Patently-O Bits and Bytes No. 77

• Acting Patent Commissioner Focarino recently reported on the rising use of the Patent Office Electronic Filing System (EFS) for filing patent applications. Kudos to the PTO on a system that works well! (The graph below is built from Commissioner Focarino's data).

  

• I wonder how electronic filing impacts prosecution speed and quality?
• Great article on Biotech 101 (i.e., subject matter patentability of biotech) by Philip McGarrigle and Vern Norviel. It is pre-bilski, but considers many of the same issues. http://www.chtlj.org/pdf/24-2_McGarrigle.pdf.
• BountyQuest II: http://www.articleonepartners.com.
• Patent Law Jobs: Los Angeles / Washington D.C.; ITC Litigator; Part-time; IP Fellowship Washington D.C.; Chicago; Wilmington, N.C.; Orange County & Los Angeles; Alexandria, Va.; Philadelphia; Menlo Park.

Comments

[JohnDarling]

"I wonder how electronic filing impacts prosecution speed and quality?"

The original EFS system was an abysmal failure. The PTO spent millions of dollars and years of development on it and it was completely unusable.

They junked it and then went out and licensed the EPO's system.

Should have done that in the first place and saved themselves a whole lot of money.

The current EFS works fine for filing an application.

Unfortunately, it is as useless as the old paper system when it comes to everything after the initial filing.

You file an after final response by EFS, it appears immediately in the IFW of PAIR, but it takes the PTO six weeks to put the response on the examiner's docket.

Why is that? Because they still have the same old human apparatus shuffling "paper" around over there. Somebody forgets to hit "ENTER" and the response never makes it to the examiner.

They need to get rid of that whole operation. Every response filed by EFS should automatically be entered on the examiner's docket. The time limits for the examiner to act on the response that are set forth in the examiner PAP and the MPEP should be rigidly enforced.

Filing a petition by EFS is like throwing money down a bottomless pit. It will sit there in PAIR for months, if not years, unless you start calling and making some noise.

In sum, the PTO has spent $1B+ on a system that is no more efficient, and maybe even less so, than the old "pushing around a mail cart" system they had in the 1990's.

[serious question]

"Filing a petition by EFS is like throwing money down a bottomless pit. It will sit there in PAIR for months, if not years, unless you start calling and making some noise."

John, are you suggesting that petitions should be filed by mail instead, or not at all?

[JohnDarling]

I think it's more advantageous to file petitions by mail. That's just my opinion.

[6000]

It's even more advantageous to not have to file a petition.

Anyway, from A1P: "Earn up to $50,000 for sending in prior art which can invalidate patents. "

Look at that, all I need to do is find art on like 2 cases per year and I make my entire salary here. It's illegal for us examiners to get that bounty though isn't it? Shouldn't be.

[6000]

RAMBUS up for only 50k.

http://www.articleonepartners.com/study.php?id=139

If anyone does find prior art on those 10, they should milk it for several million.

[Some Guy]

6000 at 3:10 PM, You need an attitude adjustment.

[curious]

"I think it's more advantageous to file petitions by mail."

Does anyone else agree or disagree (because I am going to be filing one tomorrow)?

[Brian L.]

I don't know about petitions by mail, but my personal opinion is that drawings sent in by mail almost always look a lot better than ones submitted by EFS. My guess is that there are fewer file type conversions done when the people at the USPTO scan the documents into the database.

[Zak]

Corious,

I have filed petition using EFS. To keep a long story short, the patition sat in PAIR limbo until I got a Special Examiner on the phone from the relevant art unit. The problem was that the petition appeared in the "Image File Wrapper" but did not appear in the "Transaction history".

[JohnDarling]

curious,

what Zak describes is usually what happens. If you file a petition by EFS, be prepared to follow up with at least one phone call to move it along.

[curious]

thanks, ZAK and JohnDarling

[Gideon Pope]

EFS is an awesome system.
The fact that I don't have to use Express Mail anymore is brilliant.
Yes, there are some features that are annoying - (why won't it remember a credit card? why are PDF titles so limited?), it's surprisingly stable and, once you figure out some of the bugs, very easy to use.

So, to the PTO, I say, the EFS is the best thing to come out of the PTO since faster than light EM radiation.

[Hank Rearden]

"EFS is an awesome system."

Yes it is. Unfortunatley, the PTO's insistence on routing filings through incompetent docket clerks before putting the responses on the examiner's docket is so 1970's.