Internet Usage Policy

DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No. 980326078-9120-02]

Internet Usage Policy

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Notice.

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SUMMARY: The Patent and Trademark Office (PTO) is publishing the final

Internet usage policy to provide guidance to PTO employees regarding

the use of the Internet for official PTO business. The policy covers

communications with applicants via Internet electronic mail (e-mail),

and using the Internet to search for information concerning patent

applications and elements appearing in trademark applications.

Guidelines for citing electronic information are provided in the

attachment.

DATES: The Internet usage policy is effective June 21, 1999.

FOR FURTHER INFORMATION CONTACT: Magdalen Greenlief, by mail to her

attention addressed to Box Comments--Patents, Assistant Commissioner

for Patents, Washington, D.C. 20231; by telephone at (703) 305-8813; by

facsimile transmission to (703) 305-8825; or by electronic mail through

the Internet to ``[email protected]''.

SUPPLEMENTARY INFORMATION: The PTO published a ``Request for Comments

on Proposed Internet Usage Policy'' in the Federal Register on October

26, 1998 (63 FR 57101) and in the Official Gazette of the Patent and

Trademark Office on November 17, 1998 (1216 OG 74). The proposed policy

is being adopted without change. The attached guidelines for citing

electronic information have been revised.

Discussion of Public Comments

Sixteen comments were received by the PTO in response to the

request for comments. All comments have been fully considered. The

comments generally support (1) the use of Internet e-mail for

communications between applicant and the PTO, and (2) the use of the

Internet to perform searches provided the confidentiality of pending

patent applications is not compromised.

[[Page 33057]]

Comments concerning the patent provisions are addressed separately from

the comments concerning the trademark provisions.

(A) Comments Concerning the Patent Provisions

Comment 1: One comment stated that Internet e-mail will have a very

limited use in view of the fact that proposed Patent Article 5 limits

the use of the Internet e-mail for communications that do not require a

signature. It was suggested that the PTO establish an Extranet at its

earliest convenience to which signed documents can be sent.

Response: The PTO will take the suggestion of establishing an

``Extranet'' under advisement. The PTO is actively planning other

options such as digital signatures, digital certificates, encryption

and public key/private key encryption.

Comment 2: One comment suggested that there should be no

limitations as to the types of correspondence that may be communicated

via Internet e-mail and that e-mail with message encryption with

verifiable digital signatures should have the same weight as

communications in paper or facsimile.

Response: The PTO is limiting the use of Internet e-mail to

communications other than those under 35 U.S.C. 132 (responses to a

notice of rejection) or which otherwise require a signature. The PTO is

considering how to best handle electronic signatures and how to

internally process e-mailed responses to a notice of rejection. Based

on the experience gathered with the limited use of e-mail, and after

further study and development, the PTO hopes in the future to accept

the electronic filing of communications under 35 U.S.C. 132 and

communications which otherwise require a signature.

Comment 3: One comment suggested that the use of e-mail should be

expanded and urged the PTO to ensure that e-mail sent to it can be

securely transmitted and reliably stored. An example of such expanded

use would be the sending of draft claims to a patent examiner prior to

a telephonic/personal interview.

Response: Communications via Internet e-mail are at the discretion

of the applicant. If applicant wishes to communicate with the PTO on an

unsecure medium, applicant is doing so at his/her own risk. Article 5

of the Patent Internet Usage Policy does not prohibit applicant from

using the Internet e-mail to transmit draft claims to a patent examiner

prior to a telephonic/personal interview. If applicant chooses to

transmit a copy of the draft claims via Internet e-mail to the patent

examiner prior to a telephonic/personal interview, applicant may do so.

However, since the correspondence would contain information subject to

the confidentiality requirement as set forth in 35 U.S.C. 122, the

patent examiner will not respond to applicant's communication via

Internet e-mail unless there is a written authorization by applicant in

the application file record. The patent examiner may respond by

telephone, or other appropriate means. A printed copy of the Internet

e-mail communication will be made of record in the application file.

Comment 4: One comment suggested that some simple or routine

correspondence of a non-confidential nature (e.g., interview scheduling

requests, inquiries as to whether a document has been received by the

examiner, inquiries as to an examiner's fax number, etc.) should be

permitted without requiring an advance authorization form even though a

serial number of a patent application may be included in the e-mail

communications.

Response: A written authorization from applicant is required only

where applicant's Internet e-mail correspondence to the PTO contains

information subject to the confidentiality requirement of 35 U.S.C. 122

and applicant wishes the PTO to respond via Internet e-mail to

applicant's correspondence. If applicant's e-mail correspondence to the

patent examiner contains information subject to the confidentiality

requirement of 35 U.S.C. 122 and there is no written authorization by

applicant in the application file, the patent examiner may respond to

applicant's e-mail correspondence by telephone, or other appropriate

means (see Patent Internet Usage Policy Article 7).

Comment 5: One comment indicated that it would not be necessary for

the PTO to confirm receipt of an e-mail communication from a sender

since the sender can require a receipt from his/her e-mail system for

any message sent. Several comments indicated that it would be desirable

to receive an acknowledgment from the PTO of receipt of e-mail

communications with attachments from applicant. One comment suggested a

bounce-back acknowledgment with an attachment such that the sender can

verify that the confirmation matches the transmission. Another comment

suggested an automatic confirmation that a message was received by the

PTO with a later confirmation that the file attachments are received

and readable.

Response: The PTO will adopt work steps, develop in-house

guidelines, and work with the Office of the Chief Information Officer

in an effort to ensure that the acknowledgment of an e-mail

communication together with a copy of an attachment containing the

original transmission is sent back to the applicant upon receipt in the

Office.

Comment 6: Several comments indicated that they do not foresee any

problem with the deletion of the requirement for an express waiver of

35 U.S.C. 122 by the applicant before Internet e-mail may be used by

PTO employees to reply to the applicant's e-mail correspondence where

sensitive data will be exchanged or where there exists a possibility

that sensitive data could be identified. The comments indicated that

the requirement for a written authorization is preferable. One comment

suggested that the authorization form should not include a statement

that Internet communications are not secure.

Response: The authorization form set forth in Article 5 of the

Patent Internet Usage Policy is a sample form suggested by the PTO that

applicants may use to give the PTO written authorization to communicate

with applicants via Internet e-mail. The PTO recommends that applicants

use the suggested language. However, if applicants prefer to use their

own authorization form, applicants may do so provided it is clear that

applicants are giving the PTO written authorization to use Internet e-

mail to respond to applicants' e-mail correspondence.

Comment 7: Several comments indicated that other appropriate means

such as fax or telephone would be acceptable to respond to applicant's

e-mail correspondence. One comment stated that the use of other means

would not be acceptable where applicant requests the PTO to respond via

e-mail.

Response: Article 7 of the Patent Internet Usage Policy requires

all e-mail correspondence from applicant to be responded to by PTO

personnel. Furthermore, Article 7 permits PTO personnel to respond to

applicant's Internet e-mail correspondence by other appropriate means

such as telephone, or by facsimile transmission. The use of the

telephone or facsimile transmission to respond to applicant's e-mail

correspondence appears to be just as effective as the use of Internet

e-mail. The suggestion to require the PTO to use only Internet e-mail

to respond to applicant's e-mail correspondence upon applicant's

request has not been adopted since such a requirement would be

unreasonable. PTO personnel should have the discretion to decide

[[Page 33058]]

what appropriate means he/she should use to respond to applicant's e-

mail correspondence.

Comment 8: Several comments indicated that interviews are more

effective when conducted in person or by telephone rather than by e-

mail. The comments suggested that e-mail would be very useful to

transmit proposed claims, or amendments to the patent examiner prior to

an interview.

Response: Communications via Internet e-mail are at the discretion

of applicants. Applicants may use Internet e-mail to transmit proposed

claims, and/or proposed amendments to the patent examiner prior to an

interview. Since applicants' e-mail correspondence would contain

information subject to the confidentiality requirement of 35 U.S.C.

122, the patent examiner will not be able to respond to applicants' e-

mail correspondence via Internet e-mail unless a written authorization

from applicant is in the application file record.

Comment 9: One comment indicated that despite the lack of

encryption, he would use e-mail almost exclusively if it were

authorized since most matters are not of such confidential nature that

security is an issue. Another comment indicated that without encryption

and digital signature, use of Internet e-mail would be limited to non-

substantive issues and non-confidential subject matter. Another comment

indicated that Internet e-mail would be a convenient way to request,

set up and confirm regular telephone interviews.

Response: The PTO is considering options such as encryption and

digital signature to improve security of e-mail.

Comment 10: Several comments favor the use of digital signatures,

digital certificates and encryption to improve security of e-mail. The

different kinds of software recommended are public/private key

encryption program PGP(), Verisign TM, and S/

MIME with digital certification. One comment suggested that the users

be given an opportunity to comment on the alternatives considered by

the PTO.

Response: The PTO is planning to use PKI technology to provide

digital certificates and directory services to support both internal

and external e-mail users.

Comment 11: Several comments favor the use of the Internet for

searching and retrieving scientific and technical information in patent

applications provided that the PTO ensures that the searches are

conducted in a manner that does not compromise the confidentiality of

patent applications.

Response: Because security issues concerning transmission and

capture of search requests by unauthorized individuals have not yet

been resolved, patent examiners are instructed to exercise good

judgment and restrict their searches to non-specific patent application

uses so as to ensure that the confidentiality of patent applications is

not compromised. Patent Internet Usage Policy, Article 9, states that

Internet search activities that could disclose proprietary information

directed to a specific application, other than a reissue application or

reexamination proceeding, are not permitted.

(B) Comments Concerning the Trademark Provisions

Comment 1: One comment indicated that a reply to an e-mail

communication from the PTO which contained the original transmission

would be desirable in order that the sender could verify that the

content of the transmission received by the PTO matches the original

transmission.

Response: The PTO will adopt work steps, develop in-house

guidelines, and work with the Office of the Chief Information Officer

in an effort to ensure that the acknowledgment of an e-mail response

together with a copy of an attachment containing the original

transmission is sent back to the applicant or applicant's attorney upon

receipt in the PTO.

Comment 2: A concern was raised regarding the accuracy of the

record with regard to the telephonic correspondence between the

examining attorney and the applicant. It was suggested that the PTO

employ a form of audio capture in order to store telephone

conversations and that these electronic files could be made a part of

the record.

Response: The intent of Article 10 was to allow the attorney in the

PTO to respond to the communication in the most efficient and

appropriate method depending upon the circumstances of the particular

situation. Accuracy of the notes to the file regarding telephone

conversations have not posed a problem in the past and the PTO is not

planning to implement audio capture techniques in order to make

recordings of telephone conversations a part of the official record.

Comment 3: One comment maintained that examiner's amendment that is

issued electronically should only be done so after agreement on the

issues have been reached between the examiner and the applicant or his/

her attorney. Further, a hard copy of the amendment should be placed in

the file.

Response: This is the current policy in the PTO. Examiner's

amendments are only issued after agreement has been reached between the

examining attorney and the applicant or his/her attorney. This policy

will not change. As indicated in the policy statement, all Internet e-

mail communications between the examining attorney and the applicant or

his/her representative are to be printed as hard copy and inserted into

the paper file. An examiner's amendment would be no exception to this

policy. (See Trademark Internet Usage Policy, Article 8.)

Comment 4: One comment suggested that all actions issued by the PTO

requiring a timely response by the applicant should always be mailed

through the U.S. mail system, including those that were communicated to

the applicant by e-mail.

Response: Sending an Office action by regular mail as well as by e-

mail defeats a significant purpose that would be achieved by the use of

e-mail. The use of e-mail to communicate with applicants is fast and

eliminates the physical transfer of unnecessary paper. As many

applicants and applicants' representatives do today with regular mail,

procedures to record receipt of e-mail should be put in place. In this

way, an applicant or his/her representative may use these established

procedures to establish non-receipt of an e-mail Office action if the

application is later abandoned for failure to respond to the Office

action. Justification for revival of an application based on

documentation of non-receipt of an Office action would be the same for

e-mailed Office actions as it is today for Office actions mailed in

regular mail. Therefore, it is unnecessary to send a hard copy of the

e-mailed Office action through the regular mail. (See also TMEP Section

702.04(e)--Procedure for Filing by Fax)

Comment 5: One Comment suggested that e-mail responses from

applicants that require verification through declaration or affidavit

be required to provide an electronically reproduced signature or, if

such signature cannot adequately be sent via the Internet, that such

documents be sent by fax, regular mail or private package delivery.

Response: It would be quite acceptable for a signed declaration or

affidavit to be received by e-mail in the PTO by means of a software

package that allowed for viewing of the actual signed document. The PTO

currently accepts original applications through its Trademark

Electronic Application System (TEAS) with an electronic signature,

i.e., any combination of alpha/numeric characters that has been

specifically adopted to serve the function of the signature, preceded

and followed by the forward slash (/). Similarly, an electronic

signature

[[Page 33059]]

selected by the applicant would validate an affidavit or declaration

submitted by e-mail in the course of examination of the application.

Such an affidavit or declaration would be submitted as the body of or

word processing attachment to the applicant's e-mail response.

Comment 6: One comment suggested advising applicants not to send

confirming or follow-up hard paper copies of responses which are sent

by e-mail. It was observed that such additional submissions could

adversely delay prosecuting the trademark application.

Response: The PTO agrees with this suggestion and advises

applicants to refrain from sending such ``confirmation'' copies of e-

mail correspondence. This recommendation has also been announced

concerning submissions by facsimile in which confirmation copies of

faxed correspondence are discouraged. (See TMEP Section 702.04(e)--

Procedure for Filing by Fax)

Comment 7: One comment questioned whether an additional form of

communication with the PTO would result in increased administrative

costs for the PTO and for customers of the PTO.

Response: The PTO would incur no additional costs in the

administration of Internet communications. The PTO would utilize the

systems and personnel already in place to process these communications.

With regard to costs for customers of the PTO, non-participating

customers would incur no indirect costs because the PTO has no need to

raise fees to administer this system. Participating customers may or

may not incur additional costs depending on their circumstances, but

since this form of communication is purely at the option of the

customer, the customer alone will decide whether the benefits of

Internet communications justify any additional expense. Use of Internet

e-mail is purely at the option of the applicant.

Comment 8: One comment indicated that foreseeable problems exist in

that e-mail communications are more likely to contain errors than other

submissions to the PTO, and that the users of this form of

communication should bear a higher burden of proof and additional fees

for correcting errors in e-mail communications.

Response: There is no basis for the PTO to presume that e-mail

submissions are more likely to contain errors than other forms of

communications. The PTO expects that applicants and their

representatives would exhibit the same attention to the accuracy of

their e-mail submissions as they would to submissions made using any

other means. Furthermore, the PTO will not penalize customers who wish

to use e-mail. Utilization of Internet communications will help the PTO

become more technologically advanced and efficient. Additional burdens

and fees for those cooperating with these efforts would be

counterproductive; therefore, this suggestion will not be adopted.

Comment 9: One comment suggested that the PTO study, publish and

request Comments on the e-TEAS electronic application system for the

filing of trademark and service mark applications over the Internet.

Response: On November 1, 1997, the PTO began a pilot program

accepting trademark and service mark applications over the Internet.

Due to the success of the pilot, on October 1, 1998, the PTO opened

this system, now known as e-TEAS, to the public. This system does not

utilize e-mail communications, but instead requires that a particular

form be completed on-line and submitted directly to a dedicated server.

While the e-mail communications contemplated by the present policy are

related to e-TEAS in that both involve communications over the

Internet, the form and substance of these communications are quite

different and often not comparable. On May 11, 1999, the PTO published

a notice of proposed rulemaking and notice of hearing regarding the

Trademark Law Treaty Implementation Act Changes. 64 Fed. Reg. 25223. In

this notice, the PTO proposed formal rules to govern the electronic

filing of trademark and service mark applications. The notice invites

Comments from the public.

Comment 10: One comment indicated that confusion would occur

concerning whether e-mail communications are informal communications or

formal actions by the PTO or responses to actions, and that Trademark

Articles 4 and 11 should better articulate how they should be

differentiated. The comment suggested that formal e-mail communications

be made of record in the application file and maintained in an

electronic log. The Comment also questioned the PTO's procedures for

maintaining paper and electronic copies of Internet e-mail

correspondence and suggested greater specificity in creating procedures

for this purpose.

Response: Trademark Articles 4 and 11 indicate that Internet e-mail

may be used for formal communications, such as Office actions or

responses to Office actions, or informal communications, such as

communications similar to telephone or personal interviews. Trademark

Articles 4, 8 and 11 indicate that all such communications, whether

formal or informal, must be printed and placed in the application file

and become a part of the formal record. All electronic communications

received by the PTO will, at a minimum, be maintained on a schedule

that is consistent with the PTO's current archival policies for paper

records. Furthermore, while no schedule currently exists for the

maintenance of e-mail correspondence, retention schedules are currently

being developed for electronic records and will be in place in the near

future. The PTO will develop guidelines for its employees to ensure

that communications emanating from the PTO are clear as to whether a

response is required as is done in all written communications.

Similarly, the PTO will develop guidelines for determining whether a

communication received from an applicant should be interpreted as

responsive to an Office communication. Furthermore, while it will be

incumbent upon the recipient to initially determine whether a

communication is informal or not, the PTO's records will be complete

and misunderstandings can be rectified in accordance with the remedies

outlined in Trademark Article 9 regarding petitions to the

Commissioner. If the applicant does not wish for informal

communications to be placed in the application file, the option of

telephone or personal interviews are still available. The PTO will not

require an applicant to use Internet e-mail for any communications

under any circumstances.

Comment 11: One comment indicated that the Internet should not be

considered by the PTO as a proper source for information leading to

refusals of trademark and service mark applications unless the

examining attorney can show that the reference is publicly available in

stable form from the date of its first publication.

Response: The Internet contains a great wealth of information of

varying reliability and transience. Nevertheless, this information does

exist and may be valuable in determining the registrability of a mark.

The Trademark Trial and Appeal Board has considered the admissibility

of Internet evidence in the context of an inter partes proceeding, and

held that it is admissible and that the reliability of the information

would be directed to the weight or probative value to be given to the

evidence. Raccioppi v. Apogee Inc., 47 USPQ 1368 (TTAB 1998). The PTO

would be remiss in not utilizing this accepted, economical and

efficient resource to gather some of the

[[Page 33060]]

information required to make proper judgments concerning the

registrability of marks. In fact, a separate comment commended the PTO

for utilizing the Internet as a research tool because of the potential

cost savings of using this free and readily available source of

information. The PTO will develop additional guidelines to ensure that

examining attorneys provide applicants with adequate information to

locate the document retrieved, in accordance with Trademark Article 12.

I. Patent Internet Usage Policy

Introduction

The Internet and its offspring, the World Wide Web (WWW), offer the

PTO opportunities to (1) enhance operations by enabling Patent

Examiners to locate and retrieve new sources of scientific and

technical information, (2) communicate more effectively with our

customers via advanced electronic mail (e-mail) and file transfer

functions, and (3) more easily publish information of interest to the

intellectual property community and the general public. This new

technology offers low-cost, high speed, and direct communications

capabilities upon which the PTO wishes to capitalize.

The organizations reporting to the Assistant Commissioner for

Patents have special legal requirements that must be satisfied as part

of the PTO's goal to make effective use of the Internet. Because

security issues concerning transmission and capture of search requests

by unauthorized individuals have not yet been resolved, Patent

Examiners are to exercise good judgment and restrict their searches to

nonspecific patent application uses.

Purpose

To establish a policy for use of the Internet by the Patent

Examining Corps and other organizations within the PTO;

To address use of the Internet to conduct interview-like

communications and other forms of formal and informal communications;

To publish guidelines for locating, retrieving, citing, and

properly documenting scientific and technical information sources on

the Internet;

To inform the public how the PTO intends to use the Internet; and

To establish a flexible Internet policy framework which can be

modified, enhanced, and corrected as the PTO, the public, and customers

learn to use, and subsequently integrate, new and emerging Internet

technology into existing business infrastructures and everyday

activities to improve the patent application, the examining, and

granting functions.

Article 1. Applicability

This policy applies to members of the Patent Organization within

the PTO, including contractors and consultants working with, or

conducting activities in support of, the Patent Organization.

Article 2. Scope

This policy applies to activities associated with, or directly

related to, use of the Internet via PTO-provided network connections,

facilities, and services. This includes, but is not limited to, PTONet

connections, Office of Chief Information Officer (OCIO)-provided PCs

and workstations, and Internet provider services. This policy also

applies to use of other non-PTO Internet access facilities and

equipment that are used to conduct non-patent application specific

work.

Article 3. Conformance With Existing, PTO-Wide, Internet Use Policy

This Internet Usage Policy supersedes the Interim Internet Usage

Policy published in the Official Gazette on February 1997. The policy

outlined in this document augments the existing PTO Internet Acceptable

Use Policy as set forth in the Office Automation Services Guide. As

such, this policy is an extension of current PTO office-wide Internet

policy.

Article 4. Confidentiality of Proprietary Information

If security and confidentiality cannot be attained for a specific

use, transaction, or activity, then that specific use, transaction, or

activity shall NOT be undertaken/conducted.

All use of the Internet by Patent Organization employees,

contractors, and consultants shall be conducted in a manner that

ensures compliance with confidentiality requirements in statutes,

including 35 U.S.C. 122, and regulations. Where a written authorization

is given by the applicant for the PTO to communicate with the applicant

via Internet e-mail, communications via Internet e-mail may be used.

Backup, archiving, and recovery of information sent or received via

the Internet is the responsibility of individual users. The OCIO does

not, and will not, as a normal practice, provide backup and recovery

services for information produced, retrieved, stored, or transmitted

to/from the Internet.

Article 5. Communications via the Internet and Authorization

Communications via Internet e-mail are at the discretion of the

applicant.

Without a written authorization by applicant in place, the PTO will

not respond via Internet e-mail to any Internet correspondence which

contains information subject to the confidentiality requirement as set

forth in 35 U.S.C. 122. A paper copy of such correspondence will be

placed in the appropriate patent application.

The following is a sample authorization form which may be used by

applicant:

``Recognizing that Internet communications are not secure, I hereby

authorize the PTO to communicate with me concerning any subject matter

of this application by electronic mail. I understand that a copy of

these communications will be made of record in the application file.''

A written authorization may be withdrawn by filing a signed paper

clearly identifying the original authorization. The following is a

sample form which may be used by applicant to withdraw the

authorization:

``The authorization given on______, to the PTO to communicate with

me via the Internet is hereby withdrawn. I understand that the

withdrawal is effective when approved rather than when received.''

Where a written authorization is given by the applicant,

communications via Internet e-mail, other than those under 35 U.S.C.

132 or which otherwise require a signature, may be used. In such case,

a printed copy of the Internet e-mail communications MUST be given a

paper number, entered into the Patent Application Location and

Monitoring System (PALM) and entered in the patent application file. A

reply to an Office action may NOT be communicated by applicant to the

PTO via Internet e-mail. If such a reply is submitted by applicant via

Internet e-mail, a paper copy will be placed in the appropriate patent

application file with an indication that the reply is NOT ENTERED.

PTO employees are NOT permitted to initiate communications with

applicant via Internet e-mail unless there is a written authorization

of record in the patent application by the applicant.

All reissue applications are open to public inspection under 37 CFR

1.11(a) and all papers relating to a reexamination proceeding which

have been entered of record in the patent or reexamination file are

open to public inspection under 37 CFR 1.11(d). PTO employees are NOT

permitted to initiate communications with applicant in a reissue

application or a patentee of a reexamination proceeding via Internet e-

mail unless written authorization is given by the applicant or

patentee.

[[Page 33061]]

Article 6. Authentication of Sender by a Patent Organization Recipient

The misrepresentation of a sender's identity (i.e., spoofing) is a

known risk when using electronic communications. Therefore, Patent

Organization users have an obligation to be aware of this risk and

conduct their Internet activities in compliance with established

procedures.

Internet e-mail must be initiated by a registered practitioner, or

an applicant in a pro se application, and sufficient information must

be provided to show representative capacity in compliance with 37 CFR

1.34. Examples of such information include the attorney registration

number, attorney docket number, and patent application number.

Article 7. Use of Electronic Mail Services

Once e-mail correspondence has been received from the applicant, as

set forth in Patent Article 4, such correspondence must be responded to

appropriately. The Patent Examiner may respond to an applicant's e-mail

correspondence by telephone, fax, or other appropriate means.

Article 8. Interviews

Internet e-mail shall NOT be used to conduct an exchange or

communications similar to those exchanged during telephone or personal

interviews unless a written authorization has been given under Patent

Article 5 to use Internet e-mail. In such cases, a paper copy of the

Internet e-mail contents MUST be made and placed in the patent

application file as required by the Federal Records Act in the same

manner as an Examiner Interview Summary Form is entered.

Article 9. Internet Searching

The ultimate responsibility for formulating individual search

strategies lies with individual Patent Examiners, Scientific and

Technical Information Center (STIC) staff, and anyone charged with

protecting proprietary application data. When the Internet is used to

search, browse, or retrieve information relating to a patent

application, other than a reissue application or reexamination

proceeding, Patent Organization users MUST restrict search queries to

the general state of the art. Internet search, browse, or retrieval

activities that could disclose proprietary information directed to a

specific application, other than a reissue application or reexamination

proceeding, are NOT permitted.

This policy also applies to use of the Internet as a communications

medium for connecting to commercial database providers.

Article 10. Documenting Search Strategies

All Patent Organization users of the Internet for patent

application searches shall document their search strategies in

accordance with established practices and procedures as set forth in

MPEP 719.05 subsection I.(F).

Article 11. Citations

All Patent Organization users of the Internet for patent

application searches shall record their fields of search and search

results in accordance with established practices and procedures as set

forth in MPEP 719.05 subsection I.(F).

Subparagraph A

Internet document citations should include information which is

normally included for reference documents (i.e., Form PTO-892). In

addition, any information which would aid a future searcher in locating

the document should be included in the citation. Guidelines for citing

electronic information can be found as an attachment to this policy.

Subparagraph B

When a document found on the Internet is not the original

publication, then the Patent Examiner or STIC staff shall pursue the

acquisition of a copy of the originally published document or an

original of the document or Web object in question for all references

cited. Note: scanned images are considered to be a copy of the original

publication. Electronic-only documents are original publications.

Article 12. Professional Development

The Internet is recognized as a tool for professional development.

It may be useful for keeping informed of technological and legal

developments in all art areas. For example, use of the Internet for

keeping abreast of conferences, seminars, and for receiving mail from

appropriate list servers is acceptable. This is consistent with the

Department of Commerce's Internet Usage Policy.

Article 13. Policy Guidance and Clarifications

Within the Patent Organization, any questions regarding Internet

usage policy should be directed to the user's immediate supervisor.

Non-PTO personnel should direct their questions to the Office of the

Deputy Assistant Commissioner for Patent Policy and Projects.

II. Trademark Internet Usage Policy

Introduction

The Internet and its offspring, the World Wide Web (WWW), offer the

PTO opportunities to (1) enhance customer services by enabling attorney

advisors (Trademarks) and other Trademark employees to locate and

retrieve new sources of legal, scientific, commercial and technical

information, (2) communicate more effectively with customers via

electronic mail (e-mail) and file transfer functions, and (3) more

easily publish information of interest to the intellectual property

community and the general public.

This new technology offers low-cost, high speed, direct

communication capabilities that the PTO wishes to leverage to the

advantage of its customers.

The organizations reporting to the Assistant Commissioner for

Trademarks have special legal requirements that must be satisfied as

part of the PTO's goal to make effective use of the Internet and

electronic commerce.

Purpose

To establish a policy for use of the Internet by organizations

reporting to the Assistant Commissioner for Trademarks, including: the

Office of the Assistant Commissioner for Trademarks, the Trademark

Examining Operation, Trademark Services, Trademark Program Control and

the Trademark Assistance Center;

To address use of the Internet to conduct interview-like

communications, and other forms of formal and informal communications;

To publish guidelines for locating, retrieving, citing, and

properly documenting scientific, commercial and technical information

sources on the Internet;

To inform the public how the PTO intends to use the Internet; and

To establish a flexible Internet policy framework which can be

modified, enhanced, and corrected as the PTO, the public, and customers

learn to use, and subsequently integrate, new and emerging Internet

technology into existing business infrastructures and everyday

activities to improve the trademark application, examination, and

registration business processes.

Article 1. Applicability

This policy applies to members of Trademark Organization reporting

to the Assistant Commissioner for Trademarks within the PTO, including

contractors and consultants working with, or conducting activities in

support of, the Trademark Organization. It does not

[[Page 33062]]

apply to members of the Trademark Trial and Appeal Board or contractors

and consultants working with, or conducting activities in support of,

the Trademark Trial and Appeal Board.

Article 2. Scope

This policy applies to activities associated with, or directly

related to, use of the Internet via PTO-provided network connections,

facilities, and services. This includes, but is not limited to, PTONet

connections, Office of Chief Information Officer (OCIO)-provided PCs

and workstations, and Internet provider services. This policy also

applies to use of other non-PTO Internet access facilities and

equipment that are used to conduct non-trademark application specific

work.

Article 3. Conformance With Existing, PTO-Wide, Internet Use Policy

This Internet Usage Policy supersedes the Interim Internet Usage

Policy published in the Official Gazette in February 1997. The policy

outlined in this document augments the existing PTO Internet Acceptable

Use Policy as set forth in the Office Automation Services Guide. As

such, this policy is an extension of current PTO office-wide Internet

policy.

Article 4. Correspondence Acceptable via the Internet

Internet e-mail may be used to reply or respond to an examining

attorney's Office Action, to reply or respond to a petitions attorney's

30-day letter, to reply or respond to a Post Registration Office

Action, as well as to conduct informal communications regarding a

particular application or registration with the appropriate Trademark

Organization employee. If e-mail communication is initiated by the

applicant or applicant's attorney, Office Actions, Priority Actions,

Examiner's Amendments, petitions attorney's 30-day letters, and Post

Registration Office Actions may be sent to the applicant via Internet

e-mail or by telephone, fax, or other appropriate means. Readable

attachments to Internet e-mail for such purposes as the submission of

evidence, specimens, affidavits and declarations will be accepted.

Article 5. Communications Not Acceptable via the Internet

Internet e-mail or other Internet communications may NOT be used to

file Trademark Applications, Amendments to Allege Use, Statements of

Use, Requests for Extension of Time to File a Statement of Use, Section

8 affidavits, Section 9 affidavits, or Section 15 affidavits until such

time as the PTO publishes electronic forms for these filings and they

are made available on the Internet by the PTO. Internet e-mail may be

used to submit specimens of use, but the Office will determine

acceptability of the specimen(s) and if the specimens are found not to

meet the standards for specimens of use, additional specimens will be

required. Certified copies of foreign certificates will NOT be accepted

via Internet e-mail. Internet e-mail may NOT be used for any

correspondence with the Trademark Trial and Appeal Board.

Article 6. Initiating Internet Communications

Internet communications will NOT be initiated by the Trademark

Organization unless it is authorized to do so by the applicant or by

the applicant's attorney. Authorization for members of the Trademark

Organization to communicate with applicant or applicant's attorney via

Internet e-mail may be given by so indicating in the application

submitted to the PTO or in any official written communication with the

Trademark Organization. The authorization must include the Internet e-

mail address to which all Internet e-mail is to be sent. Internet

communications may also be initiated and authorized by applicant or

applicant's attorney by telephone or by responding to an Office Action

or other official communication via an Internet e-mail address

indicated on the official correspondence.

Article 7. Waivers and Authentication

Applicants and their attorneys understand that the

misrepresentation of a sender's identity is a known risk when using

electronic communications. Therefore, Trademark Organization users have

an obligation to be aware of this risk and conduct their Internet

activities in compliance with established procedures.

Internet e-mail must be initiated and authorized by a practitioner,

or the applicant in a pro se application. Sufficient information must

be provided to show representative capacity in compliance with 37 CFR

2.17 and 10.14. In trademark cases, examples of such information would

include signing a paper in practice before the PTO in a trademark case,

attorney docket number, and trademark application serial number or

registration number.

The Assistant Commissioner for Trademarks will waive 37 CFR 10.18

to the extent that it requires an original signature personally signed

by a trademark practitioner in permanent ink on any correspondence

filed with the PTO. Receipt of an Internet e-mail communication by the

Trademark Organization from the address of applicant or applicant's

attorney containing the /s/ notation in lieu of signature and which

references a Trademark application serial number will be understood to

constitute a certificate that:

1. The correspondence has been read by the applicant or

practitioner;

2. The filing of the correspondence is authorized;

3. To the best of the applicant's or practitioner's knowledge,

information, and belief, there is good ground to support the

correspondence, including any allegations of improper conduct contained

or alleged therein; and

4. The correspondence is not interposed for delay.

Applicants requesting to correspond with the Trademark Organization

via the Internet should recognize that Internet communications might

not be secure, and should understand that a copy of any and all

communications received via the Internet will be placed in the file

wrapper and become a permanent part of the record.

Article 8. Office Procedures

When authorized to do so, the Trademark Organization will send

Office Actions and other official correspondence to the Internet e-mail

address indicated by the applicant or applicant's attorney. A signed,

paper copy of the outgoing correspondence will be associated with the

trademark application file wrapper.

When communications are received by an examining attorney, or other

appropriate Trademark Organization employee, the attorney or employee

will immediately reply to the communication acknowledging receipt of

the communication. The date the communication was received by the

Trademark Organization that appears in the heading of the communication

will constitute the receipt date within the PTO for purposes of time-

sensitive communications unless that date is a Saturday, Sunday, or

Federal holiday within the District of Columbia, in which case the

receipt date will be the next succeeding day which is not a Saturday,

Sunday, or Federal holiday within the District of Columbia. A paper

copy of all Internet e-mail communications, including a copy of any and

all attachments, will be associated with the trademark application file

wrapper. A paper copy of any informal communications regarding a

particular trademark application or registration will be associated

with the file wrapper and become a part of the record.

[[Page 33063]]

Article 9. Remedies

When an application is held abandoned because a timely Internet e-

mail communication was sent to and received by the Trademark

Organization but was not timely associated with the application file

wrapper, the abandoned application may be reinstated by the Trademark

Organization. There is no fee for a request to reinstate such an

application.

When an application is held abandoned because a timely Internet e-

mail communication was sent to, but apparently not received by the

Trademark Organization, applicant or applicant's attorney may petition

the Commissioner to revive the abandoned application pursuant to 37 CFR

2.66 and TMEP Secs. 1112.05(a), (b). In determining whether or not an

Internet response was timely filed, the Commissioner may accept a copy

of a signed certificate of transmission meeting the requirements of 37

CFR 1.8, a copy of the previously transmitted correspondence, and a

statement attesting to the personal knowledge of timely transmission of

the response. 37 CFR 1.8(b)(1), (2), and (3).

In all situations, the applicant or the applicant's attorney should

promptly notify the Office after becoming aware that the application

was abandoned because a communication was not timely associated with

the file wrapper or was not received by the Office.

Article 10. Use of Electronic Mail Services

Once e-mail correspondence has been received from an applicant, as

set forth in Trademark Article 6, such correspondence must be responded

to appropriately. The Trademark Organization employee may respond to an

applicant's Internet e-mail correspondence by telephone, fax, or other

appropriate means.

Article 11. Interviews

Internet e-mail may be used to conduct an exchange of

communications similar to those exchanged during telephone or personal

interviews. In such cases, a paper copy of the Internet e-mail contents

MUST be made and placed in the trademark application file wrapper.

Article 12. Documenting Search Strategies

All Trademark Organization users of the Internet for trademark

application research shall document their search strategies in

accordance with established practices and procedures as set forth in

TMEP Sec. 1106.07(a).

Subparagraph A

Any information, which would aid a future searcher in locating the

document retrieved through Internet research, should be included in the

citation. Guidelines for citing electronic information can be found as

an attachment to this policy.

Subparagraph B

When a document found on the Internet is not the original

publication, then the Trademark Examining Attorney or Trademark Library

staff shall pursue the acquisition of a copy of the originally

published document or an original of the document or Web object in

question for all references cited. Note: scanned images are considered

to be a copy of the original publication. Electronic-only documents are

original publications.

Article 13. Professional Development

The Internet is recognized as a tool for professional development.

It may be useful for keeping informed of technological and legal

developments. For example, use of the Internet for keeping abreast of

conferences, seminars, and for receiving mail from appropriate list

servers is acceptable. This is consistent with the Department of

Commerce's Internet Usage Policy.

Article 14. Policy Guidance and Clarifications

Within the Trademark Organization, any questions regarding the

Internet usage policy should be directed to the user's immediate

supervisor. Non-PTO personnel should direct their questions to the

Office of the Assistant Commissioner for Trademarks.

Attachment

Guidelines for Citing Electronic Resources

The Standing Committee on Information Technologies (SCIT) of the

World Intellectual Property Organization (WIPO) has revised WIPO

Standard ST.14 ``Recommendation for the Inclusion of References Cited

in Patent Documents'' to provide a standardized method for listing

references cited in patent documents. Standard ST.14 is reproduced in

its entirety below. Standard ST.14 became effective April 1, 1999, and

will be included in future updates of the WIPO Handbook on Industrial

Property Information and Documentation. Paragraph 13 of Standard ST.14

sets forth the method for citing electronic resources. The standard set

forth in paragraph 13 of ST.14 was modeled after the guidelines

provided by the International Organization for Standardization's

established Standard ISO 690-2 ``Information and documentation--

Bibliographic references--Part 2: Electronic documents or parts

thereof.''

Standard St.14--Recommendation for the Inclusion of References

Cited in Patent Documents

Editorial Note Prepared by the International Bureau

Articles published in scientific and technical journals often

contain a certain number of references to earlier publications. Patent

applications also very often contain (e.g., in the descriptions of the

inventions) references to earlier patents or patent applications. In

the course of the procedure for obtaining a patent, patent examiners

cite one or several patent documents or other documents which describe

similar or closely related technical solutions to the one described in

a patent application being examined, in order to illustrate the prior

art.

Some industrial property offices, but not all of them, bring these

cited references to the attention of the general public, by including

them in a published patent document. The present Recommendation is

intended to generalize the use of printing on the patent document the

``reference cited'' during the patent examination procedure, to

standardize the way in which the said references should be presented in

the patent document and to recommend a preferred place, where the

``references cited'' should appear in a patent document.

Revision Adopted by the SCIT Plenary at its Second Session on February

12, 1999

Definitions

1. For the purposes of this Recommendation, the term ``patents''

includes such industrial property rights as patents for inventions,

plant patents, design patents, inventors' certificates, utility

certificates, utility models, patents of addition, inventors'

certificates of addition, and utility certificates of addition.

2. For the purposes of this Recommendation, the expressions

``patent applications'' or ``applications for patents'' include

applications for patents for inventions, plant patents, design patents,

inventors' certificates, utility certificates, utility models, patents

of addition, inventors' certificates of addition, and utility

certificates of addition.

3. For the purposes of this Recommendation, the expression

[[Page 33064]]

``patent documents'' includes patents for inventions, plant patents,

design patents, inventors' certificates, utility certificates, utility

models, patents of addition, inventors' certificates of addition,

utility certificates of addition, and published applications therefor.

Background

4. Applications for patents are examined by a governmental

authority or intergovernmental authority which, as a rule, is an

industrial property office. A patent for invention is granted if the

application complies with the formal requirements and, depending on

whether and to what extent an ``examination as to substance'' is

carried out, if the invention fulfills the substantive requirements of

the respective patent law.

5. When patent applications are examined or search reports are

established therefor, a certain number of patent documents and other

documents might be cited as references to illustrate the prior art by

the industrial property office (including a regional Office, and an

International Searching Authority under the PCT).

References

6. References to the following Standards are of relevance to this

Recommendation:

WIPO Standard ST.2 Standard Manner for Designating Calendar Dates by

Using the Gregorian Calendar;

WIPO Standard ST.3 Recommended Standard on Two-Letter Codes for the

Representation of States, Other Entities and Intergovernmental

Organizations;

WIPO Standard ST.9 Recommendation Concerning Bibliographic Data on and

Relating to Patents and SPCs;

WIPO Standard ST.16 Recommended Standard Code for the Identification

of Different Kinds of Patent Documents;

International Standard ISO 4:1997 ``Information and Documentation--

Rules for the abbreviation of title words and titles of publications'';

International Standard ISO 690:1987 ``Documentation--Bibliographic

references--Content, form and structure'';

International Standard ISO 690-2:1997 ``Information and

documentation--Bibliographic references--Part 2: Electronic documents

or parts thereof.''

Recommendation

7. It is recommended that industrial property offices should

include in their granted patents and in their published patent

applications all relevant references cited in the course of a search or

examination procedure.

8. It is recommended that the ``List of references cited'' be

identified by INID code (56).

9. It is recommended that the ``List of references cited'' appear

either

(a) On the first page of the patent document or

(b) In a search report attached to the patent document.

10. It is recommended that if the ``List of references cited''

appears in a search report attached to the patent document, (e.g.,

under the PCT procedure) this should be indicated on the first page of

the patent document.

11. It is recommended that the documents in the ``List of

references cited'' be organized in a sequence suitable to the users''

needs, this sequence being clearly illustrated in the presentation of

the said list. The following is an example of a sequence of documents

cited:

(a) Domestic patent documents;

(b) Foreign patent documents;

(c) Non-patent literature.

In search reports, however, the documents may be cited in the order

of their pertinence.

12. Identification of any document cited, and available in paper

form or in a page-oriented presentation mode (e.g., facsimile,

microform, etc.) shall be made by indicating the following elements in

the order in which they are listed:

(a) In the case of a patent document:

(i) The industrial property office that issued the document, by the

two-letter code (WIPO Standard ST.3);

(ii) The number of the document as given to it by the industrial

property office that issued it (for Japanese patent documents, the

indication of the year of the reign of the Emperor must precede the

serial number of the patent document);

(iii) The kind of document, by the appropriate symbols as indicated

on the document under WIPO Standard ST.16 or, if not indicated on that

document, as provided in that Standard, if possible;

(iv) The name of the patentee or applicant (in capital letters and,

where appropriate, abbreviated); \1\ \3\

(v) The date of publication of the cited patent document (using

four digits for a year designation according to the Gregorian Calendar)

or, in case of a corrected patent document, the date of issuance of the

corrected patent document as referred to under INID code (48) of WIPO

Standard ST.9 and, if provided on the document, the supplementary

correction code as referred to under INID code (15); \2\

(vi) Where applicable, the pages, columns, lines or paragraph

numbers where the relevant passages appear, or the relevant figures of

the drawings.\1\

The following examples illustrate the citation of a patent document

according to paragraph (a), above:

Example 1: JP 10-105775 A (NCR INTERNATIONAL INC.) 24 April

1998, paragraphs [0026] to [0030].

Example 2: DE 3744403 A1 (JOSEK, A.) 1991.08.29, page 1,

abstract.

Example 3: SE 504901 C2 (SWEP INTERNATIONAL AB) 1997-05-26,

claim 1.

Example 4: US 5635683 A (MCDERMOTT, R. M. et al.) June 3, 1997,

column 7, lines 21 to 40.

(b) In the case of a monograph or parts thereof, e.g.,

contributions to conference proceedings, etc.:

(i) The name of the author (in capital letters);\3\ in the case of

a contribution, the name of the author of the contribution;

(ii) In the case of a contribution, the title of the contribution

followed by ``In:'';

(iii) The title of the monograph; in the case of a contribution,

the designation of the editorship;

(iv) The number of the edition;

(v) The place of publication and the name of the publisher (where

only the location of the publisher appears on the monograph, then that

location shall be indicated as the place of publication; in the case of

company publications, the name and postal address of the company);\1\

(vi) The year of publication, by four digits; \4\

(vii) Where applicable, the standard identifier and number assigned

to the item, e.g., ISBN 2-7654-0537-9, ISSN 1045-1064. It should be

noted that these numbers may differ for the same title in the print and

electronic versions;

(viii) The location within the monograph by indicating the pages,

columns, lines or paragraph numbers where the relevant passages appear,

or the relevant figures of the drawings (where applicable).\1\

The following examples illustrate the citation of a monograph

(Example 1), as well as of published conference proceedings (Example

2), according to paragraph (b), above:

Example 1: WALTON, Herrmann. Microwave Quantum Theory. London:

Sweet and Maxwell, 1973, Vol.2, ISBN 5-1234-5678-9, pages 138 to

192, especially pages 146 to 148.

Example 2: SMITH et al. 'Digital demodulator for electrical

impedance imaging.' In: IEEE Engineering in Medicine & Biology

Society, 11th Annual Conference. Edited by Y. Kim et al. New York:

IEEE, 1989, Vol.6, p. 1744-5.

(c) In the case of an article published in a periodical or other

serial publication:

[[Page 33065]]

(i) The name of the author (in capital letters); \3\

(ii) The title of the article (where appropriate, abbreviated or

truncated) in the periodical or other serial publication;

(iii) The title of the periodical or other serial publication

(abbreviations conforming to generally recognized international

practice may be used, see Appendix 1 to this Standard);

(iv) The location within the periodical or other serial publication

by indicating date of issue by four digits for the year designation,

issue designation, pagination of the article (where year, month and day

are available, the provisions of WIPO Standard ST.2 should be applied);

(v) Where applicable, the standard identifier and number assigned

to the item, e.g., ISBN 2-7654-0537-9, ISSN 1045-1064. It should be

noted that these numbers may differ for the same title in the print and

electronic versions;

(vi) Where applicable, the relevant passages of the article and/or

the relevant figures of the drawings.\1\

The following example illustrates the citation of an article

published in a periodical or other serial publication according to

paragraph (c), above:

Example: DROP, J.G. Integrated Circuit Personalization at the

Module Level. IBM tech. dis. bull. October 1974, Vol.17, No.5, pages

1344 and 1345, ISSN 2345-6789.

(d) In the case of an abstract not published together with the full

text document which serves as its basis:

The identification of the document containing the abstract, the

abstract and the full text document shall be made on the basis of the

bibliographic data available in respect thereof.

The following examples illustrate the citation of an abstract

according to paragraph (d), above:

Example 1: Shetulov, D.I. Surface Effects During Metal Fatigue.

Fiz.-Him. Meh. Mater. 1971, 7(29), 7-11 (Russ.). Columbus, OH, USA:

Chemical abstracts, Vol. 75, No. 20, 15 November 1971, page 163,

column 1, the abstract No. 120718k.

Example 2: JP 3-002404 A (FUDO). Patent abstracts of Japan, Vol.

15, No. 105 (M-1092), 1991.03.13 (abstract).

Example 3: SU 1374109 A (KARELIN, V. I.) 1988.02.15. (abstract),

Soviet Patent Abstracts, Section E1, Week 8836, London: Derwent

Publications Ltd., Class S, AN 88-255351.

13. Identification of an electronic document, e. g., retrieved from

a CD-ROM, the Internet or from an online database accessible outside

the Internet, shall be made in the manner indicated in subparagraphs

12(a), (b), (c), and (d), above, as far as possible and completed, as

suggested in the items below.

Attention is drawn to the following items which are modeled after

guidelines provided by the International Organization for

Standardization's established Standard ISO 690-2 ``Information and

documentation--Bibliographic references--Part 2: Electronic documents

or parts thereof.'' These items should be provided in the locations

indicated:

(i) Type of medium in square brackets [ ] after the title of the

publication or the designation of the host document, e.g., [online]

[CD-ROM] [disk]. If desired, the type of publication (e.g. monograph,

serial, database, electronic mail) may also be specified in the type of

medium designator;

(ii) Date when the document was retrieved from the electronic media

in square brackets, following the date of publication [retrieved on

1998-03-04];

(iii) Identification of the source of the document using the words

``Retrieved from'' and its address where applicable; this item will

precede the citation of the relevant passages;

(iv) Specific passages of the text could be indicated if the format

of the document includes pagination or an equivalent internal

referencing system, or by their first and last words.

Office copies of an electronic document should be retained if the

same document may not be available for retrieval in the future. This is

especially important for sources such as the Internet and online

databases.

If an electronic document is also available in paper form or in a

page-oriented presentation mode (see paragraph 12, above) it does not

need to be identified as an electronic document, unless it is

considered desirable or useful to do so.

The following examples illustrate citations of electronic

documents:

Examples 1-4: Documents retrieved from online databases outside

the Internet

Example 1: SU 1511467 A (BRYAN MECH) 1989-09-30 (abstract) World

Patents Index [online]. London, U.K.: Derwent Publications, Ltd.

[retrieved on 1998-02-24]. Retrieved from: Questel/Orbit, Paris,

France. DW9016, Accession No. 90-121923.

Example 2: Dong, X. R. `Analysis of patients of multiple

injuries with AIS-ISS and its clinical significance in the

evaluation of the emergency managements', Chung Hua Wai Ko Tsa Chih,

May 1993, Vol. 31, No. 5, pages 301-302. (abstract) Medline

[online]. Bethesda, MD, USA: United States National Library of

Medicine [retrieved on 24 February 1998]. Retrieved from: Dialog

Information Services, Palo Alto, CA, USA. Medline Accession no.

94155687, Dialog Accession No. 07736604.

Example 3: Jensen, B. P. `Multilayer printed circuits:

production and application II'. Electronik, June-July 1976, No. 6-7,

pages 8, 10, 12, 14, 16. (abstract) INSPEC [online]. London, U.K.:

Institute of Electrical Engineers [retrieved on 1998-02-24].

Retrieved from: STN International, Columbus, Ohio, USA. Accession

No. 76:956632.

Example 4: JP 3002404 (TAMURA TORU) 1991-03-13 (abstract).

[online] [retrieved on 1998-09-02]. Retrieved from: EPO PAJ

Database.

Examples 5-11: Documents retrieved from the Internet

Example 5: (Entire Work--Book or Report) Wallace, S., and

Bagherzadeh, N. Multiple Branch and Block Prediction. Third

International Symposium on High-Performance Computer Architecture

[online], February 1997 [retrieved on 1998-05-20]. Retrieved from

the Internet:http://www.eng.uci.edu/comp.arch/papers-wallace/

hpca3-block.ps>.

Example 6: (Part of Work--chapter or equivalent designation)

National Research Council, Board on Agriculture, Committee on Animal

Nutrition, Subcommittee on Beef Cattle Nutrition. Nutrient

Requirements of Beef Cattle [online]. 7th revised edition.

Washington, DC: National Academy Press, 1996 [retrieved on 1998-06-

10]. Retrieved from the Internet: http://www2.nap.edu/htbin/

docpage/title= Nutrient+Requirements+of+Beef+Cattle%3

A+Seventh+Revised+Edition %2C+1996&dload=0&path= /ext5/

extra&name=054265%2 Erdo&docid= 00805F50FEb%3A840052612&colid=

4%7C6%7C41&start=38> Chapter 3, page 24, table 3-1.

Example 7: (Electronic Serial--articles or other contributions)

Ajtai. Generating Hard Instances of Lattice Problems. Electronic

Colloquium on Computational Complexity, Report TR96-007 [online],

[retrieved on 1996-01-30]. Retrieved from the Internet ftp://

ftp.eccc.uni-trier.de/pub/eccc/reports/1996/TR96-007/index.html>.

Example 8: (Electronic bulletin boards, message systems, and

discussion lists--Entire System) BIOMET-L (A forum for the Bureau of

Biometrics of New York) [online]. Albany (NY): Bureau of Biometrics,

New York State Health Department, July, 1990 [retrieved 1998-02-24].

Retrieved from the Internet: [email protected]>, message:

subscribe BIOMET-L your real name.

Example 9: (Electronic bulletin boards, message systems, and

discussion lists--Contributions) PARKER, Elliott. `Re: citing

electronic journals'. In PACS-L (Public Access Computer Systems

Forum) [online]. Houston (TX): University of Houston Libraries,

November 24, 1989; 13:29:35 CST [retrieved on 1998-02-24]-Retrieved

from the Internet: //[email protected]>.

Example 10: (Electronic mail) `Plumb design of a visual

thesaurus'. The Scout Report [online]. 1998, vol. 5 no. 3 [retrieved

on 1998 05 18]. Retrieved from Internet electronic mail:

[email protected]>, subscribe message: info scout-report. ISSN:

1092-3861.

Example 11: (Product Manual/Catalogue or other information

obtained from a Web-site) Corebuilder 3500 Layer 3 High-function

Switch. Datasheet [online]. 3Com Corporation, 1997 [retrieved on

1998-02-24].

[[Page 33066]]

Retrieved from the Internet: www.3com.com/products/dsheets/

400347.html>.

Examples 12 and 13: Documents retrieved from CD-ROM products

Example 12: JP 0800085 A (TORAY IND INC), (abstract), 1996-05-

31. In: Patent Abstracts of Japan [CD-ROM].

Example 13: Hayashida, O. et al.: Specific molecular recognition

by chiral cage-type cyclophanes having leucine, valine, and alanine

residues. In: Tetrahedron 1955, Vol. 51 (31), p. 8423-36. In: CA on

CD [CD-ROM]. Columbus, OH: CAS. Abstract 124:9350.

14. It is recommended that any document (reference) referred to in

paragraph 7 above, and cited in the search report should be indicated

by the following letters or a sign to be placed next to the citation of

the said document (reference):

(a) Categories indicating cited documents (references) of

particular relevance:

Category ``X'': The claimed invention cannot be considered novel or

cannot be considered to involve an inventive step when the document is

taken alone; Category ``Y'': The claimed invention cannot be considered

to involve an inventive step when the document is combined with one or

more other such documents, such combination being obvious to a person

skilled in the art.

(b) Categories indicating cited documents (references) of other

relevant prior art:

Category ``A'': Document defining the general state of the art

which is not considered to be of particular relevance;

Category ``D'': Document cited by the applicant in the application

and which document (reference) was referred to in the course of the

search procedure. Code ``D'' should always be accompanied by one of the

categories indicating the relevance of the cited document;

Category ``E'': Earlier patent document as defined in Rule 33.1(c)

of the Regulations under the PCT, but published on or after the

international filing date;

Category ``L'': Document which may throw doubts on priority

claim(s) or which is cited to establish the publication date of another

citation or other special reason (the reason for citing the document

shall be given);

Category ``O'': Document referring to an oral disclosure, use,

exhibition or other means;

Category ``P'': Document published prior to the filing date (in the

case of the PCT, the international filing date) but later than the

priority date claimed in the application. Code ``P'' should always be

accompanied by one of the categories ``X,'' ``Y'' or ``A;''

Category ``T'': Later document published after the filing date (in

the case of the PCT, the international filing date) or priority date

and not in conflict with the application but cited to understand the

principle or theory underlying the invention;

Category ``&'': Document being a member of the same patent family

or document whose contents have not been verified by the search

examiner but are believed to be substantially identical to those of

another document which the search examiner has inspected.

15. The list of cited documents (references) given in the search

report should indicate, conforming to the generally recognized practice

of the International Searching Authorities under the Patent Cooperation

Treaty, the respective claim(s) of the patent application to which the

citation is considered to be relevant.

16. The category codes referred to in paragraph 14, above, are

intended primarily for use in the context of search reports

accompanying published patent applications. However, if industrial

property offices wish to indicate the relevance of cited documents

(references) listed on the first page of a published patent

application, they should print the category codes in parentheses,

immediately after each citation.

Note: Further detailed information on definitions of terms used

in this Standard or on the inclusion of references cited can be

found in International Standard ISO 690:1987, ``Documentation--

Bibliographic References--Content, Form and Structure.'' Guidance

for the abbreviation of titles of articles can be obtained through

International Standard ISO 4:1997, ``Information and Documentation--

Rules for the Abbreviation of Title Words and Titles of

Publications.''

Examiners are encouraged to speak to a PTO librarian or technical

information specialist when they find that crucial elements to the

citation are lacking in their records.

The information specialist will work with the examiner to verify

dates, authors, and other elements as needed.

Notes:

1. These elements are to be indicated only in a search report.

2. The elements of item (v), having relevance to a corrected

patent document, should be indicated together with the other data

referred to under subparagraph 12(a)(i) to (iii).

3. Where a surname can be identified, forenames or initials

should follow the surname. Such surnames and initials should be

given in capital letters.

4. When the year of publication coincides with the year of the

application or of the priority claim, the month and, if necessary,

the day of publication of a monograph or parts thereof should be

indicated in accordance with the provisions set out in WIPO Standard

ST.2.

Dated: June 14, 1999.

Q. Todd Dickinson,

Acting Assistant Secretary of Commerce and Acting Commissioner of

Patents and Trademarks.

[FR Doc. 99-15696 Filed 6-18-99; 8:45 am]

BILLING CODE 3510-16-P