Patent Office Technology: Improving Efficiency with ePetitions

On March 28, 2011 the United States Patent and Trademark Office (USPTO) began offering petitioners the option to automate the filing and decision process for eight patent related petition types through the Office’s new ePetitions system. See USPTO Automates Filing of Patent Petitions. Since then the ePetitions system has accounted for almost 25% of petition submissions for the eight patent related petition types capable of being filed through the system.

“The ePetitions program is an instrumental part of the USPTO’s continuing efforts to expand its eCommerce capabilities and augment its ability to provide new tools and services to patent practitioners,” said Commissioner for Patents Robert Stoll. “Online filing of these specific ePetitions offers an important time saving advantage to petitioners as these submitted petitions are auto-processed and decided immediately upon receipt by the USPTO.”

Indeed, the Patent side of the USPTO continues to march ever closer to a true paperless system.  For some time now the Trademark side of the building at the USPTO has been paperless, but converting to a completely paperless Patent Office has been a long time coming.  A paperless patent system became a priority in the wake of the October 2001 anthrax attacks where anthrax was sent via U.S. postal mail to several Members of Congress.  With real world mail compromised and the Patent Office relying upon real world mail for virtually everything at the time, efforts began to make the USPTO paperless.

Today, upwards of 90% of new patent applications are filed using the EFS web system, and now at least some patent related petitions are available for e-filing.  The eight patent related petition that can currently be filed through the ePetitions system are:

1. Request for Withdrawal as Attorney or Agent of Record (37 CFR 1.36)
2. Petition to Withdraw from Issue after Payment of the Issue Fee (37 CFR 1.313(c)(1) or (2))
3. Petition to Withdraw from Issue after Payment of the Issue Fee (37 CFR 1.313(c)(3))
4. Petition to Withdraw from Issue after Payment of the Issue Fee (37 CFR 1.313(c)(1) or (2) with Assigned Patent Number)
5. Petition to Withdraw from Issue after Payment of the Issue Fee (37 CFR 1.313(c)(3) with Assigned Patent Number)
6. Petition to Accept Late Payment of Issue Fee – Unintentional Late Payment (37 CFR 1.137(b))
7. Petition for Revival of an Application based on Failure to Notify the Office of a Foreign or International Filing (37 CFR 1.137(f))
8. Petition for Revival of an Application for Continuity Purposes Only (37 CFR 1.137(b))

Attorneys and agents using the ePetitions system filed via a web-based interface, which ensures that the petitions are correctly submitted and meet all requirements for granting. These ePetitions are automatically processed and immediately granted. In contrast, petitions filed without using the web-based ePetitions system take an average of 30 days to be decided and 38% are dismissed as a result of the petition containing insufficient or incorrect information.

The ease and efficiency of ePetitions has been well received by petitioners, especially those filing critical petitions where an automatic petition grant reduces delays in restoration of patent rights, expedites withdrawal from representation, redirects Office correspondence to the new correspondence address, and initiates the revival of an abandoned application to save patent term adjustment time.

The ePetitions auto-grant capability represents a significant step forward by the USPTO. By eliminating the time required to receive, upload to PAIR (Patent Application Information Retrieval), docket, and decide petitions, as well as any rework associated repeating these steps for dismissals, the ePetition process provides the USPTO with an opportunity to improve its operational efficiency by reallocating resources previously needed to perform this work.

Petitioners who submit ePetitions must be registered EFS-Web users. Through EFS-Web, petitions data is submitted online through Web-based screens that prompt entry of specific information and documents required for each ePetition type. If submission requirements are not met at any time throughout the submission process, error messages help petitioners identify missing, incomplete, or invalid data requirements necessary for compliance with petition rules. Once all items are correctly filled out, EFS Web uses an electronic form which automatically generates and uploads all the necessary forms to the USPTO, at which point the ePetition is automatically granted. Upon auto-grant petitioners receive an acknowledgement receipt containing the petition grant letter as confirmation that the ePetition has been approved.

It has been a long time in coming, but the inevitable march toward a truly paperless patent system continues.