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Lawsuit Slows USPTO's Electronic Transition

The U.S. Patent and Trademark Office's (USPTO) plan to migrate from paper to electronic public search systems has stalled due to a lawsuit filed by the National Intellectual Property Researchers Association (NIPRA). The legal action seeks to enjoin the USPTO from its plan to begin dismantling its paper collection of patents and trademarks.

In response to the lawsuit, Undersecretary For Intellectual Property James Rogan recently informed House Judiciary Committee Chairman Rep. James Sensenbrenner (R.Wisc.) that the USPTO is rescinding its July certification to Congress that the transition to an electronic system would not negatively impact the public.

Although NIPRA, a not-for-profit association of intellectual property attorneys, agents and professional researchers, said it is not opposed in principle to the USPTO's plan to migrate to a fully automated search environment, it claims the maintenance of the paper collections, particularly the patent foreign art and trademark search files, is required until the automated search systems are improved and provide fully equivalent search results to a combined search of the paper and electronic records.

According to the NIPRA lawsuit, both USPTO and independent studies report substantial data error rates in the automated patent and trademark databases. It also asserts that there are "hundreds of thousands of missing or corrupt entries in the USPTO search systems."

The NIPRA says the USPTO claim that the electronic systems provide "equivalent functionality" is not sufficient and the group says the premature elimination of the paper search collections will compromise patent and trademark quality.

NIPRA has proposed to both Congress and the USPTO that an independent side-by-side evaluation of the current search environment and the electronic search system be conducted to ensure fully equivalent search results for a sustained period prior to the elimination of the paper record.

After rescinding the Congressional certification, Rogan said the USPTO is reviewing its systems to ensure that paper files are removed only when doing so will not negatively impact the public and that the agency is preparing a revised plan for the transition to all-electronic searches.

"USPTO remains strongly committed to our investment in and reliance on electronic government. It is consistent with the goals of the Bush Administration and our 21st Century Strategic Plan to be a cost-effective, market-driven, e-commerce-based government agency," said Rogan.