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Welcome to EFS-Web Indexing Training

Welcome to EFS-Web Indexing Training

United States Patent and Trademark Office

Today’s Training Agenda

•Important Metrics

•EFS-Web Overview

•Indexing•What is Indexing?

•Why Index?

•Common Submissions•Provisional, Utility, Design and Reissue Application

•371 National Stage and PCT Application

•Request for Reexamination

•Pre-Grant Publication

•Amendment

•Information Disclosure Statement

•Accelerated Examination

•Document Indexing Tips

•Common Indexing Questions

•Priority Document Exchange

•Indexing Resources


Important Metrics

• About 10% of all submissions received contain errors

• Approximately 40% of those errors involve using the wrong document description

• 25% of the errors involve separating distinct documents

• Improper use of a Transmittal Letter and Miscellaneous Incoming Letter document descriptions are the most common errors


EFS-Web OverviewEFS-Web Overview


Overview Information What Can Be Filed?

• New Applications– Provisional, Utility, Utility Reissue, 371 National Stage, Design

Reissue and Design with Color Drawings. – International applications for filing in the U.S. Receiving Office

• Proceedings– Reexamination

• Existing Applications– Follow-on correspondence– Accelerated Examination– Pre-Grant publications under 37 CFR 1.211 – 1.221– Petition to Accept Unintentionally Delayed Payment of

Maintenance Fees in an Expired Patent (37 CFR 1.378(c))– Request for Continued Examination (RCE)


OverviewWhat Can Be Filed?

• Document Description List– An e-Filer can select from document descriptions that are

applicable to their particular submission

• Numerous Fees– Most fees contained in the complete Patent Fee Schedule may

be paid via EFS-Web


What Cannot be Filed Using EFS-Web 1.1.4?

• Credit Card Authorization Form - PTO-2038• Assignments• Maintenance Fees• New Plant Applications or Color Plant Drawings • Documents related to Registration Practice &

Disciplinary Proceedings• Certified Copies (Ribbon Copies)• Secrecy Order Applications and/or Documents • Contested Cases at the Board of Appeals and

Interferences• Third party papers under 37 CFR 1.99• Protests under 37 CFR 1.291• Public use hearing papers under 37 CFR 1.292


EFS-Web IndexingEFS-Web Indexing


Indexing of EFS-Web Submission

Indexing• Indexing is applying a document description to a PDF or TXT File• Page ranges must be specified if multi-document selection is made in a

PDF File• All files or the documents in a multi-document PDF File must be indexed• Nearly 200 document indexing descriptions are offered, however, the

particular filing submission may reduce the number of available descriptions.

• Categories are used to assist users in finding the correct indexing description

• By choosing a category, the number of available document descriptions may be reduced even more.

• All indexing is checked by USPTO personnel• Indexing has no legal relationship to the patent application, indexing is an

administrative act for processing the submission


Indexing of EFS-Web Submission

• Why index?

• Allows for quicker and more accurate downstream processing of your submission

– Documents are instantly routed to the Image File Wrapper

– Incorrectly indexed documents may result in a delay in the documents being properly routed to appropriate USPTO personnel

– Generates smoother work flow and assigns the submission to USPTO personnel to be acted upon


Common Filing SubmissionsCommon Filing Submissions


New Utility Application Filing

• Specification, Claims, and any necessary Drawings are required to be accorded a filing date

– All of these descriptions can be found under the Category “Application Part”– Please note that an abstract is required for the application to be complete, but is

not required for an application to be accorded a filing date

• Oath or Declaration and Abstract are required for Application to be considered complete

– These descriptions are located under Category “Application Part”– A combined Oath or Declaration and Power of Attorney should be indexed as

“Oath or Declaration Filed”– Surcharge for Oath/Declaration not filed with the original submission is $130

• Application Data Sheet (ADS)– Recommended – description is also located under the Category “Application Part”– e-filing ADS located at http://www.uspto.gov/ebc/portal/forms.htm

• Requires Adobe Reader 7.0.8 or 7.0.9


371 National Stage Application Filing

• When filing a 371 National Stage Application, always break out application parts into Specification, Claims, Abstract, etc.

• When submitting PCT documents with 371 National Stage Application:– Use Category “Documents submitted with 371 Applications”

• International Search Reports being submitted should be indexed as:– Use Category “Documents submitted with 371 Applications”

• If the Search Report is used as prior art, index it as “NPL Document”

• Translations should be broken into application parts (e.g., Specification, Claims, Abstract, etc.)


PCT Application Filing

• Index the RO/101 Request form as “RO/101 – Request form for new IA – Conventional” or “RO/101 Request form for new IA – PCT Safe format” when using PCT-SAFE in PCT-EASY mode

• Index Application Parts as “Specification”, “Claims”, “Drawings”, etc.– Located under Category “PCT – Application Part”

• If attaching a Transmittal Letter, use “PCT – Transmittal Letter” under Category “PCT – General Transmittal”

• For miscellaneous communication, use “Misc. Incoming Letter from Applicant – IA” under Category “PCT – General Transmittal”

– Use “CHII - Misc. communication from Applicant -IA” for Chapter II communication

• If attaching PCT-SAFE Zip file, also need to attach the specification, claims, abstract, drawings, etc., as PDF files.

– Please do not add these documents to the PCT-SAFE Zip file, as EFS-Web will not extract them for processing.


• Pre-Grant Publication Requests except for requests for corrected publication can not be submitted as a follow-on paper– Choose the Pre-Grant Publication Request filing type from the initial

screen in EFS-Web to make pre-grant publication submission

• Attach the Application Parts: Specification, Claims, Abstract, Drawings, and ADS for submissions pursuant to 37 CFR 1.215 and 37 CFR 1.221– Must use the e-fillable ADS in its original format (cannot be scanned in)

• Any related Amendments must be filed as a follow-on in a separate submission before the Pre-Grant Publication Request

Pre-Grant Publication Filing


• The first document filed should be indexed so as to indicate the type of Amendment – e.g.“After Non-Final Rejection”, “After Final”,etc.– Would also include Transmittal, Explanation of

Amendment– Located under Category “Amendment”

• Followed by Amended document(s) – e.g. “Specification”, “Claims”, “Drawings”, etc.– Found under Category “Amendment” or

“Application Part”– Includes annotated version of amended document

• “Applicant Arguments / Remarks Made in an Amendment”– Located under Category “Amendment”

• When to use “Amendment Copy Claims/Response to Suggested Claims”– This document description should only be used for

the Transmittal document, not for the Claims themselves

Amendment Filing

Remarks

Claims

Amendment


Information Disclosure Statement (IDS) Filing

• Transmittal letters submitted with IDS form should be indexed as “Information Disclosure Statement letter.”

• Index the form as “Information Disclosure Statement (IDS) Filed” under the “IDS/References” Category– E-IDS located at http://www.uspto.gov/ebc/portal/forms.htm

• Requires Adobe Reader 7.0.8 or 7.0.9

• Use “Foreign Reference” when submitting foreign applications/patents published by a non-US patent authority– In addition to listing them in the IDS


Information Disclosure Statement (IDS) Filing

• Use “NPL Documents” for indicating non-patent literature such as articles, magazines, etc.– In addition to listing them in the IDS

– Related US applications (i.e., pending, non-patented, non-published) should be attached separately or bundled using the “multi-doc” option

• Do not attach published US application/patent references


• How do I file a Petition to Make Special Under the Accelerated Examination Program?– Request must be made via EFS-Web, with respect to an application

filed under 35 USC 111(a) and complete application complying with 37 CFR 1.51.

• To submit an Accelerated examination application as a follow-on, applicant must file:– Transmittal Amendment/Reply Accelerated Exam, indexed as

“Accelerated Exam-Transmittal amendment/reply”, under Category “General Transmittal”

Accelerated Examination Filing


• To qualify for the accelerated examination program, applicant must file:1. Accelerated Examination Form SB/28, indexed as “Petition for

12-month Accelerated Exam”, under Category “Petition”

2. Examination Support Documents, indexed as “Examination support document”, under Category “Petition”

3. Statement of Pre-Examination Search, indexed as “Statement of pre-examination search”, under Category “Petition”

4. Standard documents for patent or design application required • Specification, claims, abstract, oath/declaration, transmittal & IDS

Accelerated Examination Filing


Document Indexing TipsDocument Indexing Tips


Transmittal

• “Transmittal of New Application” under Category “General Transmittal”– To be used with new U.S. Application submissions only

– For use with the Provisional Cover Sheet (required)

– Follow-on documents should be submitted as the type of document being submitted (i.e. Amendment, IDS, etc.)

• “PCT-Transmittal Letter” – Use this instead of “Transmittal Letter” for PCT Applications

• Found under Category “PCT – General Transmittal”


• “Computer Listing”, “Sequence Listing (Text File)”, and “Table in text format” – Text files are for these document descriptions only

– Use “Sequence Listing” for image copy of sequence listing

– Table TXT files should be a minimum of 50 pages • If your table TXT file is less than 50 pages, submit the image copy as part of

the Specification

– TXT files take approximately two days to show up in Private PAIR under the “Supplemental Content” tab

Text Files


Sequence Listings

• Sequence Listings – New Application– Only the text file (CRF/TXT) needs to be

submitted• Use “Sequence Listing (Text File)” under

Category “Application Part”

– If submitting the image copy in PDF format, make sure to also include the statement indicating that the image copy and the CRF/TXT are the same

• Index the image copy as “Sequence Listing”

• Index the statement as “CRF Statement Paper and CRF are the same”

• Appendix should be in PDF format, not TXT


Continuation Applications

• Continuation, Continuation-in-part (CIP), and Divisional Application – Each one must be filed as a New Application– Same indexing requirements as a new application – “Specification”,

“Claims”, “Drawings”, etc.• Differences in document content

– Indicate domestic priority of parent application on ADS or the first line of the specification

– Indicate continuity type on first line of the specification

• CPA – Continued Prosecution Application– Not to be confused with CIP– Inapplicable to utility and plant applications filed on or after May 29, 2000

• CPA practice is still applicable for Design Applications

– Comparison chart of CPA vs. RCE practice: http://www.uspto.gov/web/offices/dcom/olia/aipa/comparison_of_cpa_practice.htm


Common Indexing QuestionsCommon Indexing Questions


How do I Index?

• How do I index:

– A Request to Reset the Time Period for Reply due to Error(s) in the Office Action pursuant to MPEP 710.06:

• Index as “Petition for review by Technology Center SPRE”

– A Response to a Request for Rehearing by the Examiner:• Index as “Reply Brief filed”

– A communication meant to prove a document was mailed to the USPTO, e.g., if relying on a post card receipt as prima facie evidence that the document was filed as of the date on the post card receipt?

• Index as “Petition for review by Office of Petitions” (In this case, it is a petition under 37 CFR 1.181.)


How do I Index?

• How do I index:

– A Reconsideration of Patent Term Adjustment:• Index as “Petition for Review by Office of Petitions”

– A Change of Address for an International Application filed in the US Receiving Office (PCT):

• Index as “Request for Recording of a Change/PCT Rule 92bis”, under Category “PCT-Change Request”


• How do I index:– Power of Attorney with a new (or existing) Application filing:

• Index as “Power of Attorney” under the “Change Requests” Category• If Power of Attorney is combined with Oath, index as “Oath or Declaration

Filed” Category “Application Part”

– Pre-Brief Conference Request to be sent to the Examiner or the BPAI:• Index as “Pre-Brief Conference Request” under the “BPAI” Category

– A Request for Entity Status Change:• Index as “Miscellaneous Incoming Letter”

– A Response to an Examiner's Rejection without an Amendment:• Index as “Applicant Arguments or Remarks Made in an Amendment”

How do I index?


Terminal Disclaimer

• Do I need to submit the Terminal Disclaimer form?– The Terminal Disclaimer form or letter must be submitted along with the

Terminal Disclaimer Fee

• Where is the Terminal Disclaimer Fee located?– On the “Calculate Fees” page, under the “Post Allowance and Post

Issuance Fees” section

– Labeled as “Statutory disclaimer” fee


• What is the difference between Appeal Brief and Notice of Appeal?– Notice of Appeal is addressed in 37 CFR 41.31.

• It is Indexed as “Notice of Appeal Filed”, under Category “BPAI”

– Appeal Briefs are addressed in 37 CFR 41.37.• It is Indexed as “Appeal Brief Filed”, under Category “BPAI”

– Generally, an appellant may file a notice of appeal once his/her claims have been twice rejected. The Notice of Appeal must be filed within the time period provided under 37 CFR 1.134.

– Once the Notice of Appeal is filed, the appellant has two months to file the actual Appeal Brief, which includes the appellant's arguments, etc.

• Requesting a Pre-Appeal Brief Conference– Must be filed at the time of filing the Notice of Appeal– Index as “Pre-Brief Conference Request”, under the Category of “BPAI”

Appeal


Categories

• Do Categories affect indexing, backend processing, or handling of the documents?

– No, they are provided simply for filtering the document description choices


General Tips

• Extensions of Time

– Must attach the appropriate form/letter in addition to paying the fees

– Index as “Extension of Time” under Category “General Transmittal”

• Issue Fee Payments– Must attach the appropriate form/letter in addition to paying the fees

– Index as “Issue Fee Payment Recorded (PTO-85B)” under Category “General Transmittal”

• Response to the Notice to File Missing Parts– A copy of the Notice is not required if filing through EFS-Web

– Index as “Applicant Response to Pre-Exam Formalities Notice”


Priority Document Exchange(PDX)

Priority Document Exchange(PDX)


• What is ‘Priority Document Exchange’?– Provides for the direct office-to-office electronic transmission of priority

documents between participating Intellectual Property Offices

• Priority Document Exchange with EPO (European Patent Office) began January 16, 2007

• Priority Document Exchange with JPO (Japan Patent Office) began July 28, 2007

• Free – No fees required

Priority Document Exchange


• The USPTO will automatically request retrieval of Priority Documents if a newly filed U.S. application claims priority to one or more EPO or JPO applications in the Oath, Declaration, or Application Data Sheet

– Express written instruction is not required in this situation

• Written instruction (e.g., Form PTO/SB 38) is required to request retrieval of:

– EPO Priority Document(s) for a U.S. application filed prior to June 4, 2007.– Non-EPO (e.g., French) Priority Document that is of record in an EPO

application– JPO Priority Document(s) for a U.S. application filed prior to July 28, 2007.

• NOTE: PDX cannot be used to retrieve non-JPO (e.g., Korean) Priority Documents that are of record in a JPO application

Retrieving EPO/JPO Priority Documents by the USPTO


Retrieving EPO/JPO Priority Documents by the USPTO (con’t)

• Form and instructions are available at http://www.uspto.gov/web/forms/sb0038.pdf– ‘Request for USPTO to retrieve priority documents’ under category

“Priority Documents” in EFS-Web

• Monitor Private PAIR to determine whether priority documents have been successfully retrieved

– Status of retrieval will be indicated in Examiner’s Office action

• PTOL-326 (Office Action Summary), item 12

• PTOL-37 (Notice of Allowability), item 3

• NOTE: Requests filed after mailing of Notice of Allowability will be processed but timely retrieval (37 CFR 1.55(a)(2)) cannot be guaranteed.


• Priority Documents will be provided to the EPO or JPO only if one of the following criteria is met.– The U.S. application is published or patented;– The applicant submitted written authorization (Form PTO/SB/39) to

transmit the Priority Document to the EPO/JPO, and the U.S. application has cleared national security review

• Form and instructions are available at http://www.uspto.gov/web/forms/sb0039.pdf– Index as “Authorization to Access application by trilateral office” in EFS-

Web

• Check the EPO (http://www.epo.org) and JPO (http://www.jpo.go.jp) web sites for information on their practices

Releasing USPTO Priority Documents to the EPO/JPO


• Request can be made at time of filing or as a follow-on document

• Request can be submitted – electronically– faxed to the Central Fax number (571-273-8300)– mailed to:

Commissioner of Patents

P.O. Box 1450

Alexandria VA 22313-1450

How to submit PDX Request


Indexing Help

• Complete, sort-able List of Document Descriptions:http://www.uspto.gov/ebc/portal/infodocuments.htm

• Help page “How to Index my Documents”:http://www.uspto.gov/ebc/portal/efs/rules_doc_codes.htm


Indexing Tutorials

• Available at http://www.uspto.gov/ebc/portal/tutorials.htm– Covers this presentation’s indexing scenarios in detail

• Accelerated Examination Tutorial – available at http://www.uspto.gov/web/patents/accelerated/

• PCT Tutorial http://www.uspto.gov/ebc/portal/efs/dct_pct_file_new_tutorial.pdf

• Request to Update a PCT Application With a Customer Number Tutorial http://www.uspto.gov/ebc/documents/assoc_pct_with_cust_number.pdf


If you have questions or need technical assistance please contact our:

Electronic Business Center (EBC) Monday – Friday (6am – Midnight EST)

Phone: 1-866-217-9197 / 571-272-4100

* Select option 2

Fax: 571-273-0177

Email: [email protected]

Electronic Business Center (EBC)


Additional Resources

• Inventor’s Assistance Center (IAC)– Questions on patent rules, practices, and procedures– Call 800-PTO-9199 (800-786-9199) or 571-272-1000– Available Monday – Friday 8:30 AM – 5:30 PM (EST)– http://www.uspto.gov/web/offices/pac/dapp/pacmain.html

• PCT Helpdesk– Questions related to PCT filings – rules, practices, procedures– Call 571-272-4300– Available Monday – Friday 9:00 AM – 4:30 PM (EST)


Additional Resources

• Office of Initial Patent Examination (OIPE)– 571-272-4000

• Assignment Division – 571-272-3350

• Office of Petitions– 571-272-3282

• Publishing Division – 571-272-4200 or 888-786-0101


USPTO Support

Patent Process InquiriesInventors Assistance Center 1800-786-9199

AssignmentsElectronic Patent Assignment System [email protected] division 571-272-3350

FinanceOffice of Finance 571-212-6400Maintenance Fees / Deposit Accounts 571-272-6500

International FilingPCT Helpdesk 571-272-4300

LegalPatent Legal Administration 571-272-7700

CopiesOffice of Public Records 1-888-786-0101

PetitionsOffice of Petitions 571-272-3282

Electronic Filing QuestionsBusiness Center 1-866-217-9197

Appeals/InterferencesBoard of Patent Appeals and Interferences 571-272-9797

PublicationsOffice of Publications 1888-786-0101Pre-grant Publications703-605-4283

Registration PracticesOffice of Enrollment and Discipline 571-272-4097

Application Status (pre-examination)Office of Initial Patent Examination 571-272-4000

ReexaminationsCentral Reexamination Unit 571-272-7705 General Questions 571-272-7705 Reexamination Pre-Processing 571-272-7705

ReissuesSee Appropriate Patent Technology Center


Thank you for attendingThank you for attending

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