113.04 Manner of Service
Service of papers filed in inter partes cases may be made in any of the ways specified in 37 CFR § 2.119(b). They are: (1) by hand delivering a copy of the submission to the person being served; (2) by leaving a copy of the submission at the usual place of business of the person being served, with someone in the person’s employment; (3) when the person being served has no usual place of business, by leaving a copy of the submission at the person’s address, with a member of the person’s family over 14 years of age and of discretion; (4) transmission by the Priority Mail Express® Post Office to Addressee" service of the United States Postal Service or by first-class mail, which may also be certified or registered; (5) transmission by overnight courier; and (6) electronic transmission when mutually agreed upon by the parties. In addition, whenever it is satisfactorily shown to the Director that none of the specified modes of service is practicable, service may be made by notice published in the Official Gazette of the USPTO. [ Note 1.]
When service is made by mail, pursuant to 37 CFR § 2.119(b)(4), the Board considers the mailing date of the paper to be the date when the paper is deposited with the United States Postal Service, i.e., the date when custody of the paper passes to the Postal Service. As provided in 37 CFR § 2.119(a), the Board ordinarily accepts, as prima facie proof of the date of mailing, the statement signed by the filing party, or by its attorney or other authorized representative, as to the date and manner of service. However, where the prima facie proof of the certificate of service is rebutted by other evidence, and the paper would be timely served if mailed on the date specified in the certificate of service, but untimely served if not mailed until the date indicated by the rebutting evidence, the Board may request that the person who signed the certificate of service submit an affidavit specifying the date when the paper was actually deposited with the United States Postal Service.
When agreed upon by the parties, service may be made by electronic means, such as email or fax. [ Note 2.] The best practice is to reduce such an agreement to writing, although the agreement should not be filed with the Board unless necessary to resolve a motion.
A party located outside the United States generally cannot serve an adverse party by the manners of service specified in 37 CFR §§ 2.119(b)(1)-(3)37 CFR § 2.119(b)(1) - 37 CFR § 2.119(b)(3). Moreover, a foreign party may not substitute its national postal service, or omit reference to the nation of the postal service employed, as a means of using 37 CFR § 2.119(b)(4) manner of service; 37 CFR § 2.119(b)(4) requires transmission by the United States Postal Service.
As a practical matter, parties located outside the United States must meet the service requirement through 37 CFR § 2.119(b)(5) - 37 CFR § 2.119(b)(6). Parties located outside the United States are strongly encouraged to list an email address with the Board for the duration of the inter partes proceeding, and to seek written agreement from the adverse party to service by electronic transmission.
NOTES:
1. 37 CFR § 2.119(b). See also Musical Directions v. McHugh, 104 USPQ2d 1157, 1160 (TTAB 2012) (absent agreement for service by email or fax, all papers must be served in compliance with 37 CFR § 2.119).