(Update. The developers quietly removed this feature from Patentcenter on about May 10. See blog article.)
One of the features of EFS-Web is the web-based Corrected ADS (quoted at right). You enter an application number and confirmation number and EFS-Web will construct for you a Corrected ADS with strikethroughs and underscores compliant with 37 CFR § 1.76.
Patentcenter has a corresponding function (quoted at right). But this Patentcenter function is broken — it loses things and does not tell you that it lost them. (There are also two other broken things about the Patentcenter Corrected ADS function as I will discuss below.) Until USPTO fixes the software, you need to be extremely cautious if you decide to try using the Corrected ADS function in Patentcenter. I will discuss it now in more detail, with some background from EFS-Web as well.
This blog article was prompted by a recent listserv posting from Dai Phipps in the Patentcenter listserv. (If you have not already joined that listserv, you should probably do so now.) Dai has been one of the alpha testers and beta testers of Patentcenter for more than a year now and has provided lots of feedback to the USPTO during that time. To the extent that USPTO fixed bugs during the alpha testing of the Patentcenter software, I’d guess that at least one-third of the time it was due to her personally identifying the bugs and reporting them to the USPTO. The USPTO has now opened beta-testing of Patentcenter to everybody, and the Patentcenter listerv provides an email discussion group for beta users to help each other. Dai now extends her generosity to the beta user community in the listserv, and her comments in the listserv have already helped me with some challenges that I recently faced using Patentcenter.
So there are two main points of this blog posting:
- the web-based Corrected ADS feature of Patentcenter is buggy, so you need to be very cautious if you use it, and
- USPTO need to fix this feature of Patentcenter. (This is ticket number CP4.)
First we need a bit of background — what exactly is this Corrected ADS feature? It turns out that I am the origin of the Corrected ADS feature, as I explain in this blog article. Back in 2012 when USPTO did its Notice of Proposed Rulemaking for Corrected ADSs, the proposed rule was that you would always have to submit the entirety of the previous ADS with strikethroughs and underscores in it to show the desired changes. Had the proposed rule gone into effect the way USPTO proposed it, if your application had had a previous ADS that was eight pages long, your Corrected ADS would also have been required to be eight pages long. USPTO personnel would then have had to go on a treasure hunt looking through all eight pages of your Corrected ADS for your strikethroughs and underscores.
Back when that rulemaking was going on, I personally wrote that portion of the AIPLA comment that got filed in the USPTO rulemaking proceeding. (You can see the part that I wrote at about page 27.) The AIPLA comment led to the USPTO promulgating a final rule that said that in your Corrected ADS, if you wanted to you, could omit the sections of the ADS that did not have any changes. The part of 37 CFR § 1.76 that says that in a Corrected ADS you can omit the sections that do not have changes is there because of me. Yes I am showing off. Anyway, so the Corrected ADS feature in EFS-Web that omits the sections that do not have changes is … yeah you get it. And the Corrected ADS feature in Patentcenter that omits the sections that do not have changes is … yeah. I feel pretty good about this actually. Did I mention that I am showing off?
But returning to the matter at hand. When you file a Corrected ADS, surely it auto-loads into USPTO’s systems, right? That’s how it works with a Rule 92bis change in ePCT, after all. Surely the USPTO system is not more primitive in this way than the WIPO system, right?
What is breathtakingly, astonishingly dumb about USPTO’s implementation of the Corrected ADS is that although the filer provides the actual characters of the old and new bibliographic data in the web-based form, the USPTO flattens the e-filed form into an image-based PDF. What happens next is that a human being at the USPTO hand-keys the information (correctly, or incorrectly, as the case may be) into the USPTO systems. I am not making this up! I blogged about this on December 28, 2015 and I frankly hoped that the blog posting might sort of embarrass the USPTO into enhancing the software so that the characters provided by the filer could pass into a USPTO workflow for a USPTO review and potential auto-load into the USPTO systems. But more than four years have passed and still the USPTO flattens the filer-provided characters into images for later hand keying.
And it is the same with the Patentcenter Corrected ADS. This, too, gets flattened into an image, with the actual computer-readable characters discarded. But it’s worse in Patentcenter than with EFS-Web, because the flattened image generated by Patentcenter is grayscaled, and then half-toned, so that it is harder for the USPTO employee to read for purposes of hand keying. I am not making this up! Yes the Patentcenter Corrected ADS is one of the forms that USPTO generates using not only gray scale but also color. I blogged about this here on April 23, 2020.
But the main point of this blog article is that the Patentcenter Corrected ADS loses things and does not tell you that it lost them. So for example I have a case from just a few days ago where I entered the application number and confirmation number in Patentcenter to generate a Corrected ADS. My goal was to update the applicant name. The web-based form in Patentcenter asked me which item in the ADS I wanted to update. I clicked on “applicant”. I then clicked that I wanted to delete the existing applicant, and then I clicked that I wanted to add a new applicant. So far, so good. Patentcenter then rendered on the screen the proposed content of the Corrected ADS. What you and I would expect, from 37 CFR § 1.76, is that the applicant to be deleted would be shown with strikethroughs, and the applicant to be added would be shown with underscores, and indeed that is exactly what I saw rendered on the screen in Patentcenter. So then I clicked “submit”.
At that point, being a sort of nervous Nellie, I did what I always try to do, I went to look in IFW to see what I had just e-filed. Just to make sure. And what did I see in the just-filed Corrected ADS in IFW? I saw that the to-be-deleted applicant was listed with strikethroughs. But the to-be-added applicant was nowhere listed anywhere in this Corrected ADS!
I happened to catch this. So I went into EFS-Web and used its web-based Corrected ADS function to generate and e-file a non-defective Corrected ADS. And I prepared a Miscellaneous Incoming Letter and I included it in my EFS-Web submission. Here is the MIL:
There are several things to say about this MIL. First, it worked! Usually I think we all figure that if we index a document as an MIL we have guaranteed that it will get routed to some cesspool at the USPTO where no human will ever see it. But in this case, some human being at the USPTO actually did cooperate fully by disregarding the defective Corrected ADS from Patentcenter (submission 60013473) and by acting upon the non-defective Corrected ADS from EFS-Web. In this patent application, the applicant name really did get updated to the new applicant name! I actually have an Updated Filing Receipt listing the new applicant name.
Second, look at the caption on that document. It contains only the application number. No art unit, no examiner name, no filing date, no confirmation number. it does not quote the title of the application. It does not say “In the United States Patent and Trademark Office” across the top. How can that caption possibly comply with whatever rule it is that says how you can caption a document that you are filing at the USPTO? See this blog post in which I suggest that you only need to list the application number, and in which I suggest that you should only list the application number.
Third, look at that virgule signature. It has only the letter “s” in it. How can that e-signature possibly comply with whatever rule it is that says how you can e-sign a document at the USPTO? Well, if you go and read 37 CFR § 1.4 you will see that in fact my e-signature is fully compliant with the rule. Every now and then some Legal Instruments Examiner at the USPTO will bounce a document that I sign with that e-signature but then I ask the LIE to go and read the rule and they eventually agree that yes, there is no defect in my e-signature. But Patentcenter is broken on this too, as I reported to the USPTO here back in September of 2018 during the alpha testing. Scroll down to “broken e-signature block” to see that bug report which has still not been corrected in 2020.
So back to the broken Corrected ADS feature of Patentcenter. Yes it might render correctly on your screen in Patentcenter and then you can click “submit” and later if you go and look in IFW, you might see that it “forgot” something.
So to sum up:
- If you are going to use the Corrected ADS feature of Patentcenter, you need to be very cautious and look to see if it is “forgetting” any of your changes.
- USPTO needs to fix its software mistakes in the Corrected ADS feature of Patentcenter. This problem was reported to USPTO more than a year ago and has still not gotten fixed. (This is ticket number CP4.)
- It is disappointing that in the EFS-Web implementation of Corrected ADS, the way it worked was that USPTO flattened the filer-provided characters into images which would then later be hand-keyed by USPTO personnel into USPTO’s systems.
- It is likewise disappointing that in the Patentcenter implementation of Corrected ADS, the way it works is that USPTO flattens the filer-provided characters into images which will then later be hand-keyed by USPTO personnel into USPTO’s systems.
- It is even more disappointing that in the Patentcenter implementation of Corrected ADS, when the USPTO flattens the filer-provided characters into images, the USPTO does it with color and gray scale which then get half-toned so that they get blurred prior to the hand-keying by USPTO personnel into USPTO’s systems.
- Between now and when USPTO implements preservation of the filer-provided characters, USPTO should at least not flatten the Patentcenter characters into color and gray-scale images, but should flatten them into pure black and white images as EFS-Web does, so that no halftoning will take place. (This is trouble ticket CP3.)
- USPTO should not flatten the filer-provided characters at all into images, but should preserve them for character-based workflow for eventual auto-loading into USPTO systems. (This is trouble ticket CP5.)