Why people don't e-file - a survey

I am told that the penetration rate for e-filing of US patent applications is now at about 1.4%. The USPTO would like it very much if the penetration rate could be much higher.

The Electronic Filing System ("EFS") email list server was set up in October of 2000 as a way for users of the USPTO's e-filing system to help each other in the use of EFS. Within a few weeks over one hundred people had joined the list and by now more than two hundred people have subscribed.

I sent emails to most of the list members, asking them why they don't e-file all of their patent applications and why they think others don't e-file all of their patent applications. I promised respondents that I would delete their names and other identifying information before quoting their responses. The responses appear below in their entirety. In this document I also offer some observations of a few clusters of comments. In a separate document I offer a few guesses and opinions about what it might take to get more e-filings. See also a white paper called PDFs and Alaska which asks whether two steps (allowing PDF filing and giving an Alaska filing date for e-filings) might help to get more e-filings.

It is important to recognize, of course, that this may well not be a representative sample of USPTO patent applicants. The sample size is small (fewer than 200 persons were invited to respond) and the number of respondents is still smaller (only about thirty persons). The persons who subscribed to the list server in the first place may not be representative of other filers, and the persons who took the time to respond to this invitation may not be representative of the membership of the list server, let alone representative of other filers. It may well be that the most realistic way to view the comments that follow is as merely anecdotal reports. I feel, however, having spoken with hundreds of patent practitioners about e-filing over the past three years, that for each practitioner quoted below, there are a multitude of other practitioners who, if asked, would have expressed many of the same views.

What may not be apparent from the text of the comments that follow is that all or nearly all of these people genuinely wish to e-file patent applications and wish to support the USPTO in its efforts to increase the penetration of e-filing. The very fact that these people responded is, I suggest, a direct indication of their interest in e-filing. It should also be appreciated that while some of these comments, indeed perhaps most of them, are in the nature of criticisms, I believe the commenters genuinely wish to be constructive in their comments.

A few clusters can be seen among the comments.

Fear of loss of substantive rights. Several commenters talked of the perceived risk associated with e-filing. With a paper filing it is extremely easy to be sure of what is going "in the Express Mail envelope" and extremely easy to catch it if something is missing. With an e-filing, say some commenters, it is not as easy to be sure of what will actually be received by the Patent Office.

We had an instance where a figure was omitted when it was attached in ePave, even though it was viewable in PASAT. We tried to petition to get the original filing date and adding the figure (which was described in the spec), but in order to do so, we had to cancel the figure. From that point on, it was difficult to convince other attorneys to want to file electronically, even if we reviewed the prepared cases ad nauseam before they were submitted.

Past experience with flaky USPTO software and "heads we win, tails you lose" policies relative to problems. We were caught up in the early mess with sequence listing filing on disk, and wound up with a bunch of applications retroactively abandoned for failure to comply with requirements because of the inflexibility of USPTO software, after we had spent over a year effectively being beta testers for the PTO's system. We don't plan to be the first on our block ever again.

A major concern is possible loss of client's rights if there is a glitch in an electronic specification that is not apparent when it is printed locally and sent via ePave. For instance, a table, equation, chemical formula, or special character (e.g., a Greek letter, or an arrow) in the text is dropped or becomes transmogrified in the "official" PTO electronic copy, or the PTO's "official" printout thereof. Although I would prefer to file applications electronically, the Express-Mailed paper copy still feels like the safest course of action.

We will not e-file for our major clients unless they specifically tell us to, since we don't want to risk damaging our relationships with them by having something get screwed up.

We do not e-file patent applications because that is more work for the assistants. It is something that they have a lot of trouble with and the attorney loses confidence in the accuracy of what is being filed.

PASAT is just too hard to use and hard to learn and is just too DANGEROUS. It just relies too hard on human quality control. I just KNOW that I will do something wrong. For example, certain characters are reserved and will be changed by the software automatically if they appear in my spec. The only solution is for a HUMAN to MANUALLY change these characters. That is DANGEROUS.

The older generation of attorneys does not trust the electronic filing system. What if the PTO does not receive the whole submission, what if a figure is omitted inadvertently, but the software said it was there?

e-IDS's are simple, they take roughly the same amount of time as filing the paper version and if a mistake is made, you are not risking the all important filing date. Therefore, it is not as big of a risk as filing the entire application electronically.

We need to be assured that if we use approved software that the result will be accepted 100% of the time - if there's a problem, the PTO should take responsibility for it and not attempt to shift blame to the user, as has been the policy in the past.

I think others feel about the same way about lack of trust in what actually gets filed as "the application," .... Also, some clients refuse to have their applications e-filed.

The current system is just too risky ...

I [do not] want to have to rigorously review each submission to ensure that the e-Filing tool hasn't reformatted parts of it, omitted parts, etc.

I've never e-Filed anything. I'd like to, but I'm afraid something will go wrong and I won't be able to fix it in time to meet a deadline.

The integrity and reliability of the system needs to be improved and documented to be beyond question.

The risk of making a mistake is very high, and making a mistake on a client's application and risking a malpractice claim is not worth the effort.

E-filing costs more and takes longer compared with paper filing. Many commenters feel that paper filing is faster and cheaper than e-filing. Most feel that they cannot pass this cost along to their clients; a few commenters actually charge their clients more for e-filings than for paper filings.

It is nice to have the serial number right away, but that does not make up for any extra time spent authoring the spec, putting the figures in the correct format, and creating the submission in epave.

The electronic filing is now costing more than to do it in paper. Therefore, the staff believes it is more efficient to just do it in paper.

The process would have to be at least as easy as filing on paper. Since filing on paper is VERY easy for us, this is a high standard.

I stopped using EFS about the time of the ePave upgrade because there was just no reason to endure the pain and extra work that EFS filings created. We have such a well-oiled machine for making paper filings quickly and easily, that it will be very hard for EFS to compete with that system.

There is actually talk in our office [of] setting a flat-fee [surcharge] for the time it takes us to prepare the e-filing.

The electronic filing is now costing more than to do it in paper.

Images take more time for e-filing as compared with paper filing.

The very tedious process needed to add in equations. They must be converted to TIF, etc. That can add hours of work to an already completed application.

It is nice to have the serial number right away, but that does not make up for any extra time spent authoring the spec, putting the figures in the correct format, and creating the submission in ePave.

Being able to file PDF patent specifications might help. Some commenters say that if they could file a patent specification by PDF rather than XML, they would do more e-filings.

[What would prompt us to do more e-filings is the ability to e-file] PDFs of the application AND drawings. Our paralegals and secretaries know how to convert from Word to PDF, and scan images into PDF.

I use a program that generates pdf files (fineprint pdf factory). All I have to do is print the document to a pdf file. Assembly of multiple documents into a single pdf document is trivial.

Let us draft our applications in the word processor of choice, convert it to pdf and then file it.

[Let us file] a PDF created with the "print PDF" feature of Word (this is how the federal court accepts filings of pleadings).

Personally, I'd like to see a web-based system where we log in and fill out a form like TEAS, and then just upload a full PDF of the application, drawings and all.

[Making e-filing at least as easy as paper filing] almost certainly means filing facsimile images of the application rather than XML.

[The USPTO should] accept PDF documents ...

PDF would be great from our perspective because we already know how to prepare it.

What is the point of putting filers through the hoops of preparing an XML submission when TIFF images are being examined?

PDF filing and a reasonable discount on fees would result in an overnight surge in e-filings. In the meanwhile, there are many excellent PDF creation programs which simply act as printers, and it isn't at all hard to just print the entire application to PDF.

I think that the pdf idea is a good one.

I fully agree that if PDF specifications were accepted that the filling rate would go up. Our firm has been using PDF documents for years to send correspondence to clients electronically; I'm sure other firms are the same way. It would be great if we could just continue our existing practice and file a PDF of the specification that is formatted in accordance with our firm's standards, versus having to fit it into those created by the PTO's software.

I bet that going with PDFs would probably increase adoption rates of e-filing, inasmuch as the application submitted will "look" exactly like what is submitted by paper

Getting an Alaska filing date rather than a Virginia filing date for e-filings might help.

They assign filing date based upon date of receipt in DC, don't they, penalizing West-coasters by 3 hours.

[In our time zone we] have to e-file at least two hours [earlier than] the deadline for Express Mail. Probably more to be sure an e-filing will be accepted because it is not as reliable as handing an Express Mail envelope to a postal worker.

From the Southern California perspective, Hawaii would be a better suggestion [than Alaska].

The Alaska time idea is appealing (Guam would be even nicer). It seems crazy that if I use Express Mail at 11:30 pm in Minneapolis, I get today's filing date but if I file electronically, I get tomorrow's date.

I can see your point about changing the time zone to Alaska for those who are outside of the PTO time-zone.

Getting a break on fees might help.

Give a break on filing fees for using e-filing, as the PCT does in using PCT-EASY. (And I mean a discount on existing fees, not an increase in fees for not e-filing - think carrot, not stick)

Given the large number of patents we file, a $100 discount would save us millions in filing fees each year. That is a number I can point to and get people motivated to put changes in place.

Cut them in half for an efile and they will get their desired result (more likely double the non-efile fee - same result).

The USPTO offers no discount in fees as there is with PCT-EASY, so why bother?

Cross-compatibility of PCT and USPTO filing tools might help.

We're really hoping for a system that is usable for both US and PCT applications.

The cross-platform compatibility between the PTO and WIPO is extremely important, and I don't think that the PTO should try to aggressively move to e-filings without working with WIPO and the EPO to ensure that all software tools can be used for e-filings in all major patent offices (PTO, EPO, IB, JPO, etc.)

Here, substantially verbatim but for deletion of names and identifying information, are the entirety of the comments.

What one or two factors keep you from e-filing most or all of your US patent applications? a) The high level of computer knowledge required to successfully deal with PASAT, and convert to XML. The level of sophistication required is above that of the average secretary or paralegal. b) The very tedious process needed to add in equations. They must be converted to TIF, etc. That can add hours of work to an already completed application. What one or two things, if changed, would prompt you to e-file most or all of your US patent applications? PDFs of the application AND drawings. Our paralegals and secretaries know how to convert from Word to PDF, and scan images into PDF. 3. Assuming that your fraction for patent applications is lower than your fraction for assignments or IDSs, what one or two factors explain why this is? a) The IDS is essentially an on-line form, that is easy enough to fill out (once you know how to avoid the bugs). A secretary can fill it out, and the attorney can come to review and do the final "signing." There is no way an average secretary can be expected to learn PASAT. KEY: It must be useable by a secretary. The ePave IDS meets this need. b) There is a huge savings in time and copy cost. Secretaries no longer have to spend hours at the copy machine with all the patent references for an IDS. Therefore, the secretaries have a big incentive to take the time to learn ePave IDS.

1. What one or two factors keep you from e-filing most or all of your US patent applications? What one or two things, if changed, would prompt you to e-file most or all of your US patent applications? Eliminate PASAT/improve ePave. More to the point, I use a program that generates pdf files (fineprint pdf factory). All I have to do is print the document to a pdf file. Assembly of multiple documents into a single pdf document is trivial. Using PASAT, on the other hand, to prepare applications is not straightforward. It requires that I train the staff in its use (not a trivial undertaking. In comparison, I can train someone to use my pdf program in 3 minutes or less). It requires that we proofread to make certain no text has been dropped and it requires that I painstakingly add my figures one at a time. Let us draft our applications in the word processor of choice, convert it to pdf and then file it. Please note, I am not wed to pdf. I am wed to the concept of post-processing the file into a format suitable for filing. The PTO could then do its own post-processing to extract the necessary information. Improve ePAVE. The program has become more complicated to use, not easier. It is not as intuitive to me a it once was. I am always muddling through it. 2. What one or two factors do you think keep others from e-filing most or all of their US patent applications? What one or two things, if changed, do you think would prompt others to e-file most or all of their US patent applications? For those that have efiled in the past, I would same the same factors as listed above in question 1. For those who haven’t, I think it is the reputation of efiling and the amount of training that is perceived to be required for efiling. Also, the firewall issues that have been encountered by many serve as barriers. Simplify the document production technology and allow us to use our own word processors and the flood gates may well open. 3. IAssuming that your fraction for patent applications is lower than your fraction for assignments or IDSs, what one or two factors explain why this is? No need to use PASAT for efiling IDS’s which eliminates attorney/staff training time. The staff can handle ePave (although I think it should be simplified more). PASAT is another matter – they can’t handle it.

I have never used any component of efiling, but I have followed efiling with interest, thinking that at some point it could be more efficient, more reliable, and/or require less training than paper filing. Based upon reading your listserv and hearing comments from others, though, it is far from any of those things: the tools are difficult to install; come with little useful documentation; are difficult to use, even when working; provide little useful information in their error messages; are not robust, in that they tend to choke on input that is accepted by the tools, if not required for a particular patent application; often break when something is updated; sometimes break when nothing is updated; and seem to be much more likely to fail than the 'til-midnight post office is to be unexpectedly closed. Beyond that, they assign filing date based upon date of receipt in DC, don't they, penalizing west-coasters by 3 hours. In view of these overwhelming disadvantages, I can't even consider devoting resources to these tools. What I would need from an efiling system is tools that successfully process every completed application I feed it, either in Word or PDF format, with essentially no hand-holding or coaxing from me; server-side components that are designed and operated in such a manner that they are virtually never down; and client-side components that generate a reliable enough record of failed attempts to file to enable the PTO to retroactively credit filing dates for failed attempts to file. Thanks for taking on this project--I concur in its importance.

1. What one or two factors keep you from e-filing most or all of your US patent applications? The software has too many built-in opportunities for failure with little the user can do to address them before they happen. What one or two things, if changed, would prompt you to e-file most or all of your US patent applications? If the PCT-SAFE or some other software that does NOT depend on an XML language were used, I would e-file for every patent

1. What one or two factors keep you from e-filing most or all of your US patent applications? What one or two things, if changed, would prompt you to e-file most or all of your US patent applications? I'm guessing here, but I think that around 98% of our US applications are filed electronically. Currently we paper file only design and 371 applications because we can't do them through ePave. If the option were available (which from your earlier message it appears will be happening), we would do those electronically as well. The only time we really file provisional and utility applications on paper is if the PTO server is down or PASAT proves too unreliable and frustrating in putting together the specification. 2. What one or two factors do you think keep others from e-filing most or all of their US patent applications? What one or two things, if changed, do you think would prompt others to e-file most or all of their US patent applications? In terms of other people not filing electronically, I think it has a lot to do with the learning curve of the PASAT and ePave software. Other people have heard too many of the nightmarish stories like "it took me 5 hours to put together an electronically filing that would have taken 30 min. on paper!" I think people are intimidated by the software at this point. The version of ePave is more user-friendly than the last, and slightly easier to figure out how to get around. However, the document seems to be still lacking and doesn't fully explain everything. PASAT is a very difficult program to learn to use. It is not very user friendly, it doesn't install easily, it can crash unexpectedly, and it is cumbersome to use with graphics and tables. We have actually had people who needed to run PASAT off of our server when working with large tables because it just kept crashing at their workstation due to how PASAT handles the tables. I think that in order to get more people to e-file, the applications need to be accepted in a variety of formats. For example, can an actual Word document be filed? A PDF created with the "print PDF" feature of Word (this is how the federal court accepts filings of pleadings). Accepting graphics in a variety of formats. The filing system for filing an opposition with the TTAB works great. You click through screens in Internet Explorer, enter your information, navigate to the PDF or JPG images of your pleading, and attach them. Click submit and you're done. Is this simple, user-friendly system something that can be modified to fit the patent system? 3. Assuming that your fraction for patent applications is lower than your fraction for assignments or IDSs, what one or two factors explain why this is? While we do file most of our applications electronically, I will presume for a moment that we do not. If we were filing more IDS's and Assignments electronically than applications, I would immediately say it is because they are easier to file. My first observation is that filing either of those does not require use of the authoring tool PASAT. Also, with the IDS's you don't have to deal with graphics files at all. I think the PTO is on the right track by making the authoring tool easier to use. However, I think they are going to have to do a lot of promoting of it to get people to be willing to look at it.

1. What one or two factors keep you from e-filing most or all of your US patent applications? What one or two things, if changed, would prompt you to e-file most or all of your US patent applications? There is no benefit to us filing electronically versus filing in paper, such as a reduction of fees. It is nice to have the serial number right away, but that does not make up for any extra time spent authoring the spec, putting the figures in the correct format, and creating the submission in epave. However, if we could save the client a couple hundred dollars in the filing fee, then it might make up for any extra time expended. Currently, there are no incentives to file electronically and we are fighting older generations that are not comfortable with the idea. 2. What one or two factors do you think keep others from e-filing most or all of their US patent applications? What one or two things, if changed, do you think would prompt others to e-file most or all of their US patent applications? The staff people creating either the spec or the submission, lose any time saved doing it electronically when they encounter an error. At which point, they call in the attorney or support personal or the EBC and try to fix the problem. Maybe it works, maybe it doesn't. The electronic filing is now costing more than to do it in paper. Therefore, the staff believes it is more efficient to just do it in paper. Also, the older generation of attorney's do not trust the electronic filing system. What if the PTO does not receive the whole submission, what if a figure is omitted inadvertently, but the software said it was there? These types of arguments are difficult to overcome. If the PTO had some "Good Faith" standard in place when filing electronically, such that if there was a mistake or omission, it would not cost the applicant their filing date, then more would likely file electronically. We had an instance where a figure was omitted when it was attached in EPave, even though it was viewable in PASAT. We tried to petition to get the original filing date and adding the figure (which was described in the spec), but in order to do so, we had to cancel the figure. From that point on, it was difficult to convince other attorneys to want to file electronically, even if we reviewed the prepared cases ad nauseam before they were submitted. 3. Assuming that your fraction for patent applications is lower than your fraction for assignments or IDSs, what one or two factors explain why this is? EIDS are simple, they take roughly the same amount of time as filing the paper version and if a mistake is made, you are not risking the all important filing date. Therefore, it is not as big of a risk as filing the entire application electronically.

1. What one or two factors keep you from e-filing most or all of your US patent applications? No one is familiar with the software at my firm. Initial review of the software suggested it would take longer to file an application electronically than on paper. Initial review suggested that the software was not compatible with our document management system (PC Docs, now iManage). We have been very busy lately and did not have much time to invest in learning how to use the software. What one or two things, if changed, would prompt you to e-file most or all of your US patent applications? Make it completely compatible with the document management system. (Note- we are now downloading the e-file software and will test it out. We are now targeting Dec. 2004 as a date for doing all our applications electronically.) Easier to use- e.g. paste specification into software, and it will identify claims/abstract/etc. sections automatically, with the user only needing to confirm sections. After the text of the application is prepared, take less than 15 minutes to complete and file e-application. Have the PTO use it for national stage filings. Make it extremely bug-proof and very user-friendly (but not dumbing it down). Use PDF for scanned attachments in addition to Tiff. 3. Assuming that your fraction for patent applications is lower than your fraction for assignments or IDSs, what one or two factors explain why this is? We don't do any e-filings, so not applicable. Our faxing paper assignments to the PTO is working quite well, so we are not planning any changes to this program.

1. What one or two factors keep you from e-filing most or all of your US patent applications? a) Instability and difficulty of use of the USPTO software. b) Lack of any real incentive for doing so. Our clients aren't interested in paying us to learn the system or put up with its idiosyncrasies and failures, and the USPTO offers no discount in fees as there is with PCT-EASY, so why bother? c) Past experience with flaky USPTO software and "heads we win, tails you lose" policies relative to problems. We were caught up in the early mess with sequence listing filing on disk, and wound up with a bunch of applications retroactively abandoned for failure to comply with requirements because of the inflexibility of USPTO software, after we had spent over a year effectively being beta testers for the PTO's system. We don't plan to be the first on our block ever again. What one or two things, if changed, would prompt you to e-file most or all of your US patent applications? a) Work the bugs out of the system, so it can be relied on to work nearly all the time. That means both the client and server portions need to work, and we need to be assured that if we use approved software that the result will be accepted 100% of the time - if there's a problem, the PTO should take responsibility for it and not attempt to shift blame to the user, as has been the policy in the past. b) Make it compatible with computer systems currently in use, which means MS Word, in this day and age. PDF compatibility would be OK, too. If XML is to be the standard, make sure it works correctly for cut-and-paste or automatic conversion without introducing errors or differences. c) Give a break on filing fees for using e-filing, as the PCT does in using PCT-EASY. (And I mean a discount on existing fees, not an increase in fees for not e-filing - think carrot, not stick) I spoke to several of the vendors at the AIPLA convention a few weeks ago, and I think we will try the software from one of them (the one which gave away the software and charged by the filing - forget their name). 3. Assuming that your fraction for patent applications is lower than your fraction for assignments or IDSs, what one or two factors explain why this is? Not applicable, as we don't e-file either IDSs or assignments. We are considering e-filing assignments soon, though - the reason is the extreme slowness of the USPTO in recording assignments, and the impact this is having on our foreign practice. The patent side of the USPTO might learn something from the trademark side on e-filing. The original e-filing system for trademarks was clunky and unusable, and we dropped out of the beta system quickly. Then TEAS debuted, and it was just what was needed. Long before they increased the fees for paper filing, we had converted to 100% e-filing on trademarks. The patent side should come up with something comparably easy to use, and they'd have a winner. Personally, I'd like to see a web-based system where we log in and fill out a form like TEAS, and then just upload a full PDF of the application, drawings and all. There is commercially available software which can OCR from PDF's and convert it directly to MS Word - I'm sure the PTO could get something similar if they wanted to convert to a text file.

1. What one or two factors keep you from e-filing most or all of your US patent applications? 1. My perception is that PASAT and ePave, to a lesser extent, are still "buggy." A major concern is possible loss of client's rights if there is a glitch in an electronic specification that is not apparent when it is printed locally and sent via ePave. For instance, a table, equation, chemical formula, or special character (e.g., a Greek letter, or an arrow) in the text is dropped or becomes transmogrified in the "official" PTO electronic copy, or the PTO's "official" printout thereof. Although I would prefer to file applications electronically, the express mailed paper copy still feels like the safest course of action. This is especially true for jumbo applications containing many drawings, tables, sequence listings, etc. It is also my impression that PASAT may be dropped by the USPTO in favor of some other authoring tool. Thus, until the uncertainty about authoring tools is resolved, I hesitate to spend a lot of time training myself and my secretary on PASAT. I would e-file more US patent applications if my level of trust in the system was sufficient, and if PASAT and ePave were easier to learn and use. Suggestions: Offer internet web-based training classes (like WebEx) for using PASAT and ePave. Show me how to insert tables, equations, formulas, Greek characters, symbols, etc. into the text. Expand the list of symbols that PASAT will accept. Consider providing a "practice filing" capability for beginners before submission of the "real" application. Make the ePave validation error messages more specific about the exact location and, if possible, the nature of the problem (e.g., unacceptable character, like a dash or quotation mark). 2. What one or two factors do you think keep others from e-filing most or all of their US patent applications? What one or two things, if changed, do you think would prompt others to e-file most or all of their US patent applications? 2. I think others feel about the same way about lack of trust in what actually gets filed as "the application," and the time required to learn and use PASAT and ePAVE. Also, some clients refuse to have their applications e-filed. 3. Assuming that your fraction for patent applications is lower than your fraction for assignments or IDSs, what one or two factors explain why this is? 3. My use of eIDS filing exceeds my use of e-filed applications because there are fewer problems with assembling the IDS submissions. Also, there is much less chance of irretrievable loss of any rights.

1. What one or two factors keep you from e-filing most or all of your US patent applications? What one or two things, if changed, would prompt you to e-file most or all of your US patent applications? The single greatest factor keeping us from e-filing is our clients. Our clients have not instructed or encouraged us to e-file, and (I think) have the same concerns regarding e-filing that we do (outlined below). They have no incentive to encourage us to e-file, and --ironically-- innovation is not encouraged within corporate law departments, even for technology enterprises. Basically, the clients will need to see some significant advantage to e-filing before they will take the leap. And we will not e-file for our major clients unless they specifically tell us to, since we don't want to risk damaging our relationships with them by having something get screwed up. The second most significant factor is FUD (fear, uncertainty, doubt). This actually has a number of components: scepticism that the e-filing software actually works (particularly since we can't even get our private PAIR access to work properly across our firewall, and frequently read stories of problems with e-filing on this and other list-servs and forums); complexity of the e-filing software (authoring tools as well as filing tools); and doubt as to the long term viability of existing e-filing programs (PASAT has been a piece since day one, and the PTO announced a long time ago that they would abandon what they are currently using for something compatible with the EP and JP). The current system is just too risky, will cut into our efficiency, and won't be around for very long anyway. Basically, a simple, fully integrated system (both authoring and filing tools) easily used with existing authoring tools (e.g., Word) is required, having stability (very low occurrences of problems) and widespread acceptance/acclaim over a period of about a year, and a commitment by the PTO to maintain the same system (or adopt only fully backwards-compatible systems) for the foreseeable future. As long as the PTO sticks with their current low-budget, patchwork, buggy, change-du-jour approach with no incentives to e-filing, we won't make the switch.

1. What one or two factors keep you from e-filing most or all of your US patent applications? What one or two things, if changed, would prompt you to e-file most or all of your US patent applications? For me, the apparent lack of WordPerfect support is a deal-breaker. Our office (14 attorneys) continues to use WordPerfect as its main word processor. Another very important factor is the apparent proliferation of various gotchas that I see discussed via your [EFS] listserv. I've monitored the listserv virtually from its inception. I've been extremely impressed by the efforts of the pioneers who have invested heavily and selflessly to make eFiling work in their practices, no matter what. But, the scope and magnitude of those same efforts has dissuaded me from jumping into EFS. Rightly or wrongly, my perception is that a huge initial effort would be required to start eFiling cases and that I could be ambushed at any time by snags that befuddle the experts. 2. What one or two factors do you think keep others from e-filing most or all of their US patent applications? What one or two things, if changed, do you think would prompt others to e-file most or all of their US patent applications? What keeps me from eFiling is the lack of strong WordPerfect support for complex cases (i.e. electronics cases with lots of math). Also, having put the necessary effort into preparing an application via WordPerfect & Visio, I do not want to have to spend more time reformatting anything. In my mind, that part of the job is finished. I'd like to be able to paste my specification & drawings directly into an eFiling tool and submit it to the PTO, without having to laboriously reformat sections, present equations as images, etc. Nor do I want to have to rigorously review each submission to ensure that the eFiling tool hasn't reformatted parts of it, omitted parts, etc. 3. Assuming that your fraction for patent applications is lower than your fraction for assignments or IDSs, what one or two factors explain why this is? I've never eFiled anything. I'd like to, but I'm afraid something will go wrong and I won't be able to fix it in time to meet a deadline.

1. What one or two factors keep you from e-filing most or all of your US patent applications? Difficulty of preparing an application for electronic filing. Uncertainty of what has been filed. Lack of reliability of preparation software and the filing system itself. What one or two things, if changed, would prompt you to e-file most or all of your US patent applications? The process would have to be at least as easy as filing on paper. Since filing on paper is VERY easy for us, this is a high standard. This almost certainly means filing facsimile images of the application rather than XML. ePave could be cleaned up and streamlined. It isn't a show stopper for me but it could be better. The integrity and reliability of the system needs to be improved and documented to be beyond question. 2. What one or two factors do you think keep others from e-filing most or all of their US patent applications? Inertia. Technophobia. Strange but true for patent attorneys, many of whom specialize in computer related inventions. Lack of confidence in the integrity and reliability of the system. What one or two things, if changed, do you think would prompt others to e-file most or all of their US patent applications? Making scanning of informal drawings easier. But this is not something that the PTO can do much about as far as I can see so I guess there need to be incentives to e-file that would cause firms to tackle this issue. This is not an issue for me because I always prepare my drawings electronically to begin with. (And, yes, I can do hand sketches that are better than most.) Maybe the PTO could accept drawings or even entire applications by FAX for people who are willing to accept the security level of a FAX submission. Economic incentive for e-filing. No time penalty for e-filing. We have to e-file at least two hours before the deadline for express mail. Probably more to be sure an e-filing will be accepted because it is not as reliable as handing an express mail envelope to a postal worker. Legal requirement to e-file. (Ugh, but sadly that is probably what it will take. Look at the PASAT experience for better data on what it takes to get people to make a big change in procedures. Patents will be at least an order of magnitude more of challenge.) 3. Assuming that your fraction for patent applications is lower than your fraction for assignments or IDSs, what one or two factors explain why this is? Ignoring our current technical problems with filing eIDSes, we file virtually all IDSes for US references electronically. The only time we would make a paper filing would be when we have a paper IDS in a parent case that we can copy and file without references. We file IDSes electronically because it is less work for the assistants to it that way since they don't have to copy the references. We NEVER file assignments electronically. They would always have to be scanned. Our FAX machine is more convenient than our scanner and the FAX filing procedure for assignments works very well. I file all assignments by FAX. I don't know how widespread that is throughout the firm. I can only assume that anyone filing assignments on paper is doing so because they haven't thought about any alternatives. We file assignments on FAX because that is less work for the assistants. We do not e-file assignments because that would be more work due the need to use our inefficient scanners. We do not e-file patent applications because that is more work for the assistants. It is something that they have a lot of trouble with and the attorney loses confidence in the accuracy of what is being filed.

1. What one or two factors keep you from e-filing most or all of your US patent applications? What one or two things, if changed, would prompt you to e-file most or all of your US patent applications? 1) PASAT seems to take over and highly modify Microsoft Word. That's not a good thing. 2) The risk of making a mistake is very high, and making a mistake on a client's application and risking a malpractice claim is not worth the effort. 3) I'm a techie, and the present system is very complicated. Based on the comments on your web site, the software is also buggy. 3. Assuming that your fraction for patent applications is lower than your fraction for assignments or IDSs, what one or two factors explain why this is? I've never filed a patent application electronically, but I'll bet risk and complexity are the primary reasons.

1. What one or two factors keep you from e-filing most or all of your US patent applications? What one or two things, if changed, would prompt you to e-file most or all of your US patent applications? PASAT is just too hard to use and hard to learn and is just too DANGEROUS. It just relies too hard on human quality control. I just KNOW that I will do something wrong. For example, certain characters are reserved and will be changed by the software automatically if they appear in my spec. The only solution is for a HUMAN to MANUALLY change these characters. That is DANGEROUS. Generating individual TIFFs for equations separately by hand is just ridiculously cumbersome. If generating a spec were as easy as generating a PDF file (i.e., as simple as pressing "print" on my software), then that would be enough to make me use the system. (Note that I'm not saying PDF format is or is not suitable, I'm just saying the ease of use I'm seeking.) If the software were as good as PCT-EASY, I would e-file.

[...] there are two major enhancement that would be required for our firm to file cases electronically. 1) accept PDF documents and 2) Enhance e-pave to allow populating bibliographic data fields from our database. With these two enhancements we would virtually file all of our (4000 per year) applications electronically. We would be more than willing to use the existing PAIR infrastructure for secure transmissions. One could go on with much more verbiage, but the bottom line is pretty simple -- you have to be able to integrate e-filing into the firm's business processes without causing any or very little additional resources to be expended. The [above-mentioned] two enhancements would fulfill that requirement.

At least for us, given a choice between e-filing and paper for assignments we would go to paper. We just don't have good scanning facilities and no motivation to improve them thus far. (I've been whining about it for years. My wife works in a 2 attorney non-patent firm that has better facilities for scanning than any of our offices.) I agree that image submissions will move things forward. PDF would be great from our perspective because we already know how to prepare it. I have heard that the EPO has found a few odd cases where PDF did NOT properly represent the original document and they prepared their own PDF software as a result. I would not be happy about the PTO translating submitted PDF to the format used in their image based EFW system. I would rather submit e-filings in the image format that the PTO is going to use as long as that doesn't increase the difficulty of preparing the submission very much. Done right, it shouldn't increase the difficulty at all. Images are much easier to have confidence in than XML.

Patent filing fees are probably not high enough to provide an incentive for e-filing even if e-filing were free given the current difficulties in e-filing. There should be fee differentials for e-filing because patent fees are supposed to reflect the actual costs of processing applications. The fee differences reinforce the message that e-filing is improving things at the patent office. But e-filing MUST be made easier, more reliable, and easier to have confidence in before it will move forward.

Alaska is a harsh sounding suggestion. You've been in the brisk Colorado air too long. From the Southern California perspective, Hawaii would be a better suggestion. Suggest that the USPTO electronic receiving office, including the people you talk to, be moved to Hawaii if they are not otherwise persuaded of the merit of this idea. That won't work with your idea of Alaska! Plus Hawaii buys you one more hour.

Water flows downhill. Patent applications will be filed in the easiest way possible. Most of the actual filers do not pay the filing fees. They will do whatever is easiest and least nerve racking for them. efiling has to easier than paper to be used on a widespread basis.

By way of background, I am the unofficial tester of EFS for my firm of approximately 100 attorneys. We file about 1,800 patent applications a year. I have filed about 10 applications by EFS but I stopped using EFS about the time of the ePave upgrade because there was just no reason to endure the pain and extra work that EFS filings created. We have such a well oiled machine for making paper filings quickly and easily, that it will be very hard for EFS to compete with that system. Filing of eIDSes has been very popular at our office but that has been suspended for the time being because we have some sort of issue that now prevents our computers from making the necessary connection for electronic filings. eIDSes are popular because the US references don't need to be submitted. It will be interesting to see what happens when the requirement for submission of US references is dropped for all forms of filing. Point 1: Make the connection for electronic filing easier for computers that are behind firewalls to encourage more applications to be filed electronically.

An important realization I had when contemplating what was wrong with EFS is that the USPTO has a lot of expertise in a lot of areas. But they do not have any expertise at PREPARING a patent application. That should be painted in big letters on all four walls of the offices of everyone working on implementation of EFS.

I would now propose that the format of the EFW as supplied by PAIR become the lingua franca of EFS submissions at least for an interim period. What is the point of putting filers through the hoops of preparing an XML submission when TIFF images are being examined. Undoubtedly it would be much better for publications if they had XML, but realistically they aren't going to get it. PERIOD. End of discussion. Insisting on XML only means the USPTO is not going to get any meaningful number of electronic patent submissions thus requiring the insanity of scanning paper submissions to provide the images used for the EFW indefinitely. Allowing users to submit an image in the form used in the EFW so that NO further processing other than unpacking and validation is required will work if decent tools are made freely available to prepare such submissions. There are open-source tools that do 90% of the work necessary so it wouldn't take much to supply such tools.

While not an official statement for [my company], a few reasons I believe my employer does not e-file applications: 1) PASAT software is buggy. There has been talk for some time that newer/better software was on the horizon. We just decided to wait to see if the newer/better software was in fact better. 2) Non-standard network ports. The e-file process uses non-standard web traffic ports. These ports are blocked by corporate firewalls. When dealing with a very large corporation with tons of confidential information on their networks, these are not an easy thing to get opened. While not impossible to achieve, there has been little motivation given that PASAT is buggy and the fact that its hard to quantify the upside to e-filing. 3) People are simply comfortable with the standard paper practice. A few things that I think would definitely interest [my company]: 1) Expedited prosecution for e-filed applications. In a few art areas, we are receiving the first office action four and half years after filing. We might be even willing to pay an additional fee to get expedited prosecution these areas if given some sort of guarantee to when the first office action is received. However, we are unwilling to make the type of showings required by current make special practice due to the possible estoppel effects. 2) Filing fee discounts for e-filed applications. Given the large number of patents we file, a $100 discount would save us millions in filing fees each year. That is a number I can point to and get people motivated to put changes in place.

1. Provide a product/process that will easily and accurately convert Microsoft Word documents and .pdf (or other types) of drawings to .xml format for submission through ePave. PASAT has gotten a lot of bad press, and our attorney's aren't willing to invest the time to try something that they don't think will work. 2. Realize that it takes a lot of time (and therefore expense) to test software compatibility on network computer systems, develop training programs, and convince attorneys/assistants that they should use a new system when their old system works just fine and they don't see any benefit in changing. 3. It is very disheartening when a new software version (ePave 5.1) causes more problems or is more difficult to use than the previous version. [Our company] has an issue with every version of ePave because we do not use Port 80 to transmit outgoing internet communications. At least in ePave 4.1 we could change the .ini file so that the fix was transparent to the users. For ePave 5.1 we have to run a second piece of software just to transmit. On top of that, it took me a whole month of phone calls back and forth to the EBC coordinating times to talk to the developers, before they figured out the problem and sent us the "fix" (extra software). We sincerely hope that the developers are listening to our concerns and that the next version of ePave will take care of these issues, but we won't know until the next version is released. 4. An attorney and I are planning to attend the training session available at the PTO. However, I would suggest that the PTO provide regional training sessions to make it easier for people to attend, with a lot of good publicity to attract people.

[...] if the priority in the PTO is e-filing, they should make it as easy and advantageous as they can. PDF filing and a reasonable discount on fees would result in an overnight surge in e-filings. If, as you say, they aren't using the XML tags anyway, there's no gain and much to lose in requiring it. [Note that XML-tagged bibliographic data is being used, for example to populate PALM.] The newest version of MS Word (Office 2003) is supposed to be able to write XML code directly, so maybe at some point when most people have adopted MSW2003, the XML tagging can become automatic. The argument that XML is somehow more "standard" than PDF is really nonsensical - every computer standard evolves over time. HTML is "standard", too, but how many changes have there been since you put your website up? With Microsoft now embracing XML we can be sure that there will be a few more incompatible XML forms coming in soon. The same is true of the TIFF "standard" they adopted for drawings - there are many flavors of TIFF, more or less incompatible even within a single flavor. In the meanwhile, there are many excellent PDF creation programs which simply act as printers, and it isn't at all hard to just print the entire application to PDF.

I believe that it is very important to have patent documents in XML format, rather than PDF. PDF is very acceptable for declarations, assignments, and drawings. However, conversion from PDF to full-text can be spotty, and I believe that the PTO should continue to require submission of specifications in XML. As for claims, even though they are often amended, I still believe that claims should also be submitted in XML, again because of problems converting documents from OCR to full-text. Perhaps this begs the question regarding e-filing Amendments. I think the PTO should be seriously looking into this matter. By e-filing Amendments via XML, the text of the claims should presumably be exactly as the applicant/client/practitioner intended, and the remarks can be pasted from a word processing document. I have not thought much about this topic, so I don't have many ideas/opinions on the matter, but I think the PTO needs to accept documents in XML to avoid problems with OCR. XML should also reduce the need for certificates of correction.

As for Alaska filings, I don't think this would cause me to file more applications electronically versus on paper. I still don't want to stay at work until 4am in order to file something by midnight Alaska time. In our practice, our mailroom handles express mail packages until 8pm, and after that time, we can take a cab to the main post office, 7 minutes away. Therefore, there is no pressing need to file applications electronically in order to avoid having to drive a long distance to the nearest 24-hr post office.

The cross-platform compatibility between the PTO and WIPO is extremely important, and I don't think that the PTO should try to aggressively move to e-filings without working with WIPO and the EPO to ensure that all software tools can be used for e-filings in all major patent offices (PTO, EPO, IB, JPO, etc.) It serves no goal if a software program is written and released, and then one or two years down the line, it must be rewritten for compatibility with other patent offices

[Would a filing-fee discount prompt you to e-file?] First, the discount has to offset the increased overhead costs to our firm in efiling. I doubt that it would. Second, it is easy to pass along a government fee to a client. It is not as easy to pass along increased attorney costs to the client, even if in the end, the cost to the client is the same (which I doubt it would be). My instinct is that even with a reduced filing fee, we would end up eating some of the increased time.

[Would e-filing on Alaska time prompt you to e-file?] The Alaska time idea is appealing (Guam would be even nicer). It seems crazy that if I use Express Mail at 11:30 pm in Minneapolis, I get today's filing date but if I file electronically, I get tomorrow's date.

[Would an ability to e-file PDFs prompt you to e-file?] I think that the pdf idea is a good one. I would have no problem if the PTO required that the file be text searchable, nor would I have any problem if they required certain marks indicating delineations between sections so that at a later date, they could post process the data in appropriate ways. Using PASAT in its present form, however, introduces complexity in many cases including the case where one has multiple images to incorporate into the specification. The images must be added one at a time. In the pdf system that I envision, all of the images could be concatenated in a single 'shot'. Another enticement to efiling would be to offer earlier examination.

Eliminate PASAT and just attach the word file to ePave. PASAT has too many quirks thereby taking up way too much time in preparing the application just to file, sometimes up to 4 hours.

I fully agree that if PDF specifications were accepted that the filling rate would go up. Our firm has been using PDF documents for years to send correspondence to clients electronically; I'm sure other firms are the same way. It would be great if we could just continue our existing practice and file a PDF of the specification that is formatted in accordance with our firm's standards, versus having to fit it into those created by the PTO's software.

I can see your point about changing the time zone to Alaska for those who are outside of the PTO time-zone. For us, it has never been an issue as we are in the same time zone as the PTO. I think overall that it couldn't really "hurt" anyone by changing the time zone. What would be very interesting is if they could change it so that the time-stamp is set off of the time zone the application is filed in. For instance, if the time zone were changed to Alaska, I would essentially get extra hours to file my application, but the people in Alaska don't get any extra time. If the time were generated by the zone in which the application is generated (as it would be with a paper filed application), each applicant would have the same amount of time to file.

I find your comment about how much extra time it takes to e-file very interesting. In our experience, we have found that having a few staff members trained on how to e-file applications has greatly reduced our preparation time for most applications. For some, mainly those with numerous tables, it takes the same amount of time - perhaps longer - to prepare an e-filing. However, the faster prosecution of the applications more than makes up for the longer time in processing the specification internally. There is actually talk in our office in setting a flat-fee for the time it takes us to prepare the e-filing.

I have been monitoring the e-filing process for a few years. We have been holding off on filing electronically for the most part because of the problems associated with the current system and we wanted to wait until the alternatives were developed. I had attended a meeting a few years ago by a law firm in Chicago which went through the current system and they described their need to develop a macro in order to correct all the mistakes made in their applications by utilizing the current system. It sounded very cumbersome. We decided we were not interested in going that route and would wait until either the system improved, or another system was available. That is basically what we are waiting for. We still have every intention of going in this direction eventually--but we're really hoping for a system that is usable for both US and PCT applications. Hope this information helps.

I can tell you why my firm is not rushing to e-file patent applications. From everything we see on this discussion list, the software is still very buggy. Many times, we do not get the applications in final form (everything from client delays to inventor delays) until 5:30 or 6:00 p.m. that evening. With chemical applications and the many formulas and tables it simply isn't feasible to stay to midnight to try to put into electronic format an application that may or may not be accepted by ePAVE and then have to make a last minute 15-mile rush to the 24 hour post office by the airport in [name of city redacted]. Secondly, we currently don't have any clients that are pushing us to e-file. Nobody wants to be the guinea pig and have the admin learning curve charges applied to them - though I'm sure we wouldn't do so. Finally, our office is rather large and we are network based with the PCDocs document handling system. Try as I might, I have not been able to get IT to see the benefit of a stand-alone computer to avoid the corruption of the .tif files in converting them from VISIO to the proper compression. So I feel like a moth against a flame at times.

[...] my primary client is a large corporation that does not e-file. Every so often I ask some of their attorneys why they don't, and some of the answers are astounding -- many believe that e-filing is no longer even done, since the announcement came out that the USPTO is looking to adopt the EPO's software for filing. The bugginess of the original version of Pasat has also lead them to not consider e-filing for the near future. I think what needs to be done is to look at the top 10 or 20 biggest filers of patent applications (of which my client is one), and have the PTO personnel make personal trips to their offices, to impress upon them the need and importance (and the benefits and convenience) of e-filing. If you can get a good chunk of those largest filers telling their law firms that patent applications "must" be e-filed, then the attorneys will respond. It really has to be client driven, however. Law firms are very conservative by nature, and I don't think that they're going to do this unless they're told by their clients that they have to.

This commenter went on to say:

I bet that going with PDF's would probably increase adoption rates of e-filing, inasmuch as the application submitted will "look" exactly like what is submitted by paper (indeed, for the large client I mentioned in my original email, for at least some of their offices, I report the filing of the application by emailing them a PDF file of the application papers!).

While I am now doing all my trademark filings electronically I have not electronically filed any patent applications. There is one primary reason that I have not been filing patent applications electronically. I have been led to believe that the current software for filing patent applications is soon to be replaced. Rightly or wrongly I have not been willing to invest the time learning a program that appears to be complex and to have many problems. If the Office wants to increase electronic filings they must either introduce the software programs under development or convince me that the current software is worth using now.

- PASAT and ePave are too buggy. while the planets are usually aligned and efilings go through without trouble, often enough to drive users away something creeps in to the filing wasting more time than would have been required to just have an admin photo-copy and file the application. Any revisions/updates are anxiously awaited. -vapor ware. the above point taken, I expect the majority are waiting for the often discussed "next" version before diving in. even worse, the commissioners statement that he will harmonize with the EPO filing system puts the final form of efiling years away. why bother with it if it is going to change 180 degees? - cost of adoption. attornies responsible for billable hours take a huge hit trying to get up to speed with efiling rather than just turning over the application to an admin. efiling also represents an aberation to whatever docketing/admin procedures exist, creating uncertainty. - incentivize via filing fees. cut them in half for an efile and they will get their desired result (more likely double the non-efile fee - same result). - incentivize application priority. make a public policy statement that efiles are given Examiner docketing priority status. perhaps extend the PTE time limits for non-efiled applications. - support software in use. do they expect everyone to do the back door windows XP adaptation? How about designating a commonly available and or free image application. Perhaps these items are already part of the next version (see vapor ware comment, above).