In late August, the ILPTO published proposed guidelines for the submission and amendment of patent applications having 200 or more pages. The basic requirement would be that the application would have to be submitted on a CD-ROM (or DVD) containing three parts, one each for the specification, the claims and the drawings; each part would have to be submitted as both a read-only MS Word file and a pdf file. Sequence listings would be included as part of the specification. Amendments would likewise have to be submitted on a computer-readable medium as both read-only MS Word and pdf files, but would have to include both clean and marked (“show ‘track changes’ ”) copies of the entire specification or claims. The ILPTO requested comments by September 13 [NOTE: this deadline has now been extended to October 2], which may be sent to [email protected].
I don’t have any objection to allowing applicants to file long applications on digital media, but I don’t think the ILPTO should forbid applicants from filing on paper if they choose to do so. More than that, I don’t think the ILPTO has the authority to forbid applicants from filing such applications. The relevant parts of the statute and regulations (which date back to the late 1960’s) set forth that the application shall be filed on paper of a certain size and quality. So while I think it’s commendable that the ILPTO try to keep pace with technology, and allow applicants to deviate slightly from the stated requirements by filing electronic documents that, if printed, would comply with the relevant statutory provisions, it’s beyond the Commissioner’s authority to tell someone they can’t file a paper application that complies with those provisions.
What puzzles me is why the ILPTO is willing to accept long applications filed on CD, but not shorter ones (see the earlier post about “green” patent applications). If the proposed procedure works for long applications, there’s no reason it can’t work for shorter applications as well. So why not let us save some trees and file all of our patent applications in digital media?
For that matter, when is the ILPTO going to have full electronic filing of patent applications and responses, ala the USPTO’s EFS? It’s kind of silly to insist that long patent applications be submitted electronically, but only if they’re filed on a CD, which must be physically delivered to the ILPTO – usually by taxicab if you work in one of the large offices along the coast, thus unnecessarily wasting a lot of gasoline, pumping CO2 and other gases into the atmosphere, and in the process putting money into the pockets of various potentates who aren’t renown for their friendly dispositions toward Israel. The filing of electronic versions of applications and amendments would also help facilitate the implementation of fully searchable online file histories.
I do have one nitpicky objection to the proposed guidelines insofar as they concern the amendment of applications. Marking a document with “track changes” will affect the document’s pagination. Hitherto, the ILPTO has insisted that replacement pages (or new pages added after the application has been filed) bear the version number of the page at the top of the page. For example, upon amending a page of application number XXXXXX for the first time, the amended page needs to be marked “XXXXXX/2”, to indicate this is the second version. If a page is amended a second time, it is marked “XXXXXX/3”; if a new page has to be added, it should be marked “XXXXXX/1”. If applicants who have filed on a digital medium are going to have to submit a complete copy of the amended specification or claims, this practice should be abandoned, as it will create unnecessary headaches and costs for applicants.
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