01-21541. Notice of Request for Comments on Development of a Plan To Remove the Patent and Trademark Classified Paper Files From the Public Search Facilities

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Notice of request for public comments.

SUMMARY:

The United States Patent and Trademark Office (USPTO) requests public comment on issues associated with the development of a plan to remove the patent and trademark classified paper files from the USPTO's public search libraries and replace them with electronic records. These public search facilities are currently located in Crystal City, Arlington, Virginia. Interested members of the public are invited to present comments on the appropriate scope for and contents of this plan, including the topics outlined in the supplementary information section of this notice.

DATES:

Comments will be accepted by the USPTO until September 26, 2001.

ADDRESSES:

Those interested in presenting written comments on the topics presented in the supplementary information, or any related topics, may mail their comments to the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Washington, D.C. 20231, marked to the attention of Ronald Hack, Acting Chief Information Officer, or send them by facsimile transmission to [phone].

Parties are encouraged to provide their comments in machine-readable format and send them over the Internet as electronic mail messages to [e-mail]. Machine-readable submissions should be provided as unformatted text (e.g., ASCII or plain text), or as formatted text in one of the following file formats: Microsoft Word (Macintosh, DOS or Windows versions) or WordPerfect (Macintosh, DOS or Windows versions). Machine-readable submissions may be provided on a 31/2-inch floppy disk formatted for use in either a Macintosh or MSDOS-based computer, mailed to the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Washington, DC 20231, marked to the attention of Ronald Hack, Acting Chief Information Officer.

All comments should include the following information:

• Name and affiliation of the individual responding;
• An indication of whether comments offered represent views of the respondent's organization or are the respondent's personal views; and
• If applicable, information on the respondent's organization, including the type of organization (e.g., business, trade group, university, non-profit organization).

FOR FURTHER INFORMATION CONTACT:

• Ronald Hack by telephone at [phone], by facsimile at [phone], by electronic mail at [e-mail];
• Martha Sneed by telephone at [phone], by facsimile at [phone], by electronic mail at [e-mail]; or
• by mail addressed to the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Washington, DC 20231, marked to the attention of Ronald Hack, Acting Chief Information Officer.

SUPPLEMENTARY INFORMATION:

I. Background

The American Inventors Protection Act of 1999, Title IV, Section 4804(d)(1) (the “Act”), amended Section 11(a) of title 35, United States Code, to provide that the Under Secretary of Commerce for Intellectual Property and Director of the USPTO may, for public use, maintain “paper, microform, or electronic” (emphasis supplied) collections of patents and trademark registrations. The Act further provides, in Section 4804(d)(2), that the Director of the USPTO shall not:

cease to maintain, for use by the public, paper or microform collections of United States patents, foreign patent documents, and United States trademark registrations, except pursuant to notice and opportunity for public comment and except that the Director shall first submit a report to the Committees on the Judiciary of the Senate and the House of Representatives detailing such plan, including a description of the mechanisms in place to ensure the integrity of such collections and the data contained therein, as well as to ensure prompt public access to the most current available information, and certifying that the implementation of such plan will not negatively impact the public.

For a number of years, the USPTO has been engaged in a program to automate access to patents and to trademark registrations. The agency currently provides electronic access to patent and trademark information in two ways. First, the agency provides search terminals for public use in the three Patent and Trademark Public Search Facilities that are currently housed in the South Tower, Crystal Plaza 3-4, and Crystal Mall 1 buildings at the agency's offices in Crystal City, Arlington, Virginia. Second, the USPTO provides access to patent and trademark information on its World Wide Web (Web) site.

Approximately 76 public search terminals provide access to patent and trademark information by means of computer software programs that facilitate the search process. Some of the electronic data available through these terminals are:

• Public EAST & WEST Systems: the full text of over 2.5 million U.S. patents issued since January 1971; the full images of over 6.5 million U.S. patents issued since 1790 and over 14.5 million foreign patents; English translations of 5.1 million Japanese patent abstracts; English translations of 3.1 million European patent abstracts; and full text and images of all U.S. patent applications published since March 15, 2001; and
• X-Search System: text and image of over 2.7 million trademark applications and registrations (including active, canceled, expired, and abandoned).

During fiscal year 2000, the average number of unique public users who logged on to the WEST search system each month was 472 and the average number of search sessions initiated per month by these users was 7,173.

In addition to the terminals accessing the databases listed above, the public is provided additional workstations in the public search facilities for accessing the electronic search tools listed below:

• Patents ASSIST: Full Text of Patent Search Tools.
• Patents BIB: Selected Bibliographic Information from U.S. Patents Issued 1969 to Present.
• Patents CLASS: Current Classifications of U.S. Patents Issued 1790 to Present.
• USAPat: Facsimile Images of United States Patents.
• Trademarks REGISTERED: Bibliographic Information from Registered U.S. Trademarks.
• USAMark: Facsimile Images of United States Trademark Registrations.

On the USPTO Web site, the public can access considerable patent and trademark information. This information includes:

• Trademark Electronic Search System (TESS): searchable database including the full text and clipped images of all registered trademarks.
• U.S. patents issued from 1790 through 1975—searchable by patent number and current U.S. patent classification; and
• U.S. patents issued from 1976 to the most recent issue week—searchable by full-text fields that now include current U.S. classification data.
• Full text and images of all U.S. patent applications published since March 15, 2001.

In November 2000, the public accessed an average of 970,000 pages of patent and trademark information (i.e., issued patents and registered trademarks) each day through the USPTO's Web site. As a result of significant investment in these public search tools, and the significant use of them, the USPTO intends to submit a plan to the 107th Congress to eliminate the patent and trademark classified paper collections from the Trademark Public Search Facility located in the South Tower Building, 2900 Crystal Drive, and the Patent Public Search Facility located in the Crystal Plaza 3-4 Building, 2021 South Clark Place. Elimination of these paper files is consistent with the USPTO's goals, strategic information technology plans, and the agency's operational practices.

The USPTO has invested and continues to invest a substantial portion of its fee income in the maintenance of patent and trademark electronic databases and the development and enhancement of software search vehicles. As a result, trademark examining attorneys rely solely on electronic records for examining and approving marks for Federal registration. In accordance with patent examiners' increasing reliance on automated searching, management and the Patent Office Professional Association, which represents patent examiners, have agreed to begin phased elimination of paper copies of patents from examiner search files later this fiscal year. It is anticipated that by the time the agency completes its relocation and consolidation at the Carlyle campus in Alexandria, Virginia, in 2004, a substantial portion of the patent examiner paper search files will have been eliminated.

The USPTO's current planning approach to the dissemination of patent and trademark information is to continue enhancing its electronic databases that capture the content of patents and trademarks, and to expand public access beyond its Crystal City location. The agency intends to formalize a plan to eliminate the paper collections of patents and trademark registrations and is providing the public with an opportunity to comment on the appropriate scope and contents of the plan that the USPTO is required to submit to the Committees on the Judiciary of the Senate and House of Representatives.

II. Issues for Public Comment

Any interested member of the public is invited to provide comments on any topic related to development of a plan to eliminate the patent and trademark paper classified collections and replace them with electronic records. Issues that the USPTO has identified for consideration thus far, upon which the agency is particularly interested in obtaining public comment, include the following:

A. Measures required to ensure the integrity of electronic records.

B. Comparable functionality for searching and retrieving information from electronic records.

C. Re-classifications of the patent electronic file.

D. Paper Disposition.

An important corollary issue for public comment relates to the final disposition of the paper collections. The USPTO intends to consider expressions of interest from the public and private sector regarding third-party interest in maintaining the paper collections. The USPTO particularly seeks comment on the following paper disposition options. Any transfer of Federal records would be made only with the written authorization of the National Archives and Records Administration (NARA).

D.1 Offer the collections to the NARA or some other government agency (Federal or state).

D.2 Transfer ownership of the collections to an educational or not-for-profit entity that agrees to keep them current and to make them available to the public (no exchange of money).

D.3 Offer the collections for sale.

D.4 If necessary for disposition, divide the collections and permit the transfer/sale of different segments to different organizations/businesses.

Dated: May 24, 2001.

Nicholas P. Godici,

Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office.