WORLD TRADE ORGANIZATION  
ORGANISATION MONDIALE DU COMMERCE  
ORGANIZACIÓN MUNDIAL DEL COMERCIO   
IP/N/1/USA/D/5 
IP/N/1/USA/P/9 17 August 2012 
 
(12-4486) 
Council for Trade-Related Aspects of  
Intellectual Property Rights Original:   English/ 
 anglais/  inglés 
 
MAIN DEDICATED INTELLECTUAL PR OPERTY LAWS AND REGULATIONS 
NOTIFIED UNDER ARTICLE 63.2 OF THE AGREEMENT 
 
UNITED STATES 
 
The present document reproduces the text1 of the Regulation on the Establishment of a 
One-Year Retention Period for Patent-Related Pape rs That Have Been Scanned Into the Image File 
Wrapper System or the Supplemental Complex Repository for Examiners , which will enter into 
force on 26 September 2012, as notified by the United States on 20 June 2012 under 
Article 63.2 of the Agreement (see document IP/N/1/USA/5). 
 
Conseil des aspects des droits de propriété 
intellectuelle qui touchent au commerce 
 
PRINCIPALES LOIS ET RÉGLEMENTATIONS CONSACRÉES À 
LA PROPRIÉTÉ INTELLECTUELLE NOTIFIÉES AU TITRE 
DE L'ARTICLE 63:2 DE L'ACCORD 
 
ÉTATS-UNIS 
 
 Le présent document contient le texte1 du Règlement établissant un délai de conservation d'un 
an pour les documents relatifs aux brevets qui ont ét é numérisés dans le Système de fichiers images 
ou dans le Répertoire complexe supplémentaire pour les examinateurs, qui entrera en vigueur le 
26 septembre 2012, et a été notifié par les États-Un is le 20 juin 2012 au titre de l'article 63:2 de 
l'Accord (voir le document IP/N/1/USA/5). 
 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio  
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA 
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD 
DEL PÁRRAFO 2 DEL ARTÍCULO 63 DEL ACUERDO 
 
ESTADOS UNIDOS 
  En el presente documento se reproduce el texto
1 del Reglamento por el que se exige la 
conservación durante un año de los documentos re lativos a patentes escaneados en el Sistema de 
contenedores de archivos de imágenes (IFW) o en  el Repositorio de información suplementaria para 
examinadores (SCORE), que entrará en vigor el 26 de setiembre de 2012, notificado por los Estados 
Unidos el 20 de junio de 2012 en virtud de lo di spuesto en el párrafo 2 del artículo 63 del Acuerdo 
(véase el documento IP/N/1/USA/5). 
                                                      
1 In English only./En anglais seulement./En inglés solamente.     
   IP/N/1/USA/D/5 
 IP/N/1/USA/P/9 
 Page 3 
 
 
  DEPARTMENT OF 
COMMERCE  
United States Patent and 
Trademark Office  
[Docket No. PTO–P–2011–
0032]  
Establishment of a One-Year 
Retention Period for Patent-Related Papers That Have 
Been Scanned Into the Image 
File Wrapper System or the Supplemental Complex 
Repository for Examiners  
AGENCY: United 
States Patent and 
Trademark Office, 
Commerce.  
ACTION: Notice.  
SUMMARY: The United 
States Patent and Trademark 
Office (USPTO) published a 
notice on August 29, 2011 requesting comments on a 
proposal to establish a 
retention period of one year for 
patent-related papers that have 
been scanned into the Image File Wrapper system (IFW) or 
the Supplemental Complex 
Repository for Examiners (SCORE). The USPTO has 
considered the comment and is 
establishing a one-year retention period that: (1) Began 
on September 1, 2011, for 
papers scanned into IFW or SCORE prior to 
September 1, 2011; or  
(2) began or begins on a paper's submission date, for 
papers scanned into IFW or 
SCORE on or after September 1, 2011. After the 
expiration of the one-year 
retention period (after 
September 1, 2012, or later), 
the USPTO will dispose of the paper unless, within sufficient 
time prior to disposal of the 
paper, the relevant patent applicant, patent owner, or 
reexamination party files a bona fide request to correct the 
electronic record of the paper 
in IFW or SCORE, and the 
request remains outstanding at 
the time disposal of the paper 
would have otherwise occurred. The one-year 
retention period for papers 
scanned into IFW or SCORE replaces the USPTO's past 
practice of indefinitely 
retaining the papers, which has been rendered unnecessary and 
not cost-effective by 
improvements in scanning and indexing.  
DATES: Effective Date: 
January 25, 2012. Applicability Date: For papers 
scanned into IFW or SCORE 
prior to September 1, 2011, the one-year retention period 
began on September 1, 2011. 
For papers scanned into IFW or SCORE on or after 
September 1, 2011, the one-
year retention period began or 
begins on the paper's 
submission date.  ADDRESSES: Comments 
concerning this notice may be 
sent by electronic mail message over the Internet 
addressed to 
IFWPaperRetention@uspto.gov, or submitted by mail 
addressed to: Mail Stop 
Comments—Patents, Commissioner for Patents, 
P.O. Box 1450, Alexandria, 
VA 22313–1450. Although comments may be submitted 
by mail, the USPTO prefers 
to receive comments via the Internet.  
The comments will be 
available for public inspection 
at the Office of the 
Commissioner for Patents, located in Madison East, Tenth 
Floor, 600 Dulany Street, 
Alexandria, Virginia, and will be available via the USPTO 
Internet Web site (address: 
http://www.uspto.gov ). Because comments will be 
available for public inspection, 
information that is not desired 
to be made public, such as an 
address or phone number, 
should not be included in the comments.  
FOR FURTHER 
INFORMATION 
CONTACT: Raul Tamayo, 
Legal Advisor, Office of Patent 
Legal Administration, Office of the Associate Commissioner 
for Patent Examination Policy, 
by telephone at  (571) 272–7728, or by mail 
addressed to: Mail Stop 
Comments-Patents, Commissioner for Patents, P.O. 
Box 1450, Alexandria, VA 
22313–1450, marked to the attention of Raul Tamayo.  
SUPPLEMENTARY 
INFORMATION: In 
August 2011, the USPTO 
published a notice requesting 
comments from the public on a 
proposal to establish a 
retention period of one year for patent-related papers that have 
been scanned into IFW or 
SCORE. See Establishing a 
One-Year Retention Period for 
Patent-Related Papers That 
Have Been Scanned Into the Image File Wrapper System or 
the Supplemental Complex 
Repository for Examiners, 76 
FR 53667 (August 29, 2011), 
1370 Off. Gaz. Pat. Office 211 
(September 17, 2011). The August 2011 notice explained 
the USPTO's past practice of 
indefinitely retaining papers that have been scanned into 
IFW or SCORE. The 
August 2011 notice set forth in 
detail the USPTO's reasons for 
wanting to establish a one-year retention period for patent-
related papers that have been 
scanned into IFW or SCORE, including how improvements 
in scanning and indexing have 
rendered the practice of IP/N/1/USA/D/5 
IP/N/1/USA/P/9 Page 4 
 
 
  indefinite paper retention 
unnecessary and not cost-
effective.  
 The USPTO received one comment in response to the 
August 2011 notice. 
Specifically, the comment urged the USPTO to extend the 
retention period beyond one 
year. The comment expressed concern that the USPTO's 
system of scanning documents 
originally filed in paper may introduce a subtle error that 
may not become apparent until 
more than a year after filing. 
The comment noted that 
resolution of the error could require referring to the 
application papers as originally 
filed to prove that the papers were filed without the error.  
 The USPTO appreciates the 
comment and has considered it. However, as stated in the 
August 2011 notice, the 
number of issues that arise which actually require the 
USPTO to reference 
application papers as originally filed has steadily declined in 
the years since the USPTO 
started scanning, in part due to continued improvements in 
indexing techniques and 
scanning quality, to the point 
that continued indefinite 
retention of papers is not cost-effective. Furthermore, the 
August 2011 notice sets forth a 
procedure for resolving disputes concerning the content 
of papers as filed versus the 
content of papers as scanned, including any such disputes 
which arise beyond one year, 
i.e., after the USPTO has likely 
disposed of the relevant 
originally filed papers under 
the one-year retention period.   Therefore, the USPTO is 
establishing a one-year 
retention period for papers that have been scanned into IFW or 
SCORE. Specifically, the 
USPTO is establishing a one-
year retention period that: (1) Began on September 1, 2011, 
for papers scanned into IFW or 
SCORE prior to 
September 1, 2011; or (2) began or begins on the paper's 
submission date, for papers 
scanned into IFW or SCORE on or after September 1, 2011. 
The one-year retention period 
is consistent with the USPTO's new USPTO-specific records 
disposition authority N1–241–
10–1, item 4.4, which was approved by the National 
Archives and Records 
Administration (NARA) on 
October 27, 2011, and is 
available at  http://www.archives.gov/recor
ds-mgmt/ 
rcs/schedules/departments/department-of-commerce/rg-
0241/n1-241-10-001 _ 
sf115.pdf. Papers that have not 
been scanned into IFW or 
SCORE, such as certain papers 
placed into Artifact Folders, are not subject to the one-year 
retention period and remain 
retrievable consistent with past practice. The procedures from 
the August 2011 notice for the 
USPTO to dispose of the paper, and to resolve disputes 
concerning the content of 
papers as filed versus the 
content of papers as scanned, 
are reiterated below.   After the expiration of the 
one-year retention period (after 
September 1, 2012, or later), the USPTO will dispose of the 
paper, unless within sufficient 
time prior to disposal of the paper, the relevant patent 
applicant, patent owner, or 
reexamination party files a bona fide request to correct the 
electronic record of the paper 
in IFW or SCORE, and the request remains outstanding at 
the time the paper would have 
been scheduled for disposal. Filers of requests to correct the 
electronic record are strongly 
advised to file their requests by 
EFS-Web using the document description "Electronic Record 
Correction'' at least one month 
prior to the expiration of the 
one-year retention period to allow sufficient time to process 
the request. Requests that are 
not filed at least one month prior to the expiration of the 
one-year retention period may 
not be acted upon in time.   During the one-year 
retention period, a patent 
applicant, patent owner, or reexamination party who is 
considering filing a request to 
correct the electronic record of 
a paper, and who believes that 
the evidence establishes that 
the need for correction was 
caused by the USPTO, is 
advised to consider whether the initial submission date of the 
paper needs to be secured for 
the information being corrected. Such situations 
could involve (1) adding 
information that would not otherwise be supported by the 
original specification, (2) 
avoiding a reduction in patent term adjustment, or  
(3) avoiding an impact on the 
timeliness of an information disclosure statement under 37 
CFR 1.97. If the initial 
submission date of the paper 
does not need to be secured for 
the information being corrected, the patent applicant, 
patent owner, or reexamination 
party should simply submit a corrective replacement 
document and accept the  
date of such submission for the corrective replacement 
document. If, however, the 
initial submission date of the paper needs to be secured for 
the information being 
corrected, a request for correction based on the initially 
submitted paper should be filed 
as a petition under 37 CFR 1.181. The request should 
specifically point out the 
error(s) in the electronic record 
of the paper in IFW or SCORE  IP/N/1/USA/D/5 
 IP/N/1/USA/P/9 
 Page 5 
 
 
  and be accompanied by a 
replacement copy of the paper, 
along with (1) any evidence to 
establish (a) that the need for correction was caused by the 
USPTO, and (b) the proper 
submission date of the original paper, and (2) a statement that 
the replacement copy is a true 
copy of what was originally filed.  
When making a decision on 
the request, the USPTO's presumption will be that the 
electronic record of the paper 
in IFW or SCORE is accurate 
and correction is not merited. 
The USPTO will check to see whether it has the paper at 
issue. If the USPTO has the 
paper, the USPTO's version of the paper will either support 
the request for correction, in 
which case the request will be granted, or the USPTO's 
version of the paper will not 
support the request, in which case the request will be 
dismissed.  
On the other hand, if the 
USPTO does not have the 
paper, e.g., the paper has been 
lost, the presumption that the electronic record of the paper 
in IFW or SCORE is correct 
can be rebutted where the 
evidence submitted with the 
request is sufficient to overcome the presumption. A 
postcard receipt which itemizes 
and properly identifies the items that have been filed 
serves as prima facie evidence 
of receipt in the USPTO of all the items listed thereon on the 
date stamped thereon by the 
USPTO. However, while a postcard receipt may be the 
only evidence needed for the 
USPTO to accept, for example, the missing tenth page of a 10-
page document that has been 
properly identified on the postcard as a 10-page 
document, the postcard receipt 
may be insufficient, on its own, 
for the USPTO to accept a replacement tenth page of a 
properly identified 10-page 
document, where all 10 pages 
were actually received by the USPTO and, for example, a 
sentence is missing on one 
page or a chemical structure is thought to have been changed.  
Any decision dismissing a 
request to correct the electronic record will provide 
a two-month period to file a 
request for reconsideration of the decision, in accordance 
with 37 CFR 1.181(f).  
The USPTO will not 
dispose of a paper for which, 
within sufficient time prior to disposal of the paper, a bona 
fide request to correct the 
electronic record of the paper has been filed and remains 
outstanding at the time the 
paper would have been scheduled for disposal. A 
request is a bona fide request 
when it specifically points out the error(s) in the paper 
and is accompanied by any 
necessary evidence. A general allegation that a 
paper requires correction 
filed without evidentiary support is not a bona fide 
request. It would be 
inadequate to stay the 
disposal of the paper and 
would be dismissed. Once filed, a bona fide request to 
correct the electronic record 
remains outstanding unless the USPTO has either (1) 
issued a decision granting 
either the original request or a request for reconsideration 
of the original request, or (2) 
issued a final agency decision denying a request for 
reconsideration of the 
original request.   A patent applicant, patent 
owner, or reexamination party 
who is considering filing a request to correct the electronic 
record of a paper, but who 
cannot establish that the need 
for correction was caused by the USPTO, is advised to not 
file the request. Other options 
for relief may be available 
when it cannot be established that the need for correction was 
caused by the USPTO. For 
example, an amendment under 
37 CFR 1.57(a) may be filed to 
address the problem of an 
application filed with inadvertently omitted material 
when the application contains a 
claim under 37 CFR 1.55 for priority of a prior-filed foreign 
application, or a claim under 
37 CFR 1.78 for the benefit of 
a prior-filed provisional, 
nonprovisional, or international application. See MPEP § 
201.17. As another example, 
an amendment may be filed to correct an obvious error, along 
with any evidence, such as an 
expert declaration, necessary to establish that one of ordinary 
skill in the art would recognize 
both the existence of the error and the appropria te correction. 
See MPEP § 2163.07, II.  
 A patent applicant, patent owner, or reexamination party 
may file a request to correct the 
electronic record of a paper after the one-year retention 
period, if the evidence is 
believed to establish that the 
need for correction was caused 
by the USPTO, and the initial submission date of the paper 
needs to be secured for the 
information being corrected. The USPTO likely will have 
disposed of any paper for 
which a request to correct the electronic record is filed after 
the one-year retention period. 
Therefore, the typical request for correction filed after the 
one-year retention period will 
have to overcome the presumption that the electronic 
record of the paper in IFW or 
SCORE is accurate and correction is not merited. For 
certain instances, e.g., when a 
paper was inadvertently not 
scanned into SCORE or placed IP/N/1/USA/D/5 
IP/N/1/USA/P/9 Page 6 
 
 
  into an Artifact Folder, there 
will be a black and white 
image of the paper in IFW that 
can be used to corroborate any submitted evidence.  
 The procedure set forth in 
this notice for filing a request to correct the electronic record 
of a paper that has been 
scanned into IFW or SCORE is not a replacement for the 
USPTO's established procedure 
for responding to a notice ( e.g., 
a "Notice of Omitted Item(s) in 
a Nonprovisional Application'') 
from the Office of Patent 
Application Processing 
(OPAP) indicating that the application papers have been 
accorded a filing date, but are 
lacking some page(s) of the specification or some of the 
figures of drawings described 
in the specification. Applicants should continue to follow the 
procedure set forth at Change 
in Procedure for Handling Nonprovisional Applications 
Having Omitted Items, 1315 
Off. Gaz. Pat. Office 103 
(February 20, 2007), when 
responding to such a notice 
from OPAP.  
 In addition, the procedure 
set forth in this notice for filing 
a request to correct the 
electronic record of a paper that has been scanned into IFW 
or SCORE is generally 
applicable only to situations in which a certain document, or 
one or more pages of a certain 
document, contains an error 
caused by the USPTO that 
requires correction. The procedure set forth in this 
notice is not a replacement for 
the USPTO's file reconstruction procedures (37 
CFR 1.251 and MPEP 
§ 508.04). Paper sources for the image files in IFW are 
boxed in the order that they are 
scanned, rather than by application number or 
reexamination control number, 
such that a request to correct 
requiring the retrieval of papers from multiple boxes cannot be 
reasonably effected.  
  Dated: January 17, 2012.  
 
David J. Kappos,  
Under Secretary of Commerce 
for Intellectual Property and 
Director of the United States Patent and Trademark Office.  
 
[FR Doc. 2012–1404 Filed 1–
24–12; 8:45 am] 
 
BILLING CODE 3510–16–P 
 
  
  
 
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