USPTOUSPTO 1 Image File Wrapper (IFW) Processing Paula Hutzell Practice Specialist, TC 1600 (571)

USPTOUSPTO 2 IFW is… An Electronic Version of the Paper Patent Application File Wrapper Created by Scanning all Papers in the File Wrapper Using European Patent Office’s (EPO) ePhoenix Software or by Electronic Filing System Accessible via: eDAN (electronic Desktop Application Navigator) EPO’s MADRAS Interface Private PAIR Public PAIR What is an Image File Wrapper (IFW)?

USPTOUSPTO 3 Accessing the Image File Wrapper Patent eDAN ( electronic Desktop Application Navigator) MADRAS USPTO created interface, linked to PALM & RAM Tailored for Patent Examiners’ use EPO developed interface Public Pair Access to Patents and Published Applications Private PAIR Access to unpublished application by owner IFW (Image File Wrapper): Database of Patent application images created by scanning paper applications using EPO’s ePhoenix software

USPTOUSPTO 4 IFW Benefits Allows access by multiple areas of the USPTO simultaneously Lost cases and papers are nearly eliminated Will allow electronic delivery of office action to customers in the future Allows external customer access to applications via PAIR Unpublished applications via Private PAIR to those authorized Published applications via Public PAIR

USPTOUSPTO 5 Launching Public PAIR with Access to IFW

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USPTOUSPTO 8 IFW Deployment Prototype 3 GAUs – December ‘02 to March ‘03 Production Deployment Phase 1 July ‘03 through December ‘03 7 GAUs per week TCs 1600, 1700, 2800 & 2900 Majority of backfile applications have been scanned into IFW Phase 2 January ‘04 through August ‘04 TCs 2100, 2600, 3600 & 3700

USPTOUSPTO 9 IFW History > 1 Million Applications Scanned 643,100 New 400,505 Backfile >170,000,000 Pages Scanned >500,000 applications made available through Public PAIR

USPTOUSPTO 10 Process: Newly Filed Application From Office of Initial Patent Examination (OIPE) to the Art Unit… Paper Application comes into OIPE. Application is indexed and scanned into IFW SPE assigned to that mailbox determines to whom the the Application should be assigned and forwards the message to the New Case Processing mailbox The message is then forwarded to the 9999Assignment mailbox with the classification information in the text of the message Application undergoes pre-exam formalities review An IFW Message is generated and sent to the ExamClass mailbox Supervisory Patent Examiner (SPE) assigned to that mailbox, opens the message, reviews the application, and determines the proper classification Legal Instruments Examiner (LIE) dockets the Application in PALM and the Application appears on the Examiner’s Docket

USPTOUSPTO 11 Process: Follow-On Paper From OIPE to the Art Unit… Paper comes into OIPE. Document is indexed and scanned into IFW Fee sheet and other outgoing documents printed and sent for indexing and scanning The LIE reviews the document in IFW, checks document code, checks fees, 1449/IDS, US References captured if necessary An IFW auto-Message is generated upon scanning and sent to the LIE mailbox of the assigned examiner Team Leader assigned to that mailbox, assigns the message to an LIE, LIE performs the appropriate PALM transactions (if After Final response, Rule 312 amendment or other special document, a message is sent to the examiner’s examination mailbox)

USPTOUSPTO 12 Process: Examination… Examiner selects application from PALM docket in eDAN Office action is forwarded to mailing contractor and mailed to applicant Office action is forwarded for review and signature (if necessary) and then routed to Technical Support Staff (TSS) for recording in PALM Examiner reviews application, formulates search strategy and performs prior art search Examiner reviews prior art, applies art to application and authors office action Office action is indexed and scanned into IFW

USPTOUSPTO 13 Process: Post Examination… Notice of Allowance is mailed in application and IFW message is sent to Office of Publications Printer queries (if required) are handled by IFW messaging IFW message sent to publications contractor that fee has been received Application is exported to publication contractor Issue fee is received from applicant and PTO85B is indexed and scanned Patent grant prepared, published and mailed to applicant

USPTOUSPTO 14 Special Programs (SPRE) office in TC receives messages to process terminal disclaimers, petitions decided in TC, etc. SPRE/Paralegal monitors SPRE mailbox (e.g., 1600SPRE) and assigns messages to appropriate reviewing personnel Documents are reviewed electronically Decision rendered and sent for indexing and scanning as appropriate Create and send messages to other mailboxes for further action as appropriate Technology Center Special Programs Office

USPTOUSPTO 15 Petitions Messages for incoming petitions decided in Office of Petitions are routed to Pet.Receipt mailbox Message assigned to Petitions Examiner’s mailbox Petition reviewed electronically Decision rendered and sent for indexing and scanning Create and send messages to appropriate mailboxes for further action as appropriate

USPTOUSPTO 16 Board of Patent Appeals and Interferences (BPAI) New appeals are messaged to the BPAI from the TC BPAI receives messages from OIPE for all follow-on documents in cases on appeal During and after appeal process, the BPAI sends messages to TC Special Process mailbox for continued processing While in the jurisdiction of the BPAI, the TC cannot act on application

USPTOUSPTO 17 Filing Submissions All incoming correspondence through single point of entry Fax number for official correspondence: Informal facsimiles may be directed to the TCs Official facsimiles directed to the TCs will be re-routed to the official fax number Few exceptions to single point of entry, such as: Issue fee payment ( ) Request for corrected filing receipt ( ) Request for express abandonment under 37 CFR (c) ( ) Request for Customer No. or Customer No. Data change ( Electronic Business Center) Petition for foreign filing license ( ) Assignments ( ) Other exceptions:

USPTOUSPTO 18 Filing Submissions Hand carried correspondence is accepted at the customer window th Street South Customer Window, Mail Stop _____ Crystal Plaza 2 Lobby, Room 1B03 Arlington, VA No longer accepted in the Technology Centers Address mail sent via USPS to the USPTO address (Use mail stops) Mail Stop ______ Commissioner for Patents P. O. Box 1450 Alexandria, VA Correspondence to be delivered by delivery services other than USPS (e.g. Fed Ex, UPS, DHL, etc. should be addressed to: th Street South Customer Window, Mail Stop _____ Crystal Plaza 2 Lobby, Room 1B03 Arlington, VA Exceptions: correspondence for Maintenance Fee payments, Deposit Account Replenishments (see 1.25© (4)), and Licensing and Review (see CFR 5.1 (c) and 5.2 ©.

USPTOUSPTO 19 Tips for filing submissions in IFW Clearly identify each document with the application number (or docket number) Clearly identify each document by type Submit each application part on a separate page Submit documents for multiple applications in separate envelopes

USPTOUSPTO 20 Tips for filing submissions in IFW Avoid bound documents, if possible (this means glued bindings)-documents should be fastened with binder clips or stapled No hole punches in paper Do not mix single and double sided documents Letter size or A4 paper only Avoid highlighting and shading Avoid gray scale, if possible

USPTOUSPTO 21 Proprietary submissions No longer accepted in the TC Director’s office Hand-carry to the Customer Window is recommended Clearly label as a “Trade Secret”, “Proprietary”, “Confidential” document or item or as an item or document “Subject to Protective Order” and mark with the phrase “Do Not Scan” Proprietary material is placed into an artifact (not scanned) Upon grant of petition under 37 CFR 1.59 to expunge the information, original material will be returned to applicants and artifact record deleted.

USPTOUSPTO 22 Withdrawal from Issue Petitions to withdraw from issue after payment of Issue fee Prominently identify as a Special Procedure Submission on the top of the first page and indicate that the document is to be routed to Office of Petitions Follow-up phone call to Office of Petitions (703)

USPTOUSPTO 23 Troubleshooting Electronic Business Center (866) Problems or questions regarding electronic images viewable in PAIR Inability to view scanned images in PAIR RightFAX Failure to receive RightFAX transmission receipt Get access to Private PAIR Technology Center Missing items from Office correspondence Correspondence viewable in IFW but not entered in PALM (allow for reasonable processing times) PAIR Patent Application status and history information

USPTOUSPTO 24 Thank you