Fresh from its transition to an electronic filing system, the U.S. Patent and Trademark Office is embarking upon a controversial plan to dispose of an estimated 135 million documents - literally tons of paper - chronicling more than 200 years of innovation.

In a vast research library in Crystal City, Arlington, the PTO maintains countless stacks of patents and trademarks - roughly 27 million in all - some from inventions and ideas dating back as far as 1790.

Now that the agency has scanned the papers into its publicly searchable electronic database, it's looking for a new curator for the aging records.

"We envision them going to another government agency, or to any nonprofit that wants them," USPTO spokesperson Brigid Quinn said.

Faced with more than 6,000 patent and trademark applications each week, the agency is moving to an electronic document system to reduce costs and to tackle a backlog of filings.

Currently, just over 30 percent of trademark applications are filed electronically, though the agency will require e-filing for all trademarks by 2004. The PTO is also considering a similar mandate for patent applications.

The documents in question are duplicates of the original patents and trademarks, which are typically given to grantees. The PTO makes four to five copies of all patent and trademark documents, and each is cross-referenced and filed according to industry to ease the workload of patent examiners.

While the PTO has received heaps of praise for its modernization effort, the plan to move to an all-electronic system has its critics.

Many patent and trademark research attorneys have complained that graphic images are not rendered accurately with computer-imaging applications, and that trademarks often are not indexed well enough in the new electronic system to allow for an accurate and thorough search.

According to a survey released last month by the National Intellectual Property Researchers Association, more than half of nearly 4,000 trademark applications filed within a single week last year were assigned incorrect search codes or contained illegible or missing images.

NIPRA Vice President Robert Weir said the PTO's decision to rely solely on its electronic search database means examiners may overlook important trademarks that have already been granted, an oversight that could be costly for many upstart businesses.

"If a small company gets hit with an infringement suit, not only do they eat their administrative costs, but their ad copy goes out the window along with any goodwill they've generated," Weir said. "If I were in the investment capital field, I'm not sure how willing I'd be to hand out money to startups after being burned like that a few times."

Allan Lowe, a patent and trademark attorney in Alexandria, said his firm instructs its researchers to scour both the PTO's online search engine and its paper records.

"The PTO will be making a grave error by eliminating paper files," Lowe said. "Without that redundancy, a lot of prior filings are going to be missed."

In addition, hundreds of researchers hired by local law and research firms could lose their jobs as a result of the shift, Lowe said.

"Why should companies hire people in Washington to do searches for them when their only option is to do it online?" Lowe asked. "Companies will just start doing the research in-house."

Both Weir and Lowe say the PTO's wants to clear out the pillars of paper mainly to make room for desks and office equipment needed for the 700 patent examiners hired this year. The agency plans to hire another 950 examiners in 2003 - provided Congress approves the Bush administration's latest budget request.

Quinn called the NIPRA study figures "way off," and said a similar, albeit much smaller, internal survey put the error rates at around 10 percent.

"If that many designs were coded wrong, that means many people would be awarded trademarks on designs that already existed, and that in turn would have meant more appeals to our trademark trial board," Quinn said. "But in fact, the number of appeals has declined over the past few years."

So far, at least one local nonprofit - the National Intellectual Property Law Institute - has offered to help diffuse the situation and assume control over the massive cache of documents.

The institute is funded in part by some of the world's largest intellectual property grantees, including IBM Corp., Kodak, Xerox and Mobile Oil, among others.

"We think there needs to be an archive somewhere that people can go to research these important physical documents," said NLPLI President James P. Chandler.

Chandler said his organization hasn't yet decided where the collection would be stored, or whether it would charge for access to the records. The institute also isn't sure whether it will be able to keep is collection current with the most recent paper filings from the PTO, he said.

Those issues are likely to come up at a public hearing on the issue on May 16.

"It's a public interest that needs to be preserved if at all possible," Chandler said. "I hope we're doing the right thing, and I think we are."

Reported by Washtech.com, http://www.washtech.com .

15:58 CST
Reposted 16:05 CST