Using the PCT-SAFE XML editor with ePave to file a US patent application
Summary: this article describes how to use WIPO's PCT-SAFE Editor (rather than PASAT) and ePave to file a US patent application.
Background. E-filing of US patent applications involves a two-step process -- authoring a patent application (sometimes called an "application-body") in XML format, and then assembling a "project" of computer files and submitting the "project" to the US Patent Office electronically.
The second step (assembling the project and submitting it to the Patent Office electronically) uses software called ePave, which is provided by the U.S. Patent Office. Many practitioners have had favorable experiences with ePave, not only for the submission of patent applications but also for such related tasks as filing Information Disclosure Statements and recording assignments.
The first step, authoring the patent application in XML format, uses software called PASAT, also provided by the US Patent Office. Practitioners have had very mixed experiences with PASAT, and these mixed experiences may be part of why the level of e-filing (as compared with paper filing) is lower than the Patent Office would like it to be. It seems likely that for some practitioners it would make a big difference to be able to use a different authoring tool.
The US Patent Office has been beta-testing a new XML patent application authoring tool called ABX, which has not yet been released generally.
Within recent months, however, two other new XML patent application authoring tools have been released. The European Patent Office has released PatXML, which was designed for e-filing of EPO patent applications, but the documentation of which makes clear (at FAQ number 12) that EPO does not mind if filers use it to author applications for filing with the US Patent Office. The World Intellectual Property Organization (WIPO) has released its PCT-SAFE Editor ("PSE"), which was designed for e-filing of PCT patent applications. Features have been designed into PSE to make it usable not only for PCT e-filing but also for filing of US patent applications.
The author has successfully filed a dozen or so US patent applications using PSE (rather than PASAT) with ePave. This article describes the steps that led to these successful filings.
Note that these comments are specific to PCT-SAFE Editor v. 1.98, version #:22.214.171.124 and ePave version 5.1.
Why this works. A number of patent offices, among them USPTO, JPO, EPO and WIPO, have been working together for many years to develop agreed-upon standards for the formatting and filing of electronic patent applications. These standards are embodied in so-called "Annex F" and are intended to facilitate authoring a patent application once and e-filing of the application in any of several patent offices without the need for reformatting. (See a detailed discussion of these issues at http://www.patents.com/pct/comparison/.) For patent offices the standards offer the prospect of automated and efficient capture of bibliographic data as well as specification text for later full-text searching.
A chief goal for Annex F is to promote interoperability of authoring tools (e.g. PASAT, ABX, PatXML, PCT-SAFE Editor) with submission engines (e.g. ePave, EPOline software, PCT-SAFE Forms Manager). Ideally a would-be filer would be able to choose any one of the authoring tools to author a patent application, and the resulting patent application would be acceptable to any one of the submission engines. Until now, however, the author has been unaware of any successful "cross-platform" filing, that is, a filing where an authoring tool from one patent office has been succesfully used in connection with a submission engine from another patent office. Of course the apparent lack of such filings is not surprising given that two of the authoring tools have been generally released only within recent months.
What steps were required to make the e-filings possible? When I authored an application-body in PCT-SAFE Editor ("PSE") and then tried to attach it to an ePave project, the first problem I encountered was an error message:
ePave 5.1 -- Syntax error: Fatal error at (<full path to application-body XML file>): An exception occurred! Type: RunTimeException, Message: Could not open DTD file <same folder as application-body XML file, file name "application-body.dtd".>
The way to fix this problem was to provide a copy of the USPTO application-body.dtd file in the same folder where the XML is located. After copying the file, I returned to ePave and tried attaching the XML file again. This time ePave complained that it expected to find a file called "wipo.ent". So I copied that file into the folder where the XML is located. I cycled through this until twenty-five more files had been added. The twenty-six needed files are:
application-body.dtd, wipo.ent, mathml2.dtd, mathml2-qname-1.mod, isoamsa.ent, isoamsb.ent, isoamsc.ent, isoamsn.ent, isoamso.ent, isoamsr.ent, isogrk3.ent, isomfrk.ent, isomopf.ent, isomscr.ent, isotech.ent, isobox.ent, isocyr1.ent, isocyr2.ent, isodia.ent, isolat1.ent, isolat2.ent, isonum.ent, isopub.ent, mmslextra.ent, mmlalias.ent, and soextblx.dtd.
After these twenty-six files had been copied into the folder where the XML file was located, ePave was willing to attach the patent specification.
As it turns out, even if you provide to ePave all of the files that it demands, this is still not enough files to satisfy the systems within USPTO's filing system. Thus, you must additionally provide a file called us-application-body.xsl.
The complete set of files that you need to copy into your submission folder may be obtained in a Zip file. Or you can view the files. In addition it is necessary to add a line the first few lines of your XML file. PCT-SAFE Editor will put the following lines at the beginning of your XML file:
<?xml version="1.0" encoding="UTF-8" ?> <!DOCTYPE application-body SYSTEM "application-body.dtd"> <application-body dtd-version="1.1" lang="en-US" country="US">
You should add the following line after the second line (the "DOCTYPE" line):
<?xml-stylesheet type="text/xsl" href="us-application-body.xsl"?>
This tells Internet Explorer which style sheet to use to render the application on the screen.
Where to put TIF images. Another problem that arose turned out to be related to the TIF image files that provided the specification figures. It turns out that regardless of what authoring tool you are using to create an application-body, you will need to provide those TIF images in the same folder where the XML file is located. So I had no choice but to copy my TIF image (for my sole figure) into that folder.
Image files in PSE and ePave. Still another problem arose for me because my figure image file was 8.5 by 11 inches. While this is quite normal for US applications, PCT-SAFE is picky and will not take any image file exceeding the dimensions of A4 (metric) paper. The error message is:
arrConvert -- Object reference not set to an instance of an object.
This seems to be PSE's way of saying that my 8.5-inch image was wider than 8.27 inches. So I resized my image file to be A4 size (8.27 by 11.69 inches) and this PSE error message went away. But then when I attempted to attach the application-body in ePave I received a validation error from ePave. Some experimentation suggested that the new problem was that the image file was too long (at 11.69 inches compared with ePave's limit of 11 inches).
The way to fake out both PSE and ePave is to make each image file small enough that it will not offend PSE or ePave. To do this, crop or resize the image file to be smaller than 8.27 by 11 inches. 8.27 inches is less than 8.5 inches and is no wider than A4, so the width will not offend either program. And 11 inches is less than 11.69 inches and is no taller than 11 inches, so the height will not offend either program.
As far as I can see, this means ePave does not comply with 37 CFR section 1.84(f). Rule 84 defines two permitted drawing sizes, of which one is A4. ePave version 5.1, however, refuses to accept A4-size drawings; any drawing longer than 11 inches is refused by ePave. I have asked USPTO to fix ePave in its next release so that it will accept A4-size drawings.
What if the ePave session indicates that more editing is needed? It is normal, and to be expected, that somebody who is running ePave might find the need to go back and do more editing of the application-body. This might happen in any of several situations:
In the second or third cases the right thing to do is to detach the application-body before running PSE again. But if you try to run PSE again (after having copied the needed twenty-six files into the folder), you will get a PSE error complaining about the application-body DTD file. As far as I can tell, the only way to get PSE to run again is to delete (or rename) the application-body.dtd file. Later, when you are done revising the application and you have closed PSE, you can copy the application-body.dtd file back into the folder (or rename it back to its original name). You can then go back into ePave and attach (or try to attach) the application-body again.
A warning message from ePave. For the first few filings I did, I received a warning from ePave:
The paragraphs (element p) are not individually and consecutively numbered by assigning an Arabic numeral as a value of attribute 'num' of each element 'p' within the XML document (as specified in 37 CFR 1.52(b)(6)). #Supporting Msg: 1.
The warning also gets repeated in the Acknowledgment Receipt. This warning is not fatal to the ePave submission process and does not put the filing date in jeopardy. Kelly Hyndman found a way to fix this warning. He says:
I believe the ePave warning message about "The paragraphs (element p) are not individually and consecutively numbered ... Etc." is generated because the PSE editor might give the <p> in the Abstract the num="1" attribute. When I changed that to the number just higher than my highest num= attribute from the description, the ePave warning went away.
I tried Kelly's tip and it works perfectly. For example in one
application I authored with PCT-SAFE Editor, the last paragraph of the
specification (before the Abstract) had a paragraph tag saying:
<p id="p04" num="58"> and the Abstract had a paragraph tag saying
<p id="p02" num="1">. Using Notepad, I edited the paragraph tag of the Abstract to say
<p id="p02" num="59">. The warning went away.
What exactly was filed? How do we know it worked?
For each of these e-filings, PAIR showed the application the following day. Of the two filings I have done, one was for a client and thus must be preserved in confidence; the second was not for a client and thus I can show the entirety of the filing process here.
You can see the opening screen of the PCT-SAFE Editor. As you can see there is a drop-down menu that allows the user to specify the country in which the XML application is to be filed. "US" is among the options and it is the option to be used for ePave filings. You can see the actual XML application-body file that was created using PSE.
You can see the actual Acknowledgment Receipt. You can see the actual PAIR page and the actual IFW page that were visible the day after the application was filed. From IFW I was able to print out the first page of the filed specification as well as the figure.
Mistakes to avoid.
It appears that there are some things that are legal within PCT-SAFE Editor (PSE) that won't work within ePave. These include the following.
Inserting drawings. PSE permits inserting a "drawings section page" and a "drawings section figure." But if you try to insert a "drawings section page" then ePave will miss it and will not attach it to the ePave project. So you must use the "drawings section figure" option.
The abstract. William Stryjewski of the USPTO suggests that PSE may permit a user to create an abstract containing more than one paragraph. But ePave enforces a paragraph-count limitation of one paragraph. So you must limit yourself to one paragraph.
Steps to follow if you wish to try this yourself.
As will be apparent from the discussion above, you will get nowhere with ePave unless you provide the twenty-six needed files.
Note that you cannot and should not randomly select for this purpose any old files that happen to have the right names. On my computer, for example, I had quite a few files called "application-body.dtd":
|file named||size||in folder named||date||time||version||how it got there|
|application-body.dtd||46K||c:\epoline_1_11\dtd||July 18, 2002||12:19 pm||1.0//EN December 2001||installation of PatXML|
|application-body.dtd||46K||c:\pct-safe\temp\00000002\outbox||December 17, 2002||4:47 pm||1.0//EN December 2001||authoring a PCT patent application|
|application-body.dtd||48K||c:\program files\pct-safe editor\rules||December 19, 2003||12:33 pm||1.1//EN February 2003||installation of PCT|
|application-body.dtd||49K||c:\abx\dtd||October 20, 2003||7:44 am||1.1//EN February 2003||installation of beta version of ABX|
|application-body.dtd||49K||c:\program files\xport\res\us||March 21, 2003||6:27 pm||1.1//EN February 2003||installation of XPort|
My best guess is that a safe source for these files is the "c:\program files\xport\res\us" folder which is created when you install XPort. Stated differently, I think one good way to obtain these twenty-six needed files is to download and install XPort (if you have not already done so) and to copy them from this folder into the folder where you have created your XML file.
Steps to follow:
Should you try this yourself? For those who have e-filed patent applications with the USPTO using PASAT, it may be interesting to try filing using PSE. You might find you like PSE better that PASAT in which case this may make it easier for you to e-file in future.
For those who have not e-filed any US patent applications because of concerns about PASAT, it may likewise be interesting to try filing using PSE.
But some warnings are in order. Importantly, this combination (PSE and ePave) is not expressly supported by any single patent office. WIPO's hands are full supporting PSE in connection with PCT-SAFE Forms Manager for PCT filing, and WIPO is not in a position to work out compatibility issues with ePave. USPTO's hands are full supporting PASAT (and eventually ABX) in connection with ePave, and USPTO is not in a position to work out compatibility issues with PSE. If you start a filing project with PSE/ePave and if something goes wrong, there will be no one to turn to for help at WIPO or USPTO. As time goes on there probably will, however, be substantial informal support for cross-platform filings such as PSE/ePave through user groups such as the EFS list server.
From all this it should be clear that you ought not to tackle a PSE/ePave experiment on the last possible day for a filing. If you have a last-possible-day filing, quite frankly I recommend you file on paper. Better candidates for PSE/ePave experiments would be: