Patent Examination Features
President Obama and USPTO Director David
Kappos on USPTO's IT Systems
“Believe it or not, in our patent office -- now,
this is embarrassing -- this is an institution
responsible for protecting and promoting innovation
-- our patent office receives more than 80 percent
of patent applications electronically, then manually
prints them out, scans them, and enters them into an
outdated case management system. This is one of the
reasons why the average processing time for a patent
is roughly three years.”
-President Obama, Forum on Modernizing Government
(Patently-O, 18 Jan 2010)
Our infrastructure needs are also dire – so dire that
President Obama referenced the USPTO’s antiquated IT
systems in his remarks last week on modernizing
government. We must improve those systems to become an
efficient 21st century agency – and to be able to
effectively serve the innovation community and the
-David Kappos, letter to PTO employees
(Patently-O, 21 Jan 2010)
In David Kappos'
Congress on 25 Mar 2010, he stated:
"It is critical to innovators, job growth and the
American people that high quality patents and trademarks
are issued in a timely manner. Intelligent investment in
our IT infrastructure holds the potential to
dramatically accelerate the USPTO towards those goals.
In FY 2011, the USPTO will fund the continued operations
and maintenance of our existing IT systems. In parallel,
we will begin the work of setting up new systems that
will enable end to end electronic processing of patent
and trademark applications. By removing the constraint
that the new system must interface significantly with
our outdated, current systems, we allow the work to be
driven by two guiding principles:
(1) stakeholders needs lead the process; and
(2) build small, build fast, and own the design.
We will be moving quickly to get an end to end system
built that demonstrates basic functionality and meets
core needs of our stakeholders, while at the same time
re-engineering our business processes to modernize and
Patent Office Priorities
The USPTO's prime strategy in its mission to foster innovation
and competitiveness is to "optimize patent quality and
Annual Report). To achieve this, the USPTO has hired more
examiners, improved their training, and launched new programs
(First Action, Accelerated Examination, and Peer Review).
However, more examiners doing better work can only do so much to
optimize quality and timeliness. The USPTO's average pendency
in 2008 was 32 months and the
Government Accounting Office (GAO) predicted the USPTO’s
backlog would nearly double in four years. In particular, the
GAO stated that "the [USPTO] has acknowledged that it cannot
hire its way out of the backlog and is now focused on slowing
the growth of the backlog instead of reducing it." A
technical solution is needed that encourages applicants to
provide more complete information to examiners in a "ready to examine"
format. A "ready to examine" format implies that formal
requirements have verifiably been addressed and the document
format is structured to streamline examination. The
requirements for such a solution includes:
- Structured data format definition
- Software to generate and maintain patent documents with
chosen structured data format
- Formal requirements verifiably addressed
- Facilitate comprehension of claim scope
- Integration with eDAN, EAST, and OACS
Structured Data Format Definition
The USPTO currently seeks to semantically identify
claims, claim terms, parts, and even callouts. In future,
the USPTO will likely require support for more complex
entity-value relationships (i.e. the values of parts and
claim terms) such as "soot particles measuring 0.2-0.5um", which
would allow more targeted searching.
The structured data format would preferably be an open XML
standard allowing all software vendors to participate.
Formulation of such a standard would allow stakeholders (PTO's,
patent prosecutors/litigators/researchers, and software
companies) to specify what tags will be useful.
TeamPatent's structured data format currently tracks the
fundamental relationships and has previously demonstrated
entity-value relationship support in the context of an
Electronic Medical Record (EMR) prototype available
here in which the system tracks medications and
their corresponding dosages such as "Adderall XR 20mg po qDay".
TeamPatent™ therefore appears to be extensible to support the
requirements of any standard chosen in the future by the USPTO.
Software to Generate and Maintain
Patent Documents with Structured Data
Software to create and maintain documents with this
structured data format either must operate without applicants'
involvement or it must be easy to use and help applicants'
productivity. If it requires applicants' involvement and
is burdensome, it will likely fail as did PASAT and ABX.
There are three methods to semantically tag and maintain
elements in a document:
- Automatically parse from free-form text & tables
- Allow manual tagging in semantically-aware text browser
- Allow manual tagging in semantically-aware graphical browser
Comprehensive automatic parsing could operate without any
applicant involvement so could achieve 100% participation.
However, the commercial patent search industry has applied
enormous amounts of attention to this problem over decades so if
automatic parsing could achieve the USPTO's goals, it presumably
would have been applied already. The USPTO will
undoubtably apply such technologies as they become available but
human-assisted markup appears to be necessary at the present
A semantically-aware text browser would require users to enter the XML
markup directly. For example, they might tag a claim term
as, "...comprising a <claim term>widget</claim term>..."
This is clearly unacceptable as it is beyond the capabilities
for many patent professionals.
describes graphical XML editors as "easier for some people
to use than text editors, and may not require knowledge of XML
syntax". However, this same entry notes, "These kinds of
editors are generally more useful for XML languages for data
rather than for storing documents. Documents tends to be fairly
freeform in structure, which tends to defy the generally rigid
nature of many graphical editors."
TeamPatent's graphical semantic manipulation tools were designed from
the ground up to allow applicants to intuitively manipulate patent
internal relationships. It currently tracks the
fundamental relationships (e.g. figure refs, part refs, callouts,
claim refs, and claim terms) and can be extended to support more
complex entity-value relationships (e.g. "soot particles measuring
0.2-0.5um"). Markup is rendered so as to be
visible when naturally reading the document, automatic natural
language processing continuously tags every change, and users can
conveniently modify the classification rules without losing their
train of thought.
TeamPatent™ thereby solves the key problem of generating and
maintaining structured patent data with a semi-automatic
graphical semantic manipulation tool that can be used by most practitioners.
Formal Requirements Verifiably Addressed
Examiners as of mid-2009 are allotted just twenty hours per
Balance Disposal including two office actions. Quotas prevent
examiners from checking formal requirements so many errors and
omissions are overlooked. These deficiencies can become
prominent in litigation and/or prevent US grants from being accepted
at foreign PTOs (e.g. inconsistent claim term usage that would be
ignored at the USPTO can lead to a final rejection abroad).
TeamPatent's automatic natural language processing continually
validates every change, allowing users to address errors and
omissions before examiners encounter them. These immediate,
comprehensive validation checks improve quality and timeliness.
Comprehend patent documents
TeamPatent™ quickly and comprehensively assesses the scope of
claims for a given patent document. No need to print to
more easily read. TeamPatent™ allows users to more easily read patent documents
on-line with side-by-side specification/drawings, visualize the claim tree,
navigate from callouts to part references (and
vice versa), and identify claim terms and help you understand how they're
used in the documents.
Integrate with eDAN, EAST, and OACS
To improve examiner productivity, TeamPatent™ may be integrated with the
USPTO's tools. First, TeamPatent™ can be integrated with the eDAN
docketing system, allowing applicants to submit directly into the
docketing system and examiners to launch applications directly into
TeamPatent's analysis tools. Second, TeamPatent™ can be integrated
with the Examiner Automated Search Tool (EAST) allowing examiners to
trigger creation of search queries from claim terms in an application,
automatically suggesting synonymous claim terminology, and preserving a
record of searches performed. Third, TeamPatent™ can be integrated
with the Office Action Correspondence System (OACS), allowing examiners
to click on identified errors and automatically generate office actions
including citations in the required format.
WIPO XML Standard
WIPO's XML DTDs
specify how the file wrapper for a patent document may be encoded for
PCT and national applications. PTOs are capable of transforming
simple transactions such as declarations or fee sheets into XML.
PASAT and ABX were designed to collect application bodies in the
Application Body Standard but proved too difficult for patent
professionals to use.
TeamPatent's semantically-aware manipulation tool
works with the patent professional in an intuitive WYSIWYG user
interface to automatically recognize elements of interest and reconcile
ambiguities. TeamPatent™ already tracks the sections of the
specification, individual figures, individual claims, claim references,
and many other elements specified in the WIPO XML schema.
TeamPatent's internal XML schema (HTML) may therefore be automatically
transformed to the WIPO XML schema via an XSL Transformation (XSLT).
The WIPO XML Standard was last updated in 2001. It may be desirable
to extend the standard to support the enhanced capabilities of
patent-specific tools such as TeamPatent. By tagging claim
terms, part references, and callouts, USPTO examiners may automatically
verify that formal requirements are addressed and comprehend documents
more easily. In addition, these elements may be used to trigger
creation of search queries (automatically suggesting synonymous claim
terminology). Search results may be enhanced by displaying figures
with emphasized callouts indicating features that match the query.
In particular, it may be of interest to add the following elements to the
WIPO XML Application Body DTD (changes in bold):
- <!ELEMENT claim-term (#PCDATA) >
# Validate support for claim terms and automatically drive examiner
- <!ATTLIST claim-term
- id ID #REQUIRED
- group CDATA #REQUIRED >
- <!ELEMENT part-reference (#PCDATA, reference-numeral) >
# Track part references which contain both part name and reference
- <!ELEMENT reference-numeral (#PCDATA) >
- <!ATTLIST reference-numeral
- <!ELEMENT figure (image, callout*) >
# Extend preexisiting figure element by adding "callout" sub-elements
- <!ELEMENT callout (#PCDATA?, reference-numeral, annotation) >
# Add callout elements which are link to reference numerals (and
sometimes part names) in the specification. Note, type and coordinates
data types must be further defined. It's desirable to extend this
element's definition to support non-numeric labels such as block diagram
contents, axes labels, and biotech figures (which are frequent although
technically not in compliance)
- <!ATTLIST callout
- id ID #REQUIRED
- type CDATA #REQUIRED
- coordinates CDATA #REQUIRED >