502.05    Correspondence Transmitted by EFS-Web [R-07.2015]

I.    LEGAL FRAMEWORK FOR EFS-WEB

The April 2011 version of the Legal Framework for EFS-Web is posted on the USPTO website at www.uspto.gov/patents-application-process/applying- online/legal-framework-efs-web-06april11. The information in this MPEP section is an update to the April 2011 version of the Legal Framework, which was based on the following Federal Register notices with minor editorial changes: Legal Framework for Electronic Filing System - Web (EFS-Web), 74 FR 55200 (October 27, 2009); Revised Procedure for Public Key Infrastructure Certificates, 74 FR 66955 (December 17, 2009); and Electronic Filing System – Web (EFS-Web) Contingency Option, 75 FR 27986 (May 19, 2010)

A.    General Information on EFS-Web

EFS-Web is the United States Patent and Trademark Office’s (USPTO’s) system for electronic filing of patent correspondence.  EFS-Web is accessible via the Internet on the USPTO website.  The system utilizes standard Web-based screens and prompts to enable users to submit patent documents in Portable Document Format (PDF) directly to the USPTO.  Users may electronically submit most patent applications, applications for international registration of industrial designs, reexamination requests, supplemental examination requests, and other patent-related documents securely using EFS-Web. Users may also use EFS-Web to submit Web-based documents such as ePetitions and eTerminal Disclaimers that can be filled out completely online through Web-based screens. ePetitions and eTerminal Disclaimers are auto-processed and granted immediately upon submission if the petition or request meets all of the requirements. An ePetition or eTerminal Disclaimer document is generated by EFS-Web based on the information entered into EFS-Web. This petition or request and a decision granting the petition or request will be loaded into the electronic application file (i.e., IFW), if the ePetition or eTerminal Disclaimer is approved. If the ePetition, eTerminal Disclaimer or request does not meet all of the requirements, it will not be loaded into the electronic application file (i.e., IFW). Users may also use EFS-Web to submit payments of most patent fees including patent application filing fees.  Users need not provide a duplicate copy of any document filed through EFS-Web unless the USPTO specifically requires the filing of a duplicate in a particular situation.  Users may review and check their electronic submissions including their attached PDF files, before submitting the documents to the USPTO.  After submitting the documents via EFS-Web, the system will display a page that states the USPTO has received the user’s submission and that generally provides an application number. Users of EFS-Web will receive an Electronic Acknowledgement Receipt of a successful submission received by the USPTO, usually within a few minutes.  The processing of fees may delay the issuance of the Electronic Acknowledgement Receipt. The Electronic Acknowledgement Receipt is the electronic equivalent of a postcard receipt. See MPEP § 503.  Most documents submitted via EFS-Web will be viewable by the user via the Private Patent Application Information Retrieval (PAIR) system within an hour after the USPTO receives the documents if the user has associated the application with the user’s customer number.  Therefore, users will be able to immediately check the contents of their applications for completeness and accuracy of their electronic submissions. A user may become a registered user by obtaining a PKI digital certificate. See subsection E, below, for more information on PKI digital certificates. A registered user may file most patent applications and follow-on documents in a patent application; a non-registered user may file most patent applications but is only permitted to file limited types of follow-on documents in a patent application. See subsection B, below, for more information.

EFS-Web is a PDF-based filing system.  Accordingly, all EFS-Web submissions are required to be in PDF format unless otherwise indicated in the Legal Framework for EFS-Web.  EFS-Web permits submission of:  (1) the American Standard Code of Information Interchange (ASCII) text files (.TXT) to submit bio-sequence listings, computer program listings, mega tables, and Complex Work Units; (2) PCT-EASY.zip compressed files to submit the Request form generated by PCT-SAFE (operated in PCT-EASY mode) in Patent Cooperation Treaty (PCT) international applications filed with the United States Receiving Office; and (3) JPEG reproductions in international design applications. See subsections L, M, and N below for more information on ASCII text files and electronic filing of PCT international applications, respectively.  In addition, the USPTO provides users with PDF EFS-Web fillable forms, such as the Provisional Application for Patent Cover Sheet, the Information Disclosure Statement, the Application Data Sheet, Petition to Make Special Under Accelerated Examination Program, Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent, Request for Continued Examination (RCE) Transmittal, and Petition to Make Special Based on Age; ePetitions and eTerminal Disclaimers. When users submit information using an EFS-Web fillable form (not a scanned image (PDF) of a document) or the web-based version of the ADS (AIA/14), the information will directly load into the USPTO databases which will increase accuracy and facilitate faster processing.  Users may use other USPTO-created PDF fillable forms available on the USPTO website, or user-created forms, and submit the completed forms via EFS-Web.  The information entered on these forms, however, will not be automatically loaded into the USPTO databases.

B.    Legal and Document Policies

To the extent that any USPTO regulation is inconsistent with the procedures for EFS-Web, the regulation will be interpreted in a manner to support EFS-Web. USPTO’s policies concerning documents submitted electronically using EFS-Web, including patent applications and requests for reexamination or supplemental examination, as well as follow-on documents in patent applications and reexamination proceedings are set forth below.

1.    Types of Patent Applications and Documents Permitted to be Filed via EFS-Web

a.    Filings Permitted by Registered and Non-registered Users

EFS-Web permits registered users (who have a PKI digital certificate) and non-registered users to file the following applications, requests for reexamination, and documents:

  • (1) Provisional patent applications filed under 35 U.S.C. 111(b).
  • (2) Nonprovisional utility patent applications filed under 35 U.S.C. 111(a).
  • (3) Nonprovisional design patent applications (see 35 U.S.C. 171 ) filed under 35 U.S.C. 111(a).
  • (4) International applications filed under the PCT in the United States Receiving Office (see 35 U.S.C. 361 ).
  • (5) Submissions to enter the national stage under 35 U.S.C. 371.
  • (6) International design applications filed under the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Design (see 35 U.S.C. 382 ).
  • (7) Requests for ex parte reexamination under 35 U.S.C. 302  for utility or design patents.
  • (8) Requests for supplemental examination under 35 U.S.C. 257  for utility, design, or plant patents.
  • (9) Third-Party Preissuance Submissions under 35 U.S.C. 122(e)  and 37 CFR 1.290  for utility, design, or plant patent applications.
  • (10) Citation of prior art and written statements in patent files under 37 CFR 1.501  for utility applications
  • (11) Petitions to make special based on age under 37 CFR 1.102(c).
  • (12) Petitions to accept an unintentionally delayed payment of maintenance fee under 37 CFR 1.378, and payments of maintenance fees when submitted with the petition.
  • (13) Petition to make special under accelerated examination program (must be filed with a nonprovisional utility patent application under 35 U.S.C. 111(a) ).
  • (14) Reissue utility patent applications and reissue design patent applications.

b.    Filing of Follow-on Documents

Registered users are permitted to file follow-on documents in their applications, reexamination proceedings and supplemental examination proceedings as listed above via EFS-Web. Registered users are not permitted to file follow-on documents in applications, reexamination proceedings and supplemental examination proceedings where they are not of record or acting in a representative capacity under 37 CFR 1.34  unless specifically authorized under the EFS-Web Legal Framework.

Follow-on documents are any documents filed after the initial submission of the application, request for reexamination, or request for supplemental examination. Follow-on documents include, but are not limited to, the following: amendments, information disclosure statements (IDS), replies to Office actions and notices, requests for continued examination (RCEs), continued prosecution applications in design applications (CPAs), evidence, petitions, and terminal disclaimers. In addition, registered users may file a copy of a patent application (e.g., a copy of the amended specification including the claims, and drawings) for the purposes of publication of the application when filed with any of the following pre-grant (eighteen-month) publication requests via EFS-Web: amended publication under 37 CFR 1.215(c), redacted publication under 37 CFR 1.217, early publication under 37 CFR 1.219, and voluntary publication or republication under 37 CFR 1.221(a). See subsection G below for more information on filing these publication requests via EFS-Web. Follow-on documents also include any documents submitted on the same day as the application, but after the initial submission. In reexamination proceedings, both the reexamination requester and the patent owner may file documents via EFS-Web, if they are registered users. Registered users may also file a second or subsequent submission for patent term extension under 35 U.S.C. 156  in a patent file via EFS-Web.

Non-registered users are not permitted to file follow-on documents via EFS-Web, except those listed in items 9-12 above. Non-registered users may file follow-on documents by mail (with a certificate of mailing in accordance with 37 CFR 1.8 ), Priority Mail Express® from USPS in accordance with 37 CFR 1.10, or hand delivery.

Any follow-on document must be signed in accordance with 37 CFR 1.33(b)  and it must identify on the top page in a conspicuous location, the application number (consisting of the series code and the serial number; e.g., 07/123,456), or the serial number and filing date assigned to that application by the Office, or the international application number of the international application, or the international registration number of the international design registration. See 37 CFR 1.4, 37 CFR 1.33(b)  and 37 CFR 1.5.

2.    Types of Patent Applications and Documents Not Permitted to be Filed via EFS-Web

The following is a list of submission types that are not permitted to be filed using EFS-Web:

  • (1) Plant patent applications (see 35 U.S.C. 161 ) filed under 35 U.S.C. 111(a)  and follow-on documents associated with plant patent applications, other than third party preissuance submissions under 37 CFR 1.290.
  • (2) Requests for Reexamination under 35 U.S.C. 302  for plant patents and documents associated with reexamination proceedings for plant patents.
  • (3) Requests for inter partes review under 35 U.S.C. 311.
  • (4) Any third party inquiries, petitions or papers unless specifically authorized by the EFS-Web Legal Framework (e.g., citation of prior art and written statements in patent files under 37 CFR 1.501 ) and/or provided for via dedicated EFS-Web interface (e.g.,Third Party Preissuance Submissions under 37 CFR 1.290 ) is improper. See subsection B.1., above. The Office considers inappropriate any third-party inquiry or submission in an application that is not provided for in 37 CFR 1.290  or 37 CFR 1.292. Some examples of third party papers include inquiries into the timing of future actions on an application, disputes over inventorship in an application, and demands that the Office withdraw an application from issue under 37 CFR 1.313  on the basis of unpatentability of a claim.
  • (5) Color drawings and color photographs for international applications that have not entered the national stage.
  • (6) Initial submissions for patent term extension under 35 U.S.C. 156.
  • (7) Correspondence concerning registration practice as specified in 37 CFR 1.4(e). See also 37 CFR 1.6(d)(1).
  • (8) Certified documents as specified in 37 CFR 1.4(f). See also 37 CFR 1.6(d)(2).
  • (9) Correspondence to be filed in an application subject to a secrecy order under 37 CFR 5.1  through 37 CFR 5.5. See also 37 CFR 1.6(d)(6).
  • (10) Documents filed in contested cases and trials before the Patent Trial and Appeal Board (PTAB), except as the PTAB may expressly authorize. See also 37 CFR 1.6(d)(7).
  • (11) Documents filed in contested cases and trials before the PTAB, which are governed by 37 CFR Part 41, Subpart D and Part 42, respectively. See also 37 CFR 1.6(d)(3)  and 1.8(a)(2)(i)(B) and (C).
  • (12) Correspondence filed in connection with a disciplinary proceeding under 37 CFR part 11. See also 37 CFR 1.6(d)(3).
  • (13) Maintenance fees submitted under 37 CFR 1.366  that are not submitted with a petition under 37 CFR 1.378(c)  (see item 12 in subsection B.1. above). Patent owners may pay electronically using the Office of Finance On-Line Shopping Page at https://ramps.uspto.gov/eram/. See MPEP § 2510 for information regarding the proper methods for submitting maintenance fees.
  • (14) Assignment documents under 35 U.S.C. 261, which may be electronically filed using the Electronic Assignment System (EPAS) or the Electronic Trademark Assignment System (ETAS). Information regarding EPAS is available at: http://epas.uspto.gov. Information regarding ETAS is available at: http://etas.uspto.gov.
  • (15) Submissions that are not associated with a patent application, international design application, reexamination proceeding, or supplemental examination proceeding.

If any of the documents listed above is submitted via EFS-Web, the document will not be accorded a date of receipt and it will not be considered officially filed in the USPTO. Furthermore, no benefit will be given to a certificate of transmission under 37 CFR 1.8  on the document.

3.    Papers That May Be Filed and Processed Electronically

Registered users may use EFS-Web to submit Web-based documents such as ePetitions and eTerminal Disclaimers. ePetitions and eTerminal Disclaimers are auto-processed and granted immediately upon submission if the petition or request meets all of the requirements. See the ePetition Resource Page at www.uspto.gov/ patents-application-process/applying-online/epetition- resource-page  for a list of ePetitions. Registered users sign into EFS-Web and fill out Web-based screens. An ePetition or eTerminal Disclaimer document (PDF) is generated by EFS-Web based on the information entered into EFS-Web. This document and a decision granting the petition or request will be loaded into the electronic application file (i.e., IFW), if the ePetition or eTerminal Disclaimer is approved. If the ePetition, eTerminal Disclaimer or request does not meet all of the requirements, it will not be loaded into the electronic application file (i.e., IFW).

EFS-Web permits registered users (who have a PKI digital certificate) to file the following auto-processed ePetitions and eTerminal disclaimers:

  • 1. Request for withdrawal as attorney or agent;
  • 2. ePetition for Revival of an Application for Patent Abandoned Unintentionally Under 37 CFR 1.137(a);
  • 3. Petition to withdraw an application from issue under 37 CFR 1.313;
  • 4. Petition for revival of an application under 37 CFR 1.137;
  • 5. eTerminal Disclaimers for nonprovisional utility applications under 37 CFR 1.321; and
  • 6. Petition to correct assignee after payment of Issue Fee under 37 CFR 3.81(b).

4.    The Official Record of Documents Submitted via EFS-Web

When the USPTO successfully receives PDF documents filed in accordance with the EFS-Web requirements, the USPTO will convert the PDF files submitted by users into Tagged Image File Format (TIFF) image files and then store the TIFF image files in the Image File Wrapper (IFW) as part of the official record, except for those drawings which are stored in the Supplemental Complex Repository for Examiners (SCORE) as part of the official record (i.e., color and grayscale drawings and drawings submitted in design applications). The USPTO also will store JPEG drawing files successfully received in international design applications in accordance with the EFS-Web requirements in SCORE as part of the official record. In addition, certain submissions filed as ASCII text files (e.g., sequence listings or computer program listings), are stored in SCORE as part of the official record. Accordingly, the official record for the patent application, international design application, reexamination proceeding, or supplemental examination proceeding comprises:

  • (1) ASCII text documents and drawings stored in SCORE as set forth above; and
  • (2) TIFF images of all other original documents as stored in IFW as well as the Electronic Acknowledgement Receipt and the Electronic Patent Application Fee Transmittal, both of which contain information entered via the EFS-Web graphical user interface (GUI) data collection screens and TIFF images stored in IFW in international design applications generated from XML data received from the International Bureau.

The original documents submitted via EFS-Web (e.g., applications and reexamination and supplemental examination proceeding documents) are stored exactly as filed in an independent location. See subsection L. below for more information on ASCII text documents and subsections K. and M.2. below for information on color and grayscale drawings and subsection N for information on international design applications. Submissions for pre-grant (eighteen-month) publication are forwarded to the Pre-Grant Publication Division and are not stored in IFW or SCORE as part of the official record of the patent application. See subsection G. below for more information on publication requests.

5.    How is internally inconsistent information submitted via EFS-Web treated?

When filing a new application via EFS-Web, EFS-Web requires the input of certain application data. This includes the type of application being filed (e.g., 35 U.S.C. 111(a), national stage application under 35 U.S.C. 371, international application), the title of the application (unless the application is an international design application), the first named inventor or applicant, and a correspondence address. In addition, other application data, such as a docket number, may be provided.

Routing of the submission to the appropriate area of the Office for processing is based on the application type indicted in EFS-Web, and such indication will be treated as an instruction to treat the submission as the selected application type. Where the submission includes conflicting indications as to the type of application being filed, and there is no provision to resolve such conflict (see, e.g., 37 CFR 1.495(g) ), the submission may be treated in accordance with the indication provided in EFS-Web, and a petition under 37 CFR 1.182  may be required to correct the error. In the case of other conflicting information in the submission, the conflict will be resolved in accordance with the applicable regulations. For example, inventorship will be determined in accordance with the provisions of 37 CFR 1.41. Where no corresponding information is included in the submission, or the corresponding information was not made in accordance with the applicable regulations, the Office may use the application data furnished through EFS-Web for purposes of correspondence until corrected by the applicant. For example, the Office may use the correspondence address associated with a customer number entered through EFS-Web rather than an address furnished in an unsigned paper in the new application submission.

6.    Application Size Fee for Applications Submitted via EFS-Web

For patent applications filed under 35 U.S.C. 111  (including provisional applications, utility and design nonprovisional applications, and reissue applications), the paper size equivalent of the specification (including claims) and drawings of an application submitted via EFS-Web will be considered to be seventy-five percent (75%) of the number of sheets of paper present in the specification (including claims) and drawings of the application when entered into IFW after being rendered by EFS-Web for purposes of determining the application size fee required by 37 CFR 1.16(s). See 37 CFR 1.53(f)(2)  and MPEP § 607. The paper size equivalency under 37 CFR 1.52(f)(2)  for EFS-Web filings does not apply to national stage submissions. See MPEP § 1893.01(c).

Any sequence listing submitted in ASCII text as part of an associated file of the application in compliance with 37 CFR 1.821(c) or (e), and any computer program listing in compliance with 37 CFR 1.96, submitted via EFS-Web will be excluded when determining the application size fee required by 37 CFR 1.16(s). See 37 CFR 1.52(f)(2)  and subsections K.2. and M.3., below. Sequence listings or computer program listings submitted as PDF files will not be excluded when determining the application size fee.

7.    Fee Payments Submitted via EFS-Web

Non-registered and registered users may submit the filing fees (e.g., the basic filing fee, search and examination fee, and excess claims fee) using the online fee payment in EFS-Web at the time of filing a patent application, request for reexamination, or request for supplemental examination, and may submit fees for third party preissuance submissions under 37 CFR 1.290. Only registered users may submit payment of fees in a previously filed application, reexamination proceeding, or supplemental examination proceeding. EFS-Web permits users to electronically submit the payment of fees with a credit/debit card, USPTO deposit account, or electronic fund transfer. Users may also provide authorizations to charge fees to a deposit account with the documents being submitted electronically via EFS-Web (e.g., a fee transmittal letter or form). However, users should not submit a credit/debit card charge authorization including the Credit Card Payment Form (PTO-2038) electronically via EFS-Web, because the electronic submission automatically will be loaded into the application file in IFW, and the credit/debit card information may become part of the record of an application file that is open to public inspection.

When the online fee payment in EFS-Web is unavailable, a deposit account authorization transmittal (e.g., PTO/SB/17) may be included with the documents being submitted via EFS-Web. A credit card authorization transmittal (e.g., PTO-2038) may also be submitted by facsimile transmission to the USPTO central facsimile number (571) 273-8300, or sent via Priority Mail Express® from the United States Postal Service (USPS) in accordance with 37 CFR 1.10. Applicants must include the application number from the Electronic Acknowledgement Receipt to ensure that the fees are paid in the correct application. Facsimile submission of the basic national fee for national stage under 35 U.S.C. 371  is not accepted. Failure to timely pay the basic national fee prior to the expiration of 30 months from the priority date will result in abandonment of the international application.

If applicant wishes to submit the application filing fees on the filing date of a patent application to avoid the surcharge, the payment of the filing fees must be submitted and received by the USPTO before midnight ET on the filing date of the application. Failure to pay the fees on the filing date of the application will result in a surcharge.

When the online fee payment in EFS-Web is unavailable, the following types of submissions cannot be filed via EFS-Web, since online fee payment must accompany the submission:

  • (1) Petitions that require a fee for auto-processing by EFS-Web;
  • (2) Pre-grant publication submissions under 37 CFR 1.211  to 1.221  that require a fee; and
  • (3) Third-party preissuance submissions under 37 CFR 1.290  that require a fee.

C.    Electronic Acknowledgement Receipt and Date Of Receipt

The Electronic Acknowledgement Receipt establishes the date of receipt by the USPTO of documents submitted via EFS-Web. The electronic documents are itemized in the Electronic Acknowledgement Receipt, which will contain a full listing of the documents submitted to the USPTO as described by the user during the submission process, including the count of pages and/or byte sizes for each document. Thus, the Electronic Acknowledgement Receipt is the electronic equivalent of the postcard receipt described in MPEP § 503.

The official application filing date will be noted on the Filing Receipt (37 CFR 1.54 ) after the submitted application parts are reviewed for compliance with 35 U.S.C. 111  (or for compliance with 35 U.S.C. 371  for entry into the U.S. national stage of an international application). The filing date of an application filed under 35 U.S.C. 111  via EFS-Web is based on the dates indicated on the Electronic Acknowledgement Receipt assuming that, after review, the documents submitted are found to be entitled to an application filing date. Likewise, the official reexamination filing date will be noted on the "Notice of Ex Parte Reexamination Request Filing Date" and the official supplemental examination filing date will be noted on the "Notice of Supplemental Examination Request Filing Date" after Central Reexamination Unit (CRU) review for filing date compliance, and is based on the dates indicated on the Electronic Acknowledgement Receipt.

If the official version of any document received by EFS-Web is lost, damaged or rendered unreadable and if it cannot be recovered from the stored files received by electronic submission, then the user will be promptly notified. Such events are expected to be rare. In that situation, the user may have to resubmit any lost document and petition for the original filing date. The user would be required to present: (1) the Electronic Acknowledgement Receipt; (2) a copy of the missing files as submitted; and (3) a signed petition accompanied by a statement stating that the attached files are the same as those originally submitted and mentioned in the Electronic Acknowledgement Receipt for that application number (e.g., a petition under 37 CFR 1.53(e)  or 37 CFR 1.182  with the appropriate petition fee under 37 CFR 1.17(f) ).

The Electronic Acknowledgement Receipt and statement will serve as prima facie evidence that the resubmitted documents are the same as those submitted on the date of receipt, except when the document description used by the user does not match the document. For example, if an applicant originally filed a specification and a set of claims and used the correct document descriptions for a specification and a set of claims, then the Electronic Acknowledgement Receipt will serve as prima facie evidence that the applicant filed the specification and set of claims on the original filing date. However, if the applicant actually filed two sets of claims, the Electronic Acknowledgement Receipt will not serve as prima facie evidence that the applicant filed a specification and a set of claims (even though the applicant used the document descriptions for a specification and a set of claims). Note the Electronic Acknowledgement Receipt only indicates that the USPTO received what was actually sent, as opposed to what may have been intended to be transmitted. Users should exercise the same care in preparing and preserving a copy of a submission in electronic form as in paper.

1.    The Date of Receipt of a Follow-on Document Submitted via EFS-Web

Follow-on documents filed in an application or reexamination proceeding after the initial filing of the application or request for reexamination will be accorded a receipt date, which is the date the follow-on document is received at the USPTO. See 37 CFR 1.6(a)(4).

A follow-on document required to be filed in the USPTO within a set period of time (e.g., a reply to an Office action) will be considered as being timely filed if the follow-on document is submitted in compliance with the procedure set forth in 37 CFR 1.8(a):

  • (1) The follow-on document is submitted via EFS-Web prior to expiration of the set period of time in accordance with the requirements for EFS-Web; and
  • (2) The document includes a certificate of transmission stating the date of transmission and signed by a person that has reasonable basis to expect that the document would be transmitted on or before the date of transmission. See 37 CFR 1.8(a)(1)(i)(C) and (ii).

However, the certificate of transmission practice under 37 CFR 1.8  does not apply to the documents listed in 37 CFR 1.8(a)(2)  (e.g., a document filed for the purpose of obtaining an application filing date).

2.    The Date of Receipt of an Application Submitted via EFS-Web

The time and date of receipt of an application filed via EFS-Web is the local time and date of receipt of the application in the USPTO headquarters in Alexandria, Virginia, which is in the Eastern Time zone. Accordingly, the date of receipt of an application officially submitted through EFS-Web will be the date in the Eastern Time zone when the USPTO received the submission. As such, the submission’s "date of receipt," as shown on the Electronic Acknowledgement Receipt, is the Eastern Time zone date that the documents are fully, successfully, and officially received at the USPTO, after the user clicks the SUBMIT button on the Confirm and Submit screen. See 37 CFR 1.6(a)(4). This date is controlling for filing date purposes of a newly filed application. There is no "certificate of transmission" practice for new application filings (37 CFR 1.8 ).

To be very specific, the EFS-Web system records as the time and date of receipt of documents the local time and date in Alexandria, Virginia. on which the USPTO receives the documents, after the user clicks the SUBMIT button on the Confirm and Submit screen for those documents.

For example, if an applicant in California officially files a patent application with the USPTO through EFS-Web by clicking on the SUBMIT button at 10 p.m. Pacific Time in California on May 1, that application would be officially received by the USPTO at 1 a.m., local time (i.e., Eastern Daylight Time) on May 2. Accordingly, the application would receive a filing date of May 2. However, the applicant could alternatively file the application using Priority Mail Express® from the USPS in accordance with 37 CFR 1.10  in which case the applicant would have until midnight on May 1 in his or her local time zone to file the application and obtain a filing date of May 1.

3.    EFS-Web Availability

Hours of operation of EFS-Web will be clearly provided in the EFS-Web instructions when users log on to the system. The USPTO will post information on any scheduled down time due to system maintenance in advance. Users may file patent documents electronically during the hours of operation of EFS-Web every day of the week, including weekends and holidays. If the submission is successfully received (even on a Saturday, Sunday or Federal holiday within the District of Columbia), the USPTO will assign that receipt date to the submission.

If a transmission is attempted during a down time, the USPTO cannot accept it and will, if possible, transmit back a notice that the USPTO is not accepting submissions. No Electronic Acknowledgement Receipt will be sent. Instead a notice will advise the user to use alternative filing methods, such as Priority Mail Express® from the USPS in accordance with 37 CFR 1.10  or hand delivery of paper to the USPTO, to establish the filing date. Note that applications filed under 37 CFR 1.53, PCT international applications, international design applications, and reexamination requests, cannot be submitted by facsimile transmission (37 CFR 1.6(d)(3) and (5) ), and that certificate of mailing procedures do not apply to new applications and reexamination requests (37 CFR 1.8(a)(2)(i)(A) and (D) ). Users are strongly advised to transmit their electronic filings sufficiently early in the day to allow time for alternative paper filing when transmission cannot be initiated or correctly completed.

4.    EFS-Web Contingency Option

The USPTO will provide EFS-Web Contingency Option to users to file new applications, national stage submissions under 35 U.S.C. 371, requests for reexamination, requests for supplemental examination, and certain petitions when the primary portal to EFS-Web is unavailable during an unscheduled outage. The USPTO will post a notification of any unscheduled outage of the primary portal to EFS-Web and provide the link to EFS-Web Contingency Option on the EFS-Web Internet page www.uspto.gov/patents- application-process/applying-online/about-efs-web. The EFS-Web Contingency Option has the same functionality as EFS-Web for unregistered e-filers (www.uspto.gov/patents-application-process/ applying-online/efs-web-contingency.html ). It permits users to sign on as unregistered EFS-Web users to file new applications, national stage submissions under 35 U.S.C. 371  submitted with the basic national fee necessary to enter the national stage, requests for reexamination, requests for supplemental examination and certain petitions. However, other follow-on documents and fee payments filed after the initial submission of the application, reexamination request, or supplemental examination request (e.g., amendments and replies to Office actions) cannot be filed using EFS-Web Contingency Option.

a.    Proper Submissions Under EFS-Web Contingency Option

Specifically, EFS-Web Contingency Option only permits users to electronically file the following items as unregistered EFS-Web users:

  • (1) Provisional patent applications filed under 35 U.S.C. 111(b);
  • (2) Nonprovisional utility patent applications filed under 35 U.S.C. 111(a) 
  • (3) Nonprovisional design patent applications (see 35 U.S.C. 171 ) filed under 35 U.S.C. 111(a) 
  • (4) International applications filed under the Patent Cooperation Treaty (PCT) in the United States Receiving Office (see 35 U.S.C. 361 );
  • (5) Submissions to enter the national stage under 35 U.S.C. 371;
  • (6) International design applications filed under the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (see 35 U.S.C. 382 );
  • (7) Requests for ex parte reexamination under 35 U.S.C. 302  for utility or design patents;
  • (8) Requests for supplemental examination under 35 U.S.C. 257  for utility, design, or plant patents;
  • (9) Petitions to make special based on age under 37 CFR 1.102(c)  when filed as an e-petition using – the EFS-Web SB130 form, for the automatic processing of the e-petition (for more information see www.uspto.gov/sites/default/files/ebc/ portal/efs/sb130_instructions.doc );
  • (10) Petitions to accept an unintentionally delayed payment of maintenance fee under 37 CFR 1.378(b)  when filed as an e-petition using the EFS-Web SB66 form, for the automatic processing of the e-petition (for more information see www.uspto.gov/sites/default/files/ebc/portal/efs/ sb0066e_fill.doc );
  • (11) Petition to make special under the accelerated examination program (must be filed with a nonprovisional utility patent application under 35 U.S.C. 111(a) ); and
  • (12) Reissue utility patent applications and reissue design patent applications.

Documents filed via EFS-Web Contingency Option as part of the submissions listed above must meet the same file format requirements established for EFS-Web, e.g., file size and PDF embedded-font requirements. The same file validation performed in EFS-Web will be performed in EFS-Web Contingency Option. Similar to EFS-Web, EFS-Web Contingency Option will provide an Electronic Acknowledgement Receipt that establishes the date of receipt by the USPTO of an application or document submitted via EFS-Web Contingency Option. Applicant is not required to, and should not, resubmit the application or document when the primary portal to EFS-Web is once again available. Any resubmission of an application will result in filing a duplicate application and, if applicant pays the filing fees again when submitting the duplicate application, no refund will be provided.

Applications filed via EFS-Web Contingency Option are protected with the same level of security as EFS-Web for unregistered e-filers by using Transport Layer Security (TLS) to encrypt transmission over the Internet. Registered e-filers who have uploaded documents to a Saved Submission package in EFS-Web will not be able to access those Saved Submission documents in EFS-Web Contingency Option. Applicants can submit on-line fee payments by selecting fees on the fee calculation screen and completing their payment at time of submission (i.e., chose the "Yes! I want to pay now" button rather than "No - I will pay later" button).

When the primary portal to EFS-Web is unavailable during an unscheduled outage, applicants may also file new applications, national stage submissions under 35 U.S.C. 371  submitted with the basic national fee necessary to enter the national stage, reexamination requests, and requests for supplemental examination, by hand-delivery to the USPTO, or Priority Mail Express® from the United States Postal Service (USPS) in accordance with 37 CFR 1.10, to establish the filing date or national stage submission date. New applications, national stage submissions under 35 U.S.C. 371  submitted with the basic national fee necessary to enter the national stage, reexamination requests, and requests for supplemental examination cannot be submitted by facsimile transmission and certificate of mailing procedures under 37 CFR 1.8  do not apply to these items.

The EFS-Web Contingency Option does not permit follow-on fee payments and follow-on documents other than those listed above. Applicants may file the documents or fee payments by: (1) facsimile transmission in accordance with 37 CFR 1.6(d)  and 1.8, (2) first class mail with a certificate of mailing in accordance with 37 CFR 1.8, (3) hand-delivery to the USPTO, or (4) Priority Mail Express® from USPS in accordance with 37 CFR 1.10. Documents that are required to establish the filing date of an application (e.g., a missing drawing figure or page of the specification) cannot be submitted by facsimile transmission, and certificate of mailing procedures under 37 CFR 1.8  do not apply to these documents.

b.    Improperly Filed Follow-on Documents

As previously stated, EFS-Web Contingency Option and EFS-Web for unregistered e-filers permit users to sign on as unregistered EFS-Web users to file new applications, national stage submissions under 35 U.S.C. 371  submitted with the basic national fee necessary to enter the national stage, requests for reexamination, requests for supplemental examination, and certain petitions. EFS-Web Contingency and EFS-Web for unregistered e-filers have limited functionality, and do not permit users to file other follow-on documents and follow-on fee payments after the initial submission of the application, reexamination request, or supplemental examination request (e.g., amendments and replies to Office actions). Note that it is improper for users to file follow-on documents as new applications. The USPTO provides answers to frequently asked questions, and other helpful information on the USPTO website. Users are encouraged to check the USPTO website for more information and contact the Patent Electronic Business Center for questions related to the usage of USPTO electronic systems.

c.    Additional Information Regarding National Stage Submissions

The basic national fee is required in order for an international application to enter the national stage under 35 U.S.C. 371. See 37 CFR 1.495. Users are permitted to submit the basic national fee with the national stage submission under 35 U.S.C. 371  via EFS-Web and EFS-Web Contingency Option using on-line payment screens that interface with the Revenue Accounting and Management (RAM) system. If the RAM system is unavailable, neither EFS-Web nor EFS-Web Contingency Option will permit users to make payment using the interactive payment screens. Applicant may pay the necessary national stage entry fees by including a written authorization to charge the desired fees together with the national stage submission under 35 U.S.C. 371, or sending the payment via Priority Mail Express® from the USPS in accordance with 37 CFR 1.10  on the same date that the national stage submission is electronically filed.

For any national stage submissions under 35 U.S.C. 371  filed via the EFS-Web or EFS-Web Contingency Option, the system automatically checks the Patent Application Locating and Monitoring (PALM) system to verify that no previous national stage submission has been made for the particular PCT international application referenced in the initial national stage submission. If the PALM system is unavailable, neither EFS-Web nor EFS-Web Contingency Option can complete the PALM verification, and thus EFS-Web and EFS-Web Contingency Option will not permit any national stage submissions under 35 U.S.C. 371  to be filed. Therefore, if PALM is unavailable, applicants may use hand-delivery or Priority Mail Express® from the USPS in accordance with 37 CFR 1.10  to timely submit documents and fees for national stage entry. However, applicants may not file national stage submissions under 35 U.S.C. 371  and the basic national fee necessary to enter the national stage via facsimile transmission. See 37 CFR 1.6(d)(3)  and 1.8(a)(2)(i)(F).

See subsection M below for additional information pertaining to the filing of international applications and entry into the national stage.

5.    Document Inadvertently Omitted from Application

One advantage of filing a patent application via EFS-Web is that a registered user may view his or her submission in Private PAIR and file a document directly into the application on the same day as the filing date of the application. In certain situations, applicant may correct an error by filing a missing item(s) on the same day as the filing date of the application. Applicant, however, may wish to file another new application in other certain situations.

The following examples describe implications raised when applicant inadvertently omits an item when filing an application under 35 U.S.C. 111  electronically via EFS-Web:

  • (1) Oath or Declaration - Applicant may file an executed oath or declaration on the same day as the filing date as the application via EFS-Web. The oath or declaration will not be considered late and thus a surcharge for filing a late oath or declaration will not be required.
  • (2) Filing Fees - Applicant may file the filing fees (e.g., the basic filing fee, search and examination fees, application size fee, or excess claims fee) on the same day as the filing date of the application via EFS-Web. The fees will not be considered late and thus a surcharge for filing the filing fees will not be required.
  • (3) Nonpublication request - Because 37 CFR 1.213(a)(1)  requires any nonpublication request to be filed with the application, applicant cannot simply file the nonpublication request to correct the error. If applicant does not wish to have the application publish, applicant must file: (a) a new application with a nonpublication request; and (b) in the initial application, a petition for express abandonment to avoid publication under 37 CFR 1.138(c)  and fee under 37 CFR 1.17(h)  in sufficient time to permit the appropriate officials in the Pre-Grant Publication Division to recognize the abandonment and remove the application from the publication process.
  • (4) Drawings - Applicant may file missing drawings as a preliminary amendment on the same day as the filing date of the application. The drawings will be considered as part of the original disclosure of the application. See 37 CFR 1.115(a)(1). If the application was filed with the "wrong drawings," a preliminary amendment could be filed on the same day as the filing date of the application adding the correct drawings and deleting the "wrong drawings." An amendment adding new drawings and deleting the "wrong drawings," filed on a day after the filing date of the application may raise new matter issues.
  • (5) Claims - Applicant may file claims as a preliminary amendment on the same day that applicant filed the application papers and such claims will be considered as part of the original disclosure of the application.
  • (6) Part of the specification - Applicant may file any missing portion of the written description as a preliminary amendment on the filing date of the application. Such amendment will be considered as part of the original disclosure.

If applicant files a second application to correct an error in the first application, applicant will have filed two applications. Applicant may continue to prosecute the first application that has the error or abandon the first application by filing a petition for express abandonment. Please note that any fees paid in the first application will not be refunded or applied to the second application. Applicant may request refund of the search fee and any excess claims fees (but not the basic filing fee, examination fee, and application size fee) paid in the first application if the application was filed under 35 U.S.C. 111(a), and the applicant files a petition for express abandonment in accordance with 37 CFR 1.138(d).

6.    Legal Consequences of the USPTO’s Accepting Electronic Patent Applications on Saturday and Sunday

Applicants may file patent applications electronically during the hours of operation of EFS-Web every day of the week, including weekends and holidays. EFS-Web will provide applicants with the opportunity to receive a filing date on any day of the week, including Saturday, Sunday, and Federal holidays. In addition, 35 U.S.C. 21(b)  states:

When the day, or the last day, for taking any action or paying any fee in the United States Patent and Trademark Office falls on Saturday, Sunday, or a Federal holiday within the District of Columbia, the action may be taken, or fee paid, on the next succeeding secular or business day.

Further, 35 U.S.C. 119(e)(3)  states, in pertinent part:

If the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the period of pendency of the provisional application shall be extended to the next succeeding secular or business day.

Thus, under United States law, applicants will be permitted to take action on the next business day when the last day for taking action falls on a weekend or Federal holiday, regardless of the mode or form of filing.

However, Article 4  of the Paris Convention addresses the priority period and in Article 4(C)(3)  it states:

If the last day of the period is an official holiday, or a day when the Office is not open for the filing of applications in the country where protection is claimed, the period shall be extended until the first following working day.

As stated above, the USPTO is capable of accepting electronic patent application filings every day of the week, including weekends and holidays, through EFS-Web. Thus, applicants filing international applications with the United States Receiving Office or international design applications with the USPTO as an office of indirect filing are cautioned to consider possible adverse consequences regarding the determination in other countries of priority periods under Article 4(C)(3)  of the Paris Convention. Specifically, the ability to file applications electronically on weekends and holidays in the USPTO may result in loss of priority rights in foreign jurisdictions designated in international applications filed with the United States Receiving Office or international design applications with the USPTO as an office of indirect filing, if applicants elect, in accordance with 35 U.S.C. 21(b)  or 119(e)(3), to file an international application or international design application on the next succeeding business day in the event that the twelve-month Paris Convention priority period (or six-month period in the case of international design) set out in Article 4(C)(1)  falls on a Saturday, Sunday, or Federal Holiday. In such circumstances, other patent offices may deny the priority claim on the basis that the international application or international design application was not timely filed if their national law strictly incorporates the provision of Paris Convention Article 4(C)(3)  and considers the USPTO to be open for the filing of applications on weekends and holidays. For this reason, applicants may prefer not to rely upon the "next business day" provisions of 35 U.S.C. 21(b)  and 119(e)(3)  when filing international applications or international design applications with the USPTO, and instead file the international application or international design application before the Paris Convention priority period has expired.

D.    Proper usage of EFS-Web

Users should follow the instructions and guidelines for EFS-Web provided on the USPTO website.  Before clicking the SUBMIT button, the user should check whether the correct documents have been attached to the submission, and whether the information related to the submission has been entered correctly.  Once the user clicks the SUBMIT button on the Confirm and Submit screen, the submission will be electronically sent to the USPTO.  A submission is officially filed at the USPTO when the documents are received by the USPTO (the local time and date in Alexandria, VA, which is located in the Eastern Time zone).  Use of EFS-Web in a manner significantly in violation of the instructions and guidelines for EFS-Web provided on the USPTO website may result in non-entry of the submission or failure to accord a filing date in the event the USPTO does not fully, successfully, and officially receive all of the elements necessary to obtain a filing date for an intended submission.  Furthermore, electronic files submitted via EFS-Web must be free of executables, worms, viruses, or any other type of potentially malicious content.  Please note that 18 U.S.C. 1030 imposes a duty on users not to intentionally cause damage to federal government computers.

1.    Filing Documents as PDF Files via EFS-Web

EFS-Web accepts standard PDF documents up to 25 megabytes for each file, and 60 electronic files per submission. For international design applications, EFS-Web can accept more than 60 electronic files in a single submission, subject to certain conditions. See subsection L.4. below for more information.  PDF files created from scanned documents and submitted via EFS-Web must be created using a scanning resolution no lower than 300 dpi.  Lower resolution scans have significantly delayed processing and publication of applications, e.g., resubmission has been required for documents failing to comply with the legibility requirements. See 37 CFR 1.52(a)(1)(v)  and (a)(5)  regarding document legibility requirements.

In addition, because the PDF format is so feature-rich, certain PDF features are currently not supported by the USPTO systems.  For example, PDF documents with multiple layers must be flattened prior to submission to ensure that the complete document is received by the USPTO and readable to the examiner or other deciding officials.  If a document contains layers that are marked as "invisible", the invisible layers will be lost when the document is processed by the USPTO, and thus the official records in IFW will not contain the information on the invisible layers.  Furthermore, if a user enters information on a form using the PDF comments or annotations features, only the blank form without the PDF comments and annotations will be processed.  Therefore, the complete document will not be officially filed at the USPTO and the user cannot rely on the Electronic Acknowledgement Receipt as evidence that the completed form was filed at the USPTO.  Users are encouraged to check the contents of their submissions for completeness and accuracy via PAIR.

Users must follow the PDF Guidelines for EFS-Web and PDF Creation for EFS-Web (available on the USPTO website) to create and submit PDF files via EFS-Web to ensure that all of the information in the PDF files is successfully received and processed by the USPTO.

2.    Entering Information on EFS-Web Screens

EFS-Web collects information from on-screen entries made by the user through the EFS-Web graphical user interface (GUI) data collection screens.  Through these data collection screens, the user provides the USPTO with information regarding the electronic submission, such as the type of application being filed, the application number of the application in which a follow-on document is being submitted, or the type of document being submitted.  The USPTO systems (e.g., EFS-Web, IFW, etc.) will use the information entered by the user on the EFS-Web screens to automatically: (1) assign the application number, create the application, and process the application, if a new application is being filed; (2) upload the follow-on document into the application file specified by the user; or (3) message the deciding official based on the document description selected by the user. Providing incorrect information regarding the submission could lead to, for example: (1) an incorrect type of application file being created; (2) a delay in processing the document; (3) filing a document in an incorrect application; or (4) the deciding official not recognizing the document in sufficient time to avoid publication, to withdraw the application from issue, or to avoid the abandonment of the application.

a.    Follow-on Documents

When a user submits a follow-on document (e.g., a reply to an Office action or notice) via EFS-Web, the user is required to enter the correct application number and confirmation number of the application in which the follow-on document is being filed.  Providing the incorrect application number and confirmation number pair will result in filing the follow-on document in the wrong application.  Therefore, it is important for the user to enter the correct application number and confirmation number on the EFS-Web screen when filing the follow-on document. Furthermore, users cannot file a follow-on document as a new application.

After the submission of the follow-on document is completed, the user should log on to PAIR to review the application file and check whether the follow-on document has been filed in the correct application.  Checking the application file via PAIR would also help the user to discover other filing errors, such as filing a wrong document or omitting a portion of the document.

b.    Filing a New Application

When a user is submitting a new application via EFS-Web, the user is required to select the application type (e.g., design, utility, provisional or nonprovisional) being filed on the EFS-Web screen.  Only document descriptions and fee codes pertinent to the selected application type will be available for the submission.  The system will also automatically generate the application number based on the user’s selection.  For example, if the user indicates that the submission is a provisional application by selecting the EFS-Web radio button for a provisional application, the application will be assigned a provisional application number, provisional application fees will be collected or required, and the application will be further processed as a provisional application.  Furthermore, the application will not be assigned to an examiner for examination and will not be published because the submission is processed as a provisional application.  Therefore, it is important for the user to select the correct application type on the EFS-Web screen, and review the Electronic Acknowledgement Receipt and the application file using PAIR after the submission is completed.

c.    Document Indexing

When a user submits an application or a follow-on document in an application using EFS-Web, the user must select from the list of document descriptions to specify the files being submitted via EFS-Web.  For instance, when the user is filing a patent application, the submission must be separated into appropriate sections:  specification, claims, abstract, and drawing; and when the user is filing an amendment, the user must select the appropriate type of amendment:  amendment after non-final, amendment after allowance, preliminary amendment, and amendment after final.  Based on the document description selected by the user, a document code is assigned and a message regarding the document submitted to the USPTO will be forwarded to the appropriate organization for processing, and to the appropriate official for consideration.  Furthermore, the IFW and PAIR systems use the document code for identifying the document maintained in the application file.  Therefore, accurate document indexing is important to facilitate efficient processing and proper consideration of the document by the USPTO.  For example: (a) if the user indicated an after-final amendment as a non-final amendment, the processing of such amendment may be delayed and the examiner may not have sufficient time to consider the amendment before the time period for reply expires; (b) if the user selects the "Pre-Grant Publication" radio button on the EFS-Web data collection screen for submitting a substitute specification filed in response to a non-final Office action, the submission will be forwarded to the publication branch rather than processed into IFW and forwarded to the examiner for consideration; and (c) if the user selects "drawings - only black and white line drawings" for submitting color drawings in a utility application rather than "drawing - other than black and white line drawings", the color drawings would not be processed as color drawings, and would be maintained as black and white drawings in IFW.

More information on document indexing is available on the USPTO website.  It is important for users to select the correct document description, and check the application file via PAIR after the submission is completed.

3.    Refunds

The USPTO will grant refunds to users when, due to a malfunction with the EFS-Web system, the EFS-Web system has misled a user into paying a fee in error. If it cannot be determined that a malfunction occurred, but rather it seems to be a user error, no refund will be given. Users should contact the Patent Electronic Business Center (Patent EBC) if there are any issues associated with their submissions.

E.    Security and Authentication

The USPTO requires PKI certificates to meet federal government computer system authentication guidelines as defined by the National Institute of Standards and Technology (NIST) and the Office of Management and Budget (OMB).  The required evaluation of EFS-Web and PAIR determined that level three authentication was needed; this is met by the USPTO’s PKI.

Only a PKI certificate holder (or the designated employee under the certificate holder’s direction and control) can submit follow-on documents.  This preserves confidentiality, and is consistent with power of attorney and correspondence regulations.  In order to obtain a PKI certificate, the user must be a registered practitioner (i.e., an attorney or agent) or an inventor, and complete the appropriate paperwork (e.g., review the PKI Subscriber Agreement and complete the certificate action form, available on the USPTO website).  Once the user has a PKI certificate, the user can authenticate himself or herself to the USPTO through the EFS-Web sign-on.  This will generate a secure, encrypted connection with the USPTO.

For users that do not have, or do not wish to use, a PKI certificate to authenticate to the USPTO, they may still submit new application filings only via a non-authenticated workflow.  The user would go to the EFS-Web page and choose to submit without a PKI certificate as a non-registered user, which would generate a Transport Layer Security (TLS) connection for the session, thus allowing secure data transmission to the USPTO.  Non-registered users have the same level of protection for filing as a registered user, but are limited to submission of initial filings (except as noted in subsection B.1., above).  This practice minimizes the risk of improperly-filed third party submissions and other documents.  Non-registered users may file follow-on documents by mail (with a certificate of mailing in accordance with 37 CFR 1.8 ), Priority Mail Express® from USPS in accordance with 37 CFR 1.10, or hand delivery.

Note:  Users are advised that the USPTO may revoke a user’s digital PKI certificate if the user makes an improper submission through EFS-Web.  See subsection B., above, and section 4 of the United States Patent and Trademark Office Public Key Infrastructure Subscriber Agreement ("PKI Subscriber Agreement") (available at www.uspto.gov/patents-application-process/applying- online/efs-web-guidance-and-resources ), listed as "PKI Subscriber Agreement").

1.    PKI Subscriber Agreement

The PKI Subscriber Agreement (April 2013) explains that a holder of a PKI certificate must update changes in the information in their Certificate of Action Form within thirty (30) calendar days of the change. Information may be updated by submitting a new certificate of action form or a letter to the Electronic Business Center (EBC). A holder’s registered email address and password may be updated on the Digital Certificate Management webpage.

The PKI Subscriber Agreement has been revised to clarify that a PKI certificate holder will only use the certificate for applications for which the certificate holder is authorized to access and that unauthorized use such as attempting or gaining access to nonpublic information or inadvertently disclosed nonpublic information may lead to immediate revocation of the PKI certificate.

A PKI certificate holder is permitted to designate more than one employee to use the PKI certificate under the direction and control of the holder in accordance with the PKI Subscriber Agreement and the rules and policies of the USPTO including the Legal Framework for EFS-Web.  The designated employees should be paralegals or support staff of the certificate holder.  Each designated employee must be either an employee of the holder’s organization or an employee of a contractor of the holder.  The PKI certificate holder and the designated employees may use the holder’s PKI certificate concurrently.  For example, a registered patent practitioner may file a patent application electronically via EFS-Web using his or her PKI certificate at the same time as one of the practitioner’s paralegals files a follow-on document in another application electronically via EFS-Web, and a second paralegal of the practitioner retrieves an e-Office action via Private PAIR, using the practitioner’s PKI certificate under the direction and control of the practitioner. 

The PKI Subscriber Agreement permits a holder of a PKI certificate to designate more than one employee to use the PKI certificate under the direction and control of the holder in accordance with the PKI Subscriber Agreement and the rules and policies of the USPTO including the Legal Framework for EFS-Web.  Any revised PKI Subscriber Agreement will apply to new PKI certificate holders and current PKI certificate holders that continue to use their PKI certificates (includes any PKI certificate usage by their designated employees).

A practitioner who is a PKI certificate holder, or the designated employee acting under the direction and control of the practitioner, may file documents signed by either the practitioner or another practitioner via EFS-Web, in compliance with the PKI Subscriber Agreement.  Filing of a document that is unauthorized to be filed via EFS-Web (e.g., a protest under 37 CFR 1.291 ) is inconsistent with the Subscriber Agreement and the rules and policies of the USPTO.  Thus, the certificate holder, and designated employee acting under the direction and control of the certificate holder, must make sure that the document being submitted is authorized to be filed via EFS-Web, regardless of whether the document is signed by the practitioner exercising the direction and control or by another practitioner. 

EFS-Web also permits a legal assistant or paralegal to submit an application or a request for reexamination previously reviewed by a registered practitioner without the registered practitioner being present. See subsection E.2., below, for more information.

The following are Frequently Asked Questions (FAQs) regarding PKI certificates:

  • 1. Can current PKI certificate holders designate more than one employee without applying for a new PKI certificate or filing a newly signed certificate action form (PTO-2042)?
    • Yes, a new request for a PKI certificate is not needed. Continued use of a PKI certificate after the publication of the Subscriber Agreement and any modifications thereto will constitute agreement to the most current PKI Subscriber Agreement by the current PKI certificate holder. See section 9 of the PKI Subscriber Agreement. Therefore, a current PKI certificate holder may designate more than one employee to use the holder’s PKI certificate under the direction and control of the holder in accordance with the PKI Subscriber Agreement and the rules and policies of the USPTO including the Legal Framework for EFS-Web.
  • 2. What is the maximum number of employees that a PKI certificate holder may designate?
    • A PKI certificate holder may only designate a reasonable number of employees for which he or she can maintain proper control. The PKI certificate holder is responsible for the usage by the designated employees who can only use the PKI certificate under the direction and control of the holder in accordance with the PKI Subscriber Agreement and the rules and policies of the USPTO including the Legal Framework for EFS-Web. The holder must take reasonable steps to ensure compliance with the requirements in the PKI Subscriber Agreement and the rules and policies of the USPTO. When a PKI certificate holder or one of the holder’s designated employees electronically transmits a submission to the USPTO via EFS Web using the holder’s PKI certificate, the PKI certificate holder is presenting the information in the submission to the USPTO and making the certification under 37 CFR 11.18(b). Furthermore, the PKI certificate holder is not permitted to designate a person who is not an employee as defined above, and designated employees are not permitted to share the certificate with anyone else (e.g., a designated employee cannot designate another employee).
  • 3. Can a PKI certificate holder designate employees of more than one contractor?
    • Yes, a PKI certificate holder may designate employees of more than one contractor as long as the PKI certificate holder maintains control of the PKI certificate usage and can ensure that the employees of the contractors are using the PKI certificate in accordance with the PKI Subscriber Agreement and the rules and policies of the USPTO including the Legal Framework for EFS-Web.
  • 4. Can multiple PKI certificate holders designate the same employee to use their certificates?
    • Yes, multiple PKI certificate holders may designate the same employee if the PKI certificate holders and the designated employee take reasonable steps to ensure that the designated employee uses the proper PKI certificate for each task in accordance with the PKI Subscriber Agreement and the rules and policies of the USPTO including the Legal Framework for EFS-Web. For example, if Holder Smith asked the designated employee to electronically submit a patent application via EFS-Web, the designated employee must use the PKI certificate of Holder Smith to submit the patent application, rather than a certificate of another holder who did not give the designated employee the direction to file the patent application.
  • 5. Can a PKI certificate holder designate an employee that is not located in the same location?
    • Yes, a PKI certificate holder may designate an employee that is not located in the same location as long as the designated employee uses the PKI certificate under the direction and control of the holder in accordance with the PKI Subscriber Agreement and the rules and policies of the USPTO including the Legal Framework for EFS-Web
  • 6. What should a PKI certificate holder do if one of his or her designated employees is leaving the holder’s organization or the contractor’s organization?
    • The PKI certificate holder must take reasonable steps to ensure that the employee does not continue to use the PKI certificate when the employee leaves the holder’s organization or the contractor’s organization or when the contractor is no longer a contractor to the holder.
  • 7. Can an inventor use his or her PKI certificate to file an application or document for another person or retrieve information regarding another person’s application?
    • No, an inventor cannot use (or permit someone else to use) his or her PKI certificate to file an application or document for another person, or retrieve information (e.g., an e-Office action or the status) regarding another person’s application. An inventor may use his or her PKI certificate to file his or her application, or follow-on documents in his or her application.
  • 8. Can a PKI certificate holder designate a company that offers paralegal services to use the PKI certificate?
    • No, a PKI certificate holder cannot designate a company. A PKI certificate holder may only designate more than one employee of a contractor (or the organization of the holder) to use his or her certificate under the holder’s direction and control in accordance with the PKI Subscriber Agreement and the rules and policies of the USPTO including the Legal Framework for EFS-Web.
  • 9. Can a PKI certificate holder designate an invention promotion company or an invention promoter to use the PKI certificate?
    • No, a PKI certificate holder is not permitted to designate an invention promotion company or an invention promoter to use the PKI certificate. A PKI certificate holder may only designate more than one employee of a contractor (or the organization of the holder) to use his or her certificate under the holder’s direction and control in accordance with the PKI Subscriber Agreement and the rules and policies of the USPTO including the Legal Framework for EFS-Web. The designated employees should be paralegals or support staff of the holder’s organization (or a contractor’s organization). A PKI certificate holder must take reasonable steps to ensure that the PKI certificate is not being used in connection with the unauthorized practice before the USPTO in patent matters. See section 3 of the PKI Subscriber Agreement.
  • 10. Can a registered patent practitioner who is a PKI certificate holder designate his or her client or a "foreign associate" (e.g., an attorney in another law firm) to use the PKI certificate?
    • No, a PKI certificate holder cannot designate his or her client, and cannot designate a "foreign associate" (e.g., an attorney in another law firm) who is not an employee of the certificate holder’s organization and is not an employee of a contractor. A PKI certificate holder may only designate more than one employee of a contractor (or the organization of the holder) to use his or her certificate under the holder’s direction and control in accordance with the PKI Subscriber Agreement and the rules and policies of the USPTO including the Legal Framework for EFS-Web. The designated employees should be paralegals or support staff of the certificate holder. Furthermore, if the "foreign associate" is located outside of the United States, it would be difficult for the holder to maintain control of the PKI certificate usage and ensure compliance with the rules and policies of the USPTO by a person located outside of the United States. In addition, accessing an application before the applicant has received a foreign filing license by a person located outside of the United States, or by a foreign national inside the United States, constitutes an export. The holder cannot permit the use of the PKI certificate in a manner that would violate or circumvent the Export Administration Regulations. See section 6 of the PKI Subscriber Agreement for more information.
  • 11. Can a PKI certificate holder or a designated employee file third party papers such as a protest via EFS-Web using the PKI certificate?
    • The EFS-Web Legal Framework specifically prohibits filing via EFS-Web most third party papers as well as protests in patent applications. See subsection B.2., above. Circumventing established rules and procedures would be a violation of the Legal Framework for EFS-Web and the PKI Subscriber Agreement. Such violation may cause the USPTO to revoke the PKI certificate and/or refer the PKI certificate holder to the Office of Enrollment and Discipline for appropriate action. Therefore, PKI certificate holders should take reasonable steps to ensure that their designated employees do not improperly file third party papers and protests via EFS-Web.
    • Any third party papers such as protests under 37 CFR 1.291, citation of prior art in patent files under 37 CFR 1.501  or any petition, cannot be filed via EFS-Web unless specifically authorized by the EFS Legal Framework and/or provided for via dedicated EFS-Web interface (e.g., Third Party Preissuance Submissions under 37 CFR 1.290 ). See subsection B.1., above.
  • 12. Can a designated employee continue to use the PKI certificate of a deceased holder?
    • No, all of the designated employees must stop using the PKI certificate upon the death of the holder because designated employees only have the authority to use the PKI certificate under the direction and control of the holder. The USPTO will revoke the PKI certificate once the USPTO becomes aware that the holder is deceased.
  • 13. Can a PKI certificate holder or his or her designated employees continue to use the PKI certificate after the holder is suspended from practice before the USPTO?
    • No, the PKI certificate holder and all of his or her designated employees must stop using the PKI certificate once the holder is suspended from practice before the USPTO. The USPTO will revoke the PKI certificate once the appropriate official in the USPTO becomes aware of the suspension.

2.    Authorized Assistants of the Digital Certificate Holder

A PKI digital certificate holder is permitted to designate more than one employee of the holder’s organization (or a contractor’s organization), under the PKI Subscriber Agreement and certificate action form. The designated employee under the direction and control of the digital certificate holder may use the certificate holder’s certificate to submit documents through EFS-Web in compliance with the PKI Subscriber Agreement and the rules and policies of the USPTO.

The documents submitted through EFS-Web must be signed in accordance with 37 CFR 1.4, 1.33(b), and 11.18. If the designated employee is an assistant who is not an authorized party to sign the documents, the designated employee is not responsible for the contents of the documents submitted. Instead, the person who signs the documents (e.g., the inventor or a registered practitioner who is representing the inventor) is responsible for the contents. For example, the documents may be electronically signed or ink signed by the applicant or attorney of record. The assistant (i.e., designated employee) who serves the ministerial function of pickup and delivery of documents may submit the signed documents electronically via EFS-Web under the direction and control of the certificate holder. (Ink signed documents can be electronically scanned and then e-filed.) This employee may also view and retrieve documents from Private PAIR under the direction and control of the certificate holder in compliance with the PKI Subscriber Agreement.

It also should be noted that the assistant could pay the fees associated with the submission in the EFS-Web process. This is comparable to the paper practice in which law firms designate individuals to pay fees.

F.    Signature Policy

Signatures included in image attachments submitted via EFS-Web are governed by the requirements of 37 CFR 1.4(d)(3).

If the signer is submitting an application through EFS-Web as PDF files, he or she may apply either a handwritten signature in compliance with 37 CFR 1.4(d)(1)  or an S-signature in compliance with 37 CFR 1.4(d)(2)  before scanning the document or converting it to a PDF file.  Alternatively, correspondence submitted through EFS-Web may be signed by a graphic representation of a handwritten signature as provided for in 37 CFR 1.4(d)(1)  or a graphic representation of an S-signature as provided for 37 CFR 1.4(d)(2). See 37 CFR 1.4(d)(3). Any follow-on documents, such as responding to a Notice to File Missing Parts of Nonprovisional Application or an amendment filed in an application, must also be signed in accordance with applicable requirements. See 37 CFR 1.33(b).  Even though a new patent application is entitled to a filing date if it complies with all the statutory requirements set forth in 35 U.S.C. 111(a)  or (b), it is noted that when filing a new application by EFS-Web, a signed transmittal form or a signed application data sheet (ADS) is recommended for identification purposes, and any nonpublication request and certification that accompany the application must be signed.. The correspondence address must be set forth in either an application data sheet or clearly set forth in another paper submitted with the application, which must be signed. See 37 CFR 1.33(a).

The presentation to the USPTO (whether by signing, filing, submitting, or later advocating) of any document constitutes a certification under 37 CFR 11.18(b).  See 37 CFR 1.4(d)(4).

G.    Submission of Pre-Grant (Eighteen-Month) Publication Requests Via EFS-Web

EFS-Web enables users to electronically submit pre-grant publication requests for amended publication, redacted publication, early publication, voluntary publication, or republication under 37 CFR 1.215, 1.217, 1.219, and 1.221(a)  via EFS-Web.  When filing pre-grant publication requests via EFS-Web, the appropriate form-fillable application data sheet (PTO/AIA/14 or PTO/SB/14) is required to be used for fulfilling the bibliographic data requirements.  An electronic submission for voluntary publication, amended publication, republication (37 CFR 1.221(a) ) or redacted publication must be submitted as a "Pre-Grant Publication" by selecting the "Pre-Grant Publication" radio button on the EFS-Web data collection screen.  It is not sufficient for a user to submit a document via EFS-Web requesting amended publication, redacted publication, early publication, voluntary publication, or republication without also selecting the "Pre-Grant Publication" radio button on the EFS-Web data collection screen.

While the Office may publish certain amendments in the Pre-Grant Publication, to be entitled to have the patent application publication be based upon a copy of the application (specification, drawings, and the application data sheet and/or the inventor’s oath or declaration) as amended, applicant must supply such a copy via EFS-Web as set forth above. See 37 CFR 1.215(c).

H.    Submission of Supplemental Examination Requests via EFS-Web

Patent owners may submit a request for supplemental examination via the electronic filing system (EFS-Web). When filing a new request for supplemental examination, the patent owner should select the filing option "New application/proceeding", and then select "Supplemental Examination." Any paper(s) that are to be filed in an existing supplemental examination proceeding, and any paper(s) that are to be filed in a reexamination proceeding ordered as a result of a supplemental examination proceeding, may be filed by selecting "Existing application/patent/proceeding" (e.g., a proceeding that has already been assigned a control number), "Documents/Fees for an existing application/proceeding", and then entering the assigned control number and confirmation number for the proceeding.

I.    Filing of Third-party Preissuance Submissions and Citation of Prior Art and Written Statements in Patent Files Filed via EFS-Web

Registered and unregistered eFilers may submit a third-party preissuance submission in any non-provisional utility, design, or plant application, including any continuing application. The application may be pending or abandoned and need not be published. To submit a third-party preissuance submission, the radio button "Third-Party Preissuance Submission under 37 CFR 1.290 " must be selected. To submit a Third-Party Preissuance Submission, sign on to EFS-Web, select the "Existing application/patent" radio button. The Web screen will expand to display additional options. Select the radio button located next to "Third-Party Preissuance Submission under 37 CFR 1.290 " and enter the Application Number and Confirmation Number. The Confirmation Number can be obtained by viewing the application in the Public Patent Application Information Retrieval (PAIR) System.

Registered and unregistered eFilers may submit a prior art and/or written statement submission into a patent file under 37 CFR 1.501, at any time during the period of enforceability of the patent. A submission into a patent file under 37 CFR 1.501  cannot be filed via EFS-Web in design or plant patents. To submit a 37 CFR 1.501  submission, select the radio button "Prior Art Submission into Patent File under 37 CFR 1.501 " and enter the Application Number and Patent Number.

J.    Submission of Interim Copies of Foreign Priority Documents via EFS-Web

Interim copies of foreign priority documents as provided for in 37 CFR 1.55(j)  may be submitted via EFS-Web in (i) applications filed under 35 U.S.C. 111(a), except for plant patent applications and design applications, and (ii) national stage applications under 35 U.S.C. 371. See 37 CFR 1.55  for details regarding claims for foreign priority, including the timing for submitting interim copies. See MPEP § 215 et seq.

The following are Frequently Asked Questions (FAQs) regarding interim copies of foreign priority applications:

  • 1. If an applicant submits an interim copy of a foreign priority application, will the applicant still need to provide a certified copy of the foreign priority document? How will an interim copy submission be reflected in the USPTO’s records?
    • Yes. If an applicant files an interim copy of a foreign priority application, the applicant must provide a certified copy of the foreign priority document before patent grant in order to perfect the priority claim. An interim copy of a foreign priority application will be entered into the file wrapper of the application in which it was filed and labeled as "Interim copy of Foreign Priority Document."
  • 2. Are there any special instructions for filing an interim copy of the foreign priority application?
    • Yes. Main parts of the interim copy of the foreign priority application, i.e., Abstract, Drawings, Specification, Claims, and where applicable, Sequence Listing or Computer Program Listings, along with the separate cover sheet required by 37 CFR 1.55(j), may be filed as a single PDF file via EFS-Web (or as a single paper document). The PDF file will be stored in the Image File Wrapper of the application, and applicants must select the document description "Interim copy of Foreign Priority Application" to index this document when filing online.
    • Application parts that were filed in a foreign patent office only as plain text computer files (e.g. TXT file), such as a Sequence Listing, lengthy Tables(s), or Computer Program Listing appendix, may be filed as a TXT file via EFS-Web (or on compact disc). When filing online via EFS-Web, applicants must select the document description "Interim copy of Foreign Priority (text file)" to index a plain text file part of the application. Please note that EFS-Web will not perform preliminary validation on an interim sequence listing text file, and that a sequence listing in an interim copy of a foreign priority document over 25 MB must be split into multiple files under the 25 MB upload limit . If a TXT file is filed on compact disc, the compact disc must be labeled as "Text File of Interim Copy of Foreign Priority Application" along with (1) the country code and application number of the foreign priority document, (2) at least two pieces of identifying information for the application (e.g., application number, docket number, title, etc.) in which the interim copy of the foreign application was filed, and (3) if multiple compact discs are submitted, a label indicating their order (e.g. "1 of X").
    • The file name of each TXT file must begin with the country code and application number of the foreign priority application of which it is a part (any punctuation or space in the application number must either be omitted or replaced with a dash "-" or underscore "_" character); e.g. "EP111838637_SequenceListing.txt" or "EP_11183863_7_Table 2". Where an original TXT file must be split into multiple parts, the file name for each part should indicate the order; for example, EP111838637_SeqList_part1of2.txt and EP111838637_SeqList_part2of2.txt.

K.    Submission of Photographs and Drawings via EFS-Web

The USPTO prefers black and white line drawings as prescribed in 37 CFR 1.84(a)(1)  when applicants are required to submit drawings in patent applications. Pursuant to 37 CFR 1.84(a)(2), color drawings are permitted in design applications filed under 35 U.S.C. chapter 16. As stated in 37 CFR 1.84(a)(2)  color drawings are not ordinarily permitted in utility patent applications, and as stated in 37 CFR 1.84(b), photographs are not ordinarily permitted in utility or design patent applications, but the USPTO will accept photographs in utility or design patent applications, or color drawings in utility patent applications, if they are the only practicable medium for illustrating the claimed subject matter.  The photographs and color drawings submitted in utility or design patent applications must be of sufficient quality such that all details in the photographs and drawings are reproducible in black and white in the printed patent. 

Drawings submitted in PCT international applications are required to comply with PCT Rule 11.13, which does not permit color drawings.   Furthermore, there is no provision for photographs in PCT international applications.  Nevertheless, black and white photographs will be accepted where it is impossible to present in a drawing what is to be shown (e.g., crystalline structures). Color photographs are not permitted in PCT international applications.

Color drawings and photographs (in black and white or in color) may be submitted in international design applications as provided under Section 401 of the Administrative Instructions for the Application of the Hague Agreement. See subsection N for additional information concerning international design applications.

The USPTO may object to the drawings and photographs, and require corrections or deletions if they do not comply with 37 CFR 1.84  or PCT Rule 11.13.  Additionally, since color drawings are not permitted in PCT international applications, color drawings and color photographs filed in a national stage application under 35 U.S.C. 371  will be treated as an amendment and will be objected to if they introduce new matter.

1.    Types of Photographs and Drawings Permitted to be Filed via EFS-Web

Black and white line drawings may be submitted via EFS-Web in the types of patent applications and proceedings listed in subsection B.1., above.  However, photographs, color drawings, grayscale drawings, and other drawings that are not black and white line drawings may be submitted via EFS-Web in only the following types of applications and proceedings: 

  • (1) Nonprovisional design patent applications, including reissue design patent applications;
  • (2) Provisional applications under 35 U.S.C. 111(b);
  • (3) Nonprovisional utility patent applications under 35 U.S.C. 111(a), including reissue utility patent applications;
  • (4) U.S. national stage applications under 35 U.S.C. 371, including reissue utility patent applications;
  • (5) International design applications;
  • (6) Reexamination proceedings for utility or design patents; and
  • (7) Supplemental examination proceedings under 35 U.S.C. 257.

Only black and white photographs, and black and white line drawings, may be submitted via EFS-Web in PCT international applications.

2.    Document Description for Photograph and Drawings

Users must select the correct document description when submitting photographs and drawings via EFS-Web.  Selecting an incorrect document description may cause the photographs and drawings to be processed in a quality that is not sufficient for examination and publication.  Applicant must select:

  • (1) "Drawings – only black and white line drawings" (document code "DRW") for the following:
    • (a) Black and white line drawings in:
      • (i) provisional applications under 35 U.S.C. 111(b);
      • (ii) nonprovisional utility patent applications under 35 U.S.C. 111(a), including reissue utility patent applications;
      • (iii) PCT international applications and national stage applications under 35 U.S.C. 371; and
      • (iv) reexamination proceedings for utility patents.
    • These drawings will be converted into TIFF images and stored in IFW.
    • (b) Black and white line drawings in design applications, including reissue design patent applications, international design applications, and reexamination proceedings for design patents.  These drawings will be stored in SCORE, and a black and white copy will be stored in IFW along with a SCORE placeholder sheet.
  • (2) "Drawings – other than black and white line drawings" (document code "DRW.NONBW") for the following:
    • (a) Photographs, color drawings, grayscale drawings, and other drawings that are not black and white line drawings in:
      • (i) provisional applications under 35 U.S.C. 111(b);
      • (ii) nonprovisional utility and design patent applications under 35 U.S.C. 111(a), including reissue utility and design patent applications;
      • (iii) national stage applications under 35 U.S.C. 371;
      • (iv) international design applications;
      • (v) reexamination proceedings for utility patents and design patents; and
      • (vi) supplemental examination proceedings.
    • These drawings will be stored in SCORE, and a black and white copy will be stored in IFW along with a SCORE placeholder sheet.
    • (b) Black and white photographs, and grayscale drawings, in PCT international applications.  These drawings will be stored in SCORE, and a black and white copy will be stored in IFW along with a SCORE placeholder sheet.

3.    Additional Requirements

For color drawings in utility patent applications, a petition filed under 37 CFR 1.84(a)(2)  explaining why the color drawings are necessary is required.  See MPEP § 608.02.  Pursuant to 37 CFR 1.84(a)(2)(ii), only one set of color drawings is necessary when filing via EFS-Web.

EFS-Web supports the use of black and white, color, or grayscale images within the PDF document.  However, grayscale or color images filed as "drawings - other than black and white line drawings" in a utility patent application will be converted to black and white images when stored into IFW.  The quality of black and white images may be degraded.  To obtain sufficient quality so that all details in the images are reproducible in black and white in the eighteen-month publication and the printed patent, images should be scanned at a minimum resolution of 300 DPI.  Furthermore, PAIR is only capable of displaying portrait orientation.  Users should not submit landscape oriented drawings via EFS-Web because PAIR will automatically convert the image to portrait, which may cause the images to be distorted during viewing.

For international design applications, EFS-Web supports the use of black and white, color, or grayscale images within a JPEG document. To obtain sufficient image quality for purposes of WIPO publication of the international application and any subsequent U.S. patent that may issue thereon, image resolution should be between 250x250 DPI to 300x300 DPI. In addition, the images should have at least a one pixel border, and preferably between 1-20 pixel. See subsection N for further information concerning reproductions in international design applications.

L.    Text Files and File Limits

1.    Biotechnology Sequence Listings, Large Tables, or Computer Program Listing Appendices Submitted as Text Files via EFS-Web

Biotechnology sequence listings, large tables, and computer program listing appendices may be submitted as ASCII text files with a ".txt" extension (e.g., "seqlist.txt") for applications filed under 35 U.S.C. 111, national stage applications under 35 U.S.C. 371, reexamination proceedings, and supplemental examination proceedings. The compact disc practice of 37 CFR 1.52(e)  and 1.821  et seq. remains as a filing option.  The filing of international applications via EFS-Web is discussed in subsection M., below.

Users may submit the following document types, as specified in 37 CFR 1.52(e), as ASCII text files via EFS-Web instead of on compact disc, provided the specification contains a statement in a separate paragraph that incorporates by reference the material in the ASCII text file identifying the name of the ASCII text file, the date of creation, and the size of the ASCII text file in bytes:

  • (1) A computer program listing (see 37 CFR 1.96 );
  • (2) A sequence listing (submitted under 37 CFR 1.821 ); or
  • (3) Any individual table (see 37 CFR 1.58 ) if the table is more than 50 pages in length, or if the total number of pages of all of the tables in an application exceeds 100 pages in length, wherein a table page is a page printed on paper in conformance with 37 CFR 1.52(b)  and 1.58(c).

The requirements of 37 CFR 1.52(e)(3)-(6)  for documents submitted on compact disc are not applicable to computer program listings, sequence listings, and tables submitted as ASCII text files via EFS-Web.  However, each text file must be in compliance with ASCII and have a file name with a ".txt" extension.  Further, the specification must contain an incorporation-by-reference of the material in the ASCII text file in a separate paragraph identifying the name of the ASCII text file, the date of creation, and the size of the ASCII text file in bytes similar to the requirements of 37 CFR 1.52(e)(5)  for compact discs. See 37 CFR 1.77(b)(5).

It is recommended that a sequence listing be submitted in an ASCII text file via EFS-Web rather than in a PDF file.  If a sequence listing ASCII text file submitted via EFS-Web on the application filing date complies with the requirements of 37 CFR 1.824(a)(2)-(6)  and (b), and applicant has not filed a sequence listing in a PDF file, the text file will serve as both the paper copy required by 37 CFR 1.821(c)  and the computer readable form (CRF) required by 37 CFR 1.821(e).  Thus, the following are not required and should not be submitted:  (1) a second copy of the sequence listing in a PDF file; (2) a statement under 37 CFR 1.821(f)  (indicating that the paper copy and CRF copy of the sequence listing are identical); and (3) a request to use a compliant computer readable "Sequence Listing" that is already on file for another application pursuant to 37 CFR 1.821(e). If such a request is filed, the USPTO will not carry out the request but will use the sequence listing submitted in an ASCII text file with the application via EFS-Web.  Checker software that may be used to check a sequence listing for compliance with the requirements of 37 CFR 1.824  is available on the USPTO website at www.uspto.gov/patents-getting-started/patent-basics/ types-patent-applications/utility-patent/checker- version-446. The User Notes on the Checker website should be consulted for an explanation of errors that are not indicated, and content that is not verified, by the Checker software. 

If a user submits a sequence listing (under 37 CFR 1.821(c) and (e) ) as an ASCII text file via EFS-Web in response to a requirement under 37 CFR 1.821(g) or (h), the sequence listing text file must be accompanied by a statement that the submission does not include any new matter which goes beyond the disclosure of the application as filed.  In addition, if a user submits an amendment to, or a replacement of, a sequence listing (under 37 CFR 1.821(c)  and (e) ) as an ASCII text file via EFS-Web, the sequence listing text file must be accompanied by:  (1) a statement that the submission does not include any new matter, and (2) a statement that indicates support for the amendment in the application, as filed. See 37 CFR 1.825.

Submission of the sequence listing in a PDF file on the application filing date is not recommended. Applicant must still provide the CRF required by 37 CFR 1.821(e), and the sequence listing in the PDF file will not be excluded when determining the application size fee.  The USPTO prefers the submission of a sequence listing in an ASCII text file via EFS-Web on the application filing date because as stated above, if applicant has not filed a second copy of the sequence listing in a PDF file (or on paper) on the same day, the text file will serve as both the paper copy required by 37 CFR 1.821(c)  and the CRF required by 37 CFR 1.821(e).  Any sequence listing submitted in PDF format (or on paper) on the application filing date is treated as the paper copy required by 37 CFR 1.821(c).  If applicant submits a sequence listing in both a PDF file and an ASCII text file via EFS-Web on the application filing date, a statement that the sequence listing content of the PDF copy and the ASCII text file copy are identical is required.  In situations where applicant files the sequence listing in PDF format and requests the use of the CRF of another application under 37 CFR 1.821(e), applicant must submit a letter and request in compliance with 37 CFR 1.821(e)  and a statement that the PDF copy filed in the new application is identical to the CRF filed in the other application.

2.    Application Size Fee

Any sequence listing submitted as an ASCII text file via EFS-Web that is otherwise in compliance with 37 CFR 1.52(e)  and 1.824(a)(2)-(6)  and (b), and any computer program listing submitted as an ASCII text file via EFS-Web that is otherwise in compliance with 37 CFR 1.52(e)  and 1.96, will be excluded when determining the application size fee required by 37 CFR 1.16(s)  or 1.492(j)  as per 37 CFR 1.52(f)(1).

Regarding a table submitted as an ASCII text file via EFS-Web that is part of the specification or drawings, each three kilobytes of content submitted will be counted as a sheet of paper for purposes of determining the application size fee required by 37 CFR 1.16(s)  or 1.492(j).  Each table should be submitted as a separate text file.  Further, the file name for each table should indicate which table is contained therein.

3.    Size Limit for Text Files

One hundred (100) megabytes is the size limit for sequence listing text files submitted via EFS-Web.  If a user wishes to submit an electronic copy of a sequence listing text file that exceeds 100 megabytes, it is recommended that the user file the application without the sequence listing using EFS-Web to obtain the application number and confirmation number, and then file the sequence listing on compact disc in accordance with 37 CFR 1.52(e)  on the same day by using Priority Mail Express® from the USPS in accordance with 37 CFR 1.10, or hand delivery, in order to secure the same filing date for all parts of the application.  Alternatively, a user may submit the application on paper and include the electronic copy of the sequence listing text file on compact disc in accordance with 37 CFR 1.52(e).  Sequence listing text files may not be partitioned into multiple files for filing via EFS-Web as the EFS-Web system is not currently capable of handling such submissions.   If the sequence listing is filed on a compact disc, the sequence listing must be a single document, but the document may be split using software designed to divide a file, that is too large to fit on a single compact disc, into multiple concatenated files.  If the user breaks up a sequence listing so that it may be submitted on multiple compact discs, the compact discs must be labeled to indicate their order (e.g., "1 of X", "2 of X").

JPEG image files submitted via EFS-Web in international design applications, and PDF image files submitted in international design applications using the "Attach Reproductions" section of the "Attach Documents" EFS-Web screen, are limited to a file size of two megabytes. See subsection N for additional information concerning international design applications.

For all other file types, 25 megabytes is the size limit.  If a user wishes to submit an electronic copy of a computer program listing or table that is larger than 25 megabytes, it is recommended that the electronic copy be submitted on compact disc via Priority Mail Express® from the USPS in accordance with 37 CFR 1.10  on the date of the corresponding EFS-Web filing in accordance with 37 CFR 1.52(e)  if the user wishes the electronic copy to be considered to be part of the application as filed.  Alternatively, the user may submit the application in paper and include the electronic copies on compact disc in accordance with 37 CFR 1.52(e).  Another alternative would be for the user to break up a computer program listing or table file that is larger than 25 megabytes into multiple files that are no larger than 25 megabytes each and submit those smaller files via EFS-Web.  If the user chooses to break up a large computer program listing or table file so that it may be submitted electronically, the file names must indicate their order ( e.g., "1 of X", "2 of X").

4.    Limit on the Number of Electronic files in a Single EFS-Web Submission

Sixty (60) electronic files is the file number limit per submission, as EFS-Web is not currently capable of accepting more than 60 electronic files in any one submission (subject to certain exceptions for international design applications set forth below).  Accordingly, if an application file is comprised of more than 60 electronic files, it is recommended that the user submit 60 or fewer files in an initial filing via EFS-Web at which time the application will be assigned an application number.  Note that regarding the 60 electronic file limit per submission, an applicant may upload and validate in sets of up to 20 files each, with a limit of three sets of 20 files.  If applicant chooses to divide a file into multiple parts using the multi-doc feature, each part is counted as one file.  Then the user may submit any additional electronic files as follow-on documents later on the same day as the initial filing.  This will allow all of the electronic files making up the application to receive the same filing date.

For international design applications, the 60 electronic files limit per submission excludes electronic files of reproductions that are attached via the "Attach Reproductions" section of the "Attach Documents" screen in EFS-Web (available for submissions through the USPTO as an office of indirect filing prior to transmittal of the application to the International Bureau) or attached via the "Attach JPEG Reproductions" section of the "Attach Documents" screen in EFS-Web (available after transmittal of an international design application to the International Bureau or, where the USPTO was not an office of indirect filing, after receipt of the WIPO publication of an international design application designating the United States). The "Attach Reproductions" section allows up to 5000 (up to 100 designs with 50 views per design) additional single-page PDF and JPEG image files to be uploaded in one submission. The "Attach JPEG Reproductions" section allows up to 50 additional JPEG image files to be uploaded in one submission. See subsection N for further information concerning international design applications.

5.    Complex Work Units

Under the Complex Work Unit Pilot Program, complex work units (such as chemical structure drawings, mathematical formulae, three-dimensional protein crystalline structure data and table data) may be submitted as ASCII text files via EFS-Web for applications filed under 35 U.S.C. 111, national stage submissions under 35 U.S.C. 371, reexamination proceedings, and supplemental examination proceedings. Complex work units cannot be submitted as ASCII text files in PCT international applications. More information is available on the USPTO website at www.uspto.gov/patent/ initiatives/complex-work-unit-pilot-program.

M.    New PCT International Applications, New National Stage Submissions, and Associated Documents

The term "PCT international application" as used in this subsection refers to an international application filed under the PCT. The term "national stage submission" as used in this subsection refers to an international application where a submission has been made to enter the U.S. national stage under 35 U.S.C. 371.

1.    New PCT International Applications Filed under the PCT with the United States Receiving Office

EFS-Web enables users to electronically file PCT international applications with the United States Receiving Office (RO/US).  The required page size for PCT international applications filed via EFS-Web in PDF format is A4 (29.7 cm x 21 cm).  See PCT Rule 11.5. See subsection M.7., below, for more information about follow-on submissions during the international phase.

a.    The Request

EFS-Web permits users to submit PCT-EASY.zip files created by PCT-SAFE when operated in the PCT-EASY mode. On the Contents screen in PCT-SAFE, both PCT-EASY and EFS-Web should be marked. A PCT-EASY.zip file will contain the PCT Request and a fee calculation sheet in PDF format, which are converted to TIFF images and loaded into the image file wrapper by the USPTO.  PCT-SAFE permits users to create and electronically sign using an S-signature the PCT Request, including the Declaration of Inventorship, for the purposes of filing via EFS-Web with the United States Receiving Office.  PCT-SAFE when operated in the PCT-EASY mode creates a .zip file containing a validated PCT Request which will entitle the applicant to a reduction of the international filing fee when included in a new PCT international application filed with the RO/US.  Alternatively, if the applicant chooses not to use PCT-SAFE to create the PCT Request and fee calculation sheet, the applicant may use Form PCT/RO/101 (or equivalent) for the Request and attach it to the EFS-Web submission as a PDF document.

b.    Other Documents

All other documents including application parts (e.g., description, claims, drawings and abstract) and accompanying items MUST be separately prepared as PDF documents and attached to the EFS-Web submission. See subsection M.3., below, for more information on sequence listings.

More information regarding filing PCT international applications is available on the USPTO website (www.uspto.gov/sites/default/files/patents/process/ file/efs/guidance/indexing-pct-new-appl.pdf ).

2.    Specific Requirements for Drawings or Photographs

a.    PCT International Application

Drawings submitted in PCT international applications are required to comply with PCT Rule 11.13, which does not permit color drawings. Furthermore, there is no provision for photographs. Nevertheless, black and white photographs will be accepted where it is impossible to represent in a drawing what is to be shown (e.g., crystalline structures). Color photographs are not permitted in PCT international applications. Also see subsections B.2 and K.1, above.

The USPTO may object to the drawings and photographs, and require corrections or deletions if they do not comply with PCT Rule 11.13.

b.    National Stage Submission:

Since color drawings and color photographs are not permitted in PCT international applications, color drawings and color photographs filed in a national stage application will be treated as an amendment and will be objected to if they introduce new matter. See subsection K.1., above, regarding a petition to accept color drawings.

3.    Specific Requirements Pertaining to New National Stage Submissions, Including the Payment of Filing Fee

a.    Online Payment Option

The basic national fee is required in order for an international application to enter the national stage under 35 U.S.C. 371. See 37 CFR 1.495. Users are permitted to submit the basic national fee with the national stage submission under 35 U.S.C. 371  via EFS-Web using online payment screens that interface with the Revenue Accounting and Management (RAM) system.

b.    Alternative Payment Methods

If the RAM system is unavailable, EFS-Web will not permit users to make payment using the interactive payment screens. The applicant may pay the necessary national stage entry fee by either including a written authorization to charge the desired fee(s) together with the national stage submission under 35 U.S.C. 371, or sending the payment via Priority Mail Express® from the USPS in accordance with 37 CFR 1.10  on the same date that the national stage submission is electronically filed. However, applicants may not file the basic national fee necessary to enter the national stage via facsimile transmission. See 37 CFR 1.6(d)(3)  and 1.8(a)(2)(i)(F).

For more information on fees associated with national stage submissions under 35 U.S.C. 371, see MPEP § 1893.01(c).

4.    New National Stage Submissions to Enter the U.S. National Stage Under 35 U.S.C. 371

a.    Validation by PALM

New National Stage Submission: For any new national stage submissions under 35 U.S.C. 371  filed via EFS-Web, the system automatically checks the Patent Application Locating and Monitoring (PALM) system to verify that no previous national stage submission has been made for the particular PCT international application referenced in the new national stage submission. Filers should confirm that the correct PCT international application number is entered on the EFS-Web screen to insure that the correct PCT international application is initialized as a national stage submission. If the PALM system finds a previous national stage submission has been made, the user will be given a warning message and an opportunity to verify, and correct if necessary, the referenced PCT international application number and filing date. If the PALM system is unavailable, EFS Web cannot complete the PALM verification, and thus EFS-Web will not permit a new national stage submission under 35 U.S.C. 371  to be filed. Therefore, if PALM is unavailable, applicants may send a new national stage submission by hand delivery, or Priority Mail Express® from the USPS in accordance with 37 CFR 1.10, to timely submit documents and fee(s) for national stage entry. However, applicants may not file national stage submissions under 35 U.S.C. 371  and the basic national fee necessary to enter the national stage via facsimile transmission. See 37 CFR 1.6(d)(3)  and 1.8(a)(2)(i)(F).

b.    Transmittal Letter

It is recommended that applicants continue to use the Transmittal Letter to the United States Designated/Elected Office (DO/EO/US) Concerning a Submission Under 35 U.S.C. 371  (Form PTO-1390) when electronically filing documents for entry into the U.S. national stage under 35 U.S.C. 371.  The PTO-1390 Form includes useful information that is not otherwise collected by EFS-Web at this time. Filers should confirm that the correct PCT international application number is entered on the EFS-Web screen to insure that the correct PCT international application is initialized as a national stage submission.

c.    Application Data Sheet

An application data sheet is recommended for new national stage submissions.

d.    Initial Processing

If a timely submission to enter the national stage of an international application is compliant with the conditions of 35 U.S.C. 371  and other applicable requirements, Form PCT/DO/EO/903 indicating acceptance of the application as a national stage submission under 35 U.S.C. 371  will be issued in addition to the Filing Receipt.

5.    Specific Requirements for Nucleotide or Amino Acid Sequence Listings in PCT International Applications

a.    Sequence Listing

Under PCT Rule 5.2(a), the sequence listing must always be presented as a separate part of the description.  When filing a PCT international application using EFS-Web, the sequence listing part of the description may be submitted either as a single ASCII text file with a ".txt" extension (e.g., "seqlist.txt") or as a PDF file. Note that 100 megabytes is the size limit for submitting a sequence listing text file via EFS-Web.  If the sequence listing is submitted as an ASCII text file, applicant need not and should not submit any additional copies.  The single ASCII text file is preferred because the ASCII text file will serve both as the sequence listing part of the description under PCT Rule 5.2 and the electronic form under PCT Rule 13ter.1(a)  in the absence of a PDF sequence listing file. The check list of the PCT Request provided via EFS-Web together with the PCT international application must indicate that the sequence listing forms part of the international application.  Furthermore, the statement as set forth in paragraph 4(v)  of the AI Annex C (Administrative Instructions under the PCT, Annex C), that "the information recorded in electronic form furnished under Rule 13ter is identical to the sequence listing as contained in the international application," is not required.  Also the sequence listing in an ASCII text file will not be taken into account when calculating the application sheet count, i.e., no excess sheet fees will be required for the sequence listing text file.

Submission of the sequence listing part of the description in a PDF file is not recommended because the applicant would also be required to supply a copy of the sequence listing in an ASCII text file for purposes of international search and/or international preliminary examination in accordance with paragraph 40 of AI Annex C.  When a sequence listing is filed via EFS-Web in a new PCT international application in both a PDF file and an ASCII text file, the PDF copy of the sequence listing will be considered to form part of the application and the ASCII text file will be used for search purposes and will be transmitted to the International Bureau with the record copy.  The pages of the PDF file that contain the sequence listing will be taken into account when calculating the application sheet count, i.e., excess sheet fee may be required for the PDF file.

b.    File Size and Quantity Limits

One hundred (100) megabytes is the size limit for sequence listing text files submitted via EFS-Web.  Sequence listing text files must not be partitioned into multiple files for filing via EFS-Web as the EFS-Web electronic filing system is not currently capable of handling such submissions.  For all other file types EFS-Web is currently not capable of accepting files that are larger than 25 megabytes.  Additionally, a single EFS-Web submission may include no more than 60 electronic files.  Note that regarding the 60 electronic file limit, an applicant may upload and validate in sets of up to 20 files each, with a limit of three sets of 20.  If applicant chooses to divide a file into multiple parts using the multi-doc feature, each part is counted as one file.  The need to submit unusually large sequence listings and/or numerous electronic files may prevent applicant from making a complete PCT international application filing in a single EFS-Web submission.  Applicant may use EFS-Web to file part of the PCT international application and to obtain the PCT international application number and the confirmation number, and then file the remainder of the PCT international application on the same day as one or more follow-on submissions using EFS-Web, in order to secure the same filing date for all parts of the PCT international application.  However, applicant is not permitted to file part of the PCT international application electronically via EFS-Web, and then file the remainder of the PCT international application on paper to secure a filing date of all parts of the PCT international application.

In the situation where applicant needs to file a sequence listing that is over one hundred (100) megabytes, applicant may use EFS-Web to file the PCT international application without the sequence listing to obtain the PCT international application number and the confirmation number, and then file the sequence listing on compact discs on the same day by using Priority Mail Express® from the USPS in accordance with 37 CFR 1.10, or hand delivery, in order to secure the same filing date for all parts of the PCT international application.  However, Priority Mail Express® from the USPS and hand-carried submissions may not contain PDF files and must fully comply with the guidelines for filing a sequence listing on electronic media. The check list of the PCT Request provided via EFS-Web together with the PCT international application must indicate that the sequence listing part of the description will be filed separately on physical data carrier(s), on the same day and in the form of an Annex C/ST.25 text file. The sequence listing must be a single document, but the document may be split using software designed to divide a file, that is too large to fit on a single compact disc, into multiple concatenated files.  If the user breaks up a sequence listing into multiple concatenated files so that it may be submitted on multiple compact discs, the compact discs must be labeled to indicate their order (e.g., "1 of X", "2 of X").

c.    Fee Determination for PCT International Applications Containing a Sequence Listing

The calculation of the international filing fee for a PCT international application, including a sequence listing, filed via EFS-Web is determined based on the type of sequence listing file.  A sequence listing filed in an ASCII text file will not be included in the sheet count of the PCT international application.  A sequence listing filed in a PDF file will be included in the sheet count of the PCT international application.  Therefore, the sheet count for an EFS-Web filed PCT International application containing both a PDF file and a text file sequence listing will be calculated to include the number of sheets of the PDF sequence listing.

6.    Limitations concerning computer program listings and tables related to a sequence listing in PCT international applications

a.    Computer Program Listings

There is no provision for computer program listings in ASCII text file in PCT international applications.

b.    Tables Related to a Sequence Listing

Tables related to a sequence listing must be an integral part of the description of the PCT international application, and must not be included in the sequence listing part or the drawing part. Such tables will be taken into account when calculating the application sheet count, and excess sheet fees may be required. When applicant submits tables related to a sequence listing in a PCT international application via EFS-Web, the tables must be in a PDF file. If applicant submits tables related to a sequence listing in a text file, such tables will not be accepted as part of the PCT international application. For more information, see Sequence Listings and Tables Related Thereto in International Applications Filed in the United States Receiving Office, 1344 Off. Gaz. Pat. Office 50 (July 7, 2009).

7.    Follow-on Submissions for PCT International Applications

As noted above, a sequence listing in an ASCII text file, as well as additional PDF files, may be submitted in one or more follow-on submissions, via EFS-Web.  Such follow-on submissions will form part of the PCT international application if filed on the same date on which the PCT international application was filed.  Note that follow-on submissions of PDF files (including, but not limited to, PDF sequence listings) may change the number of pages in the PCT international application and therefore may affect the international filing fee. EFS-Web may also be used to submit a sequence listing in an ASCII text file after the international filing date in response to a requirement under 37 CFR 1.821(h)  and PCT Rule 13ter.    Such sequence listing will not form part of the PCT international application as set forth in PCT Rule 13ter.1(e).

8.    Policy of Annex F of the PCT Administrative Instructions (AI Annex F)

EFS-Web employs a Web-based approach to document submission which is different from the AI Annex F "wrapped, bundled and signed package" approach.  Thus EFS-Web does not meet the AI Annex F requirements.  See Annex F of the PCT Administrative Instructions located at www.wipo.int/pct/en/texts/.

N.    International Design Applications and Associated Documents

The term "international design application" as used in this subsection refers to an application for international registration of an industrial design filed under the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs ("Hague Agreement"). The term "Rule" as used in this subsection refers to the "Common Regulations Under the 1999 and the 1960 Act of the Hague Agreement".

1.    New international design applications filed through the USPTO as an office of indirect filing

EFS-Web enables registered and unregistered eFilers to electronically file new international design applications through the USPTO as an office of indirect filing. To submit an international design application through EFS-Web, users must select the radio button "International Design Application (Hague) for filing through the USPTO as an office of indirect filing" after selecting the radio button "New application/proceeding" on the main EFS-Web screen. The documents listed below should be included in new international design application submissions.

a.    Official form (Form DM/1):

Applicants filing international design applications through the USPTO are required to present the international design application on the official form established by the International Bureau (i.e., Form DM/1, entitled "Application for International Registration") or on any form having the same form and content as the official form. Form DM/1 is available on the website of the International Bureau at www.wipo.int/hague/en/forms/. The DM/1 form includes boxes for providing information concerning the applicant, applicant’s entitlement to file an international design application, the creator, product identification, designations of Contracting Parties, priority claim, description, and other relevant information.

eFilers should use the document description "App for Intl Registration (DM/1 or equiv)" for a DM/1 form (or equivalent) submitted via EFS-Web. For new international design application submissions, EFS-Web will check for the presence of the document description for the DM/1 form when upload and validation functions are performed and, if not present, will alert the user that the DM/1 form is not indicated as being attached. EFS-Web will not block submission of a new international design application based on the missing document description. If the DM/1 form document description is present, EFS-Web will prompt the user to verify that the DM/1 form indicates applicant’s entitlement to file the international design application through the USPTO as an office of indirect filing. The USPTO will not transmit an international design application to the International Bureau if applicant’s entitlement to file the application through the USPTO is not indicated in the submission.

b.    Reproductions:

Reproductions of industrial designs are required in international design applications and may be submitted as drawings, photographs, or a combination thereof, and may be in black and white or in color. See Rule 9  and Part Four of the Administrative Instructions for the Application of the Hague Agreement. Reproductions may be submitted through EFS-Web as PDF or JPEG files as set forth below. Technical requirements regarding image files, such as resolution, minimum and maximum image size, border width, etc., are also set forth on the website of the International Bureau at www.wipo.int/hague/en/how_to/ file/prepare.html.

Reproductions may be submitted as single page PDF or JPEG files by attaching the file(s) using the "Attach Reproductions" section of the "Attach Documents" screen. Alternatively, applicants may attach reproductions as PDFs (including multi-page PDFs) using the "Attach Documents other than Reproductions" section of the "Attach Documents" screen. Attaching compliant reproductions via the "Attach Reproductions" section, rather than the "Attach Documents other than Reproductions" section, may help to avoid incurring additional per page publication fees that might otherwise be required by the International Bureau. Each image file attached through the "Attach Reproductions" section should contain only one view of the design. The "Attach Reproductions" section will prompt the user to assign a design and view number to each file attached under this section. The "Attach Reproductions" section allows up to 5000 (up to 100 designs with 50 views per design) additional single-page PDF and JPEG image files to be uploaded in one submission. The "Attach JPEG Reproductions" section allows up to 50 additional JPEG image files to be uploaded in one submission.

In accordance with the technical requirements set forth by the International Bureau, EFS-Web will not permit submission of any PDF or JPEG file via the "Attach Reproductions" section that exceeds a file size of two megabytes. For JPEG submissions, EFS-Web will provide warnings where requirements pertaining to image resolution and minimum and maximum dimensions have not been satisfied; EFS-Web does not check color mode or border size for JPEG images. For PDF submissions via the "Attach Reproductions" section, EFS-Web will not permit submission of any PDF file that is more than one page. In addition, EFS-Web does not check color mode, border size, resolution, or maximum or minimum dimensions of the reproduction (other than certain minimum and maximum page size dimensions) for PDF images. It is the responsibility of applicants to ensure that reproductions satisfy all applicable requirements.

Users attaching reproductions under either the "Attach Reproductions" section or the "Attach Documents other than Reproductions" section should use the document description "drawings – only black and white line drawings" or "drawing – other than black and white line drawings", as appropriate. EFS-Web will provide a warning to users about the possibility of incurring additional per page publication fees where reproductions are attached via the "Attach Documents other than Reproductions" section. EFS-Web will also provide a warning to users where a new international design application does not contain an indication that at least one reproduction is attached.

c.    Annexes:

An international design application may be accompanied by annexes submitted for the purpose of complying with certain national law requirements that may be applicable to a designated Contracting Party, for example, the requirement for an inventor’s oath or declaration where the United States is designated. Annex forms specific to particular Contracting Parties are available on the website of the International Bureau at www.wipo.int/ hague/en/forms/. Annexes should be attached to the EFS-Web submission using the document description "Annex(es) to the DM/1 or equivalent".

More information regarding filing international design applications is available on the USPTO website at www.uspto.gov/patents-application- process/applying-online/efs-web-guidance-and-resources.

2.    International design application fees required by or payable through the USPTO as an office of indirect filing

a.    Transmittal fee:

International design applications filed through the USPTO as an office of indirect filing are subject to payment of a transmittal fee. See 37 CFR 1.1031(a). Users are permitted to submit the transmittal fee via EFS-Web using online payment screens that interface with the Revenue Accounting and Management (RAM) system. The USPTO will not transmit the international design application to the International Bureau if the transmittal fee has not been paid to the USPTO. See 37 CFR 1.1045. Applicants are cautioned that an international design application not received by the International Bureau within six months from the date the international design application is received by the USPTO will not be entitled to a filing date as of the date of receipt by the USPTO. See Rule 13.

b.    International fees payable to WIPO

Certain international design application fees payable to the International Bureau may be paid through the USPTO as an office of indirect filing, provided such fees are paid no later than the date of payment of the transmittal fee. See 37 CFR 1.1031(c). Applicants are not required to pay such fees through the USPTO but rather may pay such fees directly to the International Bureau. Furthermore, any payment of such fees through the USPTO must be in U.S. dollars. As all payments made to the International Bureau must be in Swiss currency, the U.S. dollar amount collected may, when converted to Swiss currency, be different than the required Swiss currency amount. Accordingly, applicants are cautioned that paying such fees through the USPTO may still result in a requirement by the International Bureau to pay additional amounts where the conversion from U.S. dollars to Swiss currency results in the International Bureau receiving less than the prescribed amounts.

International fees payable to WIPO include the prescribed fees set forth under Rule 12(1) (i.e., the basic fee, standard designation fee(s), individual designation fee(s), and publication fee) and Rule 11(2) (fee for a description exceeding 100 words). The "Calculate Fees" screen of EFS-Web does not provide for individual selection of these fees but rather provides for input of one lump sum in Swiss francs. The screen includes a link to the WIPO Industrial Design Fee Calculator (www.wipo.int/hague/en/fees/calculator.jsp ) where users can input the appropriate data concerning their international design applications, and the WIPO Fee Calculator will determine the total amount of fees required in Swiss francs. Users can then copy and paste this amount into the "International Fees Payable to WIPO (CHF)" field of the EFS-Web Calculate Fees screen, and EFS-Web will calculate the U.S. dollar amount based on current exchange rates. EFS-Web will only permit payment of the international fees that are payable to WIPO until 12 midnight Eastern Time of the date of payment of the transmittal fee required under 37 CFR 1.1031(a).

3.    Follow-on submissions in international design applications

In accordance with the requirements of this framework, only registered efilers may file follow-on submissions via EFS-Web in international design applications.

Where an international design application was filed with the USPTO as an office of indirect filing, the USPTO will generally not forward communications to the International Bureau received after transmittal of the application to the International Bureau has been effected. Thus, for example, where the International Bureau has sent an invitation requiring compliance with a requirement under the Hague Agreement, the applicant must file any reply to that invitation directly with the International Bureau to avoid abandonment or other loss of rights under the treaty. See 37 CFR 1.1045.

The available document descriptions and fees that may be paid through EFS-Web will differ depending on stage of the international design application. After transmittal of the international design application to the International Bureau has occurred, the document descriptions and fees that may be paid through EFS-Web include those that would be relevant for U.S. national processing and examination. Follow-on submissions filed after transmittal of the international design application to the International Bureau but prior to WIPO publication of the international design application designating the United States will generally be presumed to have been intended for consideration by the USPTO acting as an examining office for the application. Accordingly, action by the Office on any such submission will generally be taken after receipt of the WIPO publication of the international design application designating the United States.

No follow-on submission or fee payment is required from the applicant to initiate examination of an international design application that designates the United States. Upon receipt by the Office of the WIPO publication of an international design application designating the United States, the Office will prepare the application file for examination. Registered users may, in accordance with this framework, file follow-on submissions in the international design application via EFS-Web relevant to U.S. national processing and examination. Reproductions amended pursuant to 37 CFR 1.121  may be submitted via EFS-Web as either PDF or JPEG electronic files. Any such JPEG file must be attached to the EFS-Web submission using the "Attach JPEG Reproductions" section of the "Attach Documents" EFS-Web screen. See Section L3 for JPEG file size limits and Section L4 for the limit on the number of JPEG files that may be attached in one submission.

II.    Additional Information

The USPTO website provides additional information on EFS-Web and PAIR, such as instructions, guidelines, frequently asked questions, and tutorials. Users may contact the Patent EBC for assistance with EFS-Web and PAIR as well as for requesting PKI digital certificates and customer numbers.