502    Depositing Correspondence [R-8]

37 C.F.R. 1.5   Identification of patent, patent application, or patent-related proceeding.

  • (a) No correspondence relating to an application should be filed prior to receipt of the application number from the Patent and Trademark Office. When a letter directed to the Patent and Trademark Office concerns a previously filed application for a patent, 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 Patent and Trademark Office, or the international application number of the international application. Any correspondence not containing such identification will be returned to the sender where a return address is available. The returned correspondence will be accompanied with a cover letter which will indicate to the sender that if the returned correspondence is resubmitted to the Patent and Trademark Office within two weeks of the mail date on the cover letter, the original date of receipt of the correspondence will be considered by the Patent and Trademark Office as the date of receipt of the correspondence. Applicants may use either the Certificate of Mailing or Transmission procedure under § 1.8  or the Express Mail procedure under § 1.10  for resubmissions of returned correspondence if they desire to have the benefit of the date of deposit in the United States Postal Service. If the returned correspondence is not resubmitted within the two-week period, the date of receipt of the resubmission will be considered to be the date of receipt of the correspondence. The two-week period to resubmit the returned correspondence will not be extended. In addition to the application number, all letters directed to the Patent and Trademark Office concerning applications for patent should also state the name of the applicant, the title of the invention, the date of filing the same, and, if known, the group art unit or other unit within the Patent and Trademark Office responsible for considering the letter and the name of the examiner or other person to which it has been assigned.
  • (b) When the letter concerns a patent other than for purposes of paying a maintenance fee, it should state the number and date of issue of the patent, the name of the patentee, and the title of the invention. For letters concerning payment of a maintenance fee in a patent, see the provisions of § 1.366 (c).
  • (c) [Reserved]
  • (d) A letter relating to a reexamination proceeding should identify it as such by the number of the patent undergoing reexamination, the reexamination request control number assigned to such proceeding, and, if known, the group art unit and name of the examiner to which it been assigned.
  • (e) [Reserved]
  • (f) When a paper concerns a provisional application, it should identify the application as such and include the application number.

37 C.F.R. 1.6   Receipt of correspondence.

  • (a) Date of receipt and Express Mail date of deposit. Correspondence received in the Patent and Trademark Office is stamped with the date of receipt except as follows:
    • (1) The Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday, or Federal holiday within the District of Columbia. Except for correspondence transmitted by facsimile under paragraph (a)(3) of this section, or filed electronically under paragraph (a)(4) of this section, no correspondence is received in the Office on Saturdays, Sundays, or Federal holidays within the District of Columbia.
    • (2) Correspondence filed in accordance with § 1.10  will be stamped with the date of deposit as "Express Mail" with the United States Postal Service.
    • (3) Correspondence transmitted by facsimile to the Patent and Trademark Office will be stamped with the date on which the complete transmission is received in the Patent and Trademark Office unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the date stamped will be the next succeeding day which is not a Saturday, Sunday, or Federal holiday within the District of Columbia.
    • (4) Correspondence may be submitted using the Office electronic filing system only in accordance with the Office electronic filing system requirements. Correspondence submitted to the Office by way of the Office electronic filing system will be accorded a receipt date, which is the date the correspondence is received at the correspondence address for the Office set forth in § 1.1  when it was officially submitted.
  • (b) [Reserved]
  • (c) Correspondence delivered by hand. In addition to being mailed, correspondence may be delivered by hand during hours the Office is open to receive correspondence.
  • (d) Facsimile transmission. Except in the cases enumerated below, correspondence, including authorizations to charge a deposit account, may be transmitted by facsimile. The receipt date accorded to the correspondence will be the date on which the complete transmission is received in the United States Patent and Trademark Office, unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. See § 1.6 (a)(3). To facilitate proper processing, each transmission session should be limited to correspondence to be filed in a single application or other proceeding before the United States Patent and Trademark Office. The application number of a patent application, the control number of a reexamination proceeding, the interference number of an interference proceeding, or the patent number of a patent should be entered as a part of the sender’s identification on a facsimile cover sheet. Facsimile transmissions are not permitted and, if submitted, will not be accorded a date of receipt in the following situations:
    • (1) Correspondence as specified in § 1.4 (e), requiring an original signature;
    • (2) Certified documents as specified in § 1.4 (f);
    • (3) Correspondence which cannot receive the benefit of the certificate of mailing or transmission as specified in § 1.8 (a)(2)(i)(A) through (D) and (F), and § 1.8 (a)(2)(iii)(A), except that a continued prosecution application under § 1.53 (d) may be transmitted to the Office by facsimile;
    • (4) Color drawings submitted under §§ 1.81, 1.83  through 1.85, 1.152, 1.165, 1.173, or 1.437;
    • (5) A request for reexamination under § 1.510  or § 1.913;
    • (6) Correspondence to be filed in a patent application subject to a secrecy order under §§ 5.1  through 5.5  of this chapter and directly related to the secrecy order content of the application;
    • (7) [Reserved]
    • (8) [Reserved]
    • (9) In contested cases before the Board of Patent Appeals and Interferences except as the Board may expressly authorize.
  • (e) [Reserved]
  • (f) Facsimile transmission of a patent application under § 1.53 (d) . In the event that the Office has no evidence of receipt of an application under § 1.53 (d) (a continued prosecution application) transmitted to the Office by facsimile transmission, the party who transmitted the application under § 1.53 (d) may petition the Director to accord the application under § 1.53 (d) a filing date as of the date the application under § 1.53 (d) is shown to have been transmitted to and received in the Office,
    • (1) Provided that the party who transmitted such application under § 1.53 (d):
      • (i) Informs the Office of the previous transmission of the application under § 1.53 (d) promptly after becoming aware that the Office has no evidence of receipt of the application under § 1.53 (d);
      • (ii) Supplies an additional copy of the previously transmitted application under § 1.53 (d); and
      • (iii) Includes a statement which attests on a personal knowledge basis or to the satisfaction of the Director to the previous transmission of the application under § 1.53 (d) and is accompanied by a copy of the sending unit’s report confirming transmission of the application under § 1.53 (d) or evidence that came into being after the complete transmission and within one business day of the complete transmission of the application under § 1.53 (d).
    • (2) The Office may require additional evidence to determine if the application under § 1.53 (d) was transmitted to and received in the Office on the date in question.
  • (g) Submission of the national stage correspondence required by § 1.495  via the Office electronic filing system. In the event that the Office has no evidence of receipt of the national stage correspondence required by § 1.495, which was submitted to the Office by the Office electronic filing system, the party who submitted the correspondence may petition the Director to accord the national stage correspondence a receipt date as of the date the correspondence is shown to have been officially submitted to the Office.
    • (1) The petition of this paragraph (g) requires that the party who submitted such national stage correspondence:
      • (i) Informs the Office of the previous submission of the correspondence promptly after becoming aware that the Office has no evidence of receipt of the correspondence under § 1.495;
      • (ii) Supplies an additional copy of the previously submitted correspondence;
      • (iii) Includes a statement that attests on a personal knowledge basis, or to the satisfaction of the Director, that the correspondence was previously officially submitted; and
      • (iv) Supplies a copy of an acknowledgment receipt generated by the Office electronic filing system, or equivalent evidence, confirming the submission to support the statement of paragraph (g)(1)(iii) of this section.
    • (2) The Office may require additional evidence to determine if the national stage correspondence was submitted to the Office on the date in question.

All applications (provisional and nonprovisional) may be sent to the U.S. Patent and Trademark Office by mail (see MPEP § 501), or they may be hand-carried to the Customer Service Window. For information regarding electronic filing via the Office’s Electronic Filing System (EFS-Web) see www.uspto.gov. See also MPEP § 502.05 , subsection II.B.

See 37 CFR 2.190 and MPEP § 501 for addresses pertaining to trademark correspondence.

All correspondence related to a national patent application already filed with the U.S. Patent and Trademark Office must include the identification of the application number or the serial number and the filing date assigned to the application by the Office. Any correspondence not containing the proper identification set forth in 37 CFR 1.5(a)  will be returned to the sender by the Office of Patent Application Processing (OPAP). Each paper should be inspected to assure that the papers being returned contain either an "Office Date" stamp or a TC date stamp. A minor error in the identification of the application can be corrected by the Office provided the correct identification can be quickly discovered. Examples of minor errors are transposed numbers, typographical errors, and listing the parent application number. The failure to give any application number is not a minor error. The Office often experiences difficulty in matching incoming papers with the application file to which they pertain because insufficient or erroneous information is given. This applies especially to amendments, powers of attorney, changes of address, status letters, petitions for extension of time, and other petitions.

It would be of great assistance to the Office if all incoming papers pertaining to a filed application carried the following items:

    • (A) Application number (checked for accuracy, including series code and serial no.).
    • (B) Art Unit number (copied from most recent Office communication).
    • (C) Filing date.
    • (D) Name of the examiner who prepared the most recent Office action.
    • (E) Title of invention.
    • (F) Confirmation number (see MPEP § 503).

Applicants may be reminded of this provision by including form paragraph 5.01.

¶ 5.01    Proper Heading for Incoming Papers

It would be of great assistance to the Office if all incoming papers pertaining to a filed application carried the following items:

1. Application number (checked for accuracy, including series code and serial no.).

2. Art Unit number (copied from most recent Office communication).

3. Filing date.

4. Name of the examiner who prepared the most recent Office action.

5. Title of invention.

6. Confirmation number (see MPEP § 503).

The Office prefers identifying indicia to be provided on the drawings. If such identifying indicia is provided, it must be placed on the front of each sheet of drawings within the top margin. See 37 CFR 1.84 (c). The identifying indicia should include the title of the invention, inventor’s name, application number, and confirmation number (see MPEP § 503). If the Office has not yet assigned an application number and confirmation number to the application, the docket number (if any) used by the applicant to track the application should be provided.

When the Office receives replacement sheets of drawings for patent applications after the application has been filed, a cover letter identifying the drawings by application number should accompany them. The application number and other identifying indicia should be placed on each sheet of drawings in accordance with 37 CFR 1.84(c). Each drawing sheet submitted after the filing date of the application must be identified as either "Replacement Sheet" or "New Sheet" pursuant to 37 CFR 1.121 (d).

It is requested that the submission of additional or supplemental papers on a newly filed application be deferred until an application number has been received.

Documents which have no particular time or sequence requirements should be filed in the Office with materials submitted in reply to the statutory or regulatory requirements. Examples are certified copies of foreign documents to support priority in patent applications, changes of power of attorney, or changes in mailing address following first action.

All letters relating to a reexamination proceeding should identify the proceeding involved by patent number and reexamination request control number.

I.   POST ALLOWANCE CORRESPONDENCE

All post allowance correspondence, except for petitions under 37 CFR 1.313 (c), should be addressed "Mail Stop Issue Fee." Any petition filed under 37 CFR 1.313 (c) to withdraw an application from issue after payment of the issue fee should be clearly marked "Petition under 37 CFR 1.313 (c)" and be either hand-carried to the Office of Petitions or submitted by facsimile to the Office of Petitions at (571) 273-0025. All other types of petitions, if transmitted by facsimile transmission to the Office, must be directed to the central facsimile number ((571) 273-8300).

Any paper filed after receiving the Issue notification should include the indicated patent number.

Since an allowed application may be issued as a patent within about four weeks of payment of the issue fee, all post allowance correspondence should be filed prior to the date of issue fee payment to ensure the papers reach the appropriate USPTO official for consideration before the date the application issues as a patent. See MPEP § 2732 for a discussion of the patent term adjustment impact of submitting amendments or other papers after a notice of allowance has been mailed.

If the above suggestions are adopted, the processing of both new and allowed applications could proceed more efficiently and promptly through the U.S. Patent and Trademark Office.

II.    HAND-DELIVERY OF PAPERS

No official paper which relates to a pending application may be personally delivered to a TC except papers that are directed to an application subject to a secrecy order pursuant to 35 U.S.C. 181, or are national security classified and that are directed to Licensing and Review. Effective December 1, 2003, all official patent application related correspondence for organizations reporting to the Commissioner for Patents (e.g., TCs, the Office of Data Management, and the Office of Petitions) that is hand-carried (or delivered by other delivery services) must be delivered to the Customer Service Window, with a few exceptions.

  Correspondence for Which Centralized Delivery of Hand-Carried Papers Is Not Required

The following types of patent application related correspondence may be delivered to the specific location where they are processed instead of the Customer Service Window. Before hand-carrying papers to a specific location or a particular office within the USPTO, the office should be called to obtain its current location. Applicants should check the USPTO Web site for the current telephone number. Any such correspondence carried to the Customer Service Window will be accepted and routed to the appropriate office, thereby incurring a delay before being processed. Correspondence which is not related to a specific patent or patent application, such as question on policy, on employment, or other general inquiry may be hand-carried to the current designated locations depending on the substance of the correspondence.

    • (A) Access Requests - Requests for access to patent application files may be hand-carried to the File Information Unit (FIU) Randolph Square, 3rd floor, 2800 South Randolph Street, Arlington, VA 22206. Requests for access to patent application files that are maintained in the Image File Wrapper system and that have not yet been published may be hand-carried to the Public Search Facility on the 1st floor of the Madison East Building, 600 Dulany Street, Alexandria, VA 22314.
    • (B) Patent Term Extensions under 35 U.S.C. 156  - Applications for patent term extension under 35 U.S.C. 156  may be hand-carried to the Office of Patent Legal Administration (OPLA) in Room 07D85 of the Madison West Building, 600 Dulany Street, Alexandria, VA 22314. At the guard station in Madison West, the security guard should call the OPLA at (571) 272-7701 or (571) 272-7746 for delivery assistance.
    • (C) Assignments to be Recorded - Assignments may be hand-carried to the Office of Public Records Customer Service Window Randolph Square, 3rd floor, 2800 South Randolph Street, Arlington, VA 22206.
    • (D) Office of General Counsel - Correspondence for the Office of General Counsel may be hand-carried to the Office of General Counsel in Room 10C20 of the Madison East Building, 600 Dulany Street, Alexandria, VA 22314. At the guard station in Madison East, the security guard should call the Office of General Counsel at (571) 272-7000 for delivery assistance.
    • (E) Solicitor’s Office - Correspondence for the Solicitor’s Office may be hand-carried to the Solicitor’s Office in Room 8C43-A of the Madison West Building, 600 Dulany Street, Alexandria, VA 22314. At the guard station in Madison West, the security guard should call the Solicitor’s Office at (571) 272-9035 for delivery assistance.
    • (F) Interference Related Correspondence - Correspondence relating to interferences may be hand-carried to the 1st floor lobby of Madison East Building, 600 Dulany Street, Alexandria, VA 22314, where a drop-off box for hand-carried documents to be filed with the Board of Patent Appeals and Interferences (Board) is located. Customers need to pass through the magnetometer and have the materials passed through the x-ray sensor before placing them in the drop-off box. The drop-off box is for Interference related correspondence only. Boxes are not permitted in the drop-off box. Box materials should be hand-carried to Madison East, Room 9B55-A using the following procedures. At the guard station in Madison East, the security guard should call the Board at (571) 272-9797 to obtain authorization to allow entry into the building for delivery to Room 9B55-A. Access to Room 9B55-A is available from 8:30 am to 4:45 pm only. Documents/boxes hand-carried to the drop-off box or to Room 9B55-A after 4:45 pm will receive the next day’s filing date. Customers desiring a stamped return receipt for their filing need to personally bring their filing and postcard to Room 9B55-A during the hours stated above, or leave the postcard with the filing (postcard must include correct postage mail stamp and the address where the postcard is to be mailed). The Board will stamp the filing date and mail the postcard to the customer.
    • (G) Secrecy Order - Applications subject to a secrecy order pursuant to 35 U.S.C. 181, or are national security classified, and correspondence related thereto, may be hand-carried to Licensing and Review in Room 4B31 of the Knox Building, 501 Dulany Street, Alexandria, VA 22314. At the guard station in Knox, the security guard should call Licensing and Review at (571) 272-8203 for delivery assistance.
    • (H) Expedited Foreign Filing License Petitions - Petitions for foreign filing license pursuant to 37 CFR 5.12 (b) for which expedited handling is requested and petitions for retroactive license under 37 CFR 5.25  may be hand-carried to a drop-off box located at the guard station at the lobby of the Knox Building, 501 Dulany Street, Alexandria, VA 22314. Upon approaching the guard station, the delivery personnel should state their desire to drop off the request. Correspondence packages will be inspected/scanned before being placed in the drop-off box. All requests should identify a fax number, telephone number and mailing address. All responses to the request will be sent by fax, followed by a mailed copy. If a fax number is not available, a hardcopy will be mailed to the mailing address provided.
    • (I) Petitions to Withdraw from Issue - Petitions to withdraw from issue may be hand-carried to the Office of Petitions on the 7th floor of the Madison West Building, 600 Dulany Street, Alexandria, VA 22314. At the guard station in Madison West, the security guard should call the Office of Petitions at (571) 272-3282 for delivery assistance. Hand-carried papers will be accepted between the hours of 8:30 am to 3:45 pm.
    • (J) Documents Requested by the Office of Data Management - Documents requested by the Office of Data Management may be hand-carried to the Office of Data Management, Randolph Square, 9th floor, 2800 South Randolph Street, Arlington, VA 22206, during business hours.
    • (K) Office of Enrollment and Discipline (OED) – Correspondence for the Office of Enrollment and Discipline may be hand-carried to the receptionist at Room 8C43-B of the Madison West Building, 600 Dulany Street, Alexandria, VA 22314. At the guard station in Madison West, the security guard should call the Office of Enrollment and Discipline at 571-272-4097 for delivery assistance.
    • (L) Office of Finance – Refund requests, deposit account replenishments, and maintenance fee payments may be hand-carried to the Office of Finance receptionist in Suite 300 of the Carlyle Place Building, 2051 Jamieson Ave., Alexandria, VA 22314. Hand-carried correspondence will only be accepted, and not processed. Although the receptionist will not process any correspondence, if the correspondence is delivered with an itemized postcard, the receptionist will provide a delivery receipt by date stamping the postcard. Depending on whether the correspondence is a refund request, deposit account related (e.g., a deposit account replenishment), or maintenance fee related (e.g., a maintenance fee payment), the correspondence should be placed in an envelope with REFUND, DEPOSIT ACCOUNT, or MAINTENANCE FEE written in dark ink across the envelope.
    • (M) Office of Public Records – Requests for certified copies of Office records including patent and trademark copies, applications-as-filed, file wrappers and contents, and assignment records may be hand-carried to the Office of Public Records’ Customer Service Window on the 3rd floor of Randolph Square, 2800 South Randolph Street, Arlington, VA 22206, during business hours.

III.   "EXPRESS MAIL" SERVICE

There are two types of "Express Mail" delivery offered by the U.S. Postal Service — "Post Office to Addressee" and "Post Office to Post Office." The only type of service which can be used for "Express Mail" directed to the U.S. Patent and Trademark Office is the "Post Office to Addressee" service of the U.S. Postal Service. 37 CFR 1.10. This service provides for the use of a mailing label which clearly indicates the date on which a particular paper or fee was deposited.

The addresses that should be used for "Express Mail" sent to the U.S. Patent and Trademark Office are set forth in 37 CFR 1.1  (see MPEP § 501).

"Post Office to Post Office" Express Mail does not provide for delivery but instead is retained at the postal facility of the addressee for pickup. The Postal Service does not notify the addressee that this type of Express Mail has been received and is awaiting pickup. If not picked up, this mail is held for 15 days and then returned to the sender.

Therefore, since the U.S. Patent and Trademark Office does not have resources for picking up any mail, including Express Mail, the "Post Office to Post Office" Express Mail will not reach the U.S. Patent and Trademark Office.

See MPEP § 513 for the use of the Express Mail Mailing procedure of 37 CFR 1.10.

502.01   Correspondence Transmitted by Facsimile [R-8]

37 C.F.R. 1.6   Receipt of correspondence.

*****

  • (d) Facsimile transmission. Except in the cases enumerated below, correspondence, including authorizations to charge a deposit account, may be transmitted by facsimile. The receipt date accorded to the correspondence will be the date on which the complete transmission is received in the United States Patent and Trademark Office, unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. See § 1.6 (a)(3). To facilitate proper processing, each transmission session should be limited to correspondence to be filed in a single application or other proceeding before the United States Patent and Trademark Office. The application number of a patent application, the control number of a reexamination proceeding, the interference number of an interference proceeding, or the patent number of a patent should be entered as a part of the sender’s identification on a facsimile cover sheet. Facsimile transmissions are not permitted and, if submitted, will not be accorded a date of receipt in the following situations:
    • (1) Correspondence as specified in § 1.4 (e), requiring an original signature;
    • (2) Certified documents as specified in § 1.4 (f);
    • (3) Correspondence which cannot receive the benefit of the certificate of mailing or transmission as specified in § 1.8 (a)(2)(i)(A) through (D) and (F), and § 1.8 (a)(2)(iii)(A), except that a continued prosecution application under § 1.53 (d) may be transmitted to the Office by facsimile;
    • (4) Color drawings submitted under §§ 1.81, 1.83  through 1.85, 1.152, 1.165, 1.173, or 1.437;
    • (5) A request for reexamination under § 1.510  or § 1.913;
    • (6) Correspondence to be filed in a patent application subject to a secrecy order under §§ 5.1  through 5.5  of this chapter and directly related to the secrecy order content of the application;
    • (7) [Reserved]
    • (8) [Reserved]
    • (9) In contested cases before the Board of Patent Appeals and Interferences except as the Board may expressly authorize.

*****

The date of receipt accorded to any correspondence permitted to be sent by facsimile transmission, including a continued prosecution application (CPA) filed under 37 CFR 1.53(d) (for design applications only), is the date the complete transmission is received by an Office facsimile unit, unless the transmission is completed on a Saturday, Sunday, or Federal holiday within the District of Columbia. Correspondence for which transmission was completed on a Saturday, Sunday, or Federal holiday within the District of Columbia, will be accorded a receipt date of the next succeeding day which is not a Saturday, Sunday, or Federal holiday within the District of Columbia. For example, a facsimile transmission to the Office from California starting on a Friday at 8:45 p.m. Pacific time and taking 20 minutes, would be completed at 9:05 p.m. Pacific time. The complete transmission would be received in the Office around 12:05 a.m. Eastern time on Saturday. The receipt date accorded to the correspondence is the date of the following business day, which in this case, would be Monday (assuming that Monday was not a Federal holiday within the District of Columbia). Note however, that if the Certificate of Transmission is available (for documents not proscribed by 37 CFR 1.8(a) (2)), then the above facsimile may be considered timely filed on Friday if it contains a Certificate of Transmission and is in compliance with 37 CFR 1.8(a) (1)(i)(B) and (ii).

37 CFR 1.6(d)  specifies the types of correspondence which may be transmitted by facsimile. These would include CPAs filed under 37 CFR 1.53(d)  (available for design applications only), amendments, declarations, petitions, information disclosure statements (IDS), terminal disclaimers, notices of appeal and appeal briefs, requests for continued examination (RCEs) under 37 CFR 1.114, assignment documents, issue fee transmittals and authorizations to charge deposit accounts. The situations where transmissions by facsimile are prohibited are identified in 37 CFR 1.6(d) (1)-(9). Prohibitions cover situations where originals are required as specified in 37 CFR 1.4(e)  and (f), and situations where accepting a facsimile transmission would be unduly burdensome on the Office. As a courtesy, the Office will attempt to notify senders whenever correspondence is sent to the Office by facsimile transmission that falls within one of these prohibitions. Senders are cautioned against submitting correspondence by facsimile transmission which is not permitted under 37 CFR 1.6(d)  since such correspondence will not be accorded a receipt date.

An applicant filing a CPA for a design application only by facsimile transmission must include an authorization to charge the basic filing fee to a deposit account or to a credit card, or the application will be treated under 37 CFR 1.53(f)  as having been filed without the basic filing fee (as fees cannot otherwise be transmitted by facsimile).

There is a special receipt procedure for filing a CPA by fax, whereby the Office will fax back a receipt of the CPA filing if applicant submits the Office receipt form along with the CPA filing.

37 C.F.R. 1.6   Receipt of correspondence.

*****

  • (f) Facsimile transmission of a patent application under § 1.53 (d) . In the event that the Office has no evidence of receipt of an application under § 1.53 (d) (a continued prosecution application) transmitted to the Office by facsimile transmission, the party who transmitted the application under § 1.53 (d) may petition the Director to accord the application under § 1.53 (d) a filing date as of the date the application under § 1.53 (d) is shown to have been transmitted to and received in the Office,
    • (1) Provided that the party who transmitted such application under § 1.53 (d):
      • (i) Informs the Office of the previous transmission of the application under § 1.53 (d) promptly after becoming aware that the Office has no evidence of receipt of the application under § 1.53 (d);
      • (ii) Supplies an additional copy of the previously transmitted application under § 1.53 (d); and
      • (iii) Includes a statement which attests on a personal knowledge basis or to the satisfaction of the Director to the previous transmission of the application under § 1.53 (d) and is accompanied by a copy of the sending unit’s report confirming transmission of the application under § 1.53 (d) or evidence that came into being after the complete transmission and within one business day of the complete transmission of the application under § 1.53 (d).
    • (2) The Office may require additional evidence to determine if the application under § 1.53 (d) was transmitted to and received in the Office on the date in question.

37 CFR 1.6(f)  provides for the situation in which the Office has no evidence of receipt of a CPA transmitted to the Office by facsimile transmission. 37 CFR 1.6(f)  requires a petition be filed requesting that the CPA be accorded a filing date as of the date the CPA is shown to have been transmitted to and received in the Office. The showing must include, inter alia, a copy of the sending unit’s report confirming transmission of the application or evidence that came into being after the complete transmission of the application and within one business day of the complete transmission of the application.

I.   CENTRALIZED FACSIMILE NUMBER FOR OFFICIAL PATENT APPLICATION RELATED CORRESPONDENCE

A.   Central Number

Effective December 1, 2003, all patent application related correspondence transmitted by facsimile must be directed to the central facsimile number, with a few exceptions below. The central facsimile number is (571) 273-8300. Replies to Office actions including after-final amendments that are transmitted by facsimile must be directed to the central facsimile number. Correspondence such as draft proposed amendments for interviews may continue to be transmitted by facsimile to the Technology Centers (TCs) and should be made of record as part of the interview summary record. See MPEP § 713.04 . Office personnel should not use their personal facsimile numbers for official application related correspondence. Office personnel that inadvertently receive official application related correspondence on a personal facsimile number must either route (do not forward) the correspondence to the official central facsimile number or they may, with applicant’s (or applicant’s representative) permission, make the facsimile amendment part of an examiner’s amendment.

B.   Correspondence Which May Be Sent by Facsimile to Other Than the Central Facsimile Number

For each Office location listed below, only the particular type of correspondence indicated may be transmitted to the specific facsimile number at that Office location. All other types of facsimile transmitted correspondence must be sent to the central facsimile number ((571) 273-8300).

    • (1) PCT Operations and PCT Legal Administration

      Correspondence subsequent to filing in an international application before the U.S. Receiving Office, the U.S. International Searching Authority, or the U.S. International Preliminary Examining Authority:

      -- Papers in international applications: (571) 273-3201 facsimile number

      -- Response to Decisions on Petition: (571) 273-0459 facsimile number

      Note: An international application for patent or a copy of the international application and the basic national fee necessary to enter national stage, as specified in 37 CFR 1.495 (b), may not be submitted by facsimile. See 37 CFR 1.6 (d)(3) (referencing 37 CFR 1.8 (a)(2)(i)(D) and (F)). Subsequent correspondence may be transmitted by facsimile in an application before the U.S. Receiving Office, the U.S. International Searching Authority, or the U.S. International Preliminary Examining Authority, but it will not receive the benefit of any certificate of transmission (or mailing). See 37 CFR 1.8 (a)(2)(i)(E). Correspondence during the national stage, subsequent to entry are handled in the same manner as a U.S. to national application.

      -- The PCT Help Desk:

      (571) 273-0419 facsimile number

      (571) 272-4300 telephone number

    • (2) Office of Data Management

      Payment of an issue fee and any required publication fee by authorization to charge a deposit account or credit card, and drawings: (571) 273-2885 facsimile number

      Note: Although submission of drawings by facsimile may reduce the quality of the drawings, the Office will generally print the drawings as received.

      Office of Data Management telephone numbers to check on receipt of payment: (571) 272-4200 or 1-888-786-0101

    • (3)
    • (4) Electronic Business Center (EBC)

      Requests for Customer Number Data Change (PTO/SB/124), and Requests for a Customer Number (PTO/SB/125): (571) 273-0177 facsimile number

      Note: The EBC may also be reached by e-mail at: ebc@uspto.gov. EBC telephone number for customer service and assistance: 866-217-9197

    • (5) Assignment Branch

      Assignments or other documents affecting title: (571) 273-0140 facsimile number

      Note: Customers may submit documents directly into the automated Patent and Trademark Assignment System and receive the resulting recordation notice at their facsimile machine. (Assignment documents submitted through the Electronic Patent Assignment System also permit the recordation notice to be faxed to customers.) Credit card payments to record assignment documents are acceptable, and use of the Credit Card form (PTO-2038) is required for the credit card information to be separated from the assignment records. Only documents with an identified patent application or patent number, a single cover sheet to record a single type of transaction, and the fee paid by an authorization to charge a USPTO deposit account or credit card may be submitted via facsimile.

      Assignment Branch telephone number for assistance: (571) 272-3350

    • (6) Central Reexamination Unit (CRU)

      Ex parte and Inter partes reexamination correspondence, except for the initial request: (571) 273-9900 facsimile number

      Note: Correspondence related to reexamination proceedings will be separately scanned in the CRU.

      CRU telephone number for customer service and inquiries: (571) 272-7705

    • (7) Board of Patent Appeals and Interferences

      Correspondence related to pending interferences permitted to be transmitted by facsimile (only where expressly authorized, see 37 CFR 1.6 (d)(9)): (571) 273-0042 facsimile number

      Note: Correspondence should not be transmitted to this number if an interference has not yet been declared.

    • (8) Office of the General Counsel

      Correspondence permitted to be transmitted by facsimile to the Office of the General Counsel: (571) 273-0099 facsimile number

    • (9) Office of the Solicitor

      Correspondence permitted to be transmitted by facsimile to the Office of the Solicitor: (571) 273-0373 facsimile number

    • (10) Licensing and Review

      Petitions for a foreign filing license pursuant to 37 CFR 5.12 (b), including a petition for a foreign filing license where there is no corresponding U.S. application (37 CFR 5.13 ): (571) 273-0185 facsimile number

      Note: Correspondence to be filed in a patent application subject to a secrecy order under 37 CFR 5.1  to 5.5  and directly related to the secrecy order content of the application may not be transmitted via facsimile. See 37 CFR 1.6 (d)(6).

    • (11) Office of Petitions

      Petitions to withdraw from issue: (571) 273-0025 facsimile number

      Note: All other types of petitions must be directed to the central facsimile number (571) 273-8300. Petitions sent to the central facsimile number should be marked "Special Processing Submission."

    • (12) Office of the Enrollment and Discipline

      Correspondence permitted to be transmitted to the Office of the Enrollment and Discipline: (571) 273-0074 facsimile number

    • (13) Office of Finance

      Refund requests, deposit account inquiries, and maintenance fee payments: (571) 273-6500 facsimile number

      Office of Finance telephone number for customer service and inquiries: (571) 272-6500

    • (14) Office of Public Records

      Requests for certified copies of Office records may be transmitted to: (571) 273-3250 facsimile number

      The Office of Public Records’ Patent and Trademark Copy Fulfillment Branch telephone number for customer service and inquiries: (571) 272-3150

II.   CORRESPONDENCE RELATIVE TO PATENTS AND PATENT APPLICATIONS WHERE FILING BY FACSIMILE TRANSMISSION IS NOT PERMITTED

    • (A) A document that is required by statute to be certified;
    • (B) A national patent application specification and drawing (provisional or nonprovisional) or other correspondence for the purpose of obtaining an application filing date, other than a continued prosecution application filed under 37 CFR 1.53(d);
    • (C) Color drawings submitted under 37 CFR 1.81, 1.83 -1.85, 1.152, 1.165, 1.173, or 1.437;
    • (D) Correspondence in an interference which an Administrative Patent Judge orders to be filed by hand or "Express Mail";
    • (E) Agreements between parties to an interference under 35 U.S.C. 135(c);
    • (F) Correspondence in contested cases before the Board of Patent Appeals and Interferences, unless expressly authorized by the Board;
    • (G) Correspondence to be filed in a patent application subject to a secrecy order under 37 CFR 5.1 -5.5 and directly related to the secrecy order content of the application;
    • (H) An international application for patent;
    • (I) A copy of the international application and the basic national fee necessary to enter the national stage, as specified in 37 CFR 1.495(b);
    • (J) A request for reexamination under 37 CFR 1.510  or 37 CFR 1.913.

Applicants are reminded that the facsimile process may reduce the quality of the drawings, and the Office will generally print the drawings as received.

See MPEP § 1834.01 for a discussion concerning facsimile transmissions in PCT applications.

502.02   Correspondence Signature Requirements [R-8]

37 C.F.R. 1.4   Nature of correspondence and signature requirements.

*****

  • (d)
    • (1) Handwritten signature. Each piece of correspondence, except as provided in paragraphs (d)(2), (d)(3), (e) and (f) of this section, filed in an application, patent file, or other proceeding in the Office which requires a person’s signature, must:
      • (i) Be an original, that is, have an original handwritten signature personally signed, in permanent dark ink or its equivalent, by that person; or
      • (ii) Be a direct or indirect copy, such as a photocopy or facsimile transmission (§ 1.6 (d)), of an original. In the event that a copy of the original is filed, the original should be retained as evidence of authenticity. If a question of authenticity arises, the Office may require submission of the original.
    • (2) S-signature. An S-signature is a signature inserted between forward slash marks, but not a handwritten signature as defined by § 1.4 (d)(1). An S-signature includes any signature made by electronic or mechanical means, and any other mode of making or applying a signature not covered by a handwritten signature of § 1.4 (d)(1). Correspondence being filed in the Office in paper, by facsimile transmission as provided in § 1.6 (d), or via the Office electronic filing system as an attachment as provided in § 1.6 (a)(4), for a patent application, patent, or a reexamination proceeding may be S-signature signed instead of being personally signed (i.e., with a handwritten signature) as provided for in paragraph (d)(1) of this section. The requirements for an S-signature under this paragraph (d)(2) of this section are as follows.
      • (i) The S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature (e.g., /Dr. James T. Jones, Jr./); and
      • (ii) A patent practitioner (§ 1.32 (a)(1)), signing pursuant to §§ 1.33 (b)(1) or 1.33 (b)(2), must supply his/her registration number either as part of the S-signature, or immediately below or adjacent to the S-signature. The number (#) character may be used only as part of the S-signature when appearing before a practitioner’s registration number; otherwise the number character may not be used in an S-signature.
      • (iii) The signer’s name must be:
        • (A) Presented in printed or typed form preferably immediately below or adjacent the S-signature, and
        • (B) Reasonably specific enough so that the identity of the signer can be readily recognized.
    • (3) Forms. The Office provides forms to the public to use in certain situations to assist in the filing of correspondence for a certain purpose and to meet certain requirements for patent applications and proceedings. Use of the forms for purposes for which they were not designed is prohibited. No changes to certification statements on the Office forms (e.g., oath or declaration forms, terminal disclaimer forms, petition forms, and nonpublication request forms) may be made. The existing text of a form, other than a certification statement, may be modified, deleted, or added to, if all text identifying the form as an Office form is removed. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any Office form with text identifying the form as an Office form by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18 (b) of this chapter that the existing text and any certification statements on the form have not been altered other than permitted by EFS-Web customization.
    • (4) Certifications. (i) Section 11.18 certifications: The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any paper by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18 (b) of this subchapter. Violations of § 11.18 (b)(2) of this subchapter by a party, whether a practitioner or non-practitioner, may result in the imposition of sanctions under § 11.18(c)  of this subchapter. Any practitioner violating § 11.18 (b) of this subchapter may also be subject to disciplinary action. See §§ 11.18 (d) and 11.804(b)(9) of this subchapter.
      • (ii) Certifications as to the signature :
        • (A) Of another: A person submitting a document signed by another under paragraph (d)(2) of this section is obligated to have a reasonable basis to believe that the person whose signature is present on the document was actually inserted by that person, and should retain evidence of authenticity of the signature.
        • (B) Self certification : The person inserting a signature under paragraph (d)(2) of this section in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature.
        • (C) Sanctions : Violations of the certifications as to the signature of another or a person’s own signature, set forth in paragraphs (d)(4)(ii)(A) and (B) of this section, may result in the imposition of sanctions under § 11.18 (c) and (d) of this chapter.
  • (e) Correspondence requiring a person’s signature and relating to registration practice before the Patent and Trademark Office in patent cases, enrollment and disciplinary investigations, or disciplinary proceedings must be submitted with an original hand written signature personally signed in permanent dark ink or its equivalent by that person.
  • (f) When a document that is required by statute to be certified must be filed, a copy, including a photocopy or facsimile transmission, of the certification is not acceptable.

*****

  • (h) Ratification/confirmation/evidence of authenticity: The Office may require ratification, confirmation (which includes submission of a duplicate document but with a proper signature), or evidence of authenticity of a signature, such as when the Office has reasonable doubt as to the authenticity (veracity) of the signature, e.g., where there are variations of a signature, or where the signature and the typed or printed name, do not clearly identify the person signing.

Correspondence filed in the Office, which requires a person’s signature, may be filed with one of two types of signatures: (A) handwritten signature; and (B) "S-signature." See 37 CFR 1.4 (d).

I.   HANDWRITTEN SIGNATURE

A person’s handwritten signature may be an original, or a copy thereof. The word original, as used herein, is defined as correspondence which is personally signed in permanent dark ink or its equivalent by the person whose signature appears thereon. Dark ink or equivalent permits traditional ink and newer non-liquid gel type ink technologies. Since incoming correspondence is electronically stored and scanned as a black and white image, a dark color is required so that the scanned image is legible. Where copies of correspondence are acceptable, photocopies or facsimile transmissions may be filed. For example, a photocopy or facsimile transmission of an original of an amendment, declaration (e.g., under 37 CFR 1.63  or 1.67 ), petition, issue fee transmittal form, authorization to charge a deposit account or a credit card, may be submitted in a patent application. Where copies are permitted, second and further generation copies (i.e., copy of a copy) are acceptable. For example, a client may fax a paper to an attorney and the attorney may then fax the paper to the Office, provided the paper is eligible to be faxed (see MPEP § 502.01). The original, if not submitted to the Office, should be retained as evidence of proper execution in the event that questions arise as to the authenticity of the signature reproduced on the photocopy or facsimile-transmitted correspondence. If a question of authenticity arises, the Office may require submission of the original.

37 CFR 1.4 (d)(1) covers all handwritten signatures, except for the handwritten signatures on the types of correspondence covered by 37 CFR 1.4 (e). The requirement in 37 CFR 1.4 (d)(1) of permanent dark ink or its equivalent relates to whether a handwritten signature is compliant and is not limiting on the type of handwritten signature that is covered by 37 CFR 1.4 (d)(1). Thus, 37 CFR 1.4 (d)(1) would cover handwritten signatures in red ink or in pencil; although, under 37 CFR 1.4 (d)(1) neither would be acceptable since red ink is not dark, and pencil is not permanent. A scanned image of a document that contains a handwritten signature filed via the Office’s electronic filing system is permitted as a copy under 37 CFR 1.4 (d)(1)(ii). A signature applied by an electric or mechanical typewriter directly to paper is not a handwritten signature, which is applied by hand. Accordingly, if a typewriter applied signature is used, it must meet the requirements of 37 CFR 1.4 (d)(2). Adding forward slashes to a handwritten (or hand-printed) ink signature that is personally applied will not cause the signature to be treated under 37 CFR 1.4 (d)(2). Such a signature will be treated under 37 CFR 1.4 (d)(1) or (e) with the slashes ignored. The end product from a manually applied hand stamp or from a signature replication or transfer means (such as by pen or by screen) appears to be a handwritten signature, but is not actually handwritten, and would be treated under 37 CFR 1.4 (d)(2). An electronic reproduction of a handwritten signature, e.g., scanned, that is electronically applied to a document is not a personally signed original document under 37 CFR 1.4 (d)(1)(i) and reproductions of such correspondence cannot be copies under 37 CFR 1.4 (d)(1)(ii).

II.   S-SIGNATURE

The second type of signature is an S-signature. See 37 CFR 1.4 (d)(2). An S-signature is a signature inserted between forward slash marks, but not a handwritten signature as defined by 37 CFR 1.4 (d)(1) or (e). An S-signature includes any signature made by electronic or mechanical means, and any other mode of making or applying a signature not covered by either a handwritten signature of 37 CFR 1.4 (d)(1) or (e). The S-signature can be used with correspondence filed in the Office in paper, by facsimile transmission as provided in 37 CFR 1.6 (d), or via the Office electronic filing system as an attachment as provided in 37 CFR 1.6 (a)(4), for a patent application, a patent, or a reexamination proceeding. 37 CFR 1.4 (d) does not authorize filing correspondence by e-mail.

An S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and punctuation (i.e., commas, periods, apostrophes, or hyphens). "Letters" include English and non- English alphabet letters, and text characters (e.g., Kanji). Non-text, graphic characters (e.g., a smiley face created in the True Type Wing Dings font) are not permitted. "Arabic numerals" are the numerals 0, 1, 2, 3, 4, 5, 6, 7, 8, and 9, which are the standard numerals used in the United States. To accommodate as many varieties of names as possible, a signer may select any combination of letters, Arabic numerals, or both, for his or her S-signature under 37 CFR 1.4 (d)(2)(i). The person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature (e.g., /Dr. James T. Jones, Jr./). Additional forward slashes are not permitted as part of the S-signature. The presentation of just letters and Arabic numerals as an S-signature without the S-signature being placed between two forward slashes will be treated as an unsigned document.

Commas, periods, apostrophes, and hyphens are often found in names and will therefore be found in many S-signatures. These punctuation marks and appropriate spaces may be used with letters and Arabic numerals in an S-signature. A sample S-signature including punctuation marks and spaces, between two forward slashes, is: /John P. Doe/. Punctuation marks, per se, are not punctuation and are not permitted without proper association with letters and Arabic numerals. An S-signature of only punctuation marks would be improper (e.g., /- - -/). In addition, punctuation marks, such as question marks (e.g., /???/), are often utilized to represent an intent not to sign a document and may be interpreted to be a non-bona fide attempt at a signature, in addition to being improper.

Script fonts are not permitted for any portion of a document except the S-signature. See 37 CFR 1.52 (b)(2)(ii). Presentation of a typed name in a script font without the typed name being placed between the required slashes does not present the proper indicia manifesting an intent to sign and will be treated as an unsigned document.

37 CFR 1.4 (d)(2)(i) also defines who can insert an S-signature into a document. 37 CFR 1.4 (d)(2)(i) requires that a person, which includes a practitioner, must insert his or her own signature using letters and/or Arabic numerals, with appropriate commas, periods, apostrophes, or hyphens as punctuation and spaces. The "must insert his or her own signature" requirement is met by the signer directly typing his or her own signature using a keyboard. The requirement does not permit one person (e.g., a secretary) to type in the signature of a second person (e.g., a practitioner) even if the second person directs the first person to do so. A person physically unable to use a keyboard, however, may, while simultaneously reviewing the document for signature, direct another person to press the appropriate keys to form the S-signature.

For consistency purposes, and to avoid raising a doubt as to who has signed, the same S-signature should be utilized each time, with variations of the signature being avoided. The signer should review any indicia of identity of the signer in the body of the document, including any printed or typed name and registration number, to ensure that the indicia of identity in the body of the document is consistent with how the document is S-signed. Knowingly adopting an S-signature of another is not permitted.

While an S-signature need not be the name of the signer of the document, the Office strongly suggests that each signer use an S-signature that has his or her full name. The Office expects that where persons do not sign with their name it will be because they are using an S-signature that is the usual S-signature for that person, which is his or her own signature, and not something that is employed to obfuscate or misidentify the signer. Titles may be used with the signer’s S-signature and must be placed between the slash marks (e.g., /Dr. John Doe/), or with the printed or typed version of the name.

37 CFR 1.4 (d)(2)(ii) requires that a practitioner (37 CFR 1.32 (a)(1)) signing pursuant to 37 CFR 1.33 (b)(1) or (b)(2) must place his or her registration number, either as part of, or adjacent, his or her S-signature. A number character (#) may only be used in an S-signature if it is prior to a practitioner’s registration number that is part of the S-signature. When a practitioner is signing as an assignee, or as an applicant (inventor) pursuant to 37 CFR 1.33 (b)(3) or (b)(4), a registration number is not required and should not be supplied to avoid confusion as to which basis the practitioner is signing, e.g., as a practitioner or as the assignee.

The signer’s name must be (A) presented in printed or typed form preferably immediately below or adjacent the S-signature, and (B) reasonably specific enough so that the identity of the signer can be readily recognized. See 37 CFR 1.4 (d)(2)(iii)(A). The printed or typed name requirement is intended to describe any manner of applying the signer’s name to the document, including by a typewriter or machine printer. It could include a printer (mechanical, electrical, optical, etc.) associated with a computer or a facsimile machine but would not include manual or hand printing. See 37 CFR 1.52 (a)(1)(iv). The printed or typed name may be inserted before or after the S-signature is applied, and it does not have to be inserted by the S-signer. A printed or typed name appearing in the letterhead or body of a document is not acceptable as the presentation of the name of the S-signer.

III.   **

IV.   CERTIFICATIONS

37 CFR 1.4 (d)(4)(i) establishes that the presentation to the Office (whether by signing, filing, submitting, or later advocating) of any paper by a party, whether a practitioner or non- practitioner, constitutes a certification under 37 CFR 11.18 (b) of this chapter.

37 CFR 1.4 (d)(4)(ii)(A) establishes certifications as to the signature of another for a person submitting a document signed by another under 37 CFR 1.4 (d)(2) . Thus, the submitting person is obligated to have a reasonable basis to believe that the person whose signature is present on the document actually inserted the signature on the document. Such reasonable basis does not require an actual knowledge but does require some reason to believe the signature is appropriate. For example, where a practitioner e-mails a 37 CFR 1.63  declaration to an inventor for signature by the inventor and receives an executed declaration by the inventor in return from the inventor, reasonable basis would exist. Where an assignee was involved in the transmission of the declaration form and/or the executed declaration, an additional showing of chain of custody (e.g., e-mail chain with attached documents from the inventor to the assignee to the practitioner filing the declaration) involving the assignee would be required. Additionally, evidence of authenticity should be retained. This may involve retaining the e-mails sent to the inventor and any cover letter or e-mail (with the signed document as an attachment) back to the practitioner from the inventor in the example relating to execution of a 37 CFR 1.63  declaration.

37 CFR 1.4 (d)(4)(ii)(B) establishes that a person inserting a signature under 37 CFR 1.4 (d)(2) in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature. This is meant to prohibit a first person from requesting a second person to insert the first person’s signature in a document. While the certification is directed at the person inserting another S- signature, the person requesting the inappropriate insertion may also be subject to sanctions.

37 CFR 1.4 (d)(4)(ii)(C) establishes that violations of the certifications as to the signature of another or a person’s own signature, set forth in 37 CFR 1.4 (d)(4)(ii)(A) and (B), may result in the imposition of sanctions under 37 CFR 11.18  (c) and (d).

V.   RATIFICATION, CONFIRMATION, OR EVIDENCE OF AUTHENTICITY

Pursuant to 37 CFR 1.4 (h), the Office may additionally inquire in regard to a signature so as to identify the signer and clarify the record where the identity of the signer is unclear. An example of when ratification or confirmation of a signature may be required is when there are variations in a signature or whenever a name in an S-signature is not exactly the same as the name indicated as an inventor, or a practitioner of record. Hence, whatever signature is adopted by a signer, that signature should be consistently used on all documents. Also addressed is the treatment of variations in a signature or where a printed or typed name accompanies the S-signature but the identity of the signer is unclear. In such cases, the Office may require ratification or confirmation of a signature. Ratification requires the person ratifying to state he/she personally signed the previously submitted document as well as, if needed, the submission of a compliant format of the signature. Confirmation includes submitting a duplicate document, which is compliantly signed if the previous signature was noncompliant (as opposed to unclear).

In lieu of ratification, the Office may require a resubmission of a properly signed duplicate document. Resubmission of a document may be required, for example, where ratification alone is inappropriate, such as where the image of the signature is of such poor quality (e.g., illegible font) that the Office is unable to store or reproduce the document with the signature image.

Ratification or confirmation alone does not provide a means for changing the name of a signer. For example, when an inventor changes her/his name and the inventor desires to change her/his name in the application, such change must be accompanied by a petition under 37 CFR 1.182 and, preferably, an Application Data Sheet (ADS). See MPEP § 605.04(c).

In addition, the Office may require evidence of authenticity where the Office has reasonable doubt as to the authenticity (veracity) of the signature. Evidence of authenticity may include evidence establishing a chain of custody of a document from the person signing the document to the person filing the document. Proper evidence of a chain of custody will aid in avoiding the impact of repudiation of a signature.

Where there has been a bona fide attempt to follow the rule, but where there is some doubt as to the identity of the signer of a signed document, the Office may require ratification of the signature. Note, ratification would only be an effective remedy if the signer was a proper party to have executed the document to be ratified. For example, a practitioner of record may ratify his or her signature on an amendment, but not the signature of a secretary who is not a practitioner or inventor in the application. A registered practitioner may, however, ratify the amendment made by another registered practitioner but may not ratify a document required to be signed by an inventor, such as a 37 CFR 1.63  declaration. Similarly, an inadvertent typographical error or simple misspelling of a name will be treated as a bona fide attempt to follow the rule, which would require ratification only where there is some doubt as to the identity of the signer rather than be treated as an unsigned paper requiring resubmission. Where there is an obvious typographical error so that the Office does not have some doubt as to the identity of the signer (and therefore notification to applicant is not needed), further action by applicant would not be required and, where appropriate, the obvious error will be noted in the record.

The inadvertent failure to follow the format and content of an S-signature will be treated as a bona fide attempt at a signature but the paper will be considered as being unsigned correspondence. Examples of correspondence that will be treated as unsigned are (A) the S-signature is not enclosed in forward slashes, (B) the S-signature is composed of non-text graphic characters (e.g., a smiley face) and not letters and numerals, and (C) the S-signature is not a name and there is no other accompanying name adjacent or below the S-signature so that the identity of the signer cannot be readily recognized.

If the signer, after being required to ratify or resubmit a document with a compliant signature, repeats the same S-signature in reply without appropriate correction, the reply will not be considered to be a bona fide attempt to reply, and no additional time period will be given to submit a properly signed document.

VI.   CERTIFICATION OF DOCUMENTS REQUIRED BY STATUTE

When a document that is required by statute to be certified must be filed (such as a certified copy of a foreign patent application pursuant to 35 U.S.C. 119  or a certified copy of an international application pursuant to 35 U.S.C. 365 ) a copy of the certification, including a photocopy or facsimile transmission, will not be acceptable. The requirement for an original certification does not apply to certifications such as required under 37 CFR 1.8  since these certifications are not required by statute.

502.03   Communications via Internet Electronic Mail (e-mail)  [R-9]

The Office published a Patent Internet Usage Policy to

    • (A) establish a policy for use of the Internet by the Patent Examining Corps and other organizations within the USPTO,
    • (B) address use of the Internet to conduct interview-like communications and other forms of formal and informal communications,
    • (C) publish guidelines for locating, retrieving, citing, and properly documenting scientific and technical information sources on the Internet,
    • (D) inform the public how the USPTO intends to use the Internet, and
    • (E) establish a flexible Internet policy framework which can be modified, enhanced, and corrected as the USPTO, the public, and customers learn to use, and subsequently integrate, new and emerging Internet technology into existing business infrastructures and everyday activities to improve the patent application, examining, and granting functions.

See Internet Usage Policy, 64 FR 33056 (June 21, 1999). The Articles of the Patent Internet Usage Policy pertinent to communications via electronic mail are summarized below. See MPEP § 904.02(c) for information pertinent to Internet searching, and MPEP § 707.05(e) for information pertaining to the citation of electronic documents. See also MPEP § 713.04 for recordation of e-mail interviews.

I.   CONFIDENTIALITY OF PROPRIETARY INFORMATION (ARTICLE 4)

If security and confidentiality cannot be attained for a specific use, transaction, or activity, then that specific use, transaction, or activity shall NOT be undertaken/conducted.

All use of the Internet by Patent Organization employees, contractors, and consultants shall be conducted in a manner that ensures compliance with confidentiality requirements in statutes, including 35 U.S.C. 122, and regulations. Where a written authorization is given by the applicant for the USPTO to communicate with the applicant via Internet e-mail, communications via Internet e-mail may be used.

Backup, archiving, and recovery of information sent or received via the Internet is the responsibility of individual users. The OCIO does not, and will not, as a normal practice, provide backup and recovery services for information produced, retrieved, stored, or transmitted to/from the Internet.

II.   COMMUNICATIONS VIA THE INTERNET AND AUTHORIZATION (ARTICLE 5)

Communications via Internet e-mail are at the discretion of the applicant.

Without a written authorization by applicant in place, the USPTO will not respond via Internet e-mail to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122. A paper copy of such correspondence will be placed in the appropriate patent application.

The following is a sample authorization form which may be used by applicant:

"Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with me concerning any subject matter of this application by electronic mail. I understand that a copy of these communications will be made of record in the application file."

A written authorization may be withdrawn by filing a signed paper clearly identifying the original authorization. The following is a sample form which may be used by applicant to withdraw the authorization:

"The authorization given on______, to the USPTO to communicate with me via the Internet is hereby withdrawn. I understand that the withdrawal is effective when approved rather than when received."

Where a written authorization is given by the applicant, communications via Internet e-mail, other than those under 35 U.S.C. 132  or which otherwise require a signature, may be used. In such case, a printed copy of the Internet e-mail communications MUST be given a paper number, entered into the Patent Application Locating and Monitoring System (PALM) and entered in the patent application file. A reply to an Office action may NOT be communicated by applicant to the USPTO via Internet e-mail. If such a reply is submitted by applicant via Internet e-mail, a copy will be placed in the appropriate patent application file with an indication that the reply is NOT ENTERED.

USPTO employees are NOT permitted to initiate communications with applicants via Internet e-mail unless there is a written authorization of record in the patent application by the applicant.

All reissue applications are open to public inspection under 37 CFR 1.11 (a) and all papers relating to a reexamination proceeding which have been entered of record in the patent or reexamination file are open to public inspection under 37 CFR 1.11 (d). USPTO employees are NOT permitted to initiate communications with applicant in a reissue application or a patentee of a reexamination proceeding via Internet e-mail unless written authorization is given by the applicant or patentee.

III.   AUTHENTICATION OF SENDER BY A PATENT ORGANIZATION RECIPIENT (ARTICLE 6)

The misrepresentation of a sender’s identity (i.e., spoofing) is a known risk when using electronic communications. Therefore, Patent Organization users have an obligation to be aware of this risk and conduct their Internet activities in compliance with established procedures.

Internet e-mail must be initiated by a registered practitioner, or an applicant in a pro se application, and sufficient information must be provided to show representative capacity in compliance with 37 CFR 1.34. Examples of such information include the attorney registration number, attorney docket number, and patent application number.

IV.   USE OF ELECTRONIC MAIL SERVICES (ARTICLE 7)

Once e-mail correspondence has been received from the applicant, as set forth in Patent Internet Usage Policy Article 4, such correspondence must be responded to appropriately. The Patent Examiner may respond to an applicant’s e-mail correspondence by telephone, fax, or other appropriate means.

V.   INTERVIEWS (ARTICLE 8)

Internet e-mail shall NOT be used to conduct an exchange of communications similar to those exchanged during telephone or personal interviews unless a written authorization has been given under Patent Internet Usage Policy Article 5 to use Internet e-mail. In such cases, a paper copy of the Internet e-mail contents MUST be made and placed in the patent application file, as required by the Federal Records Act, in the same manner as an Examiner Interview Summary Form is entered.

VI.   POLICY GUIDANCE AND CLARIFICATIONS (ARTICLE 13)

Within the Patent Organization, any questions regarding Internet usage policy should be directed to the user’s immediate supervisor. Non-USPTO personnel should direct their questions to the Office of the Deputy Commissioner for Patent Examination Policy.

502.04   Duplicate Copies of Correspondence [R-2]

37 C.F.R. 1.4   Nature of correspondence and signature requirements.

  • (b) Since each file must be complete in itself, a separate copy of every paper to be filed in a patent, patent file, or other proceeding must be furnished for each file to which the paper pertains, even though the contents of the papers filed in two or more files may be identical. The filing of duplicate copies of correspondence in the file of an application, patent, or other proceeding should be avoided, except in situations in which the Office requires the filing of duplicate copies. The Office may dispose of duplicate copies of correspondence in the file of an application, patent, or other proceeding.

*****

When the Office does not require duplicate copies of a paper, the filing of multiple copies may cause a delay in processing by the Office. Accordingly, the Office may discard duplicate copies of correspondence filed in an application or patent file.

502.05   Correspondence Transmitted by EFS-Web [R-9]

I.   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 Web site.  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, reexamination requests, and other patent-related documents securely using EFS-Web.  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 that the USPTO has received the user’s submission.  The users, generally within two hours, will receive an Electronic Acknowledgement Receipt of a successful submission received by the USPTO.  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 via the Patent Application Information Retrieval (PAIR) system within an hour after the USPTO receives the documents if the users have associated their applications with their customer numbers.  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.  A registered user may file most patent applications and follow-on documents in a patent application, but a non-registered user is not permitted to file most follow-on documents in a patent application. 

EFS-Web is a PDF-based filing system.  Accordingly, all EFS-Web submissions are required to be in PDF format unless otherwise indicated in this notice.  EFS-Web permits submission of:  (A) 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; and (B) PCT-EASY.zip compressed files to submit the Request form generated by PCT-SAFE (operated in PCT-EASY mode) in international applications with the United States Receiving Office.  See subsections IX. and X. below for more information on ASCII text files and electronic filing of 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.  When users submit information using an EFS-Web fillable form, 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 Web site, 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.

II.   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, as well as follow-on documents in patent applications and reexamination proceedings are set forth below.

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

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

  Follow-on Documents

Registered users are permitted to file follow-on documents in the patent applications and reexamination proceedings listed above via EFS-Web.  Follow-on documents are documents filed after the initial submission of the application or request for reexamination, which include, but are not limited to, the following:  amendments, information disclosure statements (IDS), replies to Office actions and notices, evidence, petitions, and other documents filed after the filing of a patent application or request for reexamination.  In addition, registered users may file copies of the patent application (e.g., a copy of the amended specification including the claims, and drawings, for the purposes of publication of the application) for 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 VII 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 8-10 above.  Non-registered users may file follow-on documents by mail (with a certificate of mailing in accordance with 37 CFR 1.8 ), Express Mail from USPS in accordance with 37 CFR 1.10, or hand delivery.

B.   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 under 35 U.S.C. 161  and documents associated with plant patent applications;
    • (2) Requests for Reexamination under 35 U.S.C. 302  and 311  for plant patents and documents associated with reexamination proceedings for plant patents;
    • (3) Third party submissions under 37 CFR 1.99;
    • (4) Protests under 37 CFR 1.291;
    • (5) Public use papers under 37 CFR 1.292;
    • (6) Color drawings and color photographs for international applications that have not entered the national stage;
    • (7) Initial submissions for patent term extension under 35 U.S.C. 156;
    • (8) Correspondence concerning registration practice as specified in 37 CFR 1.4(e). See also 37 CFR 1.6(d)(1);
    • (9) Certified documents as specified in 37 CFR 1.4(f).  See also 37 CFR 1.6(d)(2).  An example of such a submission is a certified copy of a foreign patent application filed pursuant to 35 U.S.C. 119  or a certified copy of an international application filed pursuant to 35 U.S.C. 365;
    • (10) Correspondence to be filed in a patent application subject to a secrecy order under 37 CFR 5.1  through 37 CFR 5.5  See also 37 CFR 1.6(d)(6);
    • (11) Documents filed in contested cases before the Board of Patent Appeals and Interferences (BPAI), except as the BPAI may expressly authorize. See also 37 CFR 1.6(d)(9);
    • (12) Documents filed in contested cases before the BPAI, which are governed by 37 CFR 41.106(f).  See also 37 CFR 1.6(d)(3)  and 1.8(a)(2)(i)(C);
    • (13) Correspondence filed in connection with a disciplinary proceeding under 37 CFR parts 10 and 11.  See also 37 CFR 1.6(d)(3);
    • (14) Maintenance fees submitted under 37 CFR 1.366  that are not submitted with a petition under 37 CFR 1.378(c)  (see item 9 in subsection II.A. 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 maintence fees;
    • (15) 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.
    • (16) Submissions that are not associated with a patent application or reexamination 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.

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

When the USPTO successfully receives 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 color and grayscale drawings which are stored in the Supplemental Complex Repository for Examiners (SCORE) as part of the official record. In addition, certain submissions may be filed as ASCII text files (e.g., sequence listings or computer program listings), which are stored in SCORE as part of the official record. Accordingly, the official record for the patent application and reexamination proceeding comprises:

    • (1) ASCII text documents as well as color and grayscale drawings in PDF format as stored in SCORE; 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.

The original documents submitted via EFS-Web (e.g., applications and reexamination proceeding documents) are stored exactly as filed in an independent location. See subsection IX. below for more information on ASCII text documents and subsection VIII. below on color and grayscale drawings. 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 VII. below for more information on publication requests.

D.   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 1.52(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 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)  if the listing is submitted in ASCII text as part of an associated file of the application.  See 37 CFR 1.52(f)(2)  and subsections IX.A. and X.B. below.  Sequence listing or computer program listings submitted as PDF files would not be excluded.

E.   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 or request for reexamination.  Only registered users may submit payment of fees in a previously filed application or reexamination proceeding.  EFS-Web permits users to electronically submit the payment of fees with a credit 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 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 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 Express Mail from the 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 on the filing date of 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 under 37 CFR 1.378 (c) for auto-processing by EFS-Web; and
    • (2) Pre-grant publication submissions under 37 CFR 1.211  to 1.221  that require a fee.

III.   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 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 … Reexamination 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.

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

Follow-on documents filed in a patent 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) 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).

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

35 U.S.C. 111 (a)(4) states in part (emphasis added):

The filing date of an application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.

Thus, the filing date of an application is the date of receipt of the application in the USPTO.  Further, the USPTO is located in the Eastern Standard Time zone.  Accordingly, the date of filing of an application officially submitted through EFS-Web will be the date in the Eastern Standard 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 Standard Time 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 ).  This applies by analogy to reexamination proceedings.

To be very specific, the EFS-Web system records as the date of receipt of documents the local date in Eastern Standard Time 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. Eastern Standard Time on May 2.  Accordingly, the application would receive a filing date of May 2.  However, the applicant could alternatively file the application using Express Mail 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.

C.   When EFS-Web is Unavailable

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 Express Mail from the USPS in accordance with 37 CFR 1.10  or hand delivery of paper to the USPTO, to establish the filing date (see also EFS-Web Contingency Option below). Note that applications filed under 37 CFR 1.53, 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.

1.   EFS-Web Contingency Option

The USPTO has provided EFS-Web Contingency Option for users to file new applications, national stage submissions under 35 U.S.C. 371, requests for reexamination, 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 the EFS-Web Contingency Option on the EFS-Web Internet page http:www.uspto.gov/patents/process /file/efs/index.jsp. The EFS-Web Contingency Option will only have the same functionality as EFS-Web for unregistered e-filers (https://sportal.uspto.gov/secure /portal/efs-unregistered). It will 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, and certain petitions. However, other follow-on documents and fee payments filed after the initial submission of the application or reexamination request (e.g., amendments and replies to Office actions) cannot be filed using EFS-Web Contingency Option. Specifically, EFS-Web Contingency Option will only permit users to electronically file the following items as unregistered EFS-Web users:

    • (1) Provisional patent applications under 35 U.S.C. 111 (b);
    • (2) Nonprovisional utility patent applications under 35 U.S.C. 111(a)  (including reissue utility patent applications);
    • (3) Nonprovisional design patent applications under 35 U.S.C. 171  (including reissue design patent applications);
    • (4) International applications under PCT Article 11 for filing in the United States Receiving Office;
    • (5) National stage submissions under 35 U.S.C. 371  submitted with the basic national fee necessary to enter the national stage;
    • (6) Requests for ex parte reexamination under 35 U.S.C. 302  for utility or design patents;
    • (7) Requests for inter partes reexamination under 35 U.S.C. 311  for utility or design patents;
    • (8) Petitions to make special based on age under 37 CFR 1.102(c)  when filed as an e-petition using EFS-Web SB130 form, for the automatic processing of the e-petition (for more information see http://www.uspto.gov/ebc/portal /efs/sb130_instructions.doc );
    • (9) Petitions to accept an unintentionally delayed payment of maintenance fee under 37 CFR 1.378(c)  when filed as an e-petition using EFS-Web SB66 form, for the automatic processing of the e-petition (for more information see http://www.uspto.gov/ebc/portal/efs/sb0066e_fill.doc)  and
    • (10) 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) ).

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 would not be 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 national stage, and reexamination requests, by hand-delivery to the USPTO, or "Express mail" from the United States Postal Service (USPS) in accordance with 37 CFR 1.10, to establish filing date or national stage entry date. Facsimile transmission cannot be used to submit these items and certificate of mailing procedures under 37 CFR 1.8  do not apply.

The EFS-Web Contingency Option does not permit follow-on fee payments and follow-on documents that are not listed above. Applicants may file the documents or fee payments by: (1) facsimile transmission; (2) first class mail with a certificate of mailing in accordance with 37 CFR 1.8; (3) hand-delivery to the USPTO; or (4) "Express Mail" 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.

(a)   Improperly Filed Follow-on Documents

As previously stated, EFS-Web for unregistered e-filers and EFS-Web Contingency Option 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 and certain petitions, but not other follow-on documents and follow-on fee payments filed after the initial submission of the application or reexamination request (e.g., amendments and replies to Office actions). With the limited functionality of EFS-Web for unregistered e-filers and EFS-Web Contingency Option, some users may attempt to file follow-on documents as new applications, and then later request the USPTO to move the documents to the appropriate application. When applicant improperly files a follow-on document as a new application via EFS-Web Contingency Option (or EFS-Web) and requests the USPTO to move the follow-on document to the appropriate application, a petition under 37 CFR 1.182  accompanied by the petition fee will be required in the appropriate application. Upon granting such a petition, the follow-on document will be entered into the file of the appropriate application and the document will be accorded a receipt date, the date the follow-on document was received at the USPTO. See 37 CFR 1.6(a)(4). Once the follow-on document is moved to the appropriate application, the USPTO will eliminate the new application, and thus applicant should not use the application number for the new application for any subsequent communications.

(b)   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 "Express Mail" 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 "Express Mail" 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).

D.   Inadvertently Omitted a Document from the Application

One advantage of filing a patent application via EFS-Web is that applicant (who is a registered user) may view the submission in 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 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 - Since 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 the missing drawings as a preliminary amendment on the same day as the filing date of the application (application filed under 35 U.S.C. 111 (a)). The drawings will be considered as part of the original disclosure of the application.  See 37 CFR 1.115 (a)(2).  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 (application filed under 35 U.S.C. 111 (a)) 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 (application filed under 35 U.S.C. 111 (a)) and such claims will be considered as part of the original disclosure of the application.  Please note that a nonprovisional application will not be entitled to a filing date until applicant files at least one claim in the application.
    • (6) Part of the specification - Applicant may file the missing portion of the written description as a preliminary amendment on the filing date of the application (application filed under 35 U.S.C. 111 (a)).  Such amendment will be considered as part of the original disclosure.

If applicant files another new 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 declaration of 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)  on or after December 8, 2004, and the applicant files a petition for express abandonment in accordance with 37 CFR 1.138(d).

E.   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:

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.

Further, 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 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 when filing international applications with the United States Receiving Office.  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, if applicants elect, in accordance with 35 U.S.C. 21(b)  or 119(e)(3), to file an international application on the next succeeding business day in the event that the twelve-month Paris Convention priority period 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 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 with the USPTO, and instead file the international application before the Paris Convention twelve-month priority period has expired.

IV.   PROPER USAGE OF EFS-WEB

Users should follow the instructions and guidelines for EFS-Web provided on the USPTO Web site.  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 (Eastern Time).  Use of EFS-Web in a manner significantly in violation of the instructions and guidelines for EFS-Web provided on the USPTO Web site 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 a federal government system.

A.   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.  See subsection IX.D. 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 uses the PDF comments or annotations to enter the information on a form, 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 Web site) 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.

B.   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 patent 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. Therefore, providing incorrect information regarding the submission could lead to: (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.

1.   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 on the EFS-Web screen when filing the follow-on document.

 

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.

2.   Filing a New Patent Application

When a user is submitting a new patent application via EFS-Web, the user is required to select the application type (e.g., design, utility, provisional or nonprovisonal) 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.

3.   Document Indexing

When a user submits a patent application or a follow-on document in a patent 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 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 drawing 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 Web site.  It is important for users to select the correct document description, and check the application file via PAIR after the submission is completed.

V.   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 Web site).  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.  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 ), Express Mail 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. 

A.   PKI Subscriber Agreement

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 revised 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.  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 when one of the practitioner’s paralegals files a follow-on document in another application electronically via EFS-Web, and another 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 has been revised to permit 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.  The 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 third party submission under 37 CFR 1.99  or 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 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. 

VI.   SIGNATURE POLICY

Signatures, other than handwritten signatures meeting the standard of 37 CFR 1.4(d)(1), included in image attachments submitted via EFS-Web are governed by the S-signature requirements of 37 CFR 1.4(d)(2).

If the signer is submitting an application through EFS-Web as PDF files, he or she should 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.  Any follow-on documents, such as an amendment filed in an application, must also be signed in accordance with 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.

A legible electronic image of a handwritten signature inserted, or copied and pasted by the person signing the correspondence into an application document may be considered to be an acceptable signature.  The legible image of the handwritten signature of the person signing the correspondence must be inserted by the person.  Additionally, the signature must be surrounded by a first single forward slash mark before the electronic image and a second single forward slash mark after the electronic image.  That is, the legible electronic image of a handwritten signature must be enclosed between two single forward slashes and the signer’s name is indicated below or adjacent the signature as per 37 CFR 1.4(d)(2).  The slashes may be inserted into the document prior to the insertion of the signature.

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).

VII.   PRE-GRANT (EIGHTEEN-MONTH) PUBLICATION REQUESTS SUBMITTED 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 form-fillable application data sheet (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.

VIII.   PHOTOGRAPHS AND COLOR DRAWINGS SUBMITTED 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.  As stated in 37 CFR 1.84(a)(2)  and (b), photographs and color drawings are not ordinarily permitted in utility and design patent applications, but the USPTO will accept photographs and color drawings in utility or design 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 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 present in a drawing what is to be shown (e.g., crystalline structures). Color photographs are not permitted in international 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 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.

A.   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 II.A. 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; and
    • (5) Reexamination proceedings for utility or design patents.

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

B.   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) 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, grayscale drawings, photographs, color drawings, and other drawings that are not black and white line drawings in design patent applications, including reissue design patent 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 patent applications under 35 U.S.C. 111 (a), including reissue utility patent applications;
        • (iii) national stage applications under 35 U.S.C. 371; and
        • (iv) reexamination proceedings for utility 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.

      • (b) Black and white photographs, and grayscale drawings, in 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.

C.   Other Requirements

For color drawings, a petition filed under 37 CFR 1.84(a)(2)  explaining why the color drawings are necessary is required.  See MPEP § 608.02.  The requirement for three (3) sets of color drawings under 37 CFR 1.84(a)(2)(ii)  is not applicable to color drawings submitted via EFS-Web.  Therefore, only one set of such 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.

IX.   TEXT FILES AND FILE LIMITS

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

All of these types of documents may be submitted as ASCII text files with a ".txt" extension (e.g., "seqlist.txt") for national applications (other than international applications) and reexamination 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 X. 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 has 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. 

It is recommended that a sequence listing be submitted in an ASCII text file via EFS-Web rather than in a PDF file.  If the sequence listing text file submitted via EFS-Web complies with the requirements of 37 CFR 1.824(a)(2) -(6) and (b) (i.e., is a compliant sequence listing ASCII text 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 the use of 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 Web site at http://www.uspto.gov/web/offices/pac/checker/ . 

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 is not recommended because applicant would still be required to 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 because as stated above, 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 in PDF format is treated as the paper copy required by 37 CFR 1.821(c).  If applicant submits a sequence listing in a PDF file and a copy of the sequence listing in an ASCII text file, 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.

B.   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 1.821(c)  or (e), 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.

C.   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 Express Mail 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"). 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 Express Mail 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").

D.   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.  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.

X.   INTERNATIONAL APPLICATIONS AND DOCUMENTS FOR INTERNATIONAL APPLICATIONS

EFS-Web enables users to electronically file international applications under the PCT with the United States Receiving Office.  Applicants are advised that EFS-Web may be used to file either: (1) international applications in fully electronic form; or (2) follow-on papers to previously filed international applications, regardless of the manner in which the international application was initially filed. The required page size for international applications filed via EFS-Web in PDF format is A4 (29.7 cm x 21 cm).  See PCT Rule 11.5.

EFS-Web permits users to submit PCT-EASY.zip files created by PCT-SAFE when operated in the PCT-EASY mode.  A PCT-EASY.zip file will contain the Request and fee calculation sheet in PDF format.  All other documents or application parts (e.g., description, claims, drawings and abstract) MUST be separately prepared and attached as PDF documents, except for sequence listings.  See subsection X.B. below for more information on sequence listings.  PCT-SAFE permits users to create and electronically sign using an S-signature the PCT Request Form and 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 validated PCT Request which will entitle the applicant to a reduction of the international filing fee.  If applicant chooses not to use PCT-SAFE to create the Request and fee calculation sheet, the applicant may use Form PCT/RO/101 (or equivalent) for the Request and attach it as a PDF document.  More information regarding filing international applications is available on the USPTO Web site (http://www.uspto.gov/ebc/portal /efs/dct_pct_file_new_tutorial.pdf) .

The term "international application" as used herein refers to an international application filed under the PCT where papers have not been submitted to enter the national stage under 35 U.S.C. 371.  The term "national stage" as used in this notice refers to an international application where papers have been submitted to enter the national stage under 35 U.S.C. 371.

A.   Entry in the U.S. National Stage Under 35 U.S.C. 371 

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.

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

B.   Sequence Listing

Under PCT Rule 5.2(a), the sequence listing part must always be presented as a separate part of the description.  When filing an international application using EFS-Web, the sequence listing part of the description should preferably be submitted as a single ASCII text file with a ".txt" extension (e.g., "seqlist.txt").  If the sequence listing part is submitted as an ASCII text file, applicant need not submit any additional copies.  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).  Furthermore, the required statement in paragraph 4(v) of Annex C of the PCT Administrative Instructions that "the information recorded in the electronic form furnished under Rule 13ter is identical to the sequence listing as contained in the international application" is not required.  The sequence listing in an ASCII text file will not be taken into account when calculating the application page count, i.e., no excess page fees will be required for the sequence listing in the text file.

Submission of the sequence listing part in a PDF file is not recommended because applicant would still be required to supply a copy of the sequence listing in an ASCII text file in accordance with Annex C of the PCT Administrative Instructions, paragraph 40.  When a sequence listing is filed 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 page count, i.e., excess page fees may be required for the PDF file.

C.   Tables Related to a Sequence Listing

Tables related to a sequence listing must be an integral part of the description of the international application, and must not be included in the sequence listing part.  Such table will be taken into account when calculating the application page count, and excess page fees may be required.  When applicant submits tables related to a sequence listing in an 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 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).

D.   File Size and Quantity Limits

One hundred (100) megabytes is the size limit for sequence listing text files.  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 international application filing in a single EFS-Web submission.  Applicant may use EFS-Web to file part of the international application and to obtain the international application number and the confirmation number, and then file the remainder of the 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 international application.  However, applicant is not permitted to file part of the international application electronically via EFS-Web, and then file the remainder of the international application on paper to secure a filing date of all parts of the international application.

In the situation where applicant needs to file a sequence listing that is over one hundred megabytes, applicant may use EFS-Web to file the international application without the sequence listing to obtain the international application number and the confirmation number, and then file the sequence listing on compact discs on the same day by using Express Mail 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 international application.  However, USPS Express Mail and hand-carried submissions may not contain PDF files and must fully comply with the guidelines for filing a sequence listing on electronic media as set forth in MPEP § 1823.02, except that only one copy of the sequence listing is required, and applicant need not make any reference to AI Part 8 or AI § 801.  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").

E.   Fee Determination for International Applications Containing a Sequence Listing

The calculation of the international filing fee for an 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 page count of the international application.  A sequence listing filed in a PDF file will be included in the page count of the international application.  Therefore, the page count for an EFS-Web filed application containing both a PDF and text format sequence listing will be determined by the number of pages of the PDF sequence listing.

F.   Follow-on Submissions for 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 international application if filed on the same date on which the 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 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 13  ter.  Such sequence listing will not form part of the international application as set forth in PCT Rule 13  ter.1(e).

G.   Policy of Annex F of the PCT Administrative Instructions

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