On November 22 I offered suggestions (see blog post here) as to how USPTO could do better in receiving updated bibliographic data. I also blogged about what was at that time the Best Practice for updating bib data.
On December 21, USPTO announced its new Corrected Web-based Application Data Sheet functionality. I will describe it in this post. I think it will probably be a Best Practice to use this functionality (for the applications for which it may be used) rather than legacy practice.
To use the new Corrected Web-based ADS (“CWBADS”) functionality, you start by figuring out whether your application is eligible for this system. It will be important to print out and study USPTO’s Quick Start Guide.
First, the candidate application must have been filed on or after September 16, 2012.
Second, the candidate application must not be any of these types:
- PCT application in the international phase
- US national phase from a PCT application (“371 case”)
- Hague (international design) application
- Supplemental Exam
Stated differently, your case would have to be one of these types:
- nonprovisional utility that is not a 371 case
The application is required to have a Correspondence Address Customer Number (CACN).
Keep in mind that there is a difference between the Power of Attorney Customer Number and the CACN.
The filer is required to be a registered user of EFS-Web and the filer’s cryptographic certificate is required to be associated with the Customer Number that is the CACN.
Having checked that your candidate application is actually eligible for this functionality, go into EFS-Web and click these two radio buttons:
The new screen that opens is a screen that lets you pick which item or items of bib data you wish to update. You can click around to pick. Then you paste in your new bib data.
The screen will require that you provide a virgule signature.
Eventually you finish the web-based form, and you click “continue”. After checking the form for correctness, you can click “submit”.
Let’s talk briefly about what we wish the functionality would do. Then we can talk about what the functionality actually does.
What we wish the functionality would do is this: We wish that it would receive character-based user inputs and auto-load the changes into Palm (and from there into an automatically generated new Filing Receipt). Or, if not auto-loaded into Palm, at the very least the user inputs would get copied into some approval screen at the USPTO so that a USPTO person could accept the changes with a single mouse click.
Unfortunately that is not what the functionality does.
What really happens is that the functionality creates an image-based PDF file showing changes with strikethroughs and underscores. This PDF file gets uploaded into IFW and a message gets sent to the USPTO person in charge of bib data changes. The USPTO person then reads (or misreads, as the case may be) the changes by looking at the image-based PDF file. The USPTO person then hand-keys the changes into Palm.
This unhappy situation leaves open the possibility of miskeyed information. A USPTO person could delete the wrong things, or edit the wrong things, or insert something incorrectly.
Even with all of these drawbacks, I believe this functionality is likely to be a Best Practice. Why?
To see why, we have to compare this functionality with legacy practice. Legacy practices are:
- Finding the previous ADS, and with the typewriter tool of paid-for Acrobat, cobble together all of the strikethroughs and underscores needed to show the adds, changes, or deletions.
- Creating a new ADS in one’s word processor, showing only the sections that change and omitting the sections that are not to be changed.
Legacy practice 1 has many drawbacks. Yes, a USPTO person could delete the wrong things, or edit the wrong things, or insert something incorrectly, just as with the new functionality. But there are more drawbacks. This practice requires that a USPTO person go through a treasure hunt, trying to pick out the strikethroughs and underscores. A strikethrough or underscore could get overlooked. Or a flyspeck could look like a strikethrough or underscore.
Legacy practice 2 also has drawbacks. A first drawback is that even if the word processor ADS is fully compliant with 37 CFR 1.76, many USPTO personnel are stubborn and refuse to honor such a word processor ADS.
Each of the legacy practices has the enormous drawback that USPTO personnel seem to take delight in finding real or imagined flaws in the submission. When a USPTO person finds such a real or imagined flaw, the USPTO person mails a letter to the filer. The letter never clearly identifies the person, and it is impossible to reach the USPTO person by telephone. The filer is reduced to a fruitless call to an Application Assistance Unit person who can only guess at the real or imagined flaw. It is commonplace to have to make at least two ADS submissions to accomplish the desired changes.
The chief advantages to the new functionality are:
- USPTO personnel will not be stubborn they way they often are with Legacy practice 2.
- USPTO personnel do not have to go on a treasure hunt looking for the changes. USPTO personnel are not nearly so likely to overlook something that needs to be changed.
- The functionality creates all of the strikethroughs and underscores as required by 37 CFR 1.76. USPTO personnel are not allowed to complain that the strikethroughs and underscores have been done incorrectly, because the USPTO itself created the strikethroughs and underscores.
In practical terms, USPTO is unlikely to bounce an ADS created through this functionality. Yes, the filer will still have to docket to check for a new Filing Receipt. When the new Filing Receipt shows up, the filer will still have to proofread the Filing Receipt character by character to make sure that the USPTO person hand-keyed the information without error.