Most of us, when we were learning how to prepare a response to a patent Office Action in the USPTO, were taught to load up the caption with every conceivable piece of information. When I was first in practice I was taught to provide not only the application number but also the art unit, the Examiner’s name, the filing date, and the title of the invention. Some years later the USPTO introduced the “confirmation number” and this, too, went into the caption. Now I skip all of this and I use the application number and nothing else in the caption. Why?
I guess the starting point of the discussion is, why was it ever necessary to provide five or more pieces of information?
The answer, of course, was that it would save work for the USPTO in carrying out the paper flow. In those old days the USPTO’s files were physical paper files. Likely as not at the time that someone was getting ready to send a response to the USPTO, the physical file would be in the Art Unit somewhere. So it was helpful for the filer to include the Art Unit in the caption so that a clerk with a four-wheeled cart would know where to drop off the document. MPEP section 502 details USPTO’s suggestions as to what should go into a caption.
A further problem for which a multi-item caption was the intended solution was the problem of a USPTO clerk punching two holes in the document and then inserting it into the wrong physical file. The idea was that even if the clerk were to misread the application number, the filing date might serve as a double-check as to whether the physical file into which the clerk was about to insert the file was the correct file.
Not only that, in those old days nobody actually paid attention to series codes. Practitioners often listed only the serial number (six digits) and not the complete application number (eight digits) in the caption. The color of the physical file denoted the series code for that file and the filing date being old or new told the clerk whether the physical file needed to be one color or the other to be the correct file.
The filing date is not, of course, a really good cross-check for a misread digit of the application number. If the misread digit happens to be the last digit for example, the filing date will probably not reveal the imminent filing mistake. What USPTO finally came up with was the “confirmation number”. This four-digit number appeared on the physical file and the practitioner was urged to include it in the caption. The USPTO clerk could then check the confirmation number as part of trying to avoid accidentally sticking a document into the wrong file.
But then EFS-Web happened. And all of these things stopped being important. If you e-file something with EFS-Web, it simply gets into the correct file and that is the end of the matter. With a document filed in EFS-Web, there is simply no opportunity for a clerk pushing a four-wheeled cart to get slowed down because a document failed to pinpoint the destination art unit for the document. Because the document will never sit in a four-wheeled cart. With a document filed in EFS-Web, there is simply no opportunity for a clerk to punch two holes in a document and then stick it into the wrong physical file. Because the document does not go into a physical file — it goes into IFW which is the official file. And so long as the filer entered the correct application number in EFS-Web, the document will get into the correct file. (Note that the EFS-Web system does require the filer to enter the confirmation number and will refuse to proceed if the confirmation number and application number fail to match.)
So nowadays what do you really need for a caption? MPEP section 502 actually says that you only need to list the application number in the caption. Nothing else is required. And for the reasons discussed above, nothing else is actually needed any more.
Meanwhile there are probably traditionalists among the profession who stick to the old ways, always including six or more pieces of information in each caption. In my view this is a mistake. It’s jut an opportunity to make a bad impression with an Examiner by misspelling his or her name, for example. And it uses up valuable time that could be spent some other way.
How about it? Does this blog posting convince you to cut your captions back to simply an application number and nothing else?