who need to be able to look at what just gone done and carry out related tasks. A docket person will, for example, almost always need to look at the task that just gone done and figure out whether this permits the docket desk to “clear a docket” that had been set to make sure that the task would get done. For example maybe there was a Notice of Missing Parts calling for payment of some fee, in which case the docket desk would have set a docket “make sure that the fee gets paid”. If some person at the firm did actually pay the fee, then a docket person is going to want to clear that docket in the docket system.
And the alert reader will point out that when the time comes that the docket desk can clear one docket, there will almost always be the need to set another docket. For example if the above-mentioned fee gets paid, not only do we clear the docket for checking to make sure the fee gets paid but we set a new docket for checking to make sure that the USPTO acknowledges that the fee did get paid (perhaps by the USPTO releasing the application to the Examining Corps).
But the super important point being made here is that the docket desk can do this only if the docket desk learns that the e-filing task got carried out.
In EFS-Web the usual way that the docket desk could learn that somebody e-filed something (such as the payment of a fee as mentioned above) is that there is a button on the EFS-Web screen for sending email. The EFS-Web user who has just gotten done e-filing something can, if they remember to do it, click the email button. This spawns a new window on the user’s computer screen, namely a new email message draft. The user can then type in some explanation into the draft email, type in a destination (the docket desk), and click “send”. The email message goes to the docket desk.
This is a very very important feature of EFS-Web, as will be appreciated.
Alpha-test users of Patentcenter Alpha have been making use of the new Patentcenter system which will some day replace EFS-Web. The alpha-test users have noticed that conspicuously missing from Patentcenter Alpha is such a button for sending email. It is cumbersome for a Patentcenter Alpha user to set up an email message to the docket department to let them know of what one has just e-filed. It is much more cumbersome when compared with EFS-Web where it only requires one click of the mouse.
More to the point, we worry that a filer who files something might forget to tell the docket desk what they did. Such forgetfulness can lead to small or big problems later. In EFS-Web the filer might forget, but there is a prominent “send email” button on the EFS-Web screen that reduces the risk that the filer would forget to send such an email.
Unfortunately the designers of Patentcenter Alpha overlooked this. In Patentcenter Alpha there is no “send email” button on the screen after a filer has e-filed something. So with Patentcenter it is much easier for a filer to forget to tell the docket desk what they did.
Alpha-testers of Patentcenter Alpha have been telling USPTO about this missing feature for several months now, and unfortunately even now USPTO has not brought forward this feature from EFS-Web into Patentcenter.
Our hearts of course go out to the long-suffering docket people who constantly face this problem that a filer might e-file something and might forget to tell the docket desk about it. One protective measure that a smart docket desk will follow is to check Financial Manager (FM) daily to see every payment made to the USPTO. Thus if there is a “rogue submission”, by which we mean an e-filing in which the filer did not tell the docket desk about it, and if the rogue submission happened to involve paying money to the USPTO, then the report from FM will tip off the docket desk that the submission happened.
But not every submission to the USPTO involves paying money. So the use of FM as a tripwire will catch some rogue submissions but not all.
So yes, as mentioned above, the designers of Patentcenter Alpha have not provided a “send email” button in Patentcenter, like the one in EFS-Web. This has the unfortunate effect of increasing the likelihood that a filer might forget to send an email to the docket desk to let them know about what just got e-filed.
A second way to try to catch “rogue submissions” is, of course, to check the list of the most recent thirty Acknowledgment Receipts (“Ack Receipts”). In EFS-Web it is very easy to click around to find the list of the most recent thirty Ack Receipts. It is then possible to click through and look at the Ack Receipts one by one. This can permit the docket desk, or the supervisor of a paralegal, or the colleague of a patent practitioner, to learn of a submission even if the person who did the submission forgot to tell his or her colleagues what they did.
Which brings us to yet another conspicuous absence in Patentcenter Alpha. It is missing the “most recent thirty Ack Receipts” feature. So the only way that a docket desk or supervisor or colleague could learn of the fact of a rogue submission having been filed is to guess which application might be the one in which such a rogue submission got e-filed, and if the person guessed right, they would see the Ack Receipt in the IFW for that application. But this requires that the docket desk or supervisor or colleague take the initiative to click around in each application in which they fear a rogue submission might have been filed.
Months have passed since the first time that alpha users of Patentcenter asked the developers to please bring the “most recent thirty Ack Receipts” feature forward from EFS-Web into Patentcenter, and as of today it is still not to be found in Patentcenter.
Which brings us to the very smart “tripwire” feature which a smart user proposed in Ideascale yesterday.
The idea, brilliant in its simplicity, is a direct counterpart of the Outgoing Correspondence Notification (“OCN”) feature of PAIR. The idea of the OCN is that whenever anybody from the USPTO sticks a new document into IFW, an email gets sent automatically to some pre-established email address. (Actually PAIR permits the user to set up as many as three email addresses to which an OCN would get sent.) Every firm, every corporate patent department, makes constant use of the OCN feature. The OCNs get sent to the docket desk, for example. In this way if an Office Action gets mailed, instantly the docket desk will learn that this happened and the docket desk can then set a docket “remember to respond to the Office Action”.
(It is recalled that the OCNs are set up according to the correspondence address customer number or “CACN”. For each customer number the user is able to set up the notification email addresses (as I say, up to three of them) to which a notification would get sent if somebody from the USPTO sticks a new document into the IFW.)
Returning to this brilliant idea, which might be termed an “Incoming Correspondence Notification” or ICN. The idea would be that for each instance of a user e-filing something at the USPTO, a notification would get sent to a notification email address. In this way, even if the filer forgets to tell the docket desk that they e-filed something, the docket desk could nonetheless learn in an automatic way that the e-filing happened.
This ICN feature, if implemented, would offer numerous benefits, among them:
- the absence of the email notification button from Patentcenter, the email notification button that we are all accustomed to in EFS-Web, would not cause quite so much harm,
- the absence of the “most recent thirty Ack Receipts” feature from Patentcenter, the feature that we are accustomed to in EFS-Web, would not cause quite so much harm, and
- the possible forgetfulness of a filer, forgetting to tell the docket desk that they e-filed something, would not cause nearly so much harm.
Old-timers will recall the Partridge software offered by my firm, which years ago had the capability to check the content of PAIR every day and to tip off the user of any new document in IFW. Partridge made use of an API from the USPTO which, years ago, made it possible to do this monitoring. Unfortunately when USPTO launched the dreaded “Entrust Java Applet” mechanism for logging in on Private PAIR, this broke the API that Partridge had been using, and Partridge stopped working. (My firm had made the Partridge software available free of charge to the patent community.) For many years now I have been asking USPTO to provide an API that would permit a successor of Partridge to achieve similar aims, and USPTO has not done so. But I digress.
Anyway, back to the brilliant suggestion of an Ideascale participant, the suggestion of setting up what I term ICNs (incoming correspondence notifications).
Who made this brilliant suggestion? This smart idea came from Michaelene Hojnicki who is a Process Improvement Analyst at the Chicago intellectual property firm of Marshall, Gerstein & Borun LLP (“Marshall IP”). Marshall IP is one of the alpha-testers of Patentcenter Alpha. Without putting too fine a point on it, the firms and corporations that have volunteered to be alpha-testers of Patentcenter Alpha do a great service to the patent community. They find bugs in Patentcenter, they report the bugs to USPTO, weeks or months pass, they nag the USPTO about the bugs, and eventually the bugs get fixed. They point out missing features, they make suggestions for improvement, and in some instances USPTO actually adds such a feature or implements the improvement.
In a year or so, USPTO will release Patentcenter to the public, and will shut down EFS-Web and PAIR. (Patentcenter will replace EFS-Web and PAIR.) This will affect the entire patent community of USPTO customers. And to the extent that Patentcenter will be workable or even perhaps an improvement over the previous systems that will get shut down, this will be due in large part to alpha testers like the people of Marshall IP, including Ms. Hojnicki.
Ms. Hojnicki’s suggestion, which she posted to the Ideascale system, includes several possible variants:
- The ICN might merely provide the Ack Receipt to the notification email address, or
- The ICN might provide not only the Ack Receipt but also the entirety of the submission.
My guess is that the latter might sometimes not work well since the entirety of the submission might be too big to fit into an email attachment. But of course even if the docket desk receives nothing more than the Ack Receipt itself, this would serve the main aims of an ICN system, which is to permit the docket desk to learn of each and every filing, including rogue submissions.
The ePCT system of course had such notifications from the beginning. In ePCT each user automatically learns about it if any new document gets inserted into the application file. Yes, it would have been nice if the developers of Patentcenter had gone to the trouble of looking at the feature set of ePCT. But they did not.
Once nice thing about an email notification from ePCT is that it always contains a “deep link” which goes directly to the particular place in ePCT where the newly filed document can be seen. Of course this sort of thing only works if reliable “deep links” are even available. Private PAIR, for example, was intentionally designed by USPTO so that no URL for a particular page in PAIR as viewed by one user will ever work for any other user. Indeed the URL for a particular page in PAIR as viewed by one user will not even work for that same user, if the URL is visited an hour later. But the designers of ePCT provide “permalinks” and deep links. Such a link can for example be placed into an email message and sent to the docket desk and they can click on the link and it will work. (The recipient might need to go through an ePCT login step but then the deep link will bring up the desired page.)
The Patentcenter system has (or supposedly has, it is a bit flaky about this) permalinks and deep links that might possibly be emailed from one person to another. One smart way to do the ICNs would be to provide such a deep link in the ICN email message. This would avoid the risk of a large email attachment causing the email to fail.
Ms. Hojnicki’s suggestion also mentions that maybe in one office (or as for one customer number) the docket desk might only want to be automatically notified of “major events” such as the filing of a new patent application, while in an other office (or as for other customer numbers) the docket desk might want to be automatically notified of every event, large or small.
My guess is that most docket desks would want to be notified of every event.
There’s one more layer to this. In my comments above, I characterized the OCN system as a system that notifies the user each time that USPTO puts any new document into IFW. What I wrote is not quite accurate. The real situation is that USPTO only sends out an OCN in the specific case of putting something into IFW that in legacy practice would have been dropped into the mail. In fact there are lots of things that a USPTO person might put into IFW and it does not trigger the sending of an OCN. One example is retrieval of a priority document from PDX or DAS. But there are many other examples of this.
So I offer the thought that Ms. Hojnicki’s idea could be generalized a bit. Yes, any time somebody e-files a document in EFS-Web or Patentcenter, it would be very helpful to have an ICN, by which we mean a notification by email (for example to the docket desk) that the e-filing happened. But in addition to this, it would be very helpful if any time a new document gets into IFW there could be a similar notification by email.
Why stop with this? How about a feature in which (if so configured by the user) there could be a notification email any time that a new item gets added to the Transaction History? How about a feature in which (if so configured by the user) there could be a notification email any time that the status code for the file changes? How about a feature in which (if so configured by the user) there could be a notification email any time that the art unit changes? How about a feature in which (if so configured by the user) there could be a notification email any time that examiner changes? (The alert reader who is an old-timer user of Partridge will realize that these are things that Partridge used to monitor, before USPTO broke the API that made Partridge possible.)
Would you like to see USPTO implement Ms. Hojnicki’s suggestion? If so, then please post a comment below, and please go sign up for Ideascale and post something about it in Ideascale.
5 Replies to “Setting up a tripwire for new filings in EFS-Web and Patentcenter”
I’m sorry, but I still don’t understand the problem. If someone from our office e-files a document into IFW, and then forgets to tell docketing that they did so, there will be an unsatisfied docket entry, which will come up in its time, and demand to be satisfied. This docket entry will relate to exactly one matter, whether patent, trademark, patent application, trademark application, etc. Upon encountering this unsatisfied docket entry, the docket clerk will do something about it. If that doesn’t happen, then to me, the docket system isn’t working.
What the docket clerk will do is a series of things, until the entry can be satisfied: 1) check with the person responsible for the docket, and ask it if was done; 2) failing that (person is not in, or whatever), check in our file for that matter, to see if something was e-filed, then filed in our file for the matter, and not sent to docketing; 3) failing that, check with IFW and see if something was done there; and, 4) failing that, run the matter up the supervisory flagpole.
This problem is a LOT different than the problem solved by OCN, because for ICN, WE are the source of the correspondence. We shouldn’t need the PTO to tell our firm that our firm filed something. The trip wire would be nice, but the problem it solves is not at the level of the problem solved by the OCN system.
Yeah I did not do a good enough job of describing the problem.
Suppose somebody files a brand new patent application and does not tell the docket desk. Then there might well not be an existing docket to trigger this.
Suppose someone files some applicant-initiated document for which no previous docket had been set. A PPH petition. A preliminary amendment. Then how is the docket desk going to learn that it happened.
IP Australia has a very nice feature in their AusPat patent database, probably in trademarks too but I haven’t looked, that allows anyone to “subscribe to notifications”. Here’s what they say:
“Auspat Subscribe is a notification service provided through AusPat-eDossier. This service allows users to receive email notifications on applications of interest.
Interested parties can ‘subscribe’ to a particular case file (or case files) and be advised via email when both incoming and outgoing documents are added to eDossier for that particular patent case.
To subscribe to the service you will need to insert the application numbers (7 at a time) you wish to subscribe to as well as an email address where you would like notifications to be sent. You can also give each application a specific reference if you choose.
Following subscription you will receive an email to activate your subscription. You will then receive emails with information on which patent cases have been updated and what documents have been updated to the case file. You will be able to view this information by clicking the link within the email to the case in AusPat.”
This is not a solution to the docketing problem you mention, but it is a wonderful way to be able to monitor your own, or a competitor’s filings as they make their way through prosecution; and I’d love to see it on the websites of all the major patent offices.
Regarding Nick entry, above, keep in mind that failure to clear docket reminders results in inefficiencies and duplication in effort, and wasted managerial forensic analysis time. As Nick states, failure to report an action to docketing will result in steps “1)…2)…3)… [and] 4)” all of which would be moot if docketing had timely received notification of action mooting the docketed reminder.
I think this is a great OPTION for small firms and independent inventors. It would be nice to have notification and/or documentation sent whenever something is filed.
Large firms often have workflows in place for ensuring filed documents get into their DMS and the docket is updated. Sure, it may be up to six months before a firm is aware that another firm filed a document such as a POA or other filing, but a firm’s current workflow process will still likely be more optimal than receiving a communication each time something is filed. Some firms manage the filing of over 100 documents a day on average and some days quite more.
Docketing practices will also differ from firm to firm.
I think this is a great OPTION to be made available, however, I do not think this should be something considered as a base function of an electronic system.