Answers to Questions from Request for Comments on the Request for Agreement (RFA) 60-PBPT-0-00001 for the USPTO Electronic Filing Partnership (EFP)

A copy of the Request for Agreement (RFA) is available on the USPTO web site at: http://www.uspto.gov/web/rfa/index.html

Note: The USPTO has elected to focus in the short-term on electronic filing of patent applications and assignments and has deferred trademark applications.

We recognize several issue groupings that require the participation of different USPTO staff and different demands for changes in USPTO filing and receipt applications and technical security architecture. Although we refer to these groupings as phases, they are not necessarily sequential since some phases could proceed in parallel if sufficient USPTO resources were available; however, in general, the higher numbered phases’ demand for additional policy and technical development work and infrastructure implementation indicate a longer lead time to their implementation.

Though open to alternative phasing, the USPTO’s forecast of resources to support the RFA assumes the following phases for providing support to successful proponents:

  1. Authoring tools to help the applicant prepare a patent specification in accord with USPTO defined XML format and compliant formats for drawings, sequence listings, computer program listings, etc. It is assumed that in this phase the existing ePAVE software will be used for delivery of the XML and other application parts.

  2. Electronic packaging and validation engine to assemble the various parts of the application. In this phase the electronic filing system will move to a more open but still Internet based model capable of interacting with filing software other than ePAVE. As a part of this phase the existing ePAVE software may be decomposed into modules for validation, signing, packaging and encryption of the patent application or other correspondence payload.

  3. Transmittal of the application to USPTO by VPN strategies. In this phase the technical infrastructure may be implemented in compliance with USPTO Security Policy to permit connection using VPN technology for bi-directional correspondence.

  4. Use of a digital certificate not granted by the USPTO PKI to authenticate and secure the transmission of the patent application and correspondence to the USPTO. In this phase policy and technical interoperability with other PKI implementations may be undertaken perhaps through the US Federal Bridge Certification Authority. This implementation may be the most challenging.

NOTE: Many of the responses to the questions refer to the USPTO Strategic Information Technology Plan (SITP), Technical Reference Model (TRM), and Life Cycle Management (LCM) guidelines. These documents describe the USPTO’s existing and planned information technology (IT) systems, standards, and methodologies. They are excellent references for more information about the projects and systems mentioned in the RFA and can be found at: http://www.uspto.gov/web/offices/cio/sitp

Portions of the SITP and TRM that provide details of the USPTO security architecture and security products utilized have been deleted from the public versions of these documents. Such details of the security infrastructure will be shared with successful RFA proponents after execution of a security and non-disclosure agreement.

Similar and related questions from different sources are combined for ease of response.

1. Are alternatives for receipt of applications acceptable to the USPTO under the RFA? Under what circumstances and conditions?

Responses that propose alternatives for receipt of applications acceptable to the USPTO are within the scope of the RFA. The very minimal conditions are that the application comply with USPTO XML DTDs and comply with electronic signature requirements of the USPTO. If the content of the electronic package is properly signed and the obligations of 37 CFR 10.18 attached, then it does not matter who signs the envelopes in an electronic transmission. See Question 7 for more information about DTDs. Additional requirements would be dictated by the USPTO infrastructure and data security needs.

2. Currently EFS does not accept provisional patent applications. When will the USPTO allow a vendor to file provisional patent applications electronically on behalf of its clients?

The USPTO does not expect to do so until EFS filings for nonprovisional applications reach 75%. Under Federal IT guidelines regarding cost benefit justification, the current EFS internal processing costs must be compared against the $75/$150 fee charged for filing provisional applications. This does not justify opening up EFS to provisional applications at this time.

3. What is PTAS? Is it a system that you would like integrated into our solution? Do you have any specs for RAM and OEMS so that we can evaluate how we might integrate these systems as per Section 1.2?

The acronyms are for three USPTO systems - PTAS is the Patent and Trademark Assignment Systems, RAM is the Revenue Accounting System, and OEMS is the order Entry Management System. Descriptions of the existing systems, and the plans for future enhancements or replacement are described in Chapter 6 of the SITP.

The ability to electronically submit a document about assignments of patent and trademark rights could be part of an integrated solution or as a separate product. The content of the proposal should be guided by the need to produce a commercially viable product that will appeal to the targeted market segment or segments of the proponent. We will provide detailed system requirements and specifications about the design documentation to successful RFA proponents.

4. Our business plan depends on the USPTO’s schedule for implementation. Specifically, when would specific types of submissions be accepted? For example, assignments represent a large segment of the business. If assignments were implemented first our revenue would be positively affected.

We encourage RFA proponents to propose implementation schedules in their responses, and clearly identify the assumptions upon which those schedules are predicated. Electronic assignments are currently accepted. An XML DTD has been defined for such submissions that may be found at: http://www.uspto.gov/web/offices/ac/ido/oeip/sgml/st32/redbook/indexefs.html

The information regarding the assignment, known today as the cover sheet needs to be provided in XML format. The attachments that represent the non-coversheet data are provided in TIFF format as attachments to the XML. For further information, refer to Question 8.


5. Does the PTO plan to compete with the private e-filing services by continuing its ePAVE, TEAS and other e-filing initiatives?

The USPTO will continue to maintain its Electronic Filing System (EFS) and related submission tools at least until there is a competitive commercial supply of equivalent or superior software applications or services available that serves the USPTO customer community. The USPTO is required to provide enabling technology under Government Paperwork Elimination Act (44 USC 3504) but does not expect this to compete with the industry solution in that it will provide limited capabilities and no integration with existing customer systems and business.

6. It appears that the e-filing service must manage the user’s authentication data, their preferences and communications with the USPTO. Will the USPTO channel outgoing communications including actions on each user’s application through the e-filing service? If so what systems (hardware and software) will be used?

The electronic filing service may leverage the authentication of the USPTO’s PKI or may propose an alternative system such as the portal system that is implied in the question. If the applicant designates the e-filing service as the correspondence address for receipt of correspondence from the USPTO, information could be sent to or retrieved by the e-filing service for the applicant. This might be done by the existing EFS software or by an alternative proposed by the RFA proponent. The USPTO plans to have bi-directional communication with its customers in the future, and this is with the scope of this RFA.

7. In order to estimate our development costs for the business plan we need to know more about the PTO’s software. For example, we need to see the DTDs, relevant documentation and how the DTD’s are used with the native PTO’s systems.

All available DTDs are located at: http://www.uspto.gov/web/offices/ac/ido/oeip/sgml/st32/redbook/indexefs.html

8. Does the PTO expect patent applications that are essentially word processing documents with drawings attached, to be converted to XML? Does the markup need to be converted from the word processor documents to PTO’s proprietary markup?


The USPTO expects to receive documents with text, drawings, and all other attachments XML tagged. The current EFS provide tools with this capability for documents created using Word and WordPerfect.

Our assumption is that most documents are created in word processors that would provide the source for conversion. Based on USPTO customer informal feedback, it is unlikely that any proposal centered on the use of a pure XML editor by the customer will be commercially viable. The XML schema and the DTDs defined by USPTO are not proprietary.

The information regarding the assignment, known today as the cover sheet needs to be provided in XML format. The attachments that represent the non-coversheet data are provided in TIFF format as attachments to the XML.

The patent applicant is required to furnish a drawing of his or her invention where necessary for the understanding of the subject matter sought to be patented. The Manual of Patent Examining Procedures section 1.81 "The Drawings" provides detailed explanation regarding the submission of patent application drawings such as content of drawing, and standards for drawings. You can access this information via the uspto.gov web site. The rules pertaining to drawings submitted via EFS states "Color drawings are not permitted in international applications (see PCT Rule 11.13), or in an application, or copy thereof, submitted under the Office electronic filing system." TIFF images must be black and white, 300 dpi, and non-compressed OR Group 4 compression. We also recommend cropping each graphic image to reduce the surrounding white space. Each image should be scanned into a separate single page file.

Please refer to the current EFS uspto.gov web site for current image file format requirements to be followed by EFS users.

9. Has USPTO done any work regarding the import/export of legacy data that would be instructive to for developing a "text tagging" process to enable one to tag legacy data with the appropriate XML to USPTO standards.

The vendors can assume that the target DTDs will be similar to the current EFS DTDs. The target DTDs will be based on an international agreement among the USPTO, European Patent Office, Japanese Patent Office, and the World Intellectual Property Organization to use the same DTDs for filing either international patent applications or domestic patent applications.

Conversion of USPTO back-file data to XML is outside the scope of the RFA. Considering that there are a number of commercial services for back-file conversion, the USPTO declines to provide assistance in converting non-USPTO legacy data.

10. What is the role of the S4/Text product at the PTO?

The USPTO has licensed the S4/Text product for limited distribution to patent customers to permit them to convert their patent application in Microsoft Word format to XML compliant with the USPTO DTDs. S4/Text is distributed by Infrastructures for Information of Toronto, Canada, which also provided consulting support related to their products and XML tagging of MS Word documents during the development of EFS.


11. Our experience is that digital certificates are clumsy and difficult to implement for end users. They are protected by password and therefore are no better for user authentication than a password. We would not use certificates. What is the PTO’s attitude toward password authentication?

The USPTO would consider a proposal unacceptable if it relied solely on password security. The USPTO has implemented an Entrust enterprise PKI in support of the authentication, integrity and confidentiality needs of our patents business. The USPTO has procedures in place for authenticating identities and authorities of Patent Attorneys and Agents as well as individual applicants. A current marketing effort will distribute the registration and electronic filing software to some 22,000 registered Patent Attorneys and Agents in the near term. Solutions that leverage this effort may alleviate some of the reported problems. The USPTO position is that passwords provide inferior authentication, guarantees of integrity, and the persistent encryption needed for patent applications. Trademarks have a different need for confidentiality and integrity since they represent a registration of a right established by public use of the mark.


12. Will the USPTO support a vendor who prefers transmitting their applications via a virtual private network (VPN) as an alternative to ePAVE.

Proposals including VPN connections to the USPTO are within the scope of the RFA. Such solutions will need to comply and integrate with USPTO technical security infrastructure and policy.

13. We would prefer to use VPN hardware encryption between our value-added system and the USPTO. Would the USPTO find this acceptable?

In terms of the RFA, VPN hardware encryption is acceptable for the transfer from a service provider (proponent) and the USPTO of properly formatted, signed encrypted patent applications and of trademark applications. However the implementation and maintenance of the USPTO end of the connection would need to be funded by the proponent. It must be noted that unlike many judicial filings, the content of a patent application submission has a legal requirement for confidentiality. If such a connection were proposed and the RFA accepted the USPTO would provide guidance regarding integration of the VPN into the existing security technical architecture in accordance with USPTO Security Policy.

14. The PTO applications have very different standards for data input. For example, trademarks can be GIFs or JPGs, whereas patent application drawings can only be TIFFs. Does the PTO plan to make the applications more uniform?

Trademarks electronic filing is within the scope of this RFA, but activities related solely to Trademarks will be deferred to a future phase. Therefore, the immediate concern is patent electronic filing, which currently uses TIFF. TIFF images must be black and white, 300 dpi, and Group 4 compression. We also recommend cropping each graphic image to reduce the surrounding white space. Each image should be scanned into a separate single page file.

15. Would the USPTO be willing to duplicate data and read-only applications to enable users to do retrievals when the PTO systems are not available?

The USPTO’s goal is to facilitate receipt of electronically filed applications at any time. The USPTO is now developing the infrastructure to meet this service goal of an "always open and available" that can receive applications 24 hours per day, 7 days per week, 365 days per year. The USPTO will facilitate to the extent by law the ability of a service to pick up or channel the USPTO correspondence to the applicant if the service provider is a properly designated correspondence address for receipt of communication.

16. How does the USPTO plan to collect the filing charges? Would the e-filing service be expected to reserve the funds on a credit card?

The USPTO’s current EFS/RAM interface provides for receipt of credit card payments for collecting filing charges through EFS. The EFS submission software (ePAVE) captures fee information for manual deposit account transactions after receipt at the USPTO. The USPTO plans to enhance the RAM system and other USPTO systems to include electronic funds transfer (EFT) and provide more payment options. It should be noted that the applicants are responsible for fee payments and that failure to pay fees may result in abandonment of the application, the fees are dependent on the content of the application and each fee needs to be associated with a given application. The USPTO does not see a requirement for RFA proponents to provide for any special reservation of funds on a credit card. The applicant is responsible for making certain that sufficient funds are available.

17. Would a vendor developing an e-filing interface for patent, trademark and assignments of intellectual property are able to multi-purpose this application? For example, the vendor would send the application to the USPTO and to the vendor’s patent or trademark database. The vendor would maintain the required security for the patent applications but once approved, the vendor’s customers would feed the information into the database for retrieval.

Such features may be attractive to EFS customers and thus support the RFA proponents’ business case, but are not dictated nor limited by the USPTO. The USPTO would not be a party in such a service or contract between the RFA proponent and those customers, and such services are outside the scope of this RFA. However, information about existing services and planned offerings of such services are highly relevant in demonstrating that the RFA proponent has a strong business case. The USPTO work with successful proponents will be limited to assistance in implementation of compliant electronic filing and communication applications.

18. The RFA states that the data to be filed with the USPTO should be as XML documents. However in order to estimate the costs, we need to know how the PTO expects the XML documents to be packaged and delivered. For example, what are the application protocols to be used or should we propose package and delivery in our project plan?

Alternate packaging and delivery strategies are within the scope of the RFA. RFA Proponents might propose using the existing EFS to transfer XML documents to the USPTO or may request that the USPTO "unbundle" EFS to provide access to code modules for signing, validation, and packaging of the patent application parts. The existing system based on the USPTO Entrust PKI that receives the signed, packaged and encrypted would dictate the protocols used at least initially. The documentation for the system will be shared with successful RFA proponents after execution of a confidentiality agreement. At the present time, the USPTO is working with other Intellectual Property Offices to define uniform internationally acceptable signing and packaging standards and the results of this effort will be shared with successful RFA proponents. Of particular importance is the ongoing standards development for PCT electronic filing?

19. Can you identify the DTDs, what is the current state of development? Can you provide samples of the DTDs? Can you give an idea of where the DTDs are going? What is the most important function or feature of the DTDs?

The USPTO’s DTDs and XML schema are evolving. The following URL provides access to the existing DTDs and Sample Style sheets: http://www.uspto.gov/web/offices/ac/ido/oeip/sgml/st32/redbook/indexefs.html

The USPTO will continue to publish all appropriate DTDs and schema, but may restrict access to those that are sensitive. Note that the USPTO, European Patent Office, Japanese Patent Office, and the World Intellectual Property Organization have agreed in principle to a single set of DTDs for filing international patent applications and domestic patent applications. The DTDs resulting from that agreement will be made available as soon as they are finalized.

20. Can you give a description of your current workflow or a diagram of the Patent Office processing workflow of a patent or trademark application within PTO? Are you currently using any products, software or processes that are electronic workflow related or provide electronic processing of documents?

Do you currently just store and forward applications and forms or is the process more involved? What are you capturing in your database? How are you capturing info for your database? What software are you currently using for the database as well as the document management system?

How do you currently move forms through the system? How will the documentation accompanying an application be handled in terms of document control once passed from the electronic interface?

The USPTO’s internal workflow systems are outside the scope of this RFA. Information about them that may be relevant to RFA offers is provided in section 6 of the SITP.

21. What is the PTO process after receipt of an ePAVE filing? What does the PTO do with the XML data? What happens to the application file next?

At the current time the application file is printed out for inclusion in the current paper-based application workflow and the XML file is utilized by USPTO systems. In the future as the USPTO migrates away from paper, authorized parties will access the XML via a workflow system.

22. Is possible to call ePAVE from our application so our PTO forms can be electronically filed? In other words, is there some kind of API we can use to get the ePAVE functionality?

Currently ePAVE is a workstation resident software application that was designed for stand-alone operation so there is no API to call ePAVE. A proposal to separate the functions of the ePAVE software so that they could be called by or incorporated into another program is within the scope of the RFA. It should be noted that the USPTO electronic filing program focuses on information formatted in accordance with USPTO XML DTDs. Although a form based user interface might be a user-friendly means for data collection; the collected data would need to be converted to properly formatted XML for transmission to the USPTO.

23.Will you share your electronic filing approach and the interface to your Legacy systems, i.e. ePAVE? What are the technical specifications?

We will share ePAVE technology with successful RFA proponents. ePAVE is a custom cryptographic application written by the USPTO for the validation and packaging of patent applications and correspondence. The USPTO would, for example, separate the software modules for validation and/or signing of the application by the patent practitioner from the modules for producing and delivering the application, which includes signing, packaging and encryption of the application for delivery to the USPTO. The change might be characterized as converting the existing closed signing and delivery model to an open one.

24. How many concurrent filings are permitted per digital certificate?

In accordance with the licensing agreement and USPTO subscriber agreement, only one application can be filed at a time.

25. Is the EFS (PASAT / ePAVE) source code "open" (i.e., can one obtain a copy of this)? Or, is there any additional documentation that could be made available?

Detailed documentation and access to USPTO staff will be made available to successful RFA proponents. Since ePAVE is essentially a security program for safeguarding applicant’s information the source code will only be made available after execution of a security agreement with the USPTO. PASAT uses S4/Text, a proprietary product form Infrastructures for Information of Toronto, Canada, for which source code cannot be provided by the USPTO. ePAVE was developed using an Entrust development toolkit, another proprietary product for which source code cannot be provided by the USPTO. Subject to security review, clearance and the execution of a security and nondisclosure agreement appropriate USPTO-developed source code and associated documentation will be provided to successful RFA proponents. See the answer to Question 18.

26. Can the USPTO provide documentation about the software used to zip and encrypt the package files? Do the files in the zip package need to have some specific directory organization? Is there a list of "accepted" vendor software for signing the documents or encrypting the documents?

Detailed documentation and access to USPTO staff will be made available to successful RFA proponents. Proposals that leverage the USPTO Entrust-based PKI and registration of attorneys and independent inventors would be preferable since they would require less technical modification or implementation by the USPTO.

27. When is the next release of ePAVE? What is the frequency of the development release cycle a vendor should anticipate?

The next release of ePAVE is scheduled for the fall of 2001. The USPTO is considering adopting a release schedule for updates to ePAVE and XML DTDs. Proponents are encouraged to propose a commercially reasonable release cycle as part of their RFA response.

28. What are your top 2 or 3 priorities?

Our goal is increase the number of electronically filed applications and submissions, and to eventually receives no paper applications. Our technical priorities include ensuring that the systems resulting from this agreement fully comply with USPTO technical standards especially the XML schemas, DTDs and style sheets established by the USPTO. The USPTO has elected to focus in the short-term on electronic filing of patent applications and deferred trademark applications. Although open to alternative phasing, the USPTO’s forecast of resources to support the RFA assumes the following phases for outsourcing: (1) authoring tools to help the applicant prepare a patent specification in XML format; (2) electronic packaging and validation engine to assemble the various parts of the application; (3) transmittal of the application to USPTO over the Internet and a digital certificate to secure the transmission of the application to the USPTO; and (4) use of VPN technology for application and correspondence delivery.

29. What are your in-house operating systems, Windows? MSOffice? Excel?

The USPTO currently uses Microsoft NT for network management, desktop office automation, and some Automated Information Systems and is in the process of migrating to Windows 2000. The USPTO uses HP/Unix or SUN/Solaris for all other AIS’s.

30. What are your preferred formats?

The USPTO requires XML in compliance with USPTO DTDs or schema for filings of patent and trademark applications and correspondence. Assignments may be in text or image format. The images in a patent application should be in TIFF files, 300 dpi, bi-level (black & white), and compressed using CCITT G4 compression.

Patent assignments are not covered by Red Book DTDs. The DTD for assignments must be followed. See: http://www.uspto.gov/web/offices/ac/ido/oeip/sgml/st32/assignment/ptasindex.html


31.Could a vendor submit patent applications electronically in "red book format" rather than the format used in ePAVE? Or as a stream of XML compatible with "red book" tags which would address complex work units?

Grant Red Book and Application Red Book are not suitable for filing patent applications. DTDs for filing U.S. patent applications have been published at: http://www.uspto.gov/web/offices/ac/ido/oeip/sgml/st32/redbook/indexefs.html

Revised DTDs will appear there in the future. Use of the DTDs designated by the USPTO for filing applications is obligatory. Note that the USPTO, European Patent Office, Japanese Patent Office, and World Intellectual Property Organization have agreed in principle to use the same DTDs for filing either international patent applications or domestic patent applications. As soon as they are finalized, those DTDs will be published.

32. What kind of security requirements do you have?

The USPTO processes sensitive but unclassified business information, including patent and trademark applications. The current package ePAVE digitally signs and encrypts the XML payload delivered to the USPTO and returns a filing receipt. The Patent Act requires that the USPTO maintain the patent applications in confidence. The Trademark Act does not impose confidentiality on a Trademark application. In both instances the preservation of the integrity of the application is vital.

33. Where will all the documents be stored?

At the USPTO and USPTO backup facilities.

34. Will the USPTO validate electronic certificates issued by a vendor to its customers for electronic filing? Is there a requirement or any advantage to using the same certificate vendor chosen by the patent office (Entrust)? For example can one use PGP? Will the public be required to have User ID and Password? What kind of user authentication will be required?

The USPTO strategy is to require registration and use of PKI when strong authentication is required for system access where the systems handle or permit access to patent application data. The USPTO is committed to the use of PKI for authentication, integrity and confidentiality of patent applications. Proponents are free to propose any security paradigm that they believe is commercially feasible, although the proposals that leverage the USPTO’s Entrust infrastructure are preferable since such proposals will be more easily integrated into the USPTO security architecture. Any alternative security proposals must include assurance of commensurate levels of trust and we do not believe that user name and password meet this need. See www.uspto.gov and the link to the Patent Electronic Business Center for more details.

35. If a vendor wishes to allow attorneys to electronically sign attorney forms (transmittals, amendments, etc.), inventors to electronically sign declarations and assignments, company officers to electronically sign declarations and certificates, etc., what kinds of electronic signatures will the PTO accept on these documents? Does the Electronic Signatures in Global and National Commerce Act apply?

The USPTO can accept any of: (1) fax images of signatures, (2) /s/ with typed names, (3) name typed in script font, or (4) digital signature supported by a USPTO digital certificate. Under Title I of the Electronic Signatures in Global and National Commerce Act in Section 104 (c) (2) the Government Paperwork Elimination Act (44 USC 3504) is controlling for submissions of record documents to the USPTO. Thus the vendor will be guided by the USPTO EFS standards in electronic documents, and in electronic signatures associated with them. The office currently allows electronic signatures of the inventor on the oath/declaration to be submitted as electronic images of that document. The signature of the responsible applicant/ attorney on the transmittal form is in the /ss/ form. The other forms mentioned above are allowed according to our agreements in the PCT E-filing standards of Annex F of that document, but we have not yet defined how we would implement them in our system designs.

36. Are your forms currently in compliance with Section 508 (Americans with Disabilities Act)? (Is there a standard on how things should look)?

The USPTO is currently developing enhancements to its home page and other system to comply with the Section 508 requirements, and all systems developed under this RFA must comply with Section 508 requirements. See http://www.section508.gov for more information regarding Section 508 accessibility standards.

37. What different sizes are your current documents (letter, legal, D -sized sheets, etc.)?

Most paper applications are letter and A4. The USPTO’s rules are defined in the Manuals of patent and trademark examining procedures that are published on www.uspto.gov. However, one of the decisions made in developing electronic filing was to use move to a pageless format for the applications.

The DTDs for filing and for publishing include no provision for specifying paper size or page breaks or even line breaks. Vendors should not attempt to optimize software for particular page sizes for text content. Image content should be optimized for printing within the bounds of a standard patent shoebox size. The Manual of Patent Examining Procedures, section 1.81 "The Drawings," provides detailed explanation regarding the submission of patent application drawings such as content of drawing and standards for drawings. You can access this information via www.uspto.gov. The rules pertaining to drawings submitted via EFS states "Color drawings are not permitted in international applications (see PCT Rule 11.13), or in an application, or copy thereof, submitted under the Office electronic filing system."

Please refer to the current EFS uspto.gov web site for current image file format requirements to be followed by EFS users.

38. What other companies are bidding?

The original bidders mailing list was included with the RFA and can be viewed on the Internet. An updated copy can be obtained by sending an email to: Anice.Ogden@uspto.gov

39. What is the cost of processing an application? Does the applicant incur a cost?

The USPTO fee schedules are available at: http://www.uspto.gov/web/offices/ac/qs/ope/fees.htm

40. Does the USPTO plan to move the schemas away from DTDs? Will the USPTO move to XML schemas? The current RFA, (attachment 1) lists DTD’s currently under development. These include DTD’s for amendments, appeal briefs etc not currently included as part of the EFS. If a vendor created these as DTD’ or XML schema would the PTO accept them? What XML dialects or standards are you currently using?

The USPTO will define the XML DTDs and other XML resources required since the products must be consistent with USPTO internal systems. This will also avoid any assertion of copyright by a vendor in submission and correspondence DTDs. It is possible that the EFS DTD will migrate to XML Schema in the future. The USPTO, European Patent Office, Japanese Patent Office, and World Intellectual Property Organization recently agreed in principle to use a single set of DTDs for filing international patent applications and domestic patent applications. When finalized, these international DTDs will be made available. For now, the existing USPTO DTDs and stylesheets are available at: http://www.uspto.gov/web/offices/ac/ido/oeip/sgml/st32/redbook/indexefs.html

41. What will the PTO do to let vendors know about changes to DTDs?

Detailed documentation and access to USPTO staff will be made available to successful RFA proponents. The USPTO will adopt revision periods for its DTDs so that revised DTDs will be published on the Web on a regular schedule with approximately six months lead-time for implementation. The USPTO XML/DTD schema will be made available on the USPTO web site as they are finalized. At the present time, the USPTO is working with other major Patent Offices and WIPO to develop a common XML standard for filing of electronic patent applications, and these will also be made available when finalized. See Question 40.

42. What will you interact with at a later date?

This question is too unclear for a USPTO response.

43. Do you use EDI?

The USPTO use EDI for certain applications, but not for the receipt of Patent and Trademark applications or assignments, which is the target of the RFA.

44. Do you want a turnkey model?

Respondents are encouraged to propose what they can demonstrate will be any commercially viable system for patent and trademark filers. It should be noted that USPTO is not procuring a system for its use but is using the RFA strategy to foster the development of commercial software and services targeted at the filers of patent and trademark applications and assignments.

45. Do you want an ASP model?

Respondents are encouraged to propose what they can demonstrate will be any commercially viable system that will serve some segment of patent and trademark filers.

It should be noted that USPTO is not procuring a system for its use, but is using the RFA strategy to foster the development of commercial software and services targeted at the filers of patent and trademark applications and assignments with the goal of increasing the quantity of electronically filed assignments, applications and eventually other correspondence with the USPTO.

46. Right now EFS is set up so that the person transmitting the filing must be the person (or his/her assistant) who substantively prepared it. Is there some way that a service provider (vendor) can use their own USPTO digital certificate for transmission of a filing on behalf of the vendors’ clients?

If the content of the electronic application package is properly signed and the obligations of 37 CFR 10.18 attached, then it matters not who signs the envelopes in an electronic transmission secured with PKI. Generally this would be no different than an applicant using a private delivery or messenger service to file papers at the USPTO.

A proposal that the USPTO separate the application signing as detailed in the note below from the use of PKI based digital signature and encryption of the signed application package is within the scope of the RFA. RFA proponents might propose using the existing EFS to transfer XML documents to the USPTO or may request that the USPTO "unbundle" EFS to provide access to code modules for signing, validation, and packaging of the patent application parts. The existing system based on the USPTO Entrust PKI that receives the signed, packaged and encrypted would dictate the protocols used at least initially. The documentation for the system will be shared with successful RFA proponents after execution of a confidentiality agreement.

Note regarding signature in EFS: The EFS submission is both electronically signed (e-sig) for identity and content and digitally signed (d-sig) for transmission. The e-sig appears on the cover page of the transmission, usually as a /attorney/ or whatever the attorney or applicant wrote when he was asked, "Is this the submission you intend to make to the USPTO?" It is printed out on what serves as a transmittal page of the EFS and is put into the file wrapper. This is the signature that invokes the 37 CFR 10.18 obligations.

The d-sig is applied when the applicant is about to send the application package to the USPTO. He writes in the password that invokes the digital certificate process, and encrypts the application using his private key and the USPTO's public key. The digital signature is not intended to be printed out in our system (although d-sigs could be used for intent if we designed it that way). After the application is e-signed then the application of the d-sig and the transmission to the USPTO can be considered a ministerial act, like stuffing the paper in an envelope and dropping it off at the USPTO.

Currently the e-sig and d-sig are applied close to each other in the process using ePAVE. However, a process can be engineered in which the e-sig is applied by the attorney/applicant at his desk, and then a trusted agent of the attorney/applicant applies the d-sig. That trusted agent could be the service provider (vendor) acting under the direction and control of the attorney.

47. Can a vendor employee use the digital certificate of the vendor’s customer to transmit an electronic filing on the customer's behalf?

The USPTO Subscriber Agreement indicates that the USPTO is the only qualified relying party for a USPTO digital certificate and that the certificate is only to be used by the subscriber for communication with USPTO. Thus such a use would not be permissible under this existing policy. Proponents are encouraged to suggest modifications of the existing policy restricting the use of the USPTO certificates. It should be noted that the USPTO receipt system might need to be modified to technically implement alternate policies.

48. One class of filers who can use e-PAVE is the attorneys appointed in a particular patent application. Can a vendor have their customers grant the vendor a limited power of attorney to be used only for the purpose of filing while granting full power of attorney to their actual patent attorneys for purposes of prosecuting the application? The vendor filing would be done by or under the supervision of a registered agent/attorney employed by the vendor.

The USPTO does not want powers of attorney granted for the purpose of filing a properly attorney-signed submission. It is the content that is important, not the act of transmission, which does not require such a power of attorney. Thus if the vendor is acting under the direction and control of a registered agent/attorney, or of the applicant himself, and if this sole act is the delivery of the already signed application to the USPTO, then a power of attorney is not required. Please see the discussion in the related Question 46.

If the applicant designates the e-filing service as the correspondence address for receipt of correspondence from the USPTO, information could be sent to or retrieved by the e-filing service for the applicant. These activities would not require a power of attorney. This might be done by the existing EFS software or by an alternative proposed by the RFA proponent. The USPTO plans to have bi-directional communication with its customers in the future, and this is with the scope of this RFA.

49. Can a vendor use a USPTO digital certificate to encrypt transmissions between the vendor and its customers (in addition to transmissions to the PTO)?

Under the current Subscriber Agreement and policy this would not be a permitted use, but proponents are encouraged to suggest such changes to policy that would lead to more applications being filed electronically.

50. ePAVE is not currently set up to be used by a central web server. Can vendors use a system that emulates "ePAVE" instead?

The USPTO encourages proposals that will result in the increase in the number of electronically filed patent applications compliant with the USPTO XML DTDs and consistent with the USPTO security architecture. A proposal including a system that produces the signed encrypted package in another manner would be within the scope of the RFA.

51. Will you require technical and XML related training for PTO staff or for users of the system?

The RFA strategy leaves the training related to the proponents proposed strategy to the proponent. The USPTO does not contemplate training by proponents of USPTO staff. The USPTO technical staff has experience and receives training as required on XML. The USPTO does expect that successful proponents will have extensive interaction with USPTO staff during all life cycle phases during which some cross training may occur.

52. Will maintenance be required?

Viable commercially available user software such as envisioned under the RFA would likely require maintenance to achieve market success. USPTO is seeking to support the production of commercially viable software for filers of patent and trademark applications and it is unlikely that software without maintenance will be viable commercially.

53. Do you have current system architecture drawing for us to view?

The USPTO Technical Reference Model at www.uspto.gov/web/offices/cio/cio-docs.htm contains detailed information about the USPTO’s technical standards for infrastructure hardware and software. The architecture for the USPTO’s current EFS includes Entrust for PKI, i4i’s S4/Text software for XML tagging of documents created using MS Word and the native XML tagging features of Corel’s WordPerfect.

54. Is it possible for the USPTO to provide an API for the EFS software (PASAT & ePAVE), so that a vendor may integrate software with the current USPTO tools?

A proposal that the USPTO provide such is within the scope of the RFA. Our interpretation of the question is that it is, in part, asking for an open receiving system for patent applications, which is an acceptable request under the RFA. We will share source code and documentation with successful proponents after execution of a confidentiality agreement. It should be noted however that the S4/Text software that is an essential part of PASAT is not owned by USPTO and the creation of an API might not be within the terms of the USPTO S4/Text license.

55. What is the content and format of the transmission receipt?

Detailed documentation and access to USPTO staff will be made available to successful RFA proponents.

56. Listed in the "acknowledgment of receipt" transmittal is a .cmf file. Is their any documentation regarding this?

Detailed documentation and access to USPTO staff will be made available to successful RFA proponents.

57. Will the USPTO publicize the vendors who are partnering with the PTO in thee-filing initiative in their website or otherwise? (For example, will there be a link on the USPTO website to vendors who have partnered with the PTO?) There was a question, in the RFA comments on the PTO homepage which asks what advantages the obligations of the RFA had over simply waiting for the USPTO to publish the XML DTD's and proceeding to develop software independently. The answer reads in part "The USPTO will also provide links from the USPTO web site to the RFA partners as well as pointers to the RFA partners at USPTO presentations". Does this mean that customers can link from the USPTO website to RFA partners?

We plan to offer hotlinks from the Patents Electronic Business Center part of the USPTO home page (web site) to the RFA proponents’ home pages after their products pass USPTO tests. The USPTO is currently preparing test plans and will distribute them when available.

58. Can we get sample patent applications to help during proposal preparation?

A sample patent application is available at: http://www.uspto.gov/web/rfa/index.html

The PASAT software, which is available for download at http://www.uspto.gov/ebc/efs/downloads/downloadndx.htm, also includes a sample patent application. You may want to view patent applications that have been published at http://www.uspto.gov/patft/index.html. Published patent applications have been photocomposed for publication and do not represent the format of a filing, but do show the data that is included in a filing as well as data added at publication.

59. Is there any way vendors may "test" their own EFS software? Can the PTO receive test data delivered electronically through a system other than ePAVE?

Currently there are test files available. A proposal for a test system or a way to designate submitted files, as test files would be within the scope of the RFA. The USPTO will develop testing plans to help validate the operation of filing software and interoperation with USPTO receiving systems.

60. Currently, when using EFS certain "business rules" are evoked only when the user makes a mistake. Can the USPTO make available the necessary documentation used in these business rules?

Detailed documentation and access to USPTO staff will be made available to successful RFA proponents.

61. The current USPTO EFS system does support any electronic "communication" between a patent applicant and the examiner for such things as office actions, etc. As an interim measure, will the USPTO permit the examiners to have office actions faxed (or otherwise electronically transmitted) to an authorized vendor on behalf of the applicant if the applicant expressly authorizes it? This could be done in addition to regular mailing of office actions.

Although this question is out of scope for the RFA we note that as a matter of policy the USPTO will only send correspondence or faxes to the correspondence addresses specified in the application.

62. The RFA refers to demographic and attitudinal studies and information on such that would be made available. Where can I access that information?

The USPTO will share the results of studies and focus groups with successful RFA proponents to the extent permitted under our confidentiality agreements with the study participants.