How to file an amendment

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When you are e-filing an Amendment in EFS-Web, you need to tag the various parts of the Amendment correctly. By "correctly" we mean, you need to tag the various parts so that they will fit properly into USPTO's subsequent process flow.

For example, when Reed Publishing, the contractor who has the USPTO contract to perform 18-month publications as well as the publication of issued patents, goes to publish a particular application, it needs to publish an Abstract. To do this, it rummages through all of IFW and looks at every item that has been tagged as an Abstract. It then picks out the most recent such item and presumes that to be the one to publish. It does the same for the claims. In a more complicated way, the contractor also uses this to work out the most recent drawings and the most recent (amendments to the) specification. (I say "more complicated" because while Rule 121 requires the filer to file the entirety of the claims or abstract every time one word is changed, it permits filing less than all of the spec or drawings in the event they are amended.) The key thing about this is that for EFS-Web filings, if a beta filer files an amendment without tagging the "claims" portion of the amendment as "claims", this is a big problem that needs to be corrected. Otherwise those claims would never be seen by Reed and will never get into the 18-month publication or the issued patent.

You will recall that each and every EFS-Web filing during this beta phase is being hand-tended by USPTO people who are dedicated to the EFS-Web effort. I am told that these USPTO people are finding they are spending quite a lot of time tagging and re-tagging parts of e-filed Amendments because of beta users who choose different tags than USPTO people would have chosen.

Another category of tagging is the first page of the Amendment. This is the page containing the caption. This needs to be tagged in a particular way so that in Palm there will be a "flag" set that tells USPTO people that an Amendment has been filed and thus that (a) it must now be forwarded to an Examiner and (b) the application is no longer going to go abandoned due to failure to respond to an Office Action.

But if you file an Amendment containing "remarks" you should not tag the "remarks" the same way you tag the first page of the Amendment. This would get entered into Palm as if two separate Amendments had been filed.

So a typical Amendment would be tagged as follows.

The caption page of the amendment might be tagged as any of the following:

EFS-Web "category" EFS-Web "document description"
Amendment Amendment - After Non-Final Rejection
Office of Patent Publication Amendment after Notice of Allowance (Rule 312)
Amendment Amendment After Final
Amendment Response after Ex Parte Quayle Action
Continued Prosecution Amendment Submitted/Entered with Filing of CPA/RCE
Board of Patent Appeals Amendment/Argument after Notice of Appeal
Amendment Amendment/Argument after BPAI Decision
Amendment Amendment
Amendment Preliminary Amendment
Amendment Supplemental Response or Supplemental Amendment
Amendment Supplemental Amendment after Final Rejection

The "claims" pages of the amendment should be tagged as the following:

EFS-Web "category" EFS-Web "document description"
Application Part Claims

The "remarks" pages of the amendment should be tagged as the following:

EFS-Web "category" EFS-Web "document description"
Amendment Applicant Arguments or Remarks Made in an Amendment

Non-intuitive. When I explained all of the above to a couple of people in my office, their first reaction was that it is extremely counter-intuitive to think that a particular e-filing would be tagged using tags from more than one EFS-Web "category". For example if the thing we are filing is an "amendment", then intuitively (they figured) the various tags that are appropriate for the amendment would of course be in the EFS-Web "category" called "amendment". As you can see, for a typical amendment this is never true. The claims will be tagged as an "application part". The caption page may be tagged as "office of patent publication" or as "amendment" or as "board of patent appeals" or as "continued prosecution".

The only option, as far as I can see, is to print out the Document Descriptions page and study it closely each time you file anything. Selecting a "document description" that is, from the USPTO's point of view, "incorrect," will make extra work for the EFS Web beta people at the USPTO and risks having a paper processed incorrectly within USPTO.

Of course for a USPTO customer it is not at all an easy or straightforward task to guess which tag is the "right" one. To get this right, the customer would need to know all sorts of secret and unpublicized things about the paper flow within the USPTO. For example, suppose the status of my application is that the Notice of Allowance has been mailed but I have not yet paid the Issue Fee. And suppose I wish to file a Rule 312 Amendment. In the pull-down menu for "amendment" there is no "document description" that is specific to Rule 312 Amendments. So I would probably simply call it an "amendment after final" or perhaps simply an "amendment".

But no. The correct tag for such a filing is not "amendment" or "amendment after final". The correct tag for such a filing is not, in fact, listed anywhere in the "amendment" category. The place where you will find the correct tag is in the "office of patent publication" category. And the correct tag in the "office of patent publication" category is "amendment after notice of allowance (rule 312)".

The reason why this particular tag is needed is so that a flag will get set in Palm, telling the SPE that he or she must make a decision whether or not to permit entry of the Rule 312 Amendment. If you don't tag it that way, it won't get routed to the SPE and the decision will not get made.

What I don't know is what the real consequences are of tagging the Rule 312 amendment as something other than a Rule 312 amendment. Will it simply guarantee that the proposed amendment will never get considered and will never get into the issued patent? Or will it instead result in the amendment getting entered automatically and thus bypassing any review by the SPE? I just don't know.

So as I say, the only option is to print out the entirety of the Document Descriptions page and read it from the top to the bottom each time you file anything that is different in any way from what you have filed previously in EFS-Web.

One way to try go guess which tag to use in a particular case, I guess, is to go into IFW and find some other application where the same kind of filing was done. And then look to see how USPTO tagged the documents for that filing. (When choosing another application to look at for guidance, it would be important to choose one in which the documents were not e-filed through EFS-Web!)

This situation (where filers will often select the wrong tags when e-filing in EFS-Web) seems likely to grow to enormous proportions when EFS-Web is released to the general public in March 2006. This problem was in fact discussed in one of the e-Filing Forums. When it came up, participants suggested that one way to avoid a wrong-tag problem would simply be to permit the file to select a document description of "I'm not sure". This would then cause a document flow to a USPTO person who would study the document and tag it correctly. (The USPTO person doing this tagging would presumably be somebody who previously spent all day tagging documents received on the Central Fax Number.) This gives me a feeling of deja vu, because as many will recall, I wrote about this back in October of 2004 in my Modest Proposal.

A few thoughts about the caption page of a filing.

Turning back for a moment to the caption page. Traditionally the caption page is cluttered with all manner of information, included by the filer in the hope that if some USPTO person were on the verge of sticking the paper into the wrong paper file, some bit of information would prompt the USPTO person to avoid making a mistake about which file is the right one.

I imagine something like this. The USPTO person, holding a paper meant for serial number 10/123,456, is on the verge of accidentally filing it in file number 10/132,456. And then the USPTO person happens to glance at the "title" appearing in the caption -- "framus apparatus". And then glances at the "title" on the paper file -- "clevis apparatus". And then says "oh, wow, glad I saw that" and avoids the mistake, and sticks the paper into the file number 10/132,456. The idea is that the caption will very intentionally provide lots of items of "redundancy information", information that is not really needed at all but is provided merely to avoid accidental misfilings.

The silver bullet that the USPTO came up with to keep such misfiling to happen ever again was, of course, the "confirmation number", introduced maybe three years ago. For each filed paper, the USPTO person would scrutinize the confirmation number to make sure it matched, before sticking any piece of paper into a file.

Except, of course, that to this day, not even a single one of the USPTO forms has been modified to provide a place for the filer to insert the confirmation number. I assume that this has something to do with the OMB Paperwork Reduction Act, which requires USPTO to have a current "OMB Control Number" on each form and requires USPTO to estimate the number of minutes required to complete the form. Adding the customer number to each form would require USPTO to obtain a new OBM Control Number for each form, and would add a few minutes to each time estimate (because the filer would need to rummage around to find the Confirmation Number when completing the form.

Well, if you think about things for a moment, you will agree that for a paper filed in EFS-Web, there is probably no need for the caption to contain any "redundancy information" at all. The filer, after all, will have entered the serial number and confirmation number into EFS-Web. EFS-Web will then display the title and attorney docket number and inventor name. If the serial number was wrong, this will get caught right away. If the serial number is right, then the paper will get "filed" in the correct file automatically. There is simply no opportunity for misfiling.

I can report that for the papers I am filing in EFS Web, my captions are getting shorter and shorter. I did one the other day where the caption contained the serial number and nothing else.

But if you think about it a moment longer, you might agree with me that really the caption is now a vestigial organ, like the vermiform appendix. I cannot see any reason why a caption should be needed at all for a paper filed in EFS-Web.