S+B - February 09, 2018

S+B Best Practices: Filing Drills

Filing electronically with the USPTO has become the standard practice for nearly all patent practitioners these days (over 98% in 2016, according to https://www.uspto.gov/learning-and-resources/newsletter/inventors-eye/using-efs-web-5-electronic-filing-pitfalls-and-how).

Not only does this practice line up nicely with today’s focus on electronic communications and data transfer, the USPTO provides some financial incentives in the form of some reduced fees. Even with the numerous issues and complaints about the current electronic filing system (EFS), most would agree it is better than the old method of putting printouts of the documents in an envelope and mailing it to Alexandria, VA. The EFS method is clearly the best way to file your application.

Unless the system goes down.

On December 22, 2016, it did just that in a major way. Not only did EFS go down, and stay down for a long time, but the sudden inrushes of attempts to file office action responses by fax caused the fax filing system to go down as well. Electronically, the USPTO was a black hole for filing.

Suddenly, law firms all across the US were facing the realization that they would have to file these applications by post office. The problem was, many of these firms haven’t filed by post office since the early 2000’s. How do you even do it? What are the rules? What post office can I use that will be open late enough? What do I need to do to ensure that I get my filing date?

The outage was so bad that the USPTO retroactively declared the day to count as a federal holiday, so as to give people an extra day to file any last-minute responses. This, however, does not help all cases. Some new application filings were running against a bar date on the 22nd, and the “holiday” clause would not have saved them.

In a time crunch lack of familiarity with even elementary steps can make the difference between being able to correctly complete the filing in a timely fashion.

Here at S+B, not only did we manage to file everything in time, but the situation also inspired the firm to implement a system where everyone, including the attorneys and partners, would periodically run one filing every other month as if we had to file it by mail.

We go through every step necessary to mail out a filing, including driving to the post office, printing documents, counting pages to make sure none are missing, as well as preparing the addressed packages and postcards. Because these steps are time-consuming and are not typically experienced on a daily basis by patent professionals of recent generations, each filing is timed to ensure we are prepared the next time the EFS is unavailable.

By periodically practicing these protocols, our team forms a familiarity with the specific tasks to be performed, so that everyone is trained to timely complete the filing.

Thinking from the end requires considering all possible scenarios, preparing for them, challenging ourselves, and always aiming at providing the best possible work product no matter the circumstances.