305.02(f)   Correspondence Mailed Pursuant to 37 C.F.R. §2.197 but Not Received by Office

If correspondence filed with a certificate of mailing is not received by (or is lost within) the USPTO, the USPTO will consider the correspondence to be timely based on the date of deposit stated in the certificate of mailing if the party who filed the correspondence:

  • (1) informs the USPTO in writing of the previous mailing of the correspondence within two months after becoming aware that the USPTO has no evidence of receipt of the correspondence;
  • (2) supplies an additional copy of the previously mailed correspondence, including a copy of the signed and dated certificate of mailing (see In re Sasson Licensing Corp., 35 USPQ2d 1510 (Comm’r Pats. 1995)); and
  • (3) includes a statement attesting to the previous timely mailing on the basis of the signer’s personal knowledge.  This statement does not have to be verified.

37 C.F.R. §2.197(b).

 The two-month time period for notifying the USPTO begins to run from the date that the party who filed the correspondence became aware that the USPTO has no evidence of receipt of the correspondence, unless the USPTO has issued a written action, such as a notice of abandonment or cancellation. In such situations, the issue date of the USPTO written action will serve as the starting point for measuring timeliness. See 37 C.F.R. §§2.146(d) and 2.197(b)(1). See also TMEP §1705.04.

The required evidence should be sent to the area in the USPTO where the misplaced or lost document was intended to be filed, e.g., the law office, ITU/Divisional Unit, or Post Registration Section.

If all three criteria listed above cannot be met, the only remedy available is a petition to revive under 37 C.F.R. §2.66 (if appropriate) or a petition under 37 C.F.R. §2.146, which must include a petition fee, and a statement that attests on a personal knowledge basis to the previous timely mailing, along with any additional evidence.  See 37 C.F.R. §§2.66 and 2.146; TMEP §§1702 through 1708 regarding petitions under 37 C.F.R. §2.146 and TMEP §§1714 et seq. regarding petitions to revive.

The above procedure does not apply to the filing of an application for registration of a mark, or to the Madrid-related documents listed in 37 C.F.R. §2.197(a)(2) and TMEP §305.02(a).

The USPTO may require additional evidence relating to the mailing or transmission of correspondence.  37 C.F.R. §2.197(c).  See, e.g., In re Klein, 6 USPQ2d 1547 (Comm’r Pats. 1987), aff’d sub nom. Klein v. Peterson, 696 F. Supp. 695, 8 USPQ2d 1434 (D.D.C. 1988), aff’d, 866 F.2d 412, 9 USPQ2d 1558 (Fed. Cir. 1989), cert. denied, 490 U.S. 1091 (1989).