1709    Petitions to the Director Under 37 C.F.R. §2.147 to Accept Paper Submissions

An applicant or registrant may file a petition to the Director to request acceptance of a paper submission in three situations as follows:

See 37 C.F.R. §2.147.

Submission of a petition does not extend the filing deadline for any response or submission. TMEP §§1705.06, 1712.02(b)(iii).

The requirement for representation of a non-U.S. domiciled petitioner applies to petitions under §2.147. See TMEP §1705.07(a) for more information.

1709.01    TEAS Unavailable on the Date of Filing Deadline

If TEAS is unavailable, users should check the "USPTO Systems Status and Availability" page on the USPTO website to see if the USPTO has issued a notice regarding an outage. See TMEP §301.01(b) for more information regarding TEAS availability.

1709.01(a)    TEAS Unavailable Due to Widespread or Lengthy USPTO System Outage

In the event TEAS is unavailable to the general public due to a widespread or lengthy USPTO system outage on the date of the deadline for a submission, the requirement to file electronically will be waived, and filings via facsimile will be accepted without a petition or petition fee. The USPTO will provide notice of such outage on the "USPTO Systems Status and Availability" page.

Documents submitted via facsimile when not expressly authorized by posted USPTO notice or at the written direction of USPTO staff will not be accorded a date of receipt. See 37 C.F.R §2.195; see also TMEP §301.01(b) for more information regarding TEAS availability.

Submission requirements during widespread or lengthy USPTO system outage. The submission must include the Petitions Office fax cover sheet; a statement verified with a declaration under 37 C.F.R. §2.20  explaining the problem encountered when attempting to file via TEAS; proof that TEAS was unavailable (e.g., a screenshot of the TEAS error message); a copy of the document the filer is attempting to submit; and a completed credit card payment form for any required fees. The Petitions Office fax cover sheet, credit card payment form, and TEAS form previews in PDF and Word format are available for downloading on the "Submitting documents to the USPTO when unable to file electronically" webpage.

If the document that is due requires a fee, the filer may submit a credit card authorization form or authorization to charge a deposit account. The amount of the fee required in such circumstances is the same as the fee for submitting the document via TEAS, not the fee for filing documents on paper.

1709.01(b)    TEAS Unavailable Due to Limited or Short-term USPTO System Outage or User’s System Outage

If TEAS is unavailable due to either a limited or short-term USPTO system outage or a user’s system outage on the date of the deadline for submission of a document, a petition to the Director to accept a paper submission may be submitted. 37 C.F.R. §2.147(a). This petition option is not available to filers who attempt to use TEAS during a regularly scheduled system maintenance event, when it is not the day of a deadline, or when the failure to file the relevant submission through TEAS was because of user error.

Because filers would not have access to the TEAS petition form in such circumstances, the USPTO will provide a "Petition to Director" form along with other TEAS form previews in PDF and Word format on the "Submitting documents to the USPTO when unable to file electronically" webpage that may be downloaded and submitted with the other required documents.

Petition requirements. To be timely, the petition must be filed on the date of the deadline with a certificate of mailing attesting to that date. 37 C.F.R. §§2.147(a)(1)(ii), 2.197(a)(2). The filer also must submit proof with the petition that TEAS was unavailable on the date of the deadline. 37 C.F.R. §2.147(a)(2)(ii). In addition to proof of TEAS unavailability (such as screenshots) and the paper submission to be filed, the petition must include a statement of the facts relevant to the petition supported by a declaration under 37 C.F.R. §2.20  or 28 U.S.C. §1746, the fee for the petition, and any other required fees. 37 C.F.R. §2.147(a)(2).

1709.02    Certain Paper Submissions with Statutory Deadlines

A petition to the Director to accept a paper submission may be filed for specific submissions with statutory deadlines if: (1) the submission was timely submitted on paper and not processed by the USPTO because it was not submitted electronically; and (2) the applicant, registrant, or petitioner is unable to timely resubmit the document electronically by the statutory deadline. 37 C.F.R. §2.147(b).

This petition option applies to the following documents with a statutory deadline under the Trademark Act:

  • An initial application seeking a priority filing date with a deadline under Section 44(d)(1) (15 U.S.C. §1126(d)(1) );
  • A statement of use submitted within the last six months of the period specified in Section 1(d)(2) (15 U.S.C. §1051(d)(2) );
  • An affidavit or declaration of continued use or excusable nonuse with a grace period deadline under Section 8(a)(3) (15 U.S.C. §1058(a)(3) ) or Section 71(a)(3) (15 U.S.C. §1141k(a)(3) );
  • A request for renewal of a registration with a deadline under Section 9(a) (15 U.S.C. §1059(a) );
  • An application for transformation of an extension of protection into a U.S. application with a deadline under Section 70(c) (15 U.S.C. §1141j(c) ); or
  • A petition to cancel a registration under Section 14 (15 U.S.C. §1064 ) on the fifth year anniversary of the date of the registration of the mark.

37 C.F.R. §2.147(b)(1)-(b)(1)(vi).

For these documents, following notification from the USPTO that a paper submission was not processed for failure to electronically file, when there is no time remaining in the statutory period, the filer may submit a petition to the Director electronically after the deadline requesting acceptance of the previously filed paper submission. If the petition is granted, the paper submission will be considered timely filed.

Filers should keep copies of any papers submitted to the USPTO, including confirmation of payment submissions, to submit as proof with the petition. If a check or money order was included with the original submission, it would have been returned with the USPTO notice indicating that the submission would not be processed and would be destroyed in accordance with the relevant record-retention schedule.

Petition requirements. The petition must be filed within two months of the issue date of the notice that the paper submission was not processed by the USPTO. 37 C.F.R. §2.147(b)(2). The petition must include a statement of the facts relevant to the petition supported by a declaration under 37 C.F.R. §2.20  or 28 U.S.C. §1746, a copy of the relevant paper submission with proof that it was timely filed, proof that the required fee was submitted with the original paper submission, and the relevant paper fees for both the submission and the petition. 37 C.F.R. §2.147(b)(2)(i)-(v).

1709.03    Extraordinary Situation

If a filer does not meet the petition requirements of 37 C.F.R. §2.147(a) or (b)  for requesting acceptance of a paper submission, the filer may petition the Director based on an extraordinary situation. See 37 C.F.R. §2.147(c)  (citing 37 C.F.R. §2.146(a)(5) ). In such a case, the filer would request a waiver of 37 C.F.R. §2.21(a)  or §2.23(a), and include a statement and/or evidence establishing the extraordinary situation that prevented the filer from filing using TEAS. See 37 C.F.R. §2.146(c).

The USPTO decides these petitions on a case-by-case basis; assessing what would qualify as an extraordinary situation depends on the unique facts and evidence presented. The inability to file electronically due to USPTO regularly scheduled system maintenance generally does not qualify for relief as an extraordinary situation under 37 C.F.R. §2.146(c). See TMEP §1708 for more information.

Petition requirements. The petition must include the paper submission, a statement of the facts relevant to the petition supported by a declaration under 37 C.F.R. §2.20  or 28 U.S.C. §1746, the fee for a petition submitted on paper, and any other required fee for the relevant document submitted on paper. See 37 C.F.R. §2.146(c).