Patent office's paperless push sparks industry criticism

Until the Patent and Trademark Office can fully demonstrate that its electronic database functions reliably, the agency should not implement a plan to eliminate paper patent and trademark files, a group of patent searchers said Thursday.

As the PTO prepares to move to new facilities in Alexandria, Va., as part of its modernization effort, the agency proposed replacing its vast public collection of paper files with an electronic system. With some patent applications averaging thousands of pages, "we're drowning in paper," said PTO spokeswoman Brigid Quinn.

The proposal would make the electronic database the sole mechanism for the agency's examiners to conduct searches for verifying the merits of patent applications.

The PTO held a public hearing Thursday for feedback on the proposal, where patent searchers--people retained by law firms or inventors to search out "prior art" to reveal whether an invention is truly new--urged Patent Commissioner Nicholas Godici and Trademark Commissioner Anne Chasser not to go "paperless."

Former PTO patent examiner Joseph Clawson submitted testimony in which he called the electronic system "inferior to the existing classified library" because the electronic information is missing, incomplete or illegible. Keyword searches in the patent databases, for example, frequently omit necessary files because the search terms do not match information contained in the patent abstract or because the files are poorly classified, he said. And for patents containing graphic renderings of inventions, a computer image cannot suffice for a paper print.

According to a recent study by the National Intellectual Property Researchers Association (NIPRA), the PTO's trademark databases, X-search and the Trademark Electronic Search System (TESS), contained errors or omissions that affect nearly 52 percent of all applications. About 25 percent of the applications contain only a portion of the required features for a complete file.

Robert Weir, who represented NIPRA at the hearing, added that other online systems are simply not as reliable as they should be and that potential errors in patent approvals are mitigated through the use of the paper filing systems.

Randy Rabin, president of PatentArts, said there is no sufficient mechanism to report or correct incomplete files and errors. And relying on incorrect information can lead to invalid patents, which can cost companies hundreds of thousands of dollars.

"Electronic search systems are more efficient and effective than paper-based searching," Quinn said. She added that the agency will consider public comments and suggestions that could aid the development of the electronic system.

Douglas Bourgeois, the PTO's chief information officer, noted that the electronic systems are redundant and have several back-up sources. Moreover, internal PTO surveys reveal that error rates are much lower on the TESS database. Even the paper files are imperfect, according to industry sources.

Intellectual property lawyer James Chandler praised the electronic system, calling it a "tremendous value" for intellectual property lawyers and researchers. "I think it is one of the greatest development," he said, noting that his law firm can check the PTO Web site for the status of pending applications. "It saves the clients money, and it saves us time and resources."