Chapter 500 - Receipt and Handling of Mail and Papers


501    Filing Papers With the U.S. Patent and Trademark Office [R-11.2013]

37 C.F.R. 1.1   Addresses for non-trademark correspondence with the United States Patent and Trademark Office.

  • (a) In general. Except as provided in paragraphs (a)(3)(i), (a)(3)(ii) and (d)(1) of this section, all correspondence intended for the United States Patent and Trademark Office must be addressed to either “Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450” or to specific areas within the Office as set out in paragraphs (a)(1), and (a)(3)(iii) of this section. When appropriate, correspondence should also be marked for the attention of a particular office or individual.
    • (1) Patent correspondence.
      • (i) In general.All correspondence concerning patent matters processed by organizations reporting to the Commissioner for Patents should be addressed to: Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
      • (ii) Patent Trial and Appeal Board.See § 41.10 or § 42.6 of this title. Notices of appeal, appeal briefs, reply briefs, requests for oral hearing, as well as all other correspondence in an application or a patent involved in an appeal to the Board for which an address is not otherwise specified, should be addressed as set out in paragraph (a)(1)(i) of this section.
    • (2) [Reserved]
    • (3) Office of General Counsel correspondence.
      • (i) Litigation and service. Correspondence relating to pending litigation or otherwise within the scope of part 104 of this title shall be addressed as provided in § 104.2.
      • (ii) Disciplinary proceedings. Correspondence to counsel for the Director of the Office of Enrollment and Discipline relating to disciplinary proceedings pending before a Hearing Officer or the Director shall be mailed to: Mail Stop 8, Office of the Solicitor, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
      • (iii) Solicitor, in general. Correspondence to the Office of the Solicitor not otherwise provided for shall be addressed to: Mail Stop 8, Office of the Solicitor, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
      • (iv) General Counsel. Correspondence to the Office of the General Counsel not otherwise provided for, including correspondence to the General Counsel relating to disciplinary proceedings, shall be addressed to: General Counsel, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
      • (v) Improper correspondence. Correspondence improperly addressed to a Post Office Box specified in paragraphs (a)(3)(i) and (a)(3)(ii) of this section will not be filed elsewhere in the United States Patent and Trademark Office, and may be returned.
    • (4) Office of Public Records correspondence.
      • (i) Assignments. All patent-related documents submitted by mail to be recorded by Assignment Services Division, except for documents filed together with a new application, should be addressed to: Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450. See § 3.27.
      • (ii) Documents. All requests for certified or uncertified copies of patent documents should be addressed to: Mail Stop Document Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
    • (5) Office of Enrollment and Discipline correspondence. All correspondence directed to the Office of Enrollment and Discipline concerning enrollment, registration, and investigation matters should be addressed to Mail Stop OED, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
  • (b) Patent Cooperation Treaty. Letters and other communications relating to international applications during the international stage and prior to the assignment of a national serial number should be additionally marked “Mail Stop PCT.”
  • (c) For reexamination proceedings.
    • (1) Requests for ex parte reexamination (original request papers only) should be additionally marked “Mail Stop Ex parteReexam.”
    • (2) Requests for inter partes reexamination (original request papers) and all subsequent inter partes reexamination correspondence filed in the Office, other than correspondence to the Office of the General Counsel pursuant to § 1.1(a)(3) and § 1.302(c), should be additionally marked “Mail Stop Inter partes Reexam.”
  • (d) Maintenance fee correspondence.
    • (1) Payments. Payments of maintenance fees in patents not submitted electronically should be mailed to: United States Patent and Trademark Office, P.O. Box 371611, Pittsburgh, Pennsylvania 15250-1611.
    • (2) Other correspondence. Correspondence related to maintenance fees other than payments of maintenance fees in patents is not to be mailed to P.O. Box 371611, Pittsburgh, Pennsylvania 15250-1611, but must be mailed to: Mail Stop M Correspondence, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
  • (e) Patent term extension. All applications for extension of patent term under 35 U.S.C. 156 and any communications relating thereto intended for the United States Patent and Trademark Office should be additionally marked “Mail Stop Hatch-Waxman PTE.” When appropriate, the communication should also be marked to the attention of a particular individual, as where a decision has been rendered.
  • (f) [Reserved]

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

  • (a) Correspondence with the Patent and Trademark Office comprises:
    • (1) Correspondence relating to services and facilities of the Office, such as general inquiries, requests for publications supplied by the Office, orders for printed copies of patents, orders for copies of records, transmission of assignments for recording, and the like, and
    • (2) Correspondence in and relating to a particular application or other proceeding in the Office. See particularly the rules relating to the filing, processing, or other proceedings of national applications in subpart B, §§ 1.31 to 1.378; of international applications in subpart C, §§ 1.401 to 1.499; of ex parte reexaminations of patents in subpart D, §§1.501 to 1.570; of extension of patent term in subpart F, §§ 1.710 to 1.785; of inter partes reexaminations of patents in subpart H, §§ 1.902 to 1.997; and of the Patent Trial and Appeal Board in part 41 and part 42 of this title.
  • (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.
  • (c) Since different matters may be considered by different branches or sections of the United States Patent and Trademark Office, each distinct subject, inquiry or order must be contained in a separate paper to avoid confusion and delay in answering papers dealing with different subjects.
  • (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) 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) The following correspondence must be submitted with an original handwritten signature personally signed in permanent dark ink or its equivalent:
    • (1) Correspondence requiring a person's signature and relating to registration to practice before the Patent and Trademark Office in patent cases, enrollment and disciplinary investigations, or disciplinary proceedings; and
    • (2) Payments by credit cards where the payment is not being made via the Office's electronic filing systems.
  • (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.
  • (g) An applicant who has not made of record a registered attorney or agent may be required to state whether assistance was received in the preparation or prosecution of the patent application, for which any compensation or consideration was given or charged, and if so, to disclose the name or names of the person or persons providing such assistance. Assistance includes the preparation for the applicant of the specification and amendments or other papers to be filed in the Patent and Trademark Office, as well as other assistance in such matters, but does not include merely making drawings by draftsmen or stenographic services in typing papers.
  • (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.

I.   GENERAL MAILING ADDRESSES

The U.S. Patent and Trademark Office (Office) has three separate general mailing addresses. The addresses are as follows:

A.   For Patent Applications and Patent-Related Papers

Correspondence in patent-related matters under the direction of the Commissioner for Patents should be addressed to:

Commissioner for Patents

P.O. Box 1450

Alexandria, Virginia 22313-1450

Such correspondence includes: patent applications, replies to notices of informality, requests for extension of time, notices of appeal to the Patent Trial and Appeal Board (the Board), briefs in support of an appeal to the Board, requests for oral hearing before the Board, applications for extensions of term of patent, requests for reexamination, statutory disclaimers, certificates of correction, petitions to the Commissioner for Patents, submission of information disclosure statements, petitions to revive abandoned patent applications, and other correspondence related to patent applications and patents which is processed by organizations reporting to the Commissioner for Patents.

Certain patent-related correspondence requires immediate Office attention. Examples are:

  • (A) Petitions for express abandonment to avoid publication under 37 CFR 1.138(c);
  • (B) Petitions to withdraw an application from issue under 37 CFR 1.313(c);
  • (C) Request for expedited examination of a design application (rocket docket); and
  • (D) Papers required by the Office of Data Management to be hand-carried or faxed to the Office of Data Management.

    Applicants are encouraged to transmit these types of correspondence by facsimile transmission (see MPEP § 502.01) or, where permitted (items B and D only), hand-carry them to the appropriate area of the Office for processing. (see MPEP § 502)

B.   For Trademark Applications and Trademark-Related Papers

Correspondence in trademark-related matters under the direction of the Commissioner for Trademarks or the Trademark Trial and Appeal Board should be addressed to:

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA 22313-1451

Such correspondence includes all trademark applications and other trademark-related mail, except for trademark documents sent to the Assignment Division for recordation, correspondence for the Office’s Madrid Processing Unit, requests for certified and uncertified copies of trademark documents, and filings submitted electronically. See 37 CFR 2.190.

Correspondence to be delivered by the United States Postal Service to the Office’s Madrid Processing Unit must be mailed to:

Commissioner for Trademarks

Madrid Processing Unit

600 Dulany St., MDE 7B87

Alexandria, VA 22314-5793

C.   For Other Correspondence

Patent and trademark documents sent to the Assignment Division for recordation (Mail Stop Assignment Recordation Services), requests for certified or uncertified copies of patent and trademark documents (Mail Stop Document Services), and for correspondence for which an address is not otherwise specified in 37 CFR 1.1 or 2.190, should be addressed to:

Director of the United States Patent and Trademark Office

P.O. Box 1450

Alexandria, VA 22313-1450

II.   SEPARATE MAILING ADDRESSES FOR CERTAIN CORRESPONDENCE

The Office has separate mailing addresses for certain correspondence:

  • (A) Certain court-related correspondence (e.g., summons and complaint) being delivered to the Office via the U.S. Postal Service (USPS) must be addressed:

General Counsel

United States Patent and Trademark Office

P.O. Box 1450

Alexandria, VA 22313-1450

  • (B) Correspondence directed to the Office of Enrollment and Discipline (OED) Director relating to disciplinary proceedings pending before a Hearing Officer or the Director must be addressed:

Mail Stop 8

Office of the Solicitor

United States Patent and Trademark Office

P.O. Box 1450

Alexandria, Virginia 22313-1450

  • (C) Maintenance fee payments not electronically submitted over the Internet and correspondence related to maintenance fees may be addressed to:

Director of the United States Patent and Trademark Office

Attn: Maintenance Fees

2051 Jamieson Ave., Ste. 300

Alexandria, VA 22314

  • (D) A payment to replenish a deposit account may be addressed to:

Director of the United States Patent and Trademark Office

Attn: Deposit Accounts

2051 Jamieson Ave., Ste. 300

Alexandria, VA 22314

Persons filing correspondence with the Office should check the rules of practice, the Official Gazette, or the USPTO Web site(http://www.uspto.gov) to determine the appropriate mailing address for such correspondence.

III.   HAND-DELIVERY OF PAPERS

Patent-related papers may be hand-carried to the Office. If the correspondence is hand-carried to the Office, with limited exceptions (see subsection I.A., above) it must be delivered to:

Customer Service Window

Randolph Building

401 Dulany Street

Alexandria, VA 22314

See MPEP § 502.

Trademark-related papers may be filed at the “walk-up” window located in the Trademark Assistance Center, Madison East, Concourse Level, Room C55, 600 Dulany Street, Alexandria, VA 22314.

As provided in 37 CFR 1.4(c), matters that are to be considered by different branches or sections of the USPTO must be contained in separate papers. The following form paragraph may be used to notify the applicant of this requirement when the applicant has filed a single paper containing distinct subjects, inquiries, or orders.

¶ 5.01.01    Separate Paper Required

The [1] submitted [2] should have been submitted as a separate paper as required by 37 CFR 1.4(c). The paper has been entered. However, all future correspondence must comply with 37 CFR 1.4.

Examiner Note:

1. In bracket 1, indicate the item required to be separately submitted, such as an affidavit, petition, or other appropriate document.

2. If the applicant is a pro se inventor, include a copy of the rule.

Those who correspond with the USPTO are strongly encouraged not to include correspondence which will have to be directed to different areas (e.g., Patents and Trademarks) of the Office in a single envelope. Including multiple papers in a single envelope increases the likelihood that one or more of the papers will be delayed before reaching the appropriate area. Placing the papers in separately addressed envelopes will reduce the number of actions being performed by the USPTO unnecessarily or inappropriately.

Pursuant to 37 CFR 1.1, non-trademark correspondence intended for the USPTO must be mailed to P.O. Box 1450, Alexandria, VA 22313-1450, except as otherwise provided. Except for certain mail addressed incorrectly to the Office of the General Counsel (see 37 CFR 1.1(a)(3)(v)), there will be no penalty for addressing a document to the wrong area within the Office, as long as one of the approved addresses is used. Use of the specific addresses listed within 37 CFR 1.1 is strongly encouraged because it will facilitate the process both for the Office and the filer. Accordingly, a new application incorrectly addressed to the Director will be treated the same as if the application was addressed to the specific Commissioner.

All mailed communications are received by the Incoming-Mail Section of the Office of Patent Application Processing (OPAP), which opens and processes all official mail.

Special mail stops have been established to allow the forwarding of particular types of correspondence to appropriate areas of the Office as quickly as possible. A list of these mail stops is published weekly in the Official Gazette. Only the specified type of document for a particular mail stop should be placed in an envelope addressed to that mail stop.

If any documents other than the specified type identified for each department are addressed to that department, they will be significantly delayed in reaching the appropriate area for which they were intended.

 

502    Depositing Correspondence [R-11.2013]

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 § 1.8or 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 first listed inventor, 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) Correspondence relating to a trial proceeding before the Patent Trial and Appeal Board (part 42 of this title) are governed by § 42.6 of this title.
  • (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 paragraph (a)(3) of this section. 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, the trial number of a trial proceeding before the Board, 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), (I), 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 1.851.1521.1651.173, 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 and trials before the Patent Trial and Appeal Board, 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 using the United States Postal Service (see MPEP § 501), or they may be hand-carried to the Customer Service Window. However, applicants should consider filing new patent applications (as well as patent-related correspondence) via the Office electronic filing system (EFS-Web) whenever permitted. See the EFS-Web Guidance and Resources page of the USPTO Web site (http://www.uspto.gov/patents/process/file/ efs/guidance/index.jsp) for additional information. See also MPEP § 502.05. New applications cannot be transmitted by facsimile and are not entitled to the benefit of a Certificate of Transmission under 37 CFR 1.8. A request for a continued prosecution application (CPA) filed under 37 CFR 1.53(d) (available only for design applications) may be transmitted to the Office by facsimile (37 CFR 1.6(d)(3)); however, it is not entitled to the benefit of a Certificate of Transmission (see 37 CFR 1.8(a)(2)(i)(A)). See 37 CFR 1.6(d) and MPEP § 502.01.

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 indicating the date of receipt. If there is a minor obvious error in the identification of the application such that the Office readily recognizes both the existence of the error and the appropriate correction, the error can be corrected by the Office. 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 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 order of submission 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.   “PRIORITY MAIL EXPRESS” (FORMERLY “EXPRESS MAIL”) SERVICE

Effective July 28, 2013, the United States Postal Service (USPS) changed the name of “Express Mail” to “Priority Mail Express.” All characteristics of the “Priority Mail Express” service are the same as those of the former “Express Mail” service (although the mailing labels differ). References to “Express Mail” or “Express Mail from the USPS in accordance with 37 CFR 1.10 throughout this Manual should be construed as applicable to the “Priority Mail Express” service of the USPS on or after July 28, 2013.

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

The Office does not have resources for picking up any mail. Therefore mail should NOT be sent using the “Hold for Pickup” service option (whereby the mail is retained at the destination postal facility for retrieval by the addressee). Mail sent using the “Hold for pickup” service will not reach the Office.

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

II.   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 filed as a Web-based ePetition (see www.uspto.gov/patents/process/file/efs/guidance/ epetition-info.jsp), 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.

III.    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. 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 questions 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) on the 3rd floor of Randolph Square, 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 and Trial 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 Patent Trial and Appeal Board (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. Correspondence related to contested cases may only be hand-carried as authorized by the Board.
  • (G) Secrecy Order - Applications subject to a secrecy order pursuant to 35 U.S.C. 181, or that 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 3rdfloor of Randolph Square, 2800 South Randolph Street, Arlington, VA 22206, during business hours.
  •  

502.01   Correspondence Transmitted by Facsimile [R-11.2013]

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

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  • (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 paragraph (a)(3) of this section. 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, the trial number of a trial proceeding before the Board, 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 (I), § 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 1.851.1521.1651.173, 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 and trials before the Patent Trial and Appeal Board, 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 with37 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

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 may be submitted by facsimile to (571) 273-3201.
    • -- Responses to Decisions on Petition may be submitted by facsimile to (571) 273-0459.
  • 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 filed during the national stage, subsequent to entry are handled in the same manner as a U.S. to national application.
    • -- PCT Help Desk contact information:
      • Telephone number: (571) 272-4300.
      • Facsimile number: (571) 273-0419.
  • (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 may be submitted to facsimile number (571) 273-2885.

    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) Electronic Business Center (EBC).

    Requests for Customer Number Data Change (PTO/SB/124), and Requests for a Customer Number (PTO/SB/125) may be submitted via facsimile to (571) 273-0177.

    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

  • (4) Assignment Branch.

    Assignments or other documents affecting title may be submitted via facsimile to (571) 273-0140.

    Note: 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. 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.

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

  • (5) 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

  • (6) Patent Trial and Appeal Board.

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

  • (7) Office of the General Counsel.

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

  • (8) Office of the Solicitor.

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

  • (9) 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).

  • (10) 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."

  • (11) Office of the Enrollment and Discipline

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

  • (12) 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

  • (13) 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

As set forth in 37 CFR 1.6(d), facsimile transmissions are not permitted and, if submitted, will not be accorded a date of receipt in the following situations:

  • (A) A document that is required by statute to be certified (see 37 CFR 1.4(f));
  • (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) An international application for patent;
  • (D) 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);
  • (E) A third-party submission under 37 CFR 1.290.
  • (F) Correspondence relating to registration to practice before the Patent and Trademark Office in patent cases, enrollment and disciplinary investigations, or disciplinary proceedings.
  • (G) Color drawings submitted under 37 CFR 1.811.83-1.851.1521.1651.173, or 1.437;
  • (H) A request for reexamination under 37 CFR 1.510 or 37 CFR 1.913.
  • (I) 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; and
  • (J) Correspondence to be filed in a contested case or trial before the Patent Trial and Appeal Board, except as the Board may expressly authorize.

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-11.2013]

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

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  • (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) 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) The following correspondence must be submitted with an original handwritten signature personally signed in permanent dark ink or its equivalent:
    • (1) Correspondence requiring a person's signature and relating to registration to practice before the Patent and Trademark Office in patent cases, enrollment and disciplinary investigations, or disciplinary proceedings; and
    • (2) Payments by credit cards where the payment is not being made via the Office's electronic filing systems.
  • (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, except where an original handwritten signature is required pursuant to 37 CFR 1.4(e). 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, and 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 e.g., oaths and affidavits 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. The S-signature cannot be used for correspondence that requires a person’s signature and relates to (1) registration to practice before the USPTO, (2) payments by credit card where a paper including the signature is submitted to the USPTO by means other than the Office’s electronic filing systems, and (3) filing a document that is required by statute to be certified. See 37 CFR 1.4(e). A legible electronic image of a handwritten signature inserted, or copied and pasted by the person signing the correspondence into the correspondence may be considered to be an acceptable signature under 1.4(d)(2) provided the signature is surrounded by a first single forward slash mark before the electronic image and a second single forward slash mark after the electronic image and includes the signers name below or adjacent to the signature as required.

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. For an application filed on or after September 16, 2012, when a practitioner is signing as an applicant as defined in 37 CFR 1.42 (e.g., as an inventor), 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 applicant. A patent practitioner signing on behalf of a juristic entity applicant (see 37 CFR 1.33(b)(3)) is signing as a patent practitioner and thus must provide his or her registration number. For applications filed before September 16, 2012, when a practitioner is signing as an applicant as defined in pre-AIA 37 CFR 1.41 or as an assignee a registration number is not required and should not be supplied for the reasons noted above.

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.   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. 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).

IV.   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 nonprovisional application, such change must be by way of a request under 37 CFR 1.48(f). See MPEP §§ 602.01(c)(2) and 602.08(b).

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.

V.   CERTIFICATION OF DOCUMENTS PROVIDED FOR BY STATUTE

When a statute requires or permits the Director to require a document to be certified (such as the requirement in 37 CFR 1.55 for 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. Note that for applications filed under 35 U.S.C. 111(a), foreign priority documents retrieved by the Office from a foreign intellectual property office that participates with the Office in a priority document exchange (PDX) agreement can serve as the certified copy provided the requirements of 37 CFR 1.55(h) are met. The requirement for an original certification does not apply to certifications such as required under 37 CFR 1.8 since these certifications are not provided for by statute.

 

502.03   Communications via Internet Electronic Mail (e-mail)  [R-08.2012]

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-08.2012]

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-08.2012]

[Editor Note: The current version of the Legal Framework for EFS-Web is posted on the USPTO Web site athttp://www.uspto.gov/patents/process /file/efs/guidance /New_legal_framework.jsp.] The information in this MPEP section is based on the following Federal Register notices with minor editorial changes: Legal Framework for Electronic Filing System - Web (EFS-Web), 74 FR 55200 (October 27, 2009); Revised Procedure for Public Key Infrastructure Certificates, 74 FR 66955 (December 17, 2009); and Electronic Filing System – Web (EFS-Web) Contingency Option, 75 FR 27986 (May 19, 2010).]

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:

  • (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) Nonprovisonal design patent applications under 35 U.S.C. 171 (including reissue design patent applications);
  • (4) International applications under PCT Article 11, designating the United States, for filing in the United States Receiving Office;
  • (5) National stage applications under 35 U.S.C. 371;
  • (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) Petition to make special under accelerated examination program (must be filed with a nonprovisional utility patent application under 37 CFR 1.111(a));
  • (9) PDF-based e-petitions using EFS-Web fillable PDF forms available from http://www.uspto.gov/patents/process /file/efs/guidance/epetition-info.jsp ; and
  • (10) Web-based e-petitions listed at http://www.uspto.gov/patents/process /file/efs/guidance/epetition-info.jsp. Web-based e-petitions can be filled out completely online through Web-based screens. They are auto-processed and granted immediately upon submission if the e-petitition meets all of the requirements.

  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 with37 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/. SeeMPEP § 2510 for information regarding the proper methods for submitting maintenance 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 by37 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 form PTO/SB/130 - EFS-Web, 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 form PTO/SB66 - EFS-Web, for the automatic processing of the e-petition (for more information seehttp://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 under35 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 1.8do 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 1.10on 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 under37 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 officesmay 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 with37 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 per37 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 1.2151.2171.219, and 1.221(a) via EFS-Web.  When filing pre-grant publication requests via EFS-Web, the form-fillable application data sheet (PTO/AIA/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 of37 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 under37 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 with37 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 13ter.  Such sequence listing will not form part of the international application as set forth in PCT Rule 13ter.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 athttp://www.wipo.int/pct/en/texts/.

 

503    Application Number and Filing Receipt [R-11.2013]

37 C.F.R. 1.54   Parts of application to be filed together; filing receipt.

  • (a) It is desirable that all parts of the complete application be deposited in the Office together; otherwise, a letter must accompany each part, accurately and clearly connecting it with the other parts of the application. See § 1.53(f) and (g) with regard to completion of an application.
  • (b) Applicant will be informed of the application number and filing date by a filing receipt, unless the application is an application filed under § 1.53(d).

I.   APPLICATION NUMBER

Application numbers consisting of a series code and a serial number are assigned by the Office of Patent Application Processing (OPAP) immediately after mail has been opened. If an application is filed using the Office’s electronic filing system, EFS-Web provides an Acknowledgement Receipt that contains a time and date stamp, an application number and a confirmation number.

The following series codes are assigned to the applications identified below:

  • (A) 01/ - 14/ - for nonprovisional applications (utility, plant, and reissue),

    - The 01 series code was used from year 1925 to 1934,

    02 – 1935 to 1947,

    03 – 1948 to 1959,

    04 – 1960 to 1969,

    05 – 1970 to 1978,

    06 – 1979 to 1986,

    07 – 1987 to 1992,

    08 – 1993 to 1997,

    09 – 1998 to Nov. 2001,

    10 – Dec. 2001 to Nov. 2004,

    11 – Dec. 2004 to Dec. 2007,

    12 – Dec. 2007 to Mar. 2011,

    13 – Dec. 2010 to Aug. 2013; and

    14 – Aug. 2013 to present;

  • (B) 29/ - for design applications;
  • (C) 60/ and 61/ - for provisional applications;
  • (D) 90/ - for ex parte reexamination proceedings;
  • (E) 95/ - for inter partes reexamination proceedings; and
  • (F) 96/ - for supplemental examination proceedings and resulting ex parte reexamination proceedings.

If a self-addressed postcard is submitted with a patent application, that postcard will be provided with both the receipt date and application number prior to returning it to the addressee. The application number identified on such a postcard receipt is merely the preliminary assignment of an application number to the application, and should not be relied upon (e.g., with respect to foreign filings) as necessarily representing the application number assigned to such application. See 37 CFR 1.53(b).

The identifying data on the postcard should include:

  • (A) inventor’s name(s);
  • (B) title of invention;
  • (C) number of pages of specification, claims (for nonprovisional applications), and sheets of drawing;
  • (D) whether the inventor's oath or declaration is included;
  • (E) a list of any additional forms included with the application (e.g., application transmittal form, application data sheet, fee transmittal form, and/or provisional application cover sheet); and
  • (F) amount and manner of paying the fee.

A return postcard should be attached to each patent application for which a receipt is desired.

It is important that the return postcard itemize all of the components of the application. If the postcard does not itemize each of the components of the application, it will not serve as evidence that any component which was not itemized was received by the United States Patent and Trademark Office (USPTO). See subsection III, below, for additional information pertaining to return postcards. It should be recognized that the identification of an application by application number does not necessarily signify that the USPTO has accepted the application as complete (37 CFR 1.53(a)).

For applications filed via EFS-Web, after the Office receives a successful submission, an Electronic Acknowledgement Receipt is sent to the person filing the application. The acknowledgment receipt contains the "receipt date," the time the correspondence was received at the Office (not the local time at the submitter's location), and a full listing of the correspondence submitted. The Electronic Acknowledgement Receipt is the electronic equivalent of a postcard receipt. See MPEP § 502.05.

II.   FILING RECEIPTS

OPAP mails a filing receipt to the attorney or agent, if any, otherwise to the applicant, at the correspondence address of record for each application filed which meets the minimum requirements to receive a filing date. The filing receipt includes the application number, filing date, a confirmation number, a suggested class in the U.S. Patent Classification System (see MPEP § 902.01), and the number of an art unit where the application is likely to be examined. The filing receipt also includes other information about the application as applicable, such as continuing data, national stage data, foreign priority data, foreign filing license data, entity status information, and the date the Office anticipates publishing the application under 35 U.S.C. 122(b). The filing receipt represents the official assignment by the USPTO of a specific application number and confirmation number to a particular application. See 37 CFR 1.54(b). The application number officially assigned to an application on the filing receipt may differ from the application number identified on a postcard receipt submitted with such application, and, as between inconsistent filing receipts and postcard receipts, the application number on the filing receipt is controlling.

The confirmation number is a four-digit number that is assigned to each newly filed application. The confirmation number, in combination with the application number, is used to verify the accuracy of the application number placed on correspondence filed with the Office to avoid misidentification of an application due to a transposition error in the application number. The confirmation number may be found in the upper left-hand corner of the filing receipt. The confirmation number will also be available through the Patent Application Information Retrieval (PAIR) system. The Office eventually plans to include the application’s confirmation number (in addition to the application number) on all Office actions and notices concerning the application. The confirmation number must be used when submitting an electronic filing system (EFS-Web) copy of the application for publication to verify that the application number correctly identifies the application for which a copy is being submitted for publication. The Office also recommends that applicants include the application’s confirmation number (in addition to the application number) on all correspondence submitted to the Office concerning the application.

A continued prosecution application (CPA) filed under 37 CFR 1.53(d) (design applications only) will be assigned the application number of the prior application for identification purposes.

A nonprovisional application, other than a CPA filed under 37 CFR 1.53(d), is entitled to a filing date as of the date of receipt of the specification, including claims, and any required drawing. See 37 CFR 1.53(b). The filing receipt will be mailed at the time a determination is made that the application meets the minimum requirements to receive a filing date. The inventor's oath or declaration, basic filing fee, and search fee and examination fee as set forth in 37 CFR 1.16, may be filed later than the remaining application papers, but if so, they must be accompanied by the required surcharge (if appropriate, see MPEP § 506). See 37 CFR 1.53(f). If the inventor's oath or declaration, basic filing fee, and/or any required search fee and examination fee with the appropriate surcharge are not timely filed, the application will be abandoned. For original (non-reissue) applications filed on or after September 16, 2012, the filing of the inventor’s oath or declaration may be postponed until the date the issue fee is paid if an application data sheet in accordance with 37 CFR 1.76 is timely filed providing the required inventor information. See 35 U.S.C. 115(f) and 37 CFR 1.53(f). The surcharge required for filing the inventor’s oath or declaration after the filing date of the application, however, must be paid on filing of the application or in response to a Notice to File Missing Parts. See MPEP § 506.

A provisional application is entitled to a filing date as of the date of receipt of the specification and any required drawing(s). See 37 CFR 1.53(c). A cover sheet (37 CFR 1.51(c)(1)), which may be an application data sheet (37 CFR 1.76) or a cover letter, identifying the application as a provisional application is required to prevent the provisional application from being treated as a nonprovisional application. 37 CFR 1.53(c)(1).

Each application which meets the minimum requirements to receive a filing date is given a filing date. It is important, when referring to application files, to identify them by their filing dates and confirmation numbers as well as by application numbers.

Attorney docket numbers must be limited to a maximum of 25 characters to prevent truncation. The Patent Application Locating and Monitoring (PALM) system data base allows a maximum of 25 characters for the attorney docket numbers. Spaces, slashes, and hyphens will no longer be included in the entered docket number on the official filing receipt. In an application where CASE or NAVY-CASE appears before the first character in the docket number, only the characters after CASE or NAVY-CASE will be entered on the official filing receipt.

The application papers are processed by OPAP and added to the Office’s Image File Wrapper (IFW) system.

Applications which are entitled to a filing date, whether filed by regular mail, by “Express Mail” (Priority Mail Express) under 37 CFR 1.10, by hand-delivery, by the Office’s Electronic Filing System (EFS-Web), or otherwise, will not be returned to applicant even if requested. See 37 CFR 1.59. Accordingly, applicants must be careful not to file applications which are not intended to be filed, e.g., duplicates of applications already filed. Note that 37 CFR 1.26(a) provides that a change of purpose after the payment of a fee, as when a party desires to withdraw the filing of a patent application for which the fee was paid, will not entitle the party to a refund of such fee. See MPEP § 607.02.

III.   RETURN POSTCARD

If a submitter desires a receipt for any item (e.g., paper or fee) filed in the USPTO by means other than the Office's electronic filing system, it may be obtained by enclosing with the paper a self-addressed postcard specifically identifying the item. See subsection I, above, and MPEP § 502.05for Electronic Acknowledgment Receipts. To ensure the receipt of return receipt postcards, users must either: (A) purchase already stamped postcards from the United States Postal Service (USPS) or affix postage stamps to their postcards; or (B) if a postage meter is used, ensure that the meter postmark does not show the date. Any return receipt postcard containing a dated meter postmark may not be delivered by the USPS to the address provided on the postcard. Users are reminded that they are solely responsible for placing the proper postage on self-addressed postcards that are submitted to the USPTO for the purpose of obtaining a receipt for correspondence being filed in the USPTO. Users should check with the USPS regarding postage and what size cards are acceptable to the USPS. Any return receipt postcard that does not contain sufficient postage or is not acceptable may not be delivered by the USPS to the address provided on the postcard, and, if returned to the USPTO, may be discarded.

The USPTO will stamp the receipt date on the postcard and place it in the outgoing mail. A postcard receipt which itemizes and properly identifies the items which are being filed serves as prima facie evidence of receipt in the USPTO of all the items listed thereon on the date stamped thereon by the USPTO.

The identifying data on the postcard should be so complete as to clearly identify the item for which a receipt is requested. For example, the postcard should identify the inventor’s name, application number (if known), confirmation number (if known), filing date, interference number, title of the invention, etc. The postcard should also identify the type of paper being filed, e.g., new application, affidavit, amendment, notice of appeal, appeal brief, drawings, fees, motions, supplemental oath or declaration, petition, etc., and the number of pages being submitted. If a new application is being filed, all parts of the application being submitted should be separately listed on the postcard, e.g., the number of pages of specification (including written description, claims and abstract), number of claims, number of sheets of drawings, number of pages of oath/declaration, number of pages of cover sheet (provisional application).

The postcard receipt will not serve as prima facie evidence of receipt of any item which is not adequately itemized on the postcard. For example, merely listing on the postcard “a complete application” or “patent application” will not serve as a proper receipt for each of the required components of an application (e.g., specification (including claims), drawings (if necessary), oath or declaration and the application filing fee) or missing portions (e.g., pages, sheets of drawings) of an application if one of the components or portion of a component is found to be missing by the USPTO. Each separate component should be specifically and properly itemized on the postcard. Furthermore, merely incorporating by reference in the postcard receipt, the items listed in a transmittal letter will not serve as prima facie evidence of receipt of those items.

The person receiving the item(s) in the USPTO will check the listing on the postcard against the item(s) being filed to be sure they are properly identified and that all the items listed on the postcard are presently being submitted to the USPTO. If any of the items listed on the postcard are not being submitted to the USPTO, those items will be crossed off and the postcard initialed by the person receiving the items.

Upon return of a postcard receipt from the USPTO, the postcard receipt should be promptly reviewed by the person who filed the items to ensure that every item specifically denoted on the postcard was received by the USPTO. If the postcard receipt has been annotated to indicate that a particular item denoted on the postcard was not received by the USPTO, the postcard receipt will not serve as prima facie evidence of receipt of that item in the USPTO.

 

504    Assignment of Application for Examination [R-08.2012]

The Office of Patent Application Processing assigns a nonprovisional application to the art unit to which it appears to belong. Provisional applications will not be examined.

 

505    Date of Receipt Stamp [R-11.2013]

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.

*****

The United States Patent and Trademark Office (Office) stamps papers and fees received through the mail (other than those submitted by Express Mail in accordance with 37 CFR 1.10), by facsimile, or via EFS-Web with the date of their receipt in the Office. Papers that are hand-carried to the Office will be date stamped at the Customer Service Window. See MPEP § 502. The stamp is referred to as the “Office Date” stamp.

When the last day for taking any action or paying any fee in the Office falls on a Saturday, Sunday, or a Federal holiday within the District of Columbia, the action or the fee is considered timely if the action is taken or the fee is paid on the next succeeding business day.

New patent applications filed in accordance with 37 CFR 1.10 will be stamped by the Office with the date of deposit as “Express Mail” with the United States Postal Service. For example, if a new patent application is deposited in “Express Mail” in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date. 37 CFR 1.6(a)(2).

Similarly, correspondence submitted via the USPTO electronic filing system (EFS-Web) will be accorded a receipt date on the date the correspondence is received at the correspondence address for the Office set forth in 37 CFR 1.1 (i.e., local time in Alexandria, VA), without regard to whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. See MPEP §§ 502.05 and 512.

If an application as originally filed includes the necessary components for a filing date (see 37 CFR 1.53(b) - (d) and MPEP § 506), the “Office Date” stamp establishes the “filing date.”

 

506    Completeness of Original Application [R-11.2013]

37 C.F.R. 1.53   Application number, filing date, and completion of application.

  • (a) Application number. Any papers received in the Patent and Trademark Office which purport to be an application for a patent will be assigned an application number for identification purposes.
  • (b) Application filing requirements - Nonprovisional application. The filing date of an application for patent filed under this section, except for a provisional application under paragraph (c) of this section or a continued prosecution application under paragraph (d) of this section, is the date on which a specification as prescribed by 35 U.S.C. 112 containing a description pursuant to § 1.71 and at least one claim pursuant to § 1.75, and any drawing required by § 1.81(a) are filed in the Patent and Trademark Office. No new matter may be introduced into an application after its filing date. A continuing application, which may be a continuation, divisional, or continuation-in-part application, may be filed under the conditions specified in 35 U.S.C. 120121 or 365(c) and § 1.78(c) and (d)
    • (1) A continuation or divisional application that names as inventors the same or fewer than all of the inventors named in the prior application may be filed under this paragraph or paragraph (d) of this section.
    • (2) A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) or a continuation or divisional application naming an inventor not named in the prior application must be filed under this paragraph.
  • (c) Application filing requirements - Provisional application. The filing date of a provisional application is the date on which a specification as prescribed by 35 U.S.C. 112(a), and any drawing required by § 1.81(a) are filed in the Patent and Trademark Office. No amendment, other than to make the provisional application comply with the patent statute and all applicable regulations, may be made to the provisional application after the filing date of the provisional application.
    • (1) A provisional application must also include the cover sheet required by § 1.51(c)(1), which may be an application data sheet (§ 1.76), or a cover letter identifying the application as a provisional application. Otherwise, the application will be treated as an application filed under paragraph (b) of this section.
    • (2) An application for patent filed under paragraph (b) of this section may be converted to a provisional application and be accorded the original filing date of the application filed under paragraph (b) of this section. The grant of such a request for conversion will not entitle applicant to a refund of the fees that were properly paid in the application filed under paragraph (b) of this section. Such a request for conversion must be accompanied by the processing fee set forth in § 1.17(q) and be filed prior to the earliest of:
      • (i) Abandonment of the application filed under paragraph (b) of this section;
      • (ii) Payment of the issue fee on the application filed under paragraph (b) of this section; or
      • (iii) Expiration of twelve months after the filing date of the application filed under paragraph (b) of this section.
      • (iv) The filing of a request for a statutory invention registration under § 1.293 in the application filed under paragraph (b) of this section.
    • (3) A provisional application filed under paragraph (c) of this section may be converted to a nonprovisional application filed under paragraph (b) of this section and accorded the original filing date of the provisional application. The conversion of a provisional application to a nonprovisional application will not result in either the refund of any fee properly paid in the provisional application or the application of any such fee to the filing fee, or any other fee, for the nonprovisional application. Conversion of a provisional application to a nonprovisional application under this paragraph will result in the term of any patent to issue from the application being measured from at least the filing date of the provisional application for which conversion is requested. Thus, applicants should consider avoiding this adverse patent term impact by filing a nonprovisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e) (rather than converting the provisional application into a nonprovisional application pursuant to this paragraph). A request to convert a provisional application to a nonprovisional application must be accompanied by the fee set forth in § 1.17(i) and an amendment including at least one claim as prescribed by 35 U.S.C. 112(b), unless the provisional application under paragraph (c) of this section otherwise contains at least one claim as prescribed by 35 U.S.C. 112(b). The nonprovisional application resulting from conversion of a provisional application must also include the filing fee, search fee, and examination fee for a nonprovisional application, the inventor’s oath or declaration, and the surcharge required by § 1.16(f) if either the basic filing fee for a nonprovisional application or the inventor's oath or declaration was not present on the filing date accorded the resulting nonprovisional application (i.e., the filing date of the original provisional application). A request to convert a provisional application to a nonprovisional application must also be filed prior to the earliest of:
      • (i) andonment of the provisional application filed under paragraph (c) of this section; or
      • (ii) Expiration of twelve months after the filing date of the provisional application filed under paragraph (c) of this section.
    • (4) A provisional application is not entitled to the right of priority under 35 U.S.C. 119 or 365(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120121 or 365(c) or § 1.78 of any other application. No claim for priority under 35 U.S.C. 119(e) or § 1.78(a) may be made in a design application based on a provisional application. The requirements of §§ 1.821 through 1.825 regarding application disclosures containing nucleotide and/or amino acid sequences are not mandatory for provisional applications.
  • (d) Application filing requirements - Continued prosecution (nonprovisional) application.
    • (1) A continuation or divisional application (but not a continuation-in-part) of a prior nonprovisional application may be filed as a continued prosecution application under this paragraph, provided that:
      • (i) The application is for a design patent;
      • (ii) The prior nonprovisional application is a design application that is complete as defined by § 1.51(b); and
      • (iii) The application under this paragraph is filed before the earliest of:
        • (A) Payment of the issue fee on the prior application, unless a petition under § 1.313(c) is granted in the prior application;
        • (B) Abandonment of the prior application; or
        • (C) Termination of proceedings on the prior application.
    • (2) The filing date of a continued prosecution application is the date on which a request on a separate paper for an application under this paragraph is filed. An application filed under this paragraph:
      • (i) Must identify the prior application;
      • (ii) Discloses and claims only subject matter disclosed in the prior application;
      • (iii) Names as inventors the same inventors named in the prior application on the date the application under this paragraph was filed, except as provided in paragraph (d)(4) of this section;
      • (iv) Includes the request for an application under this paragraph, will utilize the file jacket and contents of the prior application, including the specification, drawings and the inventor's oath or declaration from the prior application, to constitute the new application, and will be assigned the application number of the prior application for identification purposes; and
      • (v) Is a request to expressly abandon the prior application as of the filing date of the request for an application under this paragraph.
    • (3) The filing fee, search fee, and examination fee for a continued prosecution application filed under this paragraph are the basic filing fee as set forth in § 1.16(b), the search fee as set forth in § 1.16(l) , and the examination fee as set forth in § 1.16(p).
    • (4) An application filed under this paragraph may be filed by fewer than all the inventors named in the prior application, provided that the request for an application under this paragraph when filed is accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application. No person may be named as an inventor in an application filed under this paragraph who was not named as an inventor in the prior application on the date the application under this paragraph was filed, except by way of correction of inventorship under § 1.48.
    • (5) Any new change must be made in the form of an amendment to the prior application as it existed prior to the filing of an application under this paragraph. No amendment in an application under this paragraph (a continued prosecution application) may introduce new matter or matter that would have been new matter in the prior application. Any new specification filed with the request for an application under this paragraph will not be considered part of the original application papers, but will be treated as a substitute specification in accordance with § 1.125.
    • (6) The filing of a continued prosecution application under this paragraph will be construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public, who is entitled under the provisions of § 1.14 to access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of this paragraph, may be given similar access to, copies of, or similar information concerning the other application or applications in the file jacket.
    • (7) A request for an application under this paragraph is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. No amendment in an application under this paragraph may delete this specific reference to any prior application.
    • (8) In addition to identifying the application number of the prior application, applicant should furnish in the request for an application under this paragraph the following information relating to the prior application to the best of his or her ability:
      • (i) Title of invention;
      • (ii) Name of applicant(s); and
      • (iii) Correspondence address.
    • (9) See § 1.103(b) for requesting a limited suspension of action in an application filed under this paragraph.
  • (e) Failure to meet filing date requirements.
    • (1) If an application deposited under paragraph (b), (c), or (d) of this section does not meet the requirements of such paragraph to be entitled to a filing date, applicant will be so notified, if a correspondence address has been provided, and given a period of time within which to correct the filing error. If, however, a request for an application under paragraph (d) of this section does not meet the requirements of that paragraph because the application in which the request was filed is not a design application, and if the application in which the request was filed was itself filed on or after June 8, 1995, the request for an application under paragraph (d) of this section will be treated as a request for continued examination under § 1.114.
    • (2) Any request for review of a notification pursuant to paragraph (e)(1) of this section, or a notification that the original application papers lack a portion of the specification or drawing(s), must be by way of a petition pursuant to this paragraph accompanied by the fee set forth in § 1.17(f). In the absence of a timely (§ 1.181(f)) petition pursuant to this paragraph, the filing date of an application in which the applicant was notified of a filing error pursuant to paragraph (e)(1) of this section will be the date the filing error is corrected.
    • (3) If an applicant is notified of a filing error pursuant to paragraph (e)(1) of this section, but fails to correct the filing error within the given time period or otherwise timely (§ 1.181(f)) take action pursuant to this paragraph, proceedings in the application will be considered terminated. Where proceedings in an application are terminated pursuant to this paragraph, the application may be disposed of, and any filing fees, less the handling fee set forth in § 1.21(n), will be refunded.
  • (f) Completion of application subsequent to filing—Nonprovisional (including continued prosecution or reissue) application.
    • (1) If an application which has been accorded a filing date pursuant to paragraph (b) or (d) of this section does not include the basic filing fee, the search fee, or the examination fee, or if an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include the inventor's oath or declaration (§ 1.63, § 1.64, §1.162 or § 1.175), and the applicant has provided a correspondence address (§ 1.33(a)), the applicant will be notified and given a period of time within which to pay the basic filing fee, search fee, and examination fee, and pay the surcharge if required by § 1.16(f) to avoid abandonment.
    • (2) If an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include the basic filing fee, the search fee, the examination fee, or the inventor's oath or declaration, and the applicant has not provided a correspondence address (§ 1.33(a)), the applicant has two months from the filing date of the application within which to pay the basic filing fee, search fee, and examination fee, and pay the surcharge required by § 1.16(f) to avoid abandonment.
    • (3) The inventor's oath or declaration in an application under § 1.53(b) must also be filed within the period specified in paragraph (f)(1) or (f)(2) of this section, except that the filing of the inventor's oath or declaration may be postponed until the application is otherwise in condition for allowance under the conditions specified in paragraphs (f)(3)(i) and (f)(3)(ii) of this section.
      • (i) The application must be an original (non-reissue) application that contains an application data sheet in accordance with § 1.76 identifying:
        • (A) Each inventor by his or her legal name;
        • (B) A mailing address where the inventor customarily receives mail, and residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor.
      • (ii) The applicant must file an oath or declaration in compliance with § 1.63, or a substitute statement in compliance with § 1.64, executed by or with respect to each actual inventor no later than the expiration of the time period set in the "Notice of Allowability" to avoid abandonment, when the applicant is notified in a "Notice of Allowability" that an application is otherwise in condition for allowance. The time period set in a "Notice of Allowability" is not extendable. See § 1.136(c). The Office may dispense with the notice provided for in paragraph (f)(1) of this section if an oath or declaration under § 1.63, or a substitute statement under § 1.64, executed by or with respect to each actual inventor has been filed before the application is in condition for allowance.
    • (4) If the excess claims fees required by § 1.16(h) and (i) and multiple dependent claim fee required by § 1.16(j) are not paid on filing or on later presentation of the claims for which the excess claims or multiple dependent claim fees are due, the fees required by § 1.16(h)(i) and (j) must be paid or the claims canceled by amendment prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency. If the application size fee required by § 1.16(s) (if any) is not paid on filing or on later presentation of the amendment necessitating a fee or additional fee under § 1.16(s), the fee required by § 1.16(s) must be paid prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment.
    • (5) This paragraph applies to continuation or divisional applications under paragraphs (b) or (d) of this section and to continuation-in-part applications under paragraph (b) of this section. See § 1.63(d) concerning the submission of a copy of the inventor's oath or declaration from the prior application for a continuing application under paragraph (b) of this section.
    • (6) If applicant does not pay the basic filing fee during the pendency of the application, the Office may dispose of the application.
  • (g) Completion of application subsequent to filing—Provisional application.
    • (1) If a provisional application which has been accorded a filing date pursuant to paragraph (c) of this section does not include the cover sheet required by § 1.51(c)(1) or the basic filing fee (§  1.16(d)), and applicant has provided a correspondence address (§ 1.33(a)), applicant will be notified and given a period of time within which to pay the basic filing fee, file a cover sheet (§ 1.51(c)(1)), and pay the surcharge required by § 1.16(g) to avoid abandonment.
    • (2) IIf a provisional application which has been accorded a filing date pursuant to paragraph (c) of this section does not include the cover sheet required by § 1.51(c)(1) or the basic filing fee (§  1.16(d)), and applicant has not provided a correspondence address (§ 1.33(a)), applicant has two months from the filing date of the application within which to pay the basic filing fee, file a cover sheet (§ 1.51(c)(1)), and pay the surcharge required by § 1.16(g) to avoid abandonment.
    • (3) If the application size fee required by § 1.16(s) (if any) is not paid on filing, the fee required by § 1.16(s) must be paid prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment.
    • (4) If applicant does not pay the basic filing fee during the pendency of the application, the Office may dispose of the application.
  • (h) Subsequent treatment of application - Nonprovisional (including continued prosecution) application. An application for a patent filed under paragraphs (b) or (d) of this section will not be placed on the files for examination until all its required parts, complying with the rules relating thereto, are received, except that the inventor's oath or declaration may be filed when the application is otherwise in condition for allowance pursuant to paragraph (f)(3) of this section andminor informalities may be waived subject to subsequent correction whenever required.
  • (i) Subsequent treatment of application - Provisional application. A provisional application for a patent filed under paragraph (c) of this section will not be placed on the files for examination and will become abandoned no later than twelve months after its filing date pursuant to 35 U.S.C. 111(b)(1).

I.   INCOMPLETE NONPROVISIONAL APPLICATIONS FILED UNDER 37 CFR 1.53(b)

If the nonprovisional application papers filed under 37 CFR 1.53(b) do not include at least a specification containing a description and at least one claim and a drawing, if necessary under 35 U.S.C. 113 (first sentence), or if the submitted application papers are too informal to be given a filing date, the case is held in the Office of Patent Application Processing (OPAP) as an incomplete application and the applicant is informed of the shortcomings of the papers. No filing date is granted until the incompleteness is corrected.

A Notice of Incomplete Application is prepared and mailed by OPAP when nonprovisional application papers filed under 37 CFR 1.53(b) are deemed incomplete under 35 U.S.C. 111(a).

Such incompleteness may consist of the omission of any one of the following parts of an application. The component parts of a nonprovisional application filed under 37 CFR 1.53(b) necessary to obtain a filing date are:

A specification as prescribed by 35 U.S.C. 112 and 37 CFR 1.71.

A claim as prescribed by 35 U.S.C. 112 and 37 CFR 1.75.

A drawing, if necessary under 35 U.S.C. 113 (first sentence) and 37 CFR 1.81(a).

See 37 CFR 1.53(b).

Even though an application purports to include the component parts necessary to obtain a filing date, the application will still be held to be incomplete and a filing date will be refused if the component parts fail to satisfy the requirements set forth above.

For example, if the documents purporting to be a specification are so obviously informal and incoherent that they clearly do not constitute a specification as required by 35 U.S.C. 112 and 37 CFR 1.71, the application is not acceptable for examination and it will not be accorded a filing date until corrections are made. The filing date of the application will be the date the corrections are made.

Filing dates are accorded to nonprovisional applications filed under 37 CFR 1.53(b) submitted without the names of all the inventors, the required fees (basic filing fee, and search and examination fees (for applications filed on or after December 8, 2004)) and/or the inventor's oath or declaration. In such cases, a notice is mailed by OPAP requiring the appropriate fees, and for applications filed before September 16, 2012, the oath or declaration (which must include the names of all the inventors), accompanied by a surcharge (37 CFR 1.16(f)).

For applications filed on or after September 16, 2012 (except reissue applications), applicant may postpone filing the inventor’s oath or declaration until the application is in condition for allowance if an application data sheet (ADS) in compliance with 37 CFR 1.76 is filed identifying: (1) each inventor by his or her legal name; and (2) for each inventor, a mailing address where the inventor customarily receives mails, and residence, if the inventor lives at a location which is different from where the inventor customarily receives mail. See 37 CFR 1.53(f)(3). Applicant must file the inventor’s oath or declaration no later than the date on which the issue fee is paid. See 35 U.S.C. 115(f).

The Office has modified the missing parts practice for applications (other than reissue applications) filed on or after September 16, 2012. If an application under 37 CFR 1.53(b) filed on or after September 16, 2012, contains the applicable filing fees (basic filing fee, search fee, examination fee, any applicable excess claims fee, and any applicable application size fee), the surcharge required by 37 CFR 1.16(f), and a signed ADS providing the required inventor information, but does not include the inventor’s oath or declaration, the Office will not issue a Notice to File Missing Parts requiring the applicant to file the inventor’s oath or declaration. Instead, the Office may send an informational notice notifying the applicant that the inventor’s oath or declaration has not been received or that there are deficiencies in an inventor’s oath or declaration that was filed. If an application under 37 CFR 1.53(b) filed on or after September 16, 2012, that does not contain the inventor’s oath or declaration also does not contain the applicable filing fees, or the surcharge required by 37 CFR 1.16(f), or a signed ADS providing the inventor information, the Office will issue a Notice to File Missing Parts giving the applicant a time period (usually two months) within which to file the missing filing fees, the surcharge required by 37 CFR 1.16(f), and a signed ADS providing the inventor information (or the inventor’s oath or declaration) to avoid abandonment. If an application is in condition for allowance and the required inventor’s oath or declaration (an oath or declaration under 37 CFR 1.63, or a substitute statement under 37 CFR 1.64, executed by or with respect to each actual inventor) has not yet been filed, the Office will issue a notice with the Notice of Allowability requiring the inventor’s oath or declaration to be filed no later than the date on which the issue fee is paid.

For applications which have been accorded a filing date under 37 CFR 1.53(b), if any of the basic filing fee, the search fee, or the examination fee are paid on a date later than the filing date of the application, the surcharge under 37 CFR 1.16(f) is required. In addition to the basic filing fee, the search fee, and the examination fee, 37 CFR 1.16(s) sets forth the application size fee for any application (including any reissue applications) filed under 35 U.S.C. 111, the specification and drawings of which, excluding a sequence listing or computer program listing filed in an electronic medium (see 37 CFR 1.52(f)), exceed 100 sheets of paper. The application size fee applies for each additional 50 sheets or fraction thereof over 100 sheets of paper. Any sequence listing in an electronic medium in compliance with 37 CFR 1.52(e) and 37 CFR 1.821(c) or (e), and any computer program listing filed in an electronic medium 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). The application size fee required by 37 CFR 1.16(s) must be paid prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment (37 CFR 1.53(f)(3)). See MPEP § 607 for additional information regarding fees. In addition to the basic filing fee, the search fee, the examination fee, and the application size fee required under 37 CFR 1.16, the prescribed filing fee (37 CFR 1.51(b)(4)) may include additional fees for filing more than 3 independent claims (37 CFR 1.16(h)), for filing a total of more than 20 claims (37 CFR 1.16(i)), or for filing a multiple dependent claim (37 CFR 1.16(j)). In those cases where the basic filing fee, the search fee, the examination fee, and the application size fee are paid, but additional fees are required, under 37 CFR 1.16, a notice is mailed by OPAP or the Technology Center (TC), requiring that the balance of the prescribed fee be paid.

A nonprovisional application filed under 37 CFR 1.53(b) may be filed with a preliminary amendment which is limited to the cancellation of claims. Any preliminary amendment, regardless of when it is filed, must be in compliance with 37 CFR 1.121, e.g., it must include a complete listing of all of the claims. Therefore, the Office strongly recommends that applicants file their applications with a specification containing only the desired set of claims, rather than filing the application with a preliminary amendment canceling claims. If such a preliminary amendment canceling claims is filed, it will diminish the number of claims to be considered for calculation of the filing fee. Any other changes to the application should be the subject of a separate amendment which may be entered after the filing fee has been calculated and the filing date granted. If a preliminary amendment which cancels claims does not accompany the application at the time the application is filed, and there is a fee deficiency, the notification of insufficient fee will inform the inventor, attorney, or agent of the possibility of correcting the insufficient payment by either (1) paying the additional required fee amount, or (2) filing an amendment which cancels claims so that the remaining claims are covered by the fee submitted upon filing. However, no refund will be made once the fee for claims is properly paid, even though claims are later canceled, unless a petition for express abandonment under 37 CFR 1.138(d) is granted. See MPEP § 711.01.

A filing date is normally granted before a review of the subject matter claimed in a nonprovisional application. If a nonprovisional application filed under 37 CFR 1.53(b) appears sufficient, the application is forwarded to the examiner for consideration during the regular course of examination.

II.   INCOMPLETE PROVISIONAL APPLICATIONS

If the provisional application papers do not include at least a specification containing a description and a drawing, if necessary under 35 U.S.C. 113 (first sentence) or if the submitted application papers are too informal to be given a filing date, the case is held in OPAP as an incomplete application and the applicant is informed of the shortcomings of the papers. No filing date is granted until the incompleteness is corrected.

Such incompleteness may consist of the omission of any one of the following parts of an application. The component parts of a provisional application necessary to obtain a filing date are:

A specification as prescribed by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, and 37 CFR 1.71.

A drawing, if necessary under 35 U.S.C. 113 (first sentence) and 37 CFR 1.81(a).

Even though an application purports to include the component parts necessary to obtain a filing date, the application will still be held to be incomplete and a filing date will be refused if the component parts fail to satisfy the requirements set forth above. For example, if the documents purporting to be a specification are so obviously informal and incoherent that they would clearly not constitute a specification as required by35 U.S.C. 112(a) or 35 U.S.C. 112, first paragraph, and 37 CFR 1.71, the application would not be acceptable and would not be accorded a filing date until corrections are made. The filing date of the application would be the date the corrections were made. A provisional application will not be examined. However, a provisional application which does not include a cover sheet (37 CFR 1.51(c)(1)), which may be an application data sheet (37 CFR 1.76) or a cover letter, identifying the application as a provisional application, will be treated as a nonprovisional application filed under 37 CFR 1.53(b). See 37 CFR 1.53(c)(1).

NOTE: No amendment, other than to make the provisional application comply with the patent statute and all applicable regulations, may be made to the provisional application after the filing date of the provisional application. See 37 CFR 1.53(c).

III.   INFORMAL APPLICATIONS

An application is informal if it is typed on both sides of the paper, or is not permanent, legible, or reproducible. If such informalities are timely corrected, the application is given the filing date on which the original informal papers were filed.

OPAP accords a filing date, as of the date indicated by the “Office Date” stamp (see MPEP § 505), to application papers which include a specification containing a description and at least one claim (nonprovisional applications filed under 37 CFR 1.53(b)), and a drawing, if necessary under 35 U.S.C. 113 (first sentence) but are informal because they do not comply with the rules or notices. In such applications, OPAP will send a Notice (e.g., Notice to File Corrected Application Papers) requiring correction of the informality. Failure to correct the informality within the specified time results in abandonment of the application.

 

506.01   [Reserved]

 

506.02   Review of Refusal To Accord Filing Date [R-11.2013]

The filing date of the provisional or nonprovisional application is the date of receipt in the Office of the application which includes a specification containing description pursuant to 37 CFR 1.71 and at least one claim (required for nonprovisional applications only) pursuant to 37 CFR 1.75, and any drawings required by 37 CFR 1.81(a). See 37 CFR 1.53(b) and (c).

If any of these items are missing, applicant will be notified to file them and the filing date will be the date of receipt of the missing part(s). If the oath or declaration for a nonprovisional application was executed and filed with the application, a supplemental oath or declaration by the inventor is required in some circumstances if the nonprovisional application was filed before September 16, 2012, e.g., where the missing item is the claim, specification, or a drawing. The supplemental declaration must identify the missing item and indicate, as appropriate, that it accurately claims, describes, or illustrates applicant’s invention. See MPEP § 601.01(d)-(g) where the application is filed without all the pages of the specification, without at least one claim (nonprovisional application), without drawings, or without all the figures of the drawings. For applications filed on or after September 16, 2012, the Office will not require a person who has executed an oath or declaration in compliance with 35 U.S.C. 115 and 37 CFR 1.63 or 1.162 for an application to provide an additional inventor’s oath or declaration for the application (37 CFR 1.67(c)). An error in or failure to identify inventorship does not raise a filing date issue.

Any review of the refusal to grant a filing date as of the date of deposit of the application would be by way of petition, accompanied by the petition fee (37 CFR 1.17(f)). Petitioner should provide any arguments that he or she has that the items noted were not missing or that a filing date should be assigned in the absence of such items if they are believed to be unnecessary. If petitioner alleges that no defect exists, a request for refund of the petition fee may be included in the petition.

For applications properly filed under 37 CFR 1.10, the filing date is the date that the application was deposited as “Express Mail” (Priority Mail Express) in the U.S. Postal Service. For example, if a new patent application is deposited in “Express Mail” in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date. 37 CFR 1.6(a)(2). If the proper procedures were not followed, the application will receive a filing date as of the date it was received in the Office. Any review of these matters would be by way of petition, accompanied by the petition fee (37 CFR 1.17(f)), providing whatever arguments and evidence petitioner has that the application is entitled to a filing date as of the date it was deposited as “Express Mail” (Priority Mail Express). See MPEP § 513.

Petitions relating to the filing date accorded to patent applications under 37 CFR 1.53 are decided in the Office of the Deputy Commissioner for Patent Examination Policy (See MPEP § 1002.02(b)).

Any petition under this section should be marked to the attention of the Office of Petitions.

 

507    Drawing Review in the Office of Patent Application Processing [R-11.2013]

The Office of Patent Application Processing (OPAP) performs an initial review of drawings in new utility and plant patent applications to determine whether the drawings can be effectively scanned for publication purposes. Design applications are not published, and drawings filed in design patent applications are not reviewed by OPAP for publication purposes. The standard of review employed by OPAP is such that most drawings, including those that have been indicated by applicant to be "informal drawings," will be acceptable.

OPAP inspects the drawings to see if they can be effectively scanned and adequately reproduced. If the drawings are not acceptable, OPAP will object to the drawings and notify applicant that a timely submission of acceptable drawings (e.g., drawings which can be scanned) is required.

Under the OPAP review process, OPAP may object to and require corrected drawings within a set time period, if the drawings:

  • (A) have a line quality that is too light to be reproduced (weight of all lines and letters must be heavy enough to permit adequate reproduction) or text that is illegible (reference characters, sheet numbers, and view numbers must be plain and legible). See 37 CFR 1.84(l) and (p)(1);
  • (B) have missing lead lines. See 37 CFR 1.84(q). Lead lines are those lines between the reference characters and the details referred to;
  • (C) contain excessive text or text that is not in English (including, for example, a flow chart that was originally not in English that has been marked up to include the English text). See 37 CFR 1.84(o) and (p)(2) and 37 CFR 1.52(d)(1);
  • (D) do not have the appropriate margin or are not on the correct size paper. See 37 CFR 1.84(f) and (g). Each sheet must include a top margin of at least 2.5 cm. (1 inch), a left size margin of at least 2.5 cm. (1 inch), a right size margin of at least 1.5 cm. (5/8 inch), and a bottom margin of at least 1.0 cm. (3/8 inch). The size of the sheets on which drawings are made must be either 21.0 cm. by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8-1/2 by 11 inches);
  • (E) have more than one figure and each figure is not labeled “Fig.” With a consecutive Arabic numeral (1, 2, etc.) or an Arabic numeral and capital letter in the English alphabet (A, B, etc.). See 37 CFR 1.84(u)(1);
  • (F) include photographs of the claimed invention which are capable of illustration by other medium such as ink drawings, and which are illegible after scanning. See 37 CFR 1.84(b); and
  • (G) contain color drawings or color photographs, but not a petition to accept color drawings/photographs. Note that the requirement for a black and white photocopy of any color drawings/photographs has been eliminated.

If OPAP objects to the drawings and sends applicant a Notice requiring submission of corrected drawings within a set time period (usually two months), corrected drawings must be filed, in paper, to the mailing address set forth in the Notice, along with any other items required by OPAP, to avoid abandonment of the application. No fee will be necessary for filing corrected drawings which are required by OPAP. Otherwise, in most situations, patent application publications and patents will reflect the quality of the drawings that are included with a patent application on filing unless applicant voluntarily submits better quality drawings as set forth in MPEP § 1121.

 

508    Distribution [R-08.2012]

All applications filed on or after June 30, 2003, are electronically scanned and loaded into the Image File Wrapper (IFW) system. Once documents are loaded into the IFW system, examiners, technical support staff, and other Office personnel will perform further processing and examination using the IFW system.

For handling of models, exhibits, and specimen, see MPEP §§ 608.03 and 608.03(a).

 

508.01   [Reserved]

 

508.02   Papers Received After Patenting or Abandonment [R-08.2012]

After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender. If a paper has been scanned into the IFW, “return” of the paper will be accomplished by the Office closing it in IFW.

 

508.03   [Reserved]

 

508.04   Unlocatable Patent or Application Files [R-08.2012]

37 C.F.R. 1.251   Unlocatable file.

  • (a) In the event that the Office cannot locate the file of an application, patent, or other patent-related proceeding after a reasonable search, the Office will notify the applicant or patentee and set a time period within which the applicant or patentee must comply with the notice in accordance with one of paragraphs (a)(1), (a)(2), or (a)(3) of this section.
    • (1) Applicant or patentee may comply with a notice under this section by providing:
      • (i) A copy of the applicant’s or patentee’s record (if any) of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (except for U.S. patent documents);
      • (ii) A list of such correspondence; and
      • (iii) A statement that the copy is a complete and accurate copy of the applicant’s or patentee’s record of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (except for U.S. patent documents), and whether applicant or patentee is aware of any correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding that is not among applicant’s or patentee’s records.
    • (2) Applicant or patentee may comply with a notice under this section by:
      • (i) Producing the applicant’s or patentee’s record (if any) of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding for the Office to copy (except for U.S. patent documents); and
      • (ii) Providing a statement that the papers produced by applicant or patentee are applicant’s or patentee’s complete record of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (except for U.S. patent documents), and whether applicant or patentee is aware of any correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding that is not among applicant’s or patentee’s records.
    • (3) If applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding, applicant or patentee must comply with a notice under this section by providing a statement that applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding.
  • (b) With regard to a pending application, failure to comply with one of paragraphs (a)(1), (a)(2), or (a)(3) of this section within the time period set in the notice will result in abandonment of the application.

37 CFR 1.251 sets forth a procedure for the reconstruction of the file of a patent application, patent, or any other patent-related proceeding that cannot be located after a reasonable search. The phrase “an application” in 37 CFR 1.251 applies to any type of application (national or international), and regardless of the status (pending or abandoned) of the application.

37 CFR 1.251(a) provides that in the event the Office cannot locate the file of an application, patent, or any other patent-related proceeding after a reasonable search, the Office will notify the applicant or patentee and set a time period within which the applicant or patentee must comply with the notice. The applicant or patentee may comply with a notice under 37 CFR 1.251 by providing: (1) a copy of his or her record (if any) of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (except for U.S. patent documents); (2) a list of such correspondence; and (3) a statement that the copy is a complete and accurate copy of the applicant’s or patentee’s record of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (except for U.S. patent documents), and whether applicant or patentee is aware of any correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding that is not among applicant’s or patentee’s records (37 CFR 1.251(a)(1)). The applicant or patentee may also comply with a notice under 37 CFR 1.251 by: (1) producing his or her record (if any) of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding for the Office to copy (except for U.S. patent documents); and (2) providing a statement that the papers produced by applicant or patentee are applicant’s or patentee’s complete record of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (except for U.S. patent documents), and whether applicant or patentee is aware of any correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding that is not among applicant’s or patentee’s records (37 CFR 1.251(a)(2)). If applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding, the applicant or patentee must comply with a notice under 37 CFR 1.251 by providing a statement that applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (37 CFR 1.251(a)(3)).

According to 37 CFR 1.251(a), if the applicant or patentee possesses all or just some of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding, the applicant or patentee is to reply by providing a copy of (or producing) his or her record of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (37 CFR 1.251(a)(1) or (a)(2)). If applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding, the applicant or patentee is to reply with a statement to that effect (37 CFR 1.251(a)(3)).

If an applicant or patentee decides to produce his or her record of the correspondence between the Office and the applicant or patentee for the application, patent, or other proceeding for copying by the Office under 37 CFR 1.251(a)(2) (rather than provide a copy under 37 CFR 1.251(a)(1)), the record should be brought to the Customer Service Center in the Office of Patent Application Processing (OPAP).

The Office will set a time period of three months for reply in a notice under 37 CFR 1.251 in an application. The time period will be extendable under 37 CFR 1.136(a) (unless the notice indicates otherwise) by three months up to a maximum period for reply of six months in an application. See 35 U.S.C. 133. If, however, an applicant fails to reply to a notice under 37 CFR 1.251 within three months of its mailing date, any patent term adjustment under 35 U.S.C. 154(b) will be reduced by a period equal to the number of days (if any) beginning on the day after the date that is three months after the mailing date of the notice under 37 CFR 1.251 and ending on the date the reply to the notice under 37 CFR 1.251 was filed. See 35 U.S.C. 154(b)(2)(C)(ii) and 37 CFR 1.704(b). The Office will set a time period of six months for reply in a notice under 37 CFR 1.251in a patent. The time period will not be extendable under 37 CFR 1.136(a) in a patent because 35 U.S.C. 41(a)(8) only authorizes the Office to charge fees for extensions of time in proceedings involving an application.

37 CFR 1.251 generally applies only to situations in which the file of an application or patent (not just certain documents) is unlocatable. When a document is missing from an application, Office practice is to call the applicant’s representative and request submission (generally by facsimile) of a copy of the missing document. While the Office will generally treat missing documents in this relatively informal manner (rather than issuing a notice under 37 CFR 1.251), the Office may issue a notice under 37 CFR 1.251 to obtain a copy of a missing document if the Office’s informal attempts to obtain a copy of the document are unsuccessful. The notice under 37 CFR 1.251 will include a printout of the contents entries from the Office’s PALM system.

Any appendix or information disclosure statement submitted with an application is not contained in the Office’s database. Therefore, the applicant or patentee must also provide a copy of any appendix or information disclosure statement (except in the limited circumstance discussed below) submitted with the application. Since the Office can obtain copies of U.S. patent documents (U.S. patent application publications and patents) from its internal databases, the Office is not requiring applicants or patentees to provide copies of U.S. patent application publications and patents that are among the applicant’s or patentee’s record of the correspondence between the Office and the applicant or patentee for the application, patent, or other proceeding.

37 CFR 1.251(b) provides that with regard to a pending application, the failure to provide a reply to such a notice within the time period set in the notice will result in abandonment of the application. While abandonment (or expiration or lapse) of a patent is not an issue if a patentee fails to timely comply with a notice under 37 CFR 1.251, in such a situation the only certified copy of the patent file that the Office will be able to produce will be a copy of the patent and a copy of the application-as-filed (which may have an adverse impact during attempts to enforce the patent). In addition, if the patent is involved in a proceeding before the Office, the Office may take action under 37 CFR 41.128 or 37 CFR 11.18.

 

509    Payment of Fees [R-11.2013]

The latest fee schedule is available by contacting the USPTO at 1-800-PTO(786)-9199 or (571) 272-1000, or on the USPTO webpage at http://www.uspto.gov.

37 C.F.R. 1.22   Fees payable in advance.

  • (a) Patent fees and charges payable to the United States Patent and Trademark Office are required to be paid in advance; that is, at the time of requesting any action by the Office for which a fee or charge is payable with the exception that under § 1.53 applications for patent may be assigned a filing date without payment of the basic filing fee.
  • (b) All fees paid to the United States Patent and Trademark Office must be itemized in each individual application, patent, or other proceeding in such a manner that it is clear for which purpose the fees are paid. The Office may return fees that are not itemized as required by this paragraph. The provisions of § 1.5(a) do not apply to the resubmission of fees returned pursuant to this paragraph.

37 C.F.R. 1.23   Method of payment.

  • (a) All payments of money required for United States Patent and Trademark Office fees, including fees for the processing of international applications (§ 1.445), shall be made in U.S. dollars and in the form of a cashier’s or certified check, Treasury note, national bank notes, or United States Postal Service money order. If sent in any other form, the Office may delay or cancel the credit until collection is made. Checks and money orders must be made payable to the Director of the United States Patent and Trademark Office. (Checks made payable to the Commissioner of Patents and Trademarks will continue to be accepted.) Payments from foreign countries must be payable and immediately negotiable in the United States for the full amount of the fee required. Money sent to the Office by mail will be at the risk of the sender, and letters containing money should be registered with the United States Postal Service.
  • (b) Payments of money required for United States Patent and Trademark Office fees may also be made by credit card, except for replenishing a deposit account. Payment of a fee by credit card must specify the amount to be charged to the credit card and such other information as is necessary to process the charge, and is subject to collection of the fee. The Office will not accept a general authorization to charge fees to a credit card. If credit card information is provided on a form or document other than a form provided by the Office for the payment of fees by credit card, the Office will not be liable if the credit card number becomes public knowledge.

37 C.F.R. 1.26   Refunds.

  • (a) The Director may refund any fee paid by mistake or in excess of that required. A change of purpose after the payment of a fee, such as when a party desires to withdraw a patent filing for which the fee was paid, including an application, an appeal, or a request for an oral hearing, will not entitle a party to a refund of such fee. The Office will not refund amounts of twenty-five dollars or less unless a refund is specifically requested, and will not notify the payor of such amounts. If a party paying a fee or requesting a refund does not provide the banking information necessary for making refunds by electronic funds transfer (31 U.S.C. 3332 and 31 CFR part 208), or instruct the Office that refunds are to be credited to a deposit account, the Director may require such information, or use the banking information on the payment instrument to make a refund. Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged.
  • (b) Any request for refund must be filed within two years from the date the fee was paid, except as otherwise provided in this paragraph or in § 1.28(a). If the Office charges a deposit account by an amount other than an amount specifically indicated in an authorization (§ 1.25(b)), any request for refund based upon such charge must be filed within two years from the date of the deposit account statement indicating such charge, and include a copy of that deposit account statement. The time periods set forth in this paragraph are not extendable.
  • (c) If the Director decides not to institute a reexamination proceeding in response to a request for reexamination or supplemental examination, fees paid with the request for reexamination or supplemental examination will be refunded or returned in accordance with paragraphs (c)(1) through (c)(3) of this section. The reexamination requester or the patent owner who requested a supplemental examination proceeding, as appropriate, should indicate the form in which any refund should be made ( e.g., by check, electronic funds transfer, credit to a deposit account). Generally, refunds will be issued in the form that the original payment was provided.
    • (1) For an ex parte reexamination request, the ex parte reexamination filing fee paid by the reexamination requester, less the fee set forth in § 1.20(c)(7), will be refunded to the requester if the Director decides not to institute an ex parte reexamination proceeding.
    • (2) For an inter partes reexamination request, a refund of $7,970 will be made to the reexamination requester if the Director decides not to institute an inter partes reexamination proceeding.
    • (3) For a supplemental examination request, the fee for reexamination ordered as a result of supplemental examination, as set forth in § 1.20(k)(2), will be returned to the patent owner who requested the supplemental examination proceeding if the Director decides not to institute a reexamination proceeding.

Where the Office has notified an applicant, in writing, that a fee is due and has specified a particular dollar amount for that fee, if the applicant timely submits the specified fee amount in response to the notice, the applicant should be considered to have complied with the notice so as to avoid abandonment of the application. If the fee paid by the applicant is insufficient, either because the notice specified an incorrect dollar amount for the fee or because of a fee increase effective after the mailing of the notice and before payment of the fee by the applicant, the applicant should be notified in writing by the Office of the fee insufficiency and given a new time period in which to submit the remaining balance. The written notification of the fee insufficiency should set forth the reason (i.e., the fee amount indicated by the Office in the earlier notice was incorrect or the fees have increased since the earlier notice was mailed) why applicant is being required to submit an additional fee.

I.    ITEMIZATION AND APPLICATION OF FEES

37 CFR 1.22(b) sets forth that fees must be itemized in such a manner that it is clear for which purpose fees are paid. The Office may return fees that are not itemized. The intent of the fee itemization requirement is to encourage a better explanation by applicants of how fees being paid are to be applied by the Office. This will allow Office employees to properly account for the fees being paid by applicants. It should be noted that the language of 37 CFR 1.22 is not intended to create a problem when it is clear what fee is needed. A reference to “filing fee(s)” would be sufficient to cover filing fees (including search and examination fees) of all different types of applications and all types of claims. Further, in a paper submitted on a date later than the actual filing date, the reference to “filing fee(s)” would also be sufficient to cover the surcharge under 37 CFR 1.16, as the surcharge is also required to make the application complete. A reference to “any corresponding fee under 37 CFR 1.16” would be sufficient to cover any fee (e.g., surcharge, application size fee, excess claims fees) under 37 CFR 1.16. In a petition for an extension of time filed without a specifically itemized fee, but with a general authorization to charge a deposit account, it is clear that a fee for an extension of time is needed and the deposit account should be charged the appropriate extension of time fee.

In situations in which a payment submitted for the fees due on filing in a nonprovisional application filed under 35 U.S.C. 111(a) is insufficient and the applicant has not specified the fees to which the payment is to be applied, the Office will apply the payment in the following order until the payment is expended:

In situations in which a payment submitted for the fees due on filing in a provisional application filed under 35 U.S.C. 111(b) is insufficient and the applicant has not specified the fees to which the payment is to be applied, the Office will apply the payment in the following order until the payment is expended:

See also MPEP § 607.

II.   PAYMENT BY CREDIT CARD

37 CFR 1.23 permits payment of any patent process fee, trademark process fee, or information product fee by credit card, subject to actual collection of the fee. The Office currently accepts charges to the following credit cards: AMERICAN EXPRESS®, DISCOVER®, MASTER CARD®, and VISA®.

Credit Card Payment Form (PTO-2038) should be used when paying a patent process or trademark process fee (or the fee for an information product) by credit card, unless the payment is being made using the Office’s electronic filing systems. The credit card payment form is not required (and should not be used) when making a credit card payment via EFS-Web or other electronic filing systems. Form PTO-2038 may be downloaded at http://www.uspto.gov/web/forms/2038.pdf. The Office will not include the Credit Card Payment Form (PTO-2038) among the records open to public inspection in the file of a patent, trademark registration, or other proceeding. The Office does not require customers to use this form when paying a patent process or trademark process fee by credit card. If a customer provides a credit card charge authorization in another form or document (e.g., a communication relating to the patent or trademark), the credit card information may become part of the record of an Office file that is open to public inspection. Thus, failure to use the Credit Card Payment Form (PTO-2038) when submitting a credit card payment may result in your credit card information becoming part of the record of an Office file that is open to public inspection.

Credit card payments by facsimile are permitted, except in situations in which facsimile submission of correspondence is not permitted in 37 CFR 1.6(d). Credit card payments that are not being made via the Office’s electronic filing systems (e.g., EFS-Web, the Electronic Patent Assignment System (EPAS), or the Finance On-line Shopping Web page for patent maintenance fees), may only be submitted with a handwritten signature personally signed in permanent dark ink or its equivalent by that person. See 37 CFR 1.4(e). Such payments may not be signed using an S-signature as provided for in 37 CFR 1.4(d)(2). A handwritten signature is required (i.e., an S-signature is not permitted) only when the credit card payment is being made in paper and thus the Office’s Credit Card Payment Form (PTO-2038), or an equivalent, is being used. A credit card payment via facsimile is considered a paper submission and requires a handwritten signature. Form PTO-2038 (or an equivalent) should not be filed via EFS-Web.

35 U.S.C. 42(d) and 37 CFR 1.26 (which concern refund of patent and trademark fees) also apply to requests for refund of fees paid by credit card. Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged. See 37 CFR 1.26(a).

See MPEP § 607.02 for returnability of fees.

Any payment of a patent process or trademark process fee by credit card must be in writing (see 37 CFR 1.2), and preferably submitted via the appropriate Office electronic filing system, or if filed in paper, on the Credit Card Payment Form (PTO-2038). If a Credit Card Payment Form or other document authorizing the Office to charge a patent process or trademark process fee to a credit card does not contain the information necessary to charge the fee to the credit card, the customer must submit a revised Credit Card Payment Form or document containing the necessary information. Office employees will not accept oral (telephonic) instructions to complete the Credit Card Payment Form or otherwise charge a patent process or trademark process fee (as opposed to information product or service fees) to a credit card.

Credit card payment submissions made on the USPTO Web site at www.uspto.gov must include the 3-digit or 4-digit security code associated with the credit card in addition to the credit card number. The security code will not be required when the paper Credit Card Payment Form (PTO-2038) or other written authorization is submitted.

The security code is part of an authentication procedure established by credit card companies to further efforts towards reducing fraudulent or unauthorized credit card use for Internet payment transactions. The security code must be entered at the time of the Internet payment transaction to verify that the physical card is in the cardholder’s possession. The security code appears on all major credit cards and is not part of the credit card number itself. Each credit card company has its own name for the security code (such as CVV, CVV2, CVC2 or CID), but it functions the same for all major card types.

On DISCOVER®, MASTERCARD®, and VISA® credit cards, the security codes is a 3-digit code that is printed on the back of the card, often following the credit card number digits. For AMERICAN EXPRESS® credit cards, the security code is a 4-digit code that is printed on the front of the cards. If you cannot read the security code, you will have to contact the financial institution that issued your credit card.

Credit Card Payment Form (PTO-2038)
Instructions for Completing the Credit Card Payment Form (PTO-2038)
Paperwork Reduction Act and Privacy Act Statements

509.01   Deposit Accounts [R-11.2013]

37 C.F.R. 1.25   Deposit accounts.

  • (a) For the convenience of attorneys, and the general public in paying any fees due, in ordering services offered by the Office, copies of records, etc. deposit accounts may be established in the Patent and Trademark Office upon payment of the fee for establishing a deposit account § 1.21(b)(1)). A minimum deposit of $1,000 is required for paying any fee due or in ordering any services offered by the Office. However, a minimum deposit of $300 may be paid to establish a restricted subscription deposit account used exclusively for subscription order of patent copies as issued. At the end of each month, a deposit account statement will be rendered. A remittance must be made promptly upon receipt of the statement to cover the value of items or services charged to the account and thus restore the account to its established normal deposit value. An amount sufficient to cover all fees, services, copies, etc., requested must always be on deposit. Charges to accounts with insufficient funds will not be accepted. A service charge (§ 1.21(b)(2)) will be assessed for each month that the balance at the end of the month is below $1,000. For restricted subscription deposit accounts, a service charge (§ 1.21(b)(3)) will be assessed for each month that the balance at the end of the month is below $300.
  • (b) Filing, issue, appeal, international-type search report, international application processing, petition, and post-issuance fees may be charged against these accounts if sufficient funds are on deposit to cover such fees. A general authorization to charge all fees, or only certain fees, set forth in §§ 1.16 to 1.18 to a deposit account containing sufficient funds may be filed in an individual application, either for the entire pendency of the application or with a particular paper filed. An authorization to charge fees under § 1.16 in an international application entering the national stage under 35 U.S.C. 371will be treated as an authorization to charge fees under § 1.492. An authorization to charge fees set forth in § 1.18 to a deposit account is subject to the provisions of § 1.311(b). An authorization to charge to a deposit account the fee for a request for reexamination pursuant to § 1.510 or § 1.913 and any other fees required in a reexamination proceeding in a patent may also be filed with the request for reexamination. An authorization to charge a fee to a deposit account will not be considered payment of the fee on the date the authorization to charge the fee is effective as to the particular fee to be charged unless sufficient funds are present in the account to cover the fee.
  • (c) A deposit account holder may replenish the deposit account by submitting a payment to the United States Patent and Trademark Office. A payment to replenish a deposit account must be submitted by one of the methods set forth in paragraphs (c)(1), (c)(2), (c)(3), or (c)(4) of this section.
    • (1) A payment to replenish a deposit account may be submitted by electronic funds transfer through the Federal Reserve Fedwire System, which requires that the following information be provided to the deposit account holder’s bank or financial institution:
      • (i) Name of the Bank, which is Treas NYC (Treasury New York City);
      • (ii) Bank Routing Code, which is 021030004;
      • (iii) United States Patent and Trademark Office account number with the Department of the Treasury, which is 13100001; and
      • (iv) The deposit account holder’s company name and deposit account number.
    • (2) A payment to replenish a deposit account may be submitted by electronic funds transfer over the Office’s Internet Web site (www.uspto.gov).
    • (3) A payment to replenish a deposit account may be addressed to: Director of the United States Patent and Trademark Office, Attn: Deposit Accounts, 2051 Jamieson Avenue, Suite 300, Alexandria, Virginia 22314.

An overdrawn account will be immediately suspended and no charges will be accepted against it until a proper balance is restored, together with a payment of $10 (37 CFR 1.21(b)(1)) to cover the work done by the U.S. Patent and Trademark Office incident to suspending and reinstating the account and dealing with charges which may have been made in the meantime.

If there is an authorization to charge the basic filing fee (37 CFR 1.16(a), (b), (c), (d), or (e)) to a deposit account which is overdrawn or has insufficient funds, a surcharge (37 CFR 1.16(f)) is required in addition to payment of the basic filing fee (37 CFR 1.16(a), (b), (c), (d), or (e)). For applications filed on or after July 1, 2005, which have been accorded a filing date under 37 CFR 1.53(b) or (d), if there is an authorization to charge any of the basic filing fee, the search fee, or the examination fee to a deposit account which is overdrawn or has insufficient funds, a surcharge under 37 CFR 1.16(f) is required in addition to payment of the required fee(s). Failure to timely pay the filing fee and surcharge will result in abandonment of the application.

It is expected, however, that reasonable precautions will be taken in all cases to avoid overdrafts, and if an account is suspended repeatedly it will be closed.

Similarly, because of the burden placed on the U.S. Patent and Trademark Office incident to the operation of deposit accounts, a charge of $10 (37 CFR 1.21(b)(1)) will be made for opening each new account.

I.   DEPOSIT ACCOUNT AUTHORIZATIONS

37 CFR 1.25(b) states that:

A general authorization to charge all fees, or only certain fees, set forth in §§ 1.16 to 1.18 to a deposit account containing sufficient funds may be filed in an individual application, either for the entire pendency of the application or with respect to a particular paper filed.

As provided in 37 CFR 1.311(b), an authorization to charge the issue fee (37 CFR 1.18) to a deposit account may be filed in an individual application only after the mailing of the notice of allowance. 37 CFR 1.25(b) also makes clear that a general authorization made prior to the mailing of a notice of allowance does not apply to issue fees under 37 CFR 1.18.

In addition, a general authorization does not apply to document supply fees under 37 CFR 1.19, such as those required for certified copies, to post issuance fees under 37 CFR 1.20, such as those required for maintenance fees, or to miscellaneous fees and charges under 37 CFR 1.21, such as assignment recording fees.

Many applications contain broad language authorizing any additional fees which might have been due to be charged to a deposit account. The U.S. Patent and Trademark Office will interpret such broad authorizations to include authorization to charge to a deposit account fees set forth in37 CFR 1.16, and 1.17. Fees under 37 CFR 1.19, 1.20, and 1.21 will not be charged as a result of a general authorization under 37 CFR 1.25except to cover the processing fee under 37 CFR 1.21(m) in the event a check or credit card payment is refused or charged back by a financial institution. Fees under 37 CFR 1.18 will not be charged as a result of a preauthorization of issue fee payment.

An authorization to charge fees relating only to a specific paper, could read “The Director is hereby authorized to charge any fees under 37 CFR 1.16 and 1.17 which may be required by this paper to Deposit Account No.________.” Such an authorization would cover situations in which a check to cover a filing and/or a processing fee under 37 CFR 1.16 and 1.17 was omitted or was for an amount less than the amount required. An authorization covering any omission or deficiency in a check or credit card payment applies to the processing fee under 37 CFR 1.21(m) in the event a check or credit card payment is refused or charged back by a financial institution, regardless of whether such deposit account authorization is limited to other fees (e.g., fees under 37 CFR 1.16 and 1.17). If a check or credit card payment for the issue fee is refused or charged back by a financial institution, the application may be held abandoned for failure to pay the issue fee within the statutory period for reply. See MPEP § 1306.

It is extremely important that the authorization be clear and unambiguous. If applicants file authorizations which are ambiguous and deviate from the usual forms of authorizations, the Office may not interpret the authorizations in the manner applicants intend and may return the fees. As a result, applicants could be subject to further expenses, petitions, etc. in order to have a particular fee charged to a deposit account (which was not charged as intended) or to resubmit a fee(s) due to an ambiguous authorization.

The Office will treat a deposit account authorization to charge "the filing fee" as an authorization to charge the following applicable fees under 37 CFR 1.16: basic filing fee; search fee; examination fee; any excess claims fees; any application size fee; and any non-electronic filing fee (see 37 CFR 1.16(t)). The Office will treat a deposit account authorization to charge "the basic filing fee" as an authorization to charge the following applicable fees under 37 CFR 1.16: basic filing fee; search fee; and examination fee. Any deposit account authorization to charge the filing fee but not the search fee or examination fee must specifically limit the authorization by reference to one or more paragraphs (a) - (e) of 37 CFR 1.16.

37 CFR 1.25(b) further provides that an authorization to charge fees under 37 CFR 1.16 (which relates to national application filing fees) in an application filed under 35 U.S.C. 371 will be treated as an authorization to charge fees under 37 CFR 1.492 (which relates to national stage fees). Papers filed for the purpose of entering the national stage under 35 U.S.C. 371 and 37 CFR 1.495 that include an authorization to charge fees under 37 CFR 1.16 are treated by the Office as an authorization to charge fees under 37 CFR 1.492 since: (1) timely payment of the appropriate national fee under 37 CFR 1.492 is necessary to avoid abandonment of the application as to the United States; and (2) the basic filing fee under37 CFR 1.16 is not applicable to such papers or applications.

II.   DEPOSIT ACCOUNT REPLENISHMENTS

37 CFR 1.25(c) specifies how a deposit account holder may submit a payment to the Office to replenish the deposit account. A payment to replenish a deposit account may be submitted by:

  • (A) making the payment by electronic funds transfer through the Federal Reserve Fedwire System. Deposit account holders who use the Federal Reserve Fedwire System must provide the following information to their bank or financial institution: (1) Name of the Bank, which is Treas NYC (Treasury New York City); (2) Bank Routing Code, which is 021030004; (3) United States Patent and Trademark Office account number with the Department of Treasury, which is 13100001; and (4) the deposit account holder’s company name and deposit account number. The deposit account holder should inform his or her bank or financial institution to use due care to ensure that all pertinent account numbers are listed on the transaction because the failure to include the proper deposit account number will delay the processing of the replenishment;
  • (B) electronic funds transfer over the Office’s Internet Web site (www.uspto.gov); or
  • (C) mailing the payment to: Director of the United States Patent and Trademark Office, Attn: Deposit Accounts, 2051 Jamieson Avenue, Suite 300, Alexandria, VA 22314.

In the event a payment to replenish a deposit account is refused (e.g., for insufficient funds or due to a stop payment order), the fee under 37 CFR 1.21(m) for processing the payment refusal will be charged to the deposit account. Further information on deposit account replenishment may be obtained from the Office’s Internet Web site or by contacting the Deposit Account Division at (571) 272-6500.

III.   REFUNDS TO A DEPOSIT ACCOUNT

For refunds to a deposit account, see MPEP § 607.02.

 

509.02   Small Entity Status — Definitions [R-11.2013]

Under 35 U.S.C. 41(h)(1), fees charged under 35 U.S.C. 41(a), (b) and (d)(1) shall be reduced by 50 percent with respect to their application to any small business concern as defined under section 3 of the Small Business Act, and to any independent inventor or nonprofit organization as defined in regulations issued by the Director. Effective March 19, 2013, the availability of the small entity discount was extended to certain other fees not contained in 35 U.S.C. 41(a), (b), or (d)(1), but which are included among fees “for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents” as authorized by Public Law 112-29, sec. 10(b), 125 Stat. 284 (September 16, 2011)(Leahy-Smith America Invents Act (AIA)). Effective January 1, 2014, the small entity discount also becomes available to certain “filing, searching, [and] examining” fees for international applications under the Patent Cooperation Treaty (PCT). Note that if applicant qualifies as a small entity under37 CFR 1.27, applicant may also qualify for “Micro Entity Status” under 35 U.S.C. 123. See 37 CFR 1.29 and MPEP § 509.04 et seq. for the requirements to establish micro entity status for the purpose of paying micro entity fees.

The fees which are reduced by 50% for small entities include patent application filing fees including the basic filing fee, search fee, examination fee, application size fee, and excess claims fees (37 CFR 1.16), extension of time, revival, and appeal fees (37 CFR 1.17), patent issue fees (37 CFR 1.18), and maintenance fees on patents (37 CFR 1.20). Fees which are reduced by 50% effective March 19, 2013, but which were previously not reduced, include certain petition fees, 37 CFR 1.17(f)-(h), the request for reexamination fees, 37 CFR 1.20(c)(1), the fee for submitting an information disclosure statement in certain time frames, 37 CFR 1.17(p), the surcharge for reinstating an expired patent, 37 CFR 1.20(i), and the fee for an unintentionally delayed claim for priority, 37 CFR 1.17(t). Fees which are reduced by 50% effective January 1, 2014, but which were previously not reduced, are certain PCT international stage fees, including the transmittal fee (37 CFR 1.445(a)(1)(i)(B), the search fee, 37 CFR 1.445(a)(2)(ii), and the preliminary examination fee, 37 CFR 1.482(a)(1)(i)(B).

Fees which are not reduced include document supply fees, 37 CFR 1.19, certificate of correction fees, 37 CFR 1.20(a), and miscellaneous fees and charges, 37 CFR 1.21. There is only one fee for which a small entity discount was offered prior to March 19, 2013 that is now ineligible for a small entity discount – the fee for a statutory disclaimer under 37 CFR 1.20(d).

The Consolidated Appropriations Act, 2005, provides that the filing fee charged under 35 U.S.C. 41(a)(1)(A) shall be reduced by 75 percent with respect to its application to any small entity "if the application is filed by electronic means as prescribed by the Director" (35 U.S.C. 41(h)(3)). Therefore, the filing fee for a nonprovisional original utility application filed on or after December 8, 2004 by a small entity in compliance with the Office electronic filing system is reduced by 75 percent. See 37 CFR 1.16(a)(1). The 75 percent reduction set forth in 35 U.S.C. 41(h)(3) does not apply to design applications, plant applications, reissue applications, or provisional applications.

35 U.S.C. 41(h)(1) gives the Director the authority to establish regulations defining independent inventors and nonprofit organizations. The Small Business Administration was given authority to establish the definition of a small business concern. A small entity for purposes of paying reduced fees is defined in 37 CFR 1.27(a) as a person, a small business concern, or a nonprofit organization. The term “person” rather than “independent inventor” is used since individuals who are not inventors but who have received some rights in the invention are intended to be covered by 37 CFR 1.27.

37 C.F.R. 1.27   Definition of small entities and establishing status as a small entity to permit payment of small entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; fraud on the Office.

  • (a) Definition of small entities. A small entity as used in this chapter means any party (person, small business concern, or nonprofit organization) under paragraphs (a)(1) through (a)(3) of this section.
    • (1) Person. A person, as used in paragraph (c) of this section, means any inventor or other individual (e.g., an individual to whom an inventor has transferred some rights in the invention) who has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention. An inventor or other individual who has transferred some rights in the invention to one or more parties, or is under an obligation to transfer some rights in the invention to one or more parties, can also qualify for small entity status if all the parties who have had rights in the invention transferred to them also qualify for small entity status either as a person, small business concern, or nonprofit organization under this section.
    • (2) Small business concern. A small business concern, as used in paragraph (c) of this section, means any business concern that:
      • (i) Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify for small entity status as a person, small business concern, or nonprofit organization; and
      • (ii) Meets the size standards set forth in 13 CFR 121.801 through 121.805 to be eligible for reduced patent fees. Questions related to standards for a small business concern may be directed to: Small Business Administration, Size Standards Staff, 409 Third Street, SW., Washington, DC 20416.
    • (3) Nonprofit Organization. A nonprofit organization, as used in paragraph (c) of this section, means any nonprofit organization that:
      • (i) Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify as a person, small business concern, or a nonprofit organization; and
      • (ii) Is either:
        • (A) A university or other institution of higher education located in any country;
        • (B) An organization of the type described in section 501(c)(3) of the Internal Revenue Code of 19 86 (26 U.S.C. 501(c)(3)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a));
        • (C) Any nonprofit scientific or educational organization qualified under a nonprofit organization statute of a state of this country (35 U.S.C. 201(i)); or
        • (D) Any nonprofit organization located in a foreign country which would qualify as a nonprofit organization under paragraphs (a)(3)(ii)(B) of this section or (a)(3)(ii)(C) of this section if it were located in this country.
    • (4) License to a Federal agency.
      • (i) For persons under paragraph (a)(1) of this section, a license to the Government resulting from a rights determination under Executive Order 10096 does not constitute a license so as to prohibit claiming small entity status.
      • (ii) For small business concerns and nonprofit organizations under paragraphs (a)(2) and (a)(3) of this section, a license to a Federal agency resulting from a funding agreement with that agency pursuant to 35 U.S.C. 202 (c)(4) does not constitute a license for the purposes of paragraphs (a)(2)(i) and (a)(3)(i) of this section.
    • (5) Security Interest. A security interest does not involve an obligation to transfer rights in the invention for the purposes of paragraphs (a)(1) through (a)(3) of this section unless the security interest is defaulted upon.

*****

I.   PERSON

37 CFR 1.27(a)(1) defines a person as any inventor or other individual (e.g., an individual to whom an inventor has transferred some rights in the invention), who has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention. An inventor or other individual who has transferred some rights, or is under an obligation to transfer some rights in the invention to one or more parties, can also qualify for small entity status if all the parties who have had rights in the invention transferred to them also qualify for small entity status either as a person, small business concern, or nonprofit organization.

II.   SMALL BUSINESS CONCERN

In order to be eligible for reduced patent fees as a “small business concern” under 37 CFR 1.27(a)(2), a business concern must meet the standards set forth in 13 CFR 121.801 through 121.805. Questions relating to standards for a small business concern may be directed to:

Small Business Administration

Office of Size Standards

409 Third Street, S.W.

Washington, DC 20416

(202)205-6618

E-mail: sizestandards@sba.gov

III.   NONPROFIT ORGANIZATIONS

37 CFR 1.27(a)(3) defines a nonprofit organization by utilizing and interpreting the definition contained in 35 U.S.C. 201(i). The term “university or other institution of higher education” as used in 37 CFR 1.27(a)(3)(ii)(A) means an educational institution which

  • (A) admits as regular students only persons having a certificate of graduation from a school providing secondary education, or the recognized equivalent of such a certificate,
  • (B) is legally authorized within the jurisdiction in which it operates to provide a program of education beyond secondary education,
  • (C) provides an educational program for which it awards a bachelor’s degree or provides not less than a 2-year program which is acceptable for full credit toward such a degree,
  • (D) is a public or other nonprofit institution, and
  • (E) is accredited by a nationally recognized accrediting agency or association, or if not so accredited, is an institution that has been granted preaccreditation status by such agency or association that has been recognized by the Secretary for the granting of preaccreditation status, and the Secretary has determined that there is satisfactory assurance that the institution will meet the accreditation standards of such an agency or association within a reasonable time.

The definition of “university or other institution of higher education” as set forth herein essentially follows the definition of “institution of higher education” contained in 20 U.S.C. 1000. Institutions which are strictly research facilities, manufacturing facilities, service organizations, etc., are not intended to be included within the term “other institution of higher education” even though such institutions may perform an educational function or publish the results of their work.

Nonprofit organizations also include organizations of the type described in section 501(c)(3) of the Internal Revenue Code of 1986 (26 U.S.C. 501(c)(3)) and which are exempt from taxation under 26 U.S.C. 501(a). Organizations described in 26 U.S.C. 501(c)(3) include corporations, and any community chest, fund, or foundation, organized and operated exclusively for religious, charitable, scientific, testing for public safety, literary, or educational purposes, or to foster national or international amateur sports competition (but only if no part of its activities involve the provision of athletic facilities or equipment), or for the prevention of cruelty to children or animals, no part of the net earnings of which inures to the benefit of any private shareholder or individual, no substantial part of the activities of which is carrying on propaganda, or otherwise attempting to influence legislation (limited exceptions may apply under 26 U.S.C. 501(h)) and which does not participate in, or intervene in (including the publishing or distributing of statements), any political campaign on behalf of (or in opposition to) any candidate for public office.

IV.   LOCATION OF SMALL ENTITY

Small entities may claim reduced fees regardless of the country in which they are located. There is no restriction requiring that the person, small business concern, or nonprofit organization be located in the United States. The same definitions apply to all applicants equally in accordance with the Paris Convention for the Protection of Industrial Property.

V.   RIGHTS IN THE INVENTION AND TRANSFER OF RIGHTS

The “rights in the invention” under 37 CFR 1.27(a)(1)(a)(2)(i), and (a)(3)(i) are the rights in the United States. Rights in the invention include the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States. Therefore, for example, status as a small entity is lost by an inventor who has transferred or has an obligation to transfer a shop right to an employer who could not qualify as a small entity.

Individual inventors (37 CFR 1.27(a)(1)), small business concerns (37 CFR 1.27(a)(2)), and nonprofit organizations (37 CFR 1.27(a)(3)) can make an assignment, grant, conveyance, or license of partial rights in the invention to another individual(s), small business concern, or nonprofit organization who could qualify as a person (37 CFR 1.27(a)(1)), small business concern, or nonprofit organization. Under the circumstances described, the individual inventor, small business concern, or nonprofit organization could still qualify for small entity status. However, if the individual inventor, small business concern, or nonprofit organization assigned, granted, conveyed, or licensed, or came under an obligation to assign, grant, convey, or license, any rights to the invention to any individual, small business concern, or nonprofit organization which would not qualify as a small entity (37 CFR 1.27(a)), then the inventor, small business concern, or nonprofit organization would no longer qualify for small entity status.

With regard to transfer of rights in the invention, the rights in question are those in the United States to be covered by an application or patent. Transfer of rights to a Japanese patent, for example, would not affect small entity status if no rights in the United States to a corresponding patent were likewise transferred.

The payment of reduced fees under 35 U.S.C. 41 is limited to those situations in which all of the rights in the invention are owned by small entities, i.e., persons, small business concerns, or nonprofit organizations. To do otherwise would be clearly contrary to the intended purpose of the legislation which contains no indication that fees are to be reduced in circumstances where rights are owned by non-small entities. For example, a non-small entity is not permitted to transfer patent rights to a small business concern which would pay the reduced fees and grant a license to the entity.

If rights transferred to a non-small entity are later returned to a small entity so that all rights are held by small entities, reduced fees may be claimed.

The term “license” in the definitions includes nonexclusive as well as exclusive licenses and royalty free as well as royalty generating licenses. Implied licenses to use and resell patented articles purchased from a small entity, however, will not preclude the proper claiming of small entity status. Likewise, an order by an applicant to a firm to build a prototype machine or product for the applicant’s own use is not considered to constitute a license for purposes of the definitions. A grant of a non-exclusive license to a non-small entity will disqualify applicant from claiming small entity status. See Ulead Systems, Inc. v. Lex Computer & Management Corp., 351 F.3d 1139, 1142, 69 USPQ2d 1097, 1099 (Fed. Cir. 2003).

A security interest does not involve an obligation to transfer rights in the invention for the purposes of 37 CFR 1.27(a)(1) through (a)(3) unless the security interest is defaulted upon. See 37 CFR 1.27(a)(5). For example, an applicant or patentee may take out a loan from a large entity banking institution and the loan may be secured with rights in a patent application or patent of the applicant or patentee, respectively. The granting of such a security interest to the banking institution is not a currently enforceable obligation to assign, grant, convey, or license any rights in the invention to the banking institution. Only if the loan is defaulted upon will the security interest permit a transfer of rights in the application or patent to the banking institution. Thus, where the banking institution is a large entity, the applicant or patentee would not be prohibited from claiming small entity status merely because the banking institution has been granted a security interest, but if the loan is defaulted upon, there would be a loss of entitlement to small entity status. Pursuant to 37 CFR 1.27(g), notification of the loss of entitlement due to default on the terms of the security interest would need to be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which small entity status is no longer appropriate. See MPEP § 509.03, subsection VII. Removal of Status.

VI.   RIGHTS HELD BY GOVERNMENT ORGANIZATIONS

Also, although the Federal government agencies do not qualify as nonprofit organizations for paying reduced fees under the rules, a license to a Federal agency resulting from a funding agreement with the agency pursuant to 35 U.S.C. 202(c)(4) will not preclude the proper claiming of small entity status. Furthermore, a license to the Government resulting from a rights determination under Executive Order 10096 does not constitute a license so as to prohibit claiming small entity status by a person under 37 CFR 1.27(a)(1).

Public Law 96-517 added a new chapter 18 of Title 35 of the United States Code entitled “Patent Rights in Inventions Made With Federal Assistance.” Under the provisions of the statute, each funding agreement between a Federal agency and an individual, small business firm, or nonprofit organization must provide, inter alia, that “. . . the Federal agency shall have a nonexclusive, nontransferable, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States any subject invention . . .” See 35 U.S.C. 202(c)(4). The Federal agencies do not qualify as nonprofit organizations for paying reduced patent fees under the rules. Applying this construction to the licensing of an invention to a Federal agency by a person, small business concern, or nonprofit organization pursuant to a funding agreement under 35 U.S.C. 202(c)(4) would preclude their qualifying for paying reduced fees. This, however, would frustrate the intent of Public Law 97-247 and Public Law 96-517 when taken together.

Government organizations as such, whether domestic or foreign, cannot qualify as nonprofit organizations as defined in 37 CFR 1.27(a)(3). Thus, for example, a government research facility or other government-owned corporation could not qualify. 37 CFR 1.27(a)(3) was based upon35 U.S.C. 201(i), as established by Public Law 96-517. The limitation to “an organization of the type described in section 501(c)(3) of the Internal Revenue Code of 1986 (26 U.S.C. 501(c)(3)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a))” would by its nature exclude the U.S. government and its agencies and facilities, including research facilities and government corporations. State and foreign governments and governmental agencies and facilities would be similarly excluded. 37 CFR 1.27(a)(3) is not intended to include within the definition of a nonprofit organization government organizations of any kind located in any country. A university or other institution of higher education located in any country would qualify, however, as a “nonprofit organization” under 37 CFR 1.27(a)(3) even though it has some government affiliation since such institutions are specifically included.

A wholly owned subsidiary of a nonprofit organization or of a university is considered a part of the nonprofit organization or university and is not precluded from qualifying for small entity status.

 

509.03   Claiming Small Entity Status [R-11.2013]

37 C.F.R. 1.27   Definition of small entities and establishing status as a small entity to permit payment of small entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; fraud on the Office.

*****

  • (b) Establishment of small entity status permits payment of reduced fees.
    • (1) A small entity, as defined in paragraph (a) of this section, who has properly asserted entitlement to small entity status pursuant to paragraph (c) of this section will be accorded small entity status by the Office in the particular application or patent in which entitlement to small entity status was asserted. Establishment of small entity status allows the payment of certain reduced patent fees pursuant to 35 U.S.C. 41(h)(1).
    • (2) Submission of an original utility application in compliance with the Office electronic filing system by an applicant who has properly asserted entitlement to small entity status pursuant to paragraph (c) of this section in that application allows the payment of a reduced filing fee pursuant to 35 U.S.C. 41(h)(3).
  • (c) Assertion of small entity status. Any party (person, small business concern or nonprofit organization) should make a determination, pursuant to paragraph (f) of this section, of entitlement to be accorded small entity status based on the definitions set forth in paragraph (a) of this section, and must, in order to establish small entity status for the purpose of paying small entity fees, actually make an assertion of entitlement to small entity status, in the manner set forth in paragraphs (c)(1) or (c)(3) of this section, in the application or patent in which such small entity fees are to be paid.
    • (1) Assertion by writing. Small entity status may be established by a written assertion of entitlement to small entity status. A written assertion must:
      • (i) Be clearly identifiable;
      • (ii) Be signed (see paragraph (c)(2) of this section); and
      • (iii) Convey the concept of entitlement to small entity status, such as by stating that applicant is a small entity, or that small entity status is entitled to be asserted for the application or patent. While no specific words or wording are required to assert small entity status, the intent to assert small entity status must be clearly indicated in order to comply with the assertion requirement.
    • (2) Parties who can sign and file the written assertion. The written assertion can be signed by:
      • (i) The applicant (§ 1.42 or § 1.421);
      • (ii) A patent practitioner of record or a practitioner acting in a representative capacity under § 1.34;
      • (iii) The inventor or a joint inventor, if the inventor is the applicant; or
      • (iv) The assignee.
    • (3) Assertion by payment of the small entity basic filing, basic transmittal, basic national fee, or international search fee.The payment, by any party, of the exact amount of one of the small entity basic filing fees set forth in §§ 1.16(a),1.16(b)1.16(c)1.16(d)1.16(e), the small entity transmittal fee set forth in § 1.445(a)(1), the small entity international search fee set forth in § 1.445(a)(2) to a Receiving Office other than the United States Receiving Office in the exact amount established for that Receiving Office pursuant to PCT Rule 16, or the small entity basic national fee set forth in § 1.492(a), will be treated as a written assertion of entitlement to small entity status even if the type of basic filing, basic transmittal, or basic national fee is inadvertently selected in error.
      • (i) If the Office accords small entity status based on payment of a small entity basic filing or basic national fee under paragraph (c)(3) of this section that is not applicable to that application, any balance of the small entity fee that is applicable to that application will be due along with the appropriate surcharge set forth in § 1.16(f), or § 1.16(g).
      • (ii) The payment of any small entity fee other than those set forth in paragraph (c)(3) of this section (whether in the exact fee amount or not) will not be treated as a written assertion of entitlement to small entity status and will not be sufficient to establish small entity status in an application or a patent.
    • (4) Assertion required in related, continuing, and reissue applications. Status as a small entity must be specifically established by an assertion in each related, continuing and reissue application in which status is appropriate and desired. Status as a small entity in one application or patent does not affect the status of any other application or patent, regardless of the relationship of the applications or patents. The refiling of an application under § 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under § 1.53(d)), or the filing of a reissue application, requires a new assertion as to continued entitlement to small entity status for the continuing or reissue application.
  • (d) When small entity fees can be paid. Any fee, other than the small entity basic filing fees and the small entity national fees of paragraph (c)(3) of this section, can be paid in the small entity amount only if it is submitted with, or subsequent to, the submission of a written assertion of entitlement to small entity status, except when refunds are permitted by § 1.28(a).
  • (e) Only one assertion required.
    • (1) An assertion of small entity status need only be filed once in an application or patent. Small entity status, once established, remains in effect until changed pursuant to paragraph (g)(1) of this section. Where an assignment of rights or an obligation to assign rights to other parties who are small entities occurs subsequent to an assertion of small entity status, a second assertion is not required.
    • (2) Once small entity status is withdrawn pursuant to paragraph (g)(2) of this section, a new written assertion is required to again obtain small entity status.
  • (f) Assertion requires a determination of entitlement to pay small entity fees. Prior to submitting an assertion of entitlement to small entity status in an application, including a related, continuing, or reissue application, a determination of such entitlement should be made pursuant to the requirements of paragraph (a) of this section. It should be determined that all parties holding rights in the invention qualify for small entity status. The Office will generally not question any assertion of small entity status that is made in accordance with the requirements of this section, but note paragraph (h) of this section.
  • (g)
    • (1) New determination of entitlement to small entity status is needed when issue and maintenance fees are due. Once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.
    • (2) Notification of loss of entitlement to small entity status is required when issue and maintenance fees are due.Notification of a loss of entitlement to small entity status must be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity as defined in paragraph (a) of this section is no longer appropriate. The notification that small entity status is no longer appropriate must be signed by a party identified in § 1.33(b). Payment of a fee in other than the small entity amount is not sufficient notification that small entity status is no longer appropriate.
  • (h) Fraud attempted or practiced on the Office.
    • (1) Any attempt to fraudulently establish status as a small entity, or pay fees as a small entity, shall be considered as a fraud practiced or attempted on the Office.
    • (2) Improperly, and with intent to deceive, establishing status as a small entity, or paying fees as a small entity, shall be considered as a fraud practiced or attempted on the Office.

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

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  • (d)
    • (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) of this subchapter.

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37 C.F.R. 11.18   Signature and certificate for correspondence filed in the Office.

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  • (b) By presenting to the Office or hearing officer in a disciplinary proceeding (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that—
    • (1) All statements made therein of the party’s own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious, or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001and any other applicable criminal statute, and violations of the provisions of this section may jeopardize the probative value of the paper; and
    • (2) To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances,
      • (i) The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of any proceeding before the Office;
      • (ii) The other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;
      • (iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and
      • (iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.

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In order to establish small entity status for the purpose of paying small entity fees, any party (person, small business concern or nonprofit organization) must make an assertion of entitlement to small entity status in the manner set forth in 37 CFR 1.27(c)(1) or (c)(3), in the application or patent in which such small entity fees are to be paid. Under 37 CFR 1.27, as long as all of the rights remain in small entities, the fees established for a small entity can be paid. This includes circumstances where the rights were divided between a person, a small business concern, and a nonprofit organization, or any combination thereof.

Under 37 CFR 1.4(d)(4), an assertion of entitlement to small entity status, including the mere payment of an exact small entity basic filing fee, inherently contains a certification under 37 CFR 11.18(b). It is not required that an assertion of entitlement to small entity status be filed with each fee paid. Rather, once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due. 37 CFR 1.27(g)(1). Notification of a loss of entitlement to small entity status must be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity is no longer appropriate. 37 CFR 1.27(g)(2).

Status as a small entity may be established in a provisional application by complying with 37 CFR 1.27.

Status as a small entity must be specifically established in each application or patent in which the status is available and desired. Status as a small entity in one application or patent does not affect any other application or patent, including applications or patents which are directly or indirectly dependent upon the application or patent in which the status has been established. The filing of an application under 37 CFR 1.53 as a continuation-in-part, continuation or division (including a continued prosecution application under 37 CFR 1.53(d)), or the filing of a reissue application requires a new assertion as to continued entitlement to small entity status for the continuing or reissue application. Submission of a request for continued examination (RCE) under 37 CFR 1.114 does not require a new determination or assertion of entitlement to small entity status since it is not a new application.

Examiners may use the following form paragraph to notify applicant that he or she may qualify for small entity status.

¶ 5.05    Small Entity Status

This application may qualify for “Small Entity Status” and, therefore, applicant may be entitled to the payment of reduced fees. In order to establish small entity status for the purpose of paying small entity fees, applicant must make a determination of entitlement to small entity status under 37 CFR 1.27(f) and make an assertion of entitlement to small entity status in the manner set forth in 37 CFR 1.27(c)(1) or 37 CFR 1.27(c)(3). Accordingly, if applicant meets the requirements of 37 CFR 1.27(a), applicant must submit a written assertion of entitlement to small entity status under 37 CFR 1.27(c) before fees can be paid in the small entity amount. See 37 CFR 1.27(d). The assertion must be signed, clearly identifiable, and convey the concept of entitlement to small entity status. See 37 CFR 1.27(c)(1). No particular form is required. If applicant qualifies as a small entity under 37 CFR 1.27, applicant may also qualify for “Micro Entity Status” under 35 U.S.C. 123. See 37 CFR 1.29 for the requirements to establish micro entity status for the purpose of paying micro entity fees.

I.   ASSERTION BY WRITING

Small entity status may be established by the submission of a simple written assertion of entitlement to small entity status. The assertion must be signed, clearly identifiable, and convey the concept of entitlement to small entity status. 37 CFR 1.27(c)(1). The written assertion is not required to be presented in any particular form. Written assertions of small entity status or references to small entity fees will be liberally interpreted to represent the required assertion. The written assertion can be made in any paper filed in or with the application and need be no more than a simple sentence or a box checked on an application transmittal letter.

Practitioners may continue to use former USPTO forms or similar forms if they believe such small entity forms serve an educational purpose for their clients.

II.   PARTIES WHO CAN ASSERT AND SIGN AN ENTITLEMENT TO SMALL ENTITY STATUS BY WRITING

A.    Applications Filed On or After September 16, 2012

37 C.F.R. 1.27  Definition of small entities and establishing status as a small entity to permit payment of small entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; fraud on the Office.

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  • (c) Assertion of small entity status. Any party (person, small business concern or nonprofit organization) should make a determination, pursuant to paragraph (f) of this section, of entitlement to be accorded small entity status based on the definitions set forth in paragraph (a) of this section, and must, in order to establish small entity status for the purpose of paying small entity fees, actually make an assertion of entitlement to small entity status, in the manner set forth in paragraphs (c)(1) or (c)(3) of this section, in the application or patent in which such small entity fees are to be paid.
    • (1) Assertion by writing. Small entity status may be established by a written assertion of entitlement to small entity status. A written assertion must:
      • (i) Be clearly identifiable;
      • (ii) Be signed (see paragraph (c)(2) of this section); and
      • (iii) Convey the concept of entitlement to small entity status, such as by stating that applicant is a small entity, or that small entity status is entitled to be asserted for the application or patent. While no specific words or wording are required to assert small entity status, the intent to assert small entity status must be clearly indicated in order to comply with the assertion requirement.
    • (2) Parties who can sign and file the written assertion. The written assertion can be signed by:
      • (i) The applicant (§ 1.42 or § 1.421);
      • (ii) A patent practitioner of record or a practitioner acting in a representative capacity under § 1.34;
      • (iii) The inventor or a joint inventor, if the inventor is the applicant; or
      • (iv) The assignee.
    • (3) Assertion by payment of the small entity basic filing, basic transmittal, basic national fee, or international search fee.The payment, by any party, of the exact amount of one of the small entity basic filing fees set forth in §§ 1.16(a), 1.16(b), 1.16(c), 1.16(d), 1.16(e), the small entity transmittal fee set forth in § 1.445(a)(1), the small entity international search fee set forth in § 1.445(a)(2) to a Receiving Office other than the United States Receiving Office in the exact amount established for that Receiving Office pursuant to PCT Rule 16, or the small entity basic national fee set forth in § 1.492(a), will be treated as a written assertion of entitlement to small entity status even if the type of basic filing, basic transmittal, or basic national fee is inadvertently selected in error.
      • (i) If the Office accords small entity status based on payment of a small entity basic filing or basic national fee under paragraph (c)(3) of this section that is not applicable to that application, any balance of the small entity fee that is applicable to that application will be due along with the appropriate surcharge set forth in § 1.16(f), or § 1.16(g).
      • (ii) The payment of any small entity fee other than those set forth in paragraph (c)(3) of this section (whether in the exact fee amount or not) will not be treated as a written assertion of entitlement to small entity status and will not be sufficient to establish small entity status in an application or a patent.

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For applications filed on or after September 16, 2012, the written assertion of entitlement to small entity status can be signed by: (1) the applicant (37 CFR 1.42 or 1.421); (2) a patent practitioner of record or acting in a representative capacity under 37 CFR 1.34; (3) the inventor or a joint inventor, if the inventor is the applicant; or (4) the assignee. See 37 CFR 1.27(c)(2). The change to 37 CFR 1.27 for applications filed on or after September 16, 2012, is for consistency with the change in practice concerning who is the applicant for patent in 37 CFR 1.42. The applicant as defined in 37 CFR 1.42 (or 37 CFR 1.421) can sign a written assertion of small entity status. Thus, the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for a patent under 37 CFR 1.46 can sign the written assertion of small entity status. In addition, if there are joint inventors who are the applicant, then one of the joint inventors can sign a written assertion of small entity status and thereby establish small entity status for the application (but see paragraph VI. below). The assignee can sign a written assertion of small entity status even if the assignee is not the applicant or is a juristic entity.

B.   Applications Filed Before September 16, 2012

37 C.F.R. 1.27 (pre-AIA)  Definition of small entities and establishing status as a small entity to permit payment of small entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; fraud on the Office.

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  • (c) Assertion of small entity status. Any party (person, small business concern or nonprofit organization) should make a determination, pursuant to paragraph (f) of this section, of entitlement to be accorded small entity status based on the definitions set forth in paragraph (a) of this section, and must, in order to establish small entity status for the purpose of paying small entity fees, actually make an assertion of entitlement to small entity status, in the manner set forth in paragraphs (c)(1) or (c)(3) of this section, in the application or patent in which such small entity fees are to be paid.
    • (1) Assertion by writing. Small entity status may be established by a written assertion of entitlement to small entity status. A written assertion must:
      • (i) Be clearly identifiable;
      • (ii) Be signed (see paragraph (c)(2) of this section); and
      • (iii) Convey the concept of entitlement to small entity status, such as by stating that applicant is a small entity, or that small entity status is entitled to be asserted for the application or patent. While no specific words or wording are required to assert small entity status, the intent to assert small entity status must be clearly indicated in order to comply with the assertion requirement.
    • (2) Parties who can sign and file the written assertion. The written assertion can be signed by:
      • (i) One of the parties identified in §  1.33(b) (e.g., an attorney or agent registered with the Office), § 3.73(b) of this chapter notwithstanding, who can also file the written assertion;
      • (ii) At least one of the individuals identified as an inventor (even though a § 1.63 executed oath or declaration has not been submitted), notwithstanding § 1.33(b)(4), who can also file the written assertion pursuant to the exception under § 1.33(b) of this part; or
      • (iii) An assignee of an undivided part interest, notwithstanding §§ 1.33(b)(3) and 3.73(b) of this chapter, but the partial assignee cannot file the assertion without resort to a party identified under § 1.33(b) of this part.
    • (3) Assertion by payment of the small entity basic filing or basic national fee. The payment, by any party, of the exact amount of one of the small entity basic filing fees set forth in §§ 1.16(a)1.16(b)1.16(c)1.16(d)1.16(e), or the small entity basic national fee set forth in § 1.492(a), will be treated as a written assertion of entitlement to small entity status even if the type of basic filing or basic national fee is inadvertently selected in error.
      • (i) If the Office accords small entity status based on payment of a small entity basic filing or basic national fee under paragraph (c)(3) of this section that is not applicable to that application, any balance of the small entity fee that is applicable to that application will be due along with the appropriate surcharge set forth in § 1.16(f), or § 1.16(g).
      • (ii) The payment of any small entity fee other than those set forth in paragraph (c)(3) of this section (whether in the exact fee amount or not) will not be treated as a written assertion of entitlement to small entity status and will not be sufficient to establish small entity status in an application or a patent.
    • (4) Assertion required in related, continuing, and reissue applications. Status as a small entity must be specifically established by an assertion in each related, continuing and reissue application in which status is appropriate and desired. Status as a small entity in one application or patent does not affect the status of any other application or patent, regardless of the relationship of the applications or patents. The refiling of an application under § 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under §1.53(d)), or the filing of a reissue application, requires a new assertion as to continued entitlement to small entity status for the continuing or reissue application.

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For applications filed before September 16, 2012, the parties who can assert entitlement to small entity status by writing include all parties permitted by pre-AIA 37 CFR 1.33(b) to file a paper in an application, including a registered practitioner. Pre-AIA 37 CFR 1.27(c)(2)(i). Additionally, one of the individuals identified as an inventor, or a partial assignee, can also sign the written assertion. Pre-AIA 37 CFR 1.27(c)(2)(ii) and (iii). By way of example, in the case of three pro se inventors for a particular application, one of the three inventors upon filing the application can submit a written assertion of entitlement to small entity status and thereby establish small entity status for the application, (but see paragraph VI. below). Where rights are divided between a person, small business concern, and nonprofit organization, or any combination thereof, only one party is required to assert small entity status. For example, where one of two inventors has assigned his or her rights in the invention, it is sufficient if either of the two inventors or the assignee asserts entitlement to small entity status.

Any inventor is permitted to submit a written assertion of small entity status, including individuals identified as inventors but who are not officially named of record as an executed oath or declaration under pre-AIA 37 CFR 1.63 has not yet been submitted. See pre-AIA 37 CFR 1.41(a)(1). Where an application is filed without an executed oath or declaration pursuant to pre-AIA 37 CFR 1.53(f), the Office will accept the written assertion of an individual who has merely been identified as an inventor on filing of the application (e.g., application transmittal letter) as opposed to having to be named as an inventor by the filing of an executed oath or declaration under pre-AIA 37 CFR 1.63 (pre-AIA 37 CFR 1.41(a)(1)).  Pre-AIA 37 CFR 1.4(d)(4) and 37 CFR 11.18(b) are seen as sufficient basis to permit any individual to provide a written assertion so long as the individual identifies himself or herself as an inventor. An actual inventor who has not been identified as an inventor (e.g., by way of application transmittal letter) or named as an inventor (i.e., executed pre-AIA 37 CFR 1.63 oath or declaration) in the file record may not file a written assertion as to small entity entitlement.

Where an oath or declaration under pre-AIA 37 CFR 1.63 is later filed, any original written assertion as to small entity status (which has been previously appropriately submitted to the Office) will remain unless changed by an appropriate party under 37 CFR 1.27(g)(2). Where a later-filed oath or declaration under pre-AIA 37 CFR 1.63 sets forth an inventive entity that does not include the person who initially was identified as an inventor and who asserted small entity status, small entity status will also remain.

An assignee asserting small entity status is not required to submit a pre-AIA 37 CFR 3.73(b) certification whether the assignee is a partial assignee or an assignee of the entire right, title, and interest, (but see paragraph III. below).

III.   PARTIES WHO CAN FILE THE WRITTEN ASSERTION ONCE SIGNED

For applications filed before September 16, 2012, a distinction exists as to who can file a written assertion of entitlement to small entity status once the written assertion is signed. Pre-AIA 37 CFR 1.27(c)(2)(ii) and pre-AIA 37 CFR 1.33(b) permit one of several inventors to file as well as to sign a written assertion. The same is not true for a partial assignee. Pre-AIA 37 CFR 1.27(c)(2)(iii). While a partial assignee may sign a written assertion, the written assertion must be filed by an appropriate party under pre-AIA 37 CFR 1.33(b).

IV.   ASSERTION BY PAYMENT OF SMALL ENTITY BASIC FILING OR BASIC NATIONAL FEE

The payment of an exact small entity basic filing (37 CFR 1.16(a), (b), (c), (d), or (e)) or basic national fee (37 CFR 1.492(a)) is also considered to be a sufficient assertion of entitlement to small entity status. 37 CFR 1.27(c)(3). An applicant filing a patent application and paying an exact small entity basic filing or basic national fee automatically establishes small entity status for the application even without any other assertion of small entity status. This is so even if an applicant inadvertently selects the wrong type of small entity basic filing or basic national fee for the application being filed (e.g., the exact small entity basic filing fee for a design application is selected but the application is a utility application). If small entity status was not established when the basic filing or basic national fee was paid, such as by payment of a non-small entity basic filing or basic national fee, a later claim to small entity status requires a written assertion under 37 CFR 1.27(c)(1). Payment of a small entity fee other than a small entity basic filing or basic national fee (e.g., extension of time fee, or issue fee) without inclusion of a written assertion is not sufficient.

Even though applicants can assert small entity status only by payment of an exact small entity basic filing or basic national fee, the Office encourages applicants to also file a written assertion of small entity status as well as to pay the exact amount of the small entity basic filing or basic national fee. The Office’s application transmittal forms include a check box that can be used to submit a written assertion of small entity status. A written assertion will provide small entity status should applicant fail to pay the exact small entity basic filing or basic national fee. The provision providing for small entity status by payment of an exact small entity basic filing or basic national fee is intended to act as a safety net to avoid possible financial loss to inventors or small businesses that qualify for small entity status.

Even though small entity status is accorded where the wrong type of small entity basic filing fee or basic national fee is selected but the exact amount of the fee is paid, applicant still needs to pay the correct small entity amount for the basic filing or basic national fee where selection of the wrong type of fee results in a deficiency. While an accompanying general authorization to charge any additional fees suffices to pay the balance due of the proper small entity basic filing or basic national fee, specific authorizations to charge fees under 37 CFR 1.17 or extension of time fees do not suffice to pay any balance due of the proper small entity basic filing or basic national fee because they do not actually authorize payment of small entity amounts. If payment is attempted of the proper type of basic filing or basic national fee (applicant correctly identifies the type of fee for the type of application being filed), but the amount of the fee paid is not the exact small entity fee required (an incorrect fee amount is supplied) and a written assertion of small entity status is not present, small entity status will not be accorded. The Office will mail a notice of insufficient basic filing or basic national fee with a surcharge due if an authorization to charge the basic filing or basic national fee is not present. The Office does not consider a basic filing or basic national fee submitted in an amount above the correct fee amount, but below the non-small entity fee amount, as a request to establish small entity status unless an additional written assertion is also present. The submission of a basic filing or basic national fee below the correct fee amount also does not serve to establish small entity status.

Where an application is originally filed by a party, who is in fact a small entity, with an authorization to charge fees (including basic filing or national fees) and there is no indication (assertion) of entitlement to small entity status present, that authorization is not sufficient to establish small entity status unless the authorization is specifically directed to small entity basic filing or basic national fees. The general authorization to charge fees will continue to be acted upon immediately and the full (not small entity) basic filing or basic national fees will be charged. Applicant will have three months under 37 CFR 1.28 to request a refund by asserting entitlement to small entity status. This is so even if the application is a continuing application where small entity status had been established in the prior application.

V.   PARTIES WHO CAN ASSERT AND FILE SMALL ENTITY STATUS BY PAYMENT

Where small entity status is sought by way of payment of the basic filing or basic national fee, any party (including a third party), may submit payment, such as by check, and small entity status will be accorded.

VI.   CONTINUED OBLIGATIONS FOR THOROUGH INVESTIGATION OF SMALL ENTITY STATUS

While small entity status is not difficult to obtain, it should be clearly understood that applicants need to do a complete and thorough investigation of all facts and circumstances before making a determination of actual entitlement to small entity status. 37 CFR 1.27(f). Where entitlement to small entity status is uncertain, it should not be claimed.

The assertion of small entity status (even by mere payment of the exact small entity basic filing fee) is not appropriate until such an investigation has been completed. For example, where there are three pro se inventors, before one of the inventors pays the small entity basic filing or basic national fee to establish small entity status, the single inventor asserting entitlement to small entity status should check with the other two inventors to determine whether small entity status is appropriate.

If small entity status is desired on the basis that the entity is a small business concern, the investigation should include a review of whether the business is a small business concern as defined by section 3 of the Small Business Act (Public Law 85-536 as amended by Public Law 106-50). Review of whether the business concern meets the size standards set forth in 13 CFR 121.801 through 121.805 to be eligible for reduced patent fees is also appropriate. Additionally, if the business has assigned, granted, conveyed or licensed (or is under an obligation to do so) any rights in the invention to others directly or indirectly, the same review for each other entity would also be appropriate.

Furthermore, once status as a small entity has been established in an application, a new determination of entitlement to small entity status is needed (1) when the issue fee is due and (2) when any maintenance fee is due. It should be appreciated that the costs incurred in appropriately conducting the initial and subsequent investigations may outweigh the benefit of claiming small entity status. For some applicants it may be desirable to file as a non-small entity (by not filing a written assertion of small entity status and by submitting non-small entity fees) rather than undertaking the appropriate investigations which may be both difficult and time-consuming and which may be cost effective only where several applications are involved.

The intent of 37 CFR 1.27 is that the person making the assertion of entitlement to small entity status is the person in a position to know the facts about whether or not status as a small entity can be properly established. That person, thus, has a duty to investigate the circumstances surrounding entitlement to small entity status to the fullest extent. It is important to note that small entity status must not be claimed unless the person or persons can unequivocally make the required self-certification.

The U.S. Patent and Trademark Office does not give advisory opinions as to whether or not a specific individual or organization qualifies as a small entity. In establishing reduced fees for persons, small business concerns, and nonprofit organizations, the Congressional consideration of the legislation which became Public Law 97-247 indicated an intent that the U.S. Patent and Trademark Office rely exclusively on a self-certification that a patent applicant qualifies as an independent inventor (now person), small business concern, or nonprofit organization. In addition, it was also stated during Congressional consideration of the legislation that no additional resources would be required to administer the system whereby fees would be reduced for small entities.

In view of the intent expressed during Congressional consideration of the legislation, it would be inappropriate for the U.S. Patent and Trademark Office to give advisory opinions as to entitlement to small entity status. Accordingly, any individual seeking to establish status as a small entity for purposes of paying the fee in an application or patent must file the assertion required by 37 CFR 1.27 and in so doing is self-certifying entitlement to small entity status.

Consistent with 37 CFR 1.4(d)(4), the payment of a small entity basic filing or national fee constitutes a certification under 37 CFR 11.18(b). Thus, a simple payment of the small entity basic filing or basic national fee, without a specific written assertion, activates the provisions of  37 CFR 1.4(d)(4) and, by that, invokes the self-certification requirement set forth in 37 CFR 11.18(b), regardless of whether the party is a practitioner or non-practitioner.

  VII. REMOVAL OF STATUS

Once small entity status is established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due. 37 CFR 1.27(g)(1)37 CFR 1.27(g)(2) requires that notification of any change in status resulting in loss of entitlement to small entity status be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity is no longer appropriate. 37 CFR 1.27(g)(2) also requires that the notification of loss of entitlement to small entity status be in the form of a specific written assertion to that extent, rather than only payment of a non-small entity fee. For example, when paying the issue fee in an application that has previously been accorded small entity status and the required new determination of continued entitlement to small entity status reveals that status has been lost, applicant should not just simply pay the non-small entity issue fee or cross out the recitation of small entity status on Part B of the Notice of Allowance and Fee(s) Due (PTOL-85), but should (A) check the appropriate box on Part B of the PTOL-85 form to indicate that there has been a change in entity status and applicant is no longer claiming small entity status, and (B) pay the fee amount for a non-small entity.

For correcting errors in small entity status, see paragraph X below.

VIII.   IMPROPERLY ESTABLISHING SMALL ENTITY STATUS

37 CFR 1.27(h) indicates that any attempt to fraudulently establish status as a small entity or pay fees as a small entity will be considered as a fraud practiced or attempted on the Office. Applicants should not rely on any oral advice inadvertently given by an Office employee as to entitlement to small entity status. In addition, improperly and with intent to deceive establishing status as a small entity or paying fees as a small entity will be considered as a fraud practiced or attempted on the Office. Normally, the Office will not question a claim to status as a small entity.

IX.   REFUNDS BASED ON LATER ESTABLISHMENT OF SMALL ENTITY STATUS

37 C.F.R. 1.28   Refunds when small entity status is later established; how errors in small entity status are excused.

  • (a) Refunds based on later establishment of small entity status. A refund pursuant to § 1.26, based on establishment of small entity status, of a portion of fees timely paid in full prior to establishing status as a small entity may only be obtained if an assertion under § 1.27(c) and a request for a refund of the excess amount are filed within three months of the date of the timely payment of the full fee. The three-month time period is not extendable under § 1.136. Status as a small entity is waived for any fee by the failure to establish the status prior to paying, at the time of paying, or within three months of the date of payment of, the full fee.
  • (b) Date of payment.
    • (1) The three-month period for requesting a refund, pursuant to paragraph (a) of this section, starts on the date that a full fee has been paid;
    • (2) The date when a deficiency payment is paid in full determines the amount of deficiency that is due, pursuant to paragraph (c) of this section.

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37 CFR 1.28(a) provides a three-month time period for requesting a refund of a portion of a non-small entity fee based on later establishment of small entity status. The start date of the three-month refund period of 37 CFR 1.28(a) is the date the full fee has been paid. See 37 CFR 1.28(b)(1). Payment by authorization to charge a deposit account is treated for refund purposes the same as payments by other means (e.g., check or credit card authorizations), with each being treated as paid (for refund purposes) on the date of receipt in the Office as defined by 37 CFR 1.6. Thus, the date of receipt of an authorization to charge fees starts the three-month period for refunds under 37 CFR 1.28(a), not the date of debit of the fee to a deposit account. If a payment is mailed with a Certificate of Mailing under 37 CFR 1.8, the three month period for requesting a refund will start on the actual date of receipt of the payment in the Office, and not the Certificate of Mailing date. If a payment is filed by Express Mail under 37 CFR 1.10, the date of deposit with the United States Postal Service (shown by the “date-in” on the Express Mail mailing label or other official USPS notation) is the date of receipt of the payment by the Office under 37 CFR 1.10(a) and the three month period for requesting a refund starts on the date shown by the “date-in” on the Express Mail mailing label rather than the date when the payment actually reaches the Office.

Request for refunds, along with the assertions under 37 CFR 1.27(c), should be addressed to Mail Stop 16, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.

X.   CORRECTING ERRORS IN SMALL ENTITY STATUS

37 C.F.R. 1.28   Refunds when small entity status is later established; how errors in small entity status are excused.

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  • (c) How errors in small entity status are excused. If status as a small entity is established in good faith, and fees as a small entity are paid in good faith, in any application or patent, and it is later discovered that such status as a small entity was established in error, or that through error the Office was not notified of a loss of entitlement to small entity status as required by § 1.27(g)(2), the error will be excused upon: compliance with the separate submission and itemization requirements of paragraphs (c)(1) and (c)(2) of this section, and the deficiency payment requirement of paragraph (c)(2) of this section:
    • (1) Separate submission required for each application or patent. Any paper submitted under this paragraph must be limited to the deficiency payment (all fees paid in error), required by paragraph (c)(2) of this section, for one application or one patent. Where more than one application or patent is involved, separate submissions of deficiency payments (e.g., checks) and itemizations are required for each application or patent. See § 1.4(b).
    • (2) Payment of deficiency owed. The deficiency owed, resulting from the previous erroneous payment of small entity fees, must be paid.
      • (i) Calculation of the deficiency owed. The deficiency owed for each previous fee erroneously paid as a small entity is the difference between the current fee amount (for other than a small entity) on the date the deficiency is paid in full and the amount of the previous erroneous (small entity) fee payment. The total deficiency payment owed is the sum of the individual deficiency owed amounts for each fee amount previously erroneously paid as a small entity. Where a fee paid in error as a small entity was subject to a fee decrease between the time the fee was paid in error and the time the deficiency is paid in full, the deficiency owed is equal to the amount (previously) paid in error;
      • (ii) Itemization of the deficiency payment. An itemization of the total deficiency payment is required. The itemization must include the following information:
        • (A) Each particular type of fee that was erroneously paid as a small entity, (e.g., basic statutory filing fee, two-month extension of time fee) along with the current fee amount for a non-small entity;
        • (B) The small entity fee actually paid, and when. This will permit the Office to differentiate, for example, between two one-month extension of time fees erroneously paid as a small entity but on different dates;
        • (C) The deficiency owed amount (for each fee erroneously paid); and
        • (D) The total deficiency payment owed, which is the sum or total of the individual deficiency owed amounts set forth in paragraph (c)(2)(ii)(C) of this section.
    • (3) Failure to comply with requirements. If the requirements of paragraphs (c)(1) and (c)(2) of this section are not complied with, such failure will either: be treated as an authorization for the Office to process the deficiency payment and charge the processing fee set forth in § 1.17(i), or result in a requirement for compliance within a one-month non-extendable time period under § 1.136(a) to avoid the return of the fee deficiency paper, at the option of the Office.
  • (d) Payment of deficiency operates as notification of loss of status. Any deficiency payment (based on a previous erroneous payment of a small entity fee) submitted under paragraph (c) of this section will be treated under § 1.27(g)(2) as a notification of a loss of entitlement to small entity status.

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37 CFR 1.28(c) provides that if small entity status is established in good faith and the small entity fees are paid in good faith, and it is later discovered that such status as a small entity was established in error or through error the Office was not notified of a change of status, the error will be excused upon compliance with the separate submission and itemization requirements of 37 CFR 1.28(c)(1) and (c)(2), and the deficiency payment requirement of 37 CFR 1.28(c)(2). The deficiency amount owed under 37 CFR 1.28(c) is calculated using the date on which the deficiency was paid in full. See 37 CFR 1.28(b)(2).

37 CFR 1.28(c)(1) requires that a deficiency paper be limited to one application or patent file. Where, for example, the same set of facts has caused errors in payment in more than one application and/or patent file, a separate paper must be submitted in each file for which an error is to be excused.

37 CFR 1.28(c)(2) requires that for each fee that was erroneously paid as a small entity, the deficiencies owed must be paid, and the payment of the deficiencies must be itemized. The deficiency owed for each previous fee erroneously paid as a small entity is the difference between the current fee amount (for other than a small entity) on the date the deficiency is paid in full and the amount of the previous erroneous (small entity) fee payment. Where there has been a fee decrease, the deficiency owed is equal to the amount (previously) paid in error, not the difference between the amount (previously) paid in error and the new lower non-small entity fee. 37 CFR 1.28(c)(2)(ii) requires the following itemizations: (A) the particular fee involved (e.g., basic filing fee, extension of time fee); (B) the small entity fee amount actually paid and when (for example, distinguishing between two one-month extension of time fees erroneously paid on two different dates); (C) the actual deficiency owed for each fee previously paid in error; and (D) the total deficiency owed (i.e., the sum of the individual deficiencies owed).

Under 37 CFR 1.28(c)(3), the failure to comply with the requirements of 37 CFR 1.28(c)(1) and (c)(2) permits the Office at its option to either charge a processing fee (37 CFR 1.17(i)) to process the paper or require compliance within a one-month non-extendable time period to avoid return of the paper.

Any paper submitted under 37 CFR 1.28(c) is treated as a notification of loss of small entity status under 37 CFR 1.27(g)(2). See 37 CFR 1.28(d).

A maintenance fee improperly paid as a small entity where small entity status has been established but is no longer appropriate will be treated as a matter under 37 CFR 1.28(c) and will not be considered to involve expiration of the patent under 37 CFR 1.378. On the other hand, payment of a maintenance fee in the small entity amount where small entity status has not been established would result in the expiration of the patent under37 CFR 1.378 unless the full maintenance fee due or a written assertion of small entity status is timely filed.

 

509.04   Micro Entity Status — Definitions [R-11.2013]

35 U.S.C. 123  Micro entity defined.

  • (a) IN GENERAL.—For purposes of this title, the term "micro entity" means an applicant who makes a certification that the applicant—
    • (1) qualifies as a small entity, as defined in regulations issued by the Director;
    • (2) has not been named as an inventor on more than 4 previously filed patent applications, other than applications filed in another country, provisional applications under section 111(b), or international applications filed under the treaty defined in section 351(a) for which the basic national fee under section 41(a) was not paid;
    • (3) did not, in the calendar year preceding the calendar year in which the applicable fee is being paid, have a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding 3 times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census; and
    • (4) has not assigned, granted, or conveyed, and is not under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding 3 times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census.
  • (b) APPLICATIONS RESULTING FROM PRIOR EMPLOYMENT.—An applicant is not considered to be named on a previously filed application for purposes of subsection (a)(2) if the applicant has assigned, or is under an obligation by contract or law to assign, all ownership rights in the application as the result of the applicant’s previous employment.
  • (c) FOREIGN CURRENCY EXCHANGE RATE.—If an applicant’s or entity’s gross income in the preceding calendar year is not in United States dollars, the average currency exchange rate, as reported by the Internal Revenue Service, during that calendar year shall be used to determine whether the applicant’s or entity’s gross income exceeds the threshold specified in paragraphs (3) or (4) of subsection (a).
  • (d) INSTITUTIONS OF HIGHER EDUCATION.—For purposes of this section, a micro entity shall include an applicant who certifies that—
    • (1) the applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or
    • (2) the applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular applications to such an institution of higher education.
  • (e) DIRECTOR’S AUTHORITY.—In addition to the limits imposed by this section, the Director may, in the Director’s discretion, impose income limits, annual filing limits, or other limits on who may qualify as a micro entity pursuant to this section if the Director determines that such additional limits are reasonably necessary to avoid an undue impact on other patent applicants or owners or are otherwise reasonably necessary and appropriate. At least 3 months before any limits proposed to be imposed pursuant to this subsection take effect, the Director shall inform the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate of any such proposed limits.

Public Law 112-29, sec. 10(b), 125 Stat. 284 (September 16, 2011)( Leahy-Smith America Invents Act (AIA)) adds 35 U.S.C. 123 to define a ‘‘micro entity.’’ March 19, 2013 is the date that the 75% micro entity discount first became available, because that is the date that fees “for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents” were first set or adjusted by rulemaking under the Office’s fee setting authority. See Setting and Adjusting Patent Fees, 78 FR 4212 (January 18, 2013) which became effective in large part on March 19, 2013. January 1, 2014 is the rulemaking’s effective date for the micro entity discount as it applies to certain “filing, searching [and] examining” fees for international applications under the PCT.

The fees which are reduced by 75% for micro entities include filing fees (nonprovisional and provisional), search fees, examination fees, issue fees, and appeal fees for utility, design, plant, and reissue patent applications. Also included are patent maintenance fees including the maintenance fee grace period surcharges as well as the surcharge for a petition to accept a delayed maintenance fee payment in order to reinstate an expired patent. Included within the ambit of filing fees subject to the micro entity discount are excess claims fees, application size fees, and the surcharge required by 37 CFR 1.16(f) if either the basic filing fee or the oath or declaration for a nonprovisional application was not present on the filing date. Included within the ambit of examination fees subject to the micro entity discount are the fees for requesting prioritized examination under 37 CFR 1.102(e), ex parte reexamination under 37 CFR 1.510, and supplemental examination under 37 CFR 1.601. Included within the ambit of appeal fees subject to the micro entity discount are the fees for filing notice of appeal, forwarding an appeal to the PTAB, and requesting an oral hearing.

I.   REQUIREMENT FOR A CERTIFICATION

35 U.S.C. 123 requires a certification as a condition for an applicant to be considered a micro entity. The certification must be in writing and must be filed prior to or at the time a fee is first paid in the micro entity amount in an application or patent. Status as a micro entity in one application or patent does not affect the status of any other application or patent. The refiling of an application under 37 CFR 1.53 as a continuation or divisional, or continuation-in-part application (including a continued prosecution application under 37 CFR 1.53(d) (design applications only)), or the filing of a reissue application, requires a new certification of entitlement to micro entity status in the continuing or reissue application. See 37 CFR 1.29(e). A fee may be paid in the micro entity amount only if it is submitted with, or subsequent to, the submission of a certification of entitlement to micro entity status. See 37 CFR 1.29(f). The micro entity provisions of 37 CFR 1.29 apply to applications filed before, on, and after March 19, 2013. A micro entity certification may be filed in pending applications, reexamination proceedings, and supplemental examination proceedings at any time during prosecution and in patents prior to or concurrent with a maintenance fee payment.

Any attempt to fraudulently establish status or pay fees as a micro entity shall be considered as a fraud practiced or attempted on the Office. Improperly, and with intent to deceive, establishing status or paying fees as a micro entity shall be considered as a fraud practiced or attempted on the Office. See 37 CFR 1.29(j).

II.   BASES FOR ESTABLISHING MICRO ENTITY STATUS

There are two separate bases for establishing micro entity status referred to as the “gross income basis” under 35 U.S.C. 123(a) and the “institution of higher education basis” under 35 U.S.C. 123(d). 37 CFR 1.29(a) implements the gross income basis for establishing micro entity status, and 37 CFR 1.29(d) implements the institution of higher education basis for establishing micro entity status. The Office’s micro entity certification forms are form PTO/SB/15A (gross income basis)(see MPEP § 509.04(a)) and form PTO/SB/15B (institution of higher education basis)(see MPEP § 509.04(b)). No evidence such as a copy of a tax return need accompany the certification form(s). In addition, the certification form(s) need not be notarized. The certification form(s) must, however, identify the application or patent to which it pertains and it must be signed by an authorized party as set forth in MPEP § 509.04(c). For new application filings not previously assigned a patent application number, providing the first named inventor and the title of the invention at the top of the certification form(s) in the spaces provided will be sufficient to identify the application. It is strongly recommended that the following document descriptions in EFS-Web be used as appropriate:

  • • Certification of Micro Entity (Gross Income Basis)
  • • Certification of Micro Entity (Education Basis)
  •  

509.04(a)   Gross Income Basis for Micro Entity Status [R-11.2013]

35 U.S.C. 123(a) provides that the term ‘‘micro entity’’ means an applicant who makes a certification that the applicant: (1) Qualifies as a small entity as defined in 37 CFR 1.27; (2) has not been named as an inventor on more than four previously filed patent applications, other than applications filed in another country, provisional applications under 35 U.S.C. 111(b), or international applications for which the basic national fee under 35 U.S.C. 41(a) was not paid; (3) did not, in the calendar year preceding the calendar year in which the applicable fee is being paid, have a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986 (26 U.S.C. 61(a)), exceeding three times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census; and (4) has not assigned, granted, or conveyed, and is not under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding three times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census. 37 CFR 1.29(a)(1)-(4) implements the requirements under 35 U.S.C. 123(a)(1)-(4) for establishing micro entity status on the gross income basis.

The income level that is three times the median household income for the preceding calendar year, as most recently reported by the Bureau of the Census (i.e., the income threshold set forth in 35 U.S.C. 123(a)(3) and (a)(4)) is referred to as the “gross income limit” or the “maximum qualifying gross income.” The Office’s micro entity status certification form PTO/SB/15A refers to the official Web page address providing the up-to-date maximum qualifying gross income. Each inventor and each non-inventor applicant (e.g., an assignee-applicant) must individually meet the gross income limit. The gross income limit applies to the assignee (if any) regardless of whether the assignee is identified as the applicant. Under 37 CFR 1.29(a)(4), the gross income limit applies to each party with an ownership interest in the application including any party(ies) to whom an ownership interest obligation is owed. Accordingly, each assignee, licensee, and inventor must individually meet the gross income limit.

35 U.S.C. 123(b) provides that an applicant is not considered to be named on a previously filed application for purposes of 35 U.S.C. 123(a)(2) if the applicant has assigned, or is under an obligation by contract or law to assign, all ownership rights in the previously filed application as the result of the applicant’s previous employment. 37 CFR 1.29(b) implements the provisions of 35 U.S.C. 123(b).

35 U.S.C. 123(c) provides that if an applicant’s or entity’s gross income in the preceding calendar year is not in United States dollars, the average currency exchange rate, as reported by the Internal Revenue Service, during that calendar year shall be used to determine whether the applicant’s or entity’s gross income exceeds the gross income limit specified in 35 U.S.C. 123(a)(3) or (4). 37 CFR 1.29(c) implements the provisions of 35 U.S.C. 123(c).

I.   SECTION 1.29(a) – Gross Income Basis Requirements

37 C.F.R.   § 1.29 Micro entity status.

  • (a) To establish micro entity status under this paragraph, the applicant must certify that:
    • (1) The applicant qualifies as a small entity as defined in § 1.27;
    • (2) Neither the applicant nor the inventor nor a joint inventor has been named as the inventor or a joint inventor on more than four previously filed patent applications, other than applications filed in another country, provisional applications under 35 U.S.C. 111(b), or international applications for which the basic national fee under 35 U.S.C. 41(a) was not paid;
    • (3) Neither the applicant nor the inventor nor a joint inventor, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986 (26 U.S.C. 61(a)), exceeding three times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census; and
    • (4) Neither the applicant nor the inventor nor a joint inventor has assigned, granted, or conveyed, nor is under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding three times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census.

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37 CFR 1.29(a)(1)-(4) sets forth the requirements for establishing micro entity status on the gross income basis. If an application names more than one inventor, each inventor must meet the requirements of 37 CFR 1.29(a)(1)-(4) to file a micro entity certification on the gross income basis in the application. If the applicant is other than the inventor(s) (e.g., an assignee-applicant), then each such non-inventor applicant as well as each inventor must meet the requirements of 37 CFR 1.29(a)(1)-(4) to file a micro entity certification on the gross income basis in the application. If there is any assignee or licensee that received “ownership rights” from any inventor or non-inventor applicant, then the party(ies) with the “ownership interest” must also meet the gross income limit requirement.

Because each inventor and each non-inventor applicant (e.g., assignee-applicant) must separately meet the requirements under 37 CFR 1.29(a)(1)-(4), it would not be appropriate to file a micro entity certification under 37 CFR 1.29(a) for the application if there were more than one applicant or inventor and not all of the applicants and inventors qualified as micro entities under 35 U.S.C. 123(a): e.g., (1) an applicant or inventor exceeded the gross income limit; (2) an applicant or inventor had more than four other nonprovisional applications; or (3) an applicant or inventor had assigned, granted, or conveyed the application or was under an obligation to do so, to an entity that exceeds the gross income limit. Additionally, the gross income limit under 35 U.S.C. 123(a)(3) applies to each applicant’s and inventor’s income separately (i.e., the combined gross income of all of the applicants and inventors need not be below the income level in 35 U.S.C. 123(a)(3)). Further, the assignment requirement in 37 CFR 1.29(a)(4) applies to each applicant and inventor (i.e., if an applicant or inventor assigns or is obligated to assign the invention to more than one assignee (e.g., half interest in the invention to two assignees), each of the assignees must meet the income limit specified in 37 CFR 1.29(a)(4)). Note also that in this context an inventor ordinarily should qualify as a small entity under 37 CFR 1.29(a)(1) and 1.27(a)(1). Under 37 CFR 1.27(a)(1), an inventor generally is a small entity and retains such status even if the inventor assigns some rights to another small entity. Similarly, to obtain micro entity status, 37 CFR 1.29(h) requires that any non-applicant assignee be a small entity.

CERTIFICATION FORM – GROSS INCOME BASIS

The Office’s form PTO/SB/15A contains the certifications under 37 CFR 1.29(a)(1)-(4) that are required to establish micro entity status on the gross income basis. The form refers to the certification requirements as: (1) Small Entity Requirement, (2) Application Filing Limit, (3) Gross Income Limit on Applicants and Inventors, and (4) Gross Income Limit on Parties with an “Ownership Interest.”

Certification of Micro Entity Status (Gross Income Basis)
Privacy Act Statement

A.   SMALL ENTITY REQUIREMENT

In order to meet the small entity requirement, every party holding rights in the application must qualify as a small entity under 37 CFR 1.27. If any rights in the application are assigned, granted, conveyed, or licensed to a party that does not qualify as a small entity under 37 CFR 1.27, the applicant cannot qualify for any patent fee discount. An obligation to assign, grant, convey, or license rights in the application to a party that does not qualify for small entity status would also disqualify the applicant from receiving any patent fee discount. In order to qualify for small entity status, and in order to meet the small entity requirement for micro entity status, there can be no party holding rights or obligated rights in the application that does not qualify as a small entity. See MPEP § 509.02 for a discussion of the requirements for small entity status.

B.   APPLICATION FILING LIMIT

For purposes of establishing micro entity status under the “gross income” basis, the application filing limit as set forth in 37 CFR 1.29(a)(2) includes: (i) previously filed U.S. nonprovisional applications (e.g., utility, design, plant, continuation, and divisional applications), (ii) previously filed U.S. reissue applications, and (iii) previously filed U.S. national stage applications under the Patent Cooperation Treaty (PCT). All such applications naming the inventor or a joint inventor are counted toward the application filing limit, whether the applications were filed before, on, or after March 19, 2013. Further, it does not matter whether the previously filed applications are pending, patented, or abandoned; they are still included when counting to determine whether the application filing limit has been reached.

The application filing limit does not include: (i) foreign applications; (ii) international (PCT) applications for which the basic U.S. national stage filing fee was not paid; and (iii) provisional applications. In addition, where an applicant, inventor, or joint inventor has assigned, or is under an obligation by contract or law to assign, all ownership rights in the application as the result of the applicant’s, inventor’s, or joint inventor’s previous employment the applicant, inventor or joint inventor is not considered to be named on the prior filed application for purposes of determining micro entity status. See 37 CFR 1.29(b).

Because the four application limit is a limit on previously filed U.S. nonprovisional applications, reissues applications, and national stage applications, the maximum number of applications in which fees can be paid at the micro entity discount rate can vary from 0 to 5 for any given inventor. For example, consider a person named as a sole inventor in five previously filed U.S. nonprovisional patent applications in which all ownership rights have remained with the sole inventor (i.e., no assignment or licensing of patent rights ever occurred). This person was not named as an inventor in any other application. Because all five applications count against the application filing limit, this person cannot be named as an inventor in any future-filed application entitled to micro entity status on the “gross income” basis under 37 CFR 1.29(a). (However, the filing of a future sixth application will not jeopardize entitlement to micro entity status in any of the five applications already filed.) If the first two of the inventor’s five applications went abandoned prior to March 19, 2013, then the inventor would not have had the opportunity to pay fees at the micro entity discount rate in those two applications. (The micro entity discount became available for the first time on March 19, 2013.) However if the third-filed application issued as a patent, then for purposes of paying maintenance fees, the applicant-turned-patentee (the sole inventor in this example) may establish entitlement to micro entity status on the “gross income” basis if all 4 requirements under 37 CFR 1.29(a) are met. If the fourth and fifth filed applications are still pending, then similarly, the inventor may establish entitlement to micro entity status on the “gross income” basis if the four requirements under 37 CFR 1.29(a) are met.

C.   GROSS INCOME LIMIT ON APPLICANTS AND INVENTORS

For purposes of qualifying for micro-entity status under 37 CFR 1.29(a) and paying fees at the micro entity discount, it is required that no inventor had a gross income exceeding the gross income limit in the calendar year preceding the time of fee payment. This gross income level requirement also applies to any applicant who is not an inventor (e.g., an assignee-applicant). 35 U.S.C. 123(a)(3) and 37 CFR 1.29(a)(3) define the gross income limit as “three times median household income for [the] preceding calendar year, as most recently as reported by the Bureau of the Census.” Based on that definition, the gross income limit is reported on the USPTO Web site at http://www.uspto.gov/patents/law/ micro_entity.jsp as the “maximum qualifying gross income.” At the time any fee is to be paid in the micro entity amount, it is required that no inventor and no non-inventor applicant (if any) have a preceding calendar year’s gross income exceeding the “maximum qualifying gross income” posted on the USPTO Web site.

It should be noted that “gross income” means total income. “Gross income” and “adjusted gross income” are not the same thing. Adjusted gross income is defined as gross income minus adjustments to income. For purposes of micro entity status it is “gross income” – not “adjusted gross income” that matters. Section 61(a) of the Internal Revenue Code of 1986 (26 U.S.C. 61(a)) provides that: "[e]xcept as otherwise provided in this subtitle, gross income means all income from whatever source derived, including (but not limited to) the following items: (1) Compensation for services, including fees, commissions, fringe benefits, and similar items; (2) Gross income derived from business; (3) Gains derived from dealings in property; (4) Interest; (5) Rents; (6) Royalties; (7) Dividends; (8) Alimony and separate maintenance payments; (9) Annuities; (10) Income from life insurance and endowment contracts; (11) Pensions; (12) Income from discharge of indebtedness; (13) Distributive share of partnership gross income; (14) Income in respect of a decedent; and (15) Income from an interest in an estate or trust."

With the coming of each new year, the “preceding calendar year” advances, and anyone’s preceding calendar year’s gross income may change as a result. Therefore, if the prosecution of an application under micro entity status extends across multiple calendar years, each applicant, inventor, and joint inventor must verify that the gross income limit for the requisite calendar year is met to maintain eligibility for the micro entity discount. If the gross income limit is no longer met, then a notification of loss of entitlement to micro entity status must be filed in the application to remove micro entity status. On the other hand, it is possible a small entity applicant not meeting the gross income limits specified in 37 CFR 1.29(a)(3) and (4) in the calendar year in which the application was filed could meet the 37 CFR 1.29(a)(3) and (4) gross income limits in the calendar year in which the issue fee is paid, for example, due to a reduction in income. However, the applicant must still be a small entity at the time of issue fee payment, and the applicant must have met the application filing limit under 37 CFR 1.29(a)(2) when the application was filed.

The applicable “maximum qualifying gross income” that is reported on the USPTO Web site athttp://www.uspto.gov/patents/law/micro_entity.jsp is anticipated to change (increase or decrease) in September or October of each year. If the reported “maximum qualifying gross income” increases, then parties that met the gross income limit earlier that calendar year will continue to meet the gross income limit for the rest of the calendar year. There may also be additional parties that meet the gross income limit. If the reported “maximum qualifying gross income”decreases, however, some parties that met (e.g., barely met) the gross income limit earlier that calendar year might no longer meet the gross income limit for the remainder of the calendar year. In that event a notification of loss of entitlement to micro entity status must be filed as fees could not be paid in the micro entity amount in the relevant patent application or patent for the remainder of that calendar year.

For inventors who file tax returns jointly with their spouse, for example, determining the inventor’s gross income may not be readily apparent from the preceding calendar year’s joint tax return. Regardless of whether any inventor, or any person who is a non-inventor applicant (e.g., assignee-applicant), or any person with an “ownership interest” under 37 CFR 1.29(a)(4) actually filed a joint tax return rather than a separate tax return in the preceding calendar year, the gross income limit applies to the amount of income the person would have reported as gross income if that person were filing a separate tax return, which includes for example, properly accounting for that person’s portion of interest, dividends, and capital gains from joint bank or brokerage accounts.

For filings on behalf of deceased inventors, gross income from the deceased inventor’s estate or trust does not count toward the gross income limit because the trust or decedent’s estate is considered a separate legal entity. However, the deceased inventor’s legal representative acting on behalf of the deceased inventor under 37 CFR 1.43 is an “applicant” in terms of 37 CFR 1.29(a). Therefore the legal representative’s gross income in the preceding calendar year cannot exceed the gross income limit under 37 CFR 1.29(a)(3) in order to qualify for micro entity status. For example, if the deceased inventor has a surviving spouse who is named on the Application Data Sheet (ADS) as an applicant by virtue of being the legal representative of the deceased inventor, the surviving spouse’s gross income in the preceding calendar year cannot exceed the gross income limit in order to qualify for micro entity status. On the other hand, if the deceased inventor had assigned all rights in the application (or if subsequent to the inventor’s death, the legal representative assigned all rights in the application) AND the assignee that received all rights was named as an applicant (or the applicant), then it would be the assignee that would have to meet the gross income limit (under 37 CFR 1.29(a)(4)) and not the legal representative. In any event, each other joint inventor, assignee, and licensee (if any) would also have to meet the gross income limit in order to qualify for micro entity status.

D.   GROSS INCOME LIMIT ON PARTIES WITH AN “OWNERSHIP INTEREST”

Pursuant to 37 CFR 1.29(a)(4), the gross income limit extends to any party with an “ownership interest” from any applicant or inventor. Accordingly, for each inventor, applicant, and party with an “ownership interest,” gross income in the calendar year preceding the time of fee payment must not exceed the “maximum qualifying gross income.” Thus, the gross income limit applies to the assignee regardless of whether the assignee is identified as the applicant. For micro entity status, 37 CFR 1.29(a)(4) requires that the gross income limit be met by each assignee and licensee (if any) as well as by each inventor.

An applicant is disqualified from micro entity status on the gross income basis if an inventor or an assignee-applicant transfers, or is obligated to transfer, any ownership interest in the patent application to an entity that exceeds the gross income limit. For example, consider a patent application with a sole inventor who does not exceed the gross income limit. If the inventor assigns, or is obligated to assign, all rights in the patent application to an employer that is, for example, a corporation having several million dollars in annual receipts, there can be no micro entity discount of patent fees. Depending on the size of the corporation, the small entity discount may be unavailable as well. If the corporation transfers all of its rights back to the inventor, or transfers all of its rights to some other person who does not exceed the gross income limit, such a retransfer will not result in qualification for micro entity status. The 37 CFR 1.29(a)(4) certification requirement is that no ownership interest "has" been transferred, or is obligated to be transferred, to an assignee or licensee that exceeds the gross income limit. Once an assignee or licensee exceeding the gross income limit receives the ownership interest, the 37 CFR 1.29(a)(4) certification requirement can no longer be met – even if the assignee or licensee retransfers rights and no longer holds any ownership interest in the application.

If prosecution of an application that is under 37 CFR 1.29(a) micro entity status extends into a new year, it is important to verify that no inventor, no non-inventor applicant, and no party with a 37 CFR 1.29(a)(4) “ownership interest,” had a gross income in the new preceding calendar year that exceeds the “maximum qualifying gross income” reported on the USPTO Web site. If the coming of a new year results in the gross income limit not being met by any inventor, applicant or party with a 37 CFR 1.29(a)(4) “ownership interest,” then a notification of loss of entitlement to micro entity status under 37 CFR 1.29(i) must be filed in the application to remove micro entity status.

II.   SECTION 1.29(b) – Previously Filed Patent Application Exclusion

37 C.F.R.   § 1.29 Micro entity status.

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  • (b) An applicant, inventor, or joint inventor is not considered to be named on a previously filed application for purposes of paragraph (a)(2) of this section if the applicant, inventor, or joint inventor has assigned, or is under an obligation by contract or law to assign, all ownership rights in the application as the result of the applicant’s, inventor’s, or joint inventor’s previous employment.

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37 CFR 1.29(b) implements the provisions of 35 U.S.C. 123(b). 37 CFR 1.29(b) provides that an applicant, inventor, or joint inventor is not considered to be named on a previously filed application for purposes of 37 CFR 1.29(a)(2) if the applicant, inventor, or joint inventor has assigned, or is under an obligation by contract or law to assign, all ownership rights in the application as the result of the applicant’s, inventor’s, or joint inventor's previous employment.

III.   SECTION 1.29(c) – Gross Income Determined by Currency Exchange Rate

37 C.F.R.   § 1.29 Micro entity status.

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  • (c) If an applicant’s, inventor’s, joint inventor’s, or entity’s gross income in the preceding calendar year is not in United States dollars, the average currency exchange rate, as reported by the Internal Revenue Service, during that calendar year shall be used to determine whether the applicant’s, inventor’s, joint inventor’s, or entity’s gross income exceeds the threshold specified in paragraph (a)(3) or (4) of this section.

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Section 1.29(c) implements the provisions of 35 U.S.C. 123(c). Section 1.29(c) provides that if an applicant’s, inventor’s, joint inventor’s, or entity’s gross income in the preceding calendar year is not in United States dollars, the average currency exchange rate, as reported by the Internal Revenue Service, during that calendar year shall be used to determine whether the applicant’s, inventor’s, joint inventor’s, or entity’s gross income exceeds the threshold specified in 37 CFR 1.29(a)(3) or (a)(4). The Internal Revenue Service reports the average currency exchange rate (Yearly Average Currency Exchange Rates) on its Internet Web site (http://www.irs.gov/Individuals/International-Taxpayers /Yearly- Average-Currency-Exchange-Rates).

For an applicant or entity whose previous calendar year’s gross income was received partially in U.S. dollars and partially in non-United States currency, the gross income amount in non-United States currency must be converted into U.S. dollars in accordance with 37 CFR 1.29(c) and then added to the gross income amount in U.S. dollars to determine whether the applicant or entity meets the gross income requirement of 37 CFR 1.29(a)(3).

 

509.04(b)   Institution of Higher Education Basis for Micro Entity Status [R-11.2013]

37 C.F.R.   § 1.29 Micro entity status.

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  • (d) To establish micro entity status under this paragraph, the applicant must certify that:
    • (1) The applicant qualifies as a small entity as defined in § 1.27; and
    • (2)
      • (i) The applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or
      • (ii) The applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular application to such an institution of higher education.

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35 U.S.C. 123(a) provides a gross income basis under which an applicant may establish micro entity status. See MPEP § 509.04(a). 35 U.S.C. 123 provides that a micro entity shall also include an applicant who certifies that: (1) The applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or (2) the applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular application to such an institution of higher education. 37 CFR 1.29(d) implements the provisions of 35 U.S.C. 123(d).

To the extent that 35 U.S.C. 123(d) (unlike 35 U.S.C. 123(a)) does not expressly require that an applicant qualify as a small entity under 37 CFR 1.27, the Office has invoked its authority under 35 U.S.C. 123(e) to “…impose… other limits on who may qualify as a micro entity…” in order to expressly require that a party claiming micro entity status via 35 U.S.C. 123(d) qualify as a small entity under 37 CFR 1.27. Accordingly 37 CFR 1.29(d)(1) requires that an applicant claiming micro entity status on the institution of higher education basis must certify that the “applicant qualifies as a small entity as defined in § 1.27” in addition to certifying that the other requirements set forth in 35 U.S.C. 123(d)(1) or (2) are met. See MPEP § 509.02 for a discussion of the requirements for small entity status.

I.   REQUIREMENTS

An applicant for micro entity status under the “institution of higher education” basis set forth in 37 CFR 1.29(d) must satisfy two requirements. First, the applicant must certify that the applicant qualifies as a small entity as defined in 37 CFR 1.27. Second, the applicant must certify that either (i) the applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or (ii) the applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular application to such an institution of higher education.

A.   Small Entity Requirement

In order to meet the small entity requirement, every party holding rights in the application must qualify as a small entity under 37 CFR 1.27. If any rights in the application are assigned, granted, conveyed, or licensed to a party that does not qualify as a small entity under 37 CFR 1.27, the applicant cannot qualify for any patent fee discount. An obligation to assign, grant, convey, or license rights in the application to a party that does not qualify for small entity status would also disqualify the applicant from receiving any patent fee discount. In order to qualify for small entity status, and in order to meet the small entity requirement for micro entity status, there can be no party holding rights or obligated rights in the application that does not qualify as a small entity. See MPEP § 509.02 for a discussion of the requirements for small entity status.

B.   Section 1.29(d)(2) Requirement

Under 37 CFR 1.29(d)(2)(i) the applicant must certify that the applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education. Because only a person can have an “employer,” the applicant certifying under 37 CFR 1.29(d)(2)(i) must be a person or persons, which in most cases, means the inventor(s).

Under 37 CFR 1.29(d)(2)(ii) the applicant must certify that the applicant has assigned, granted, or conveyed a license or other ownership interest in the subject application (or is obligated to do so) to such an institution of higher education. An attempt to obtain micro entity status by merely seeking to transfer a de minimus interest to an institution of higher education could be considered a sham transaction. Although the Office considers it highly unlikely that institutions of higher education would be party to such transactions, the Office plans to closely monitor the percentage of applicants claiming micro entity status under 35 U.S.C. 123(d) to ensure that applicants are not engaging in such transactions in order to obtain micro entity status.

II.   Meaning of “Institution of Higher Education”

Section 101(a) of the Higher Education Act of 1965 defines what is meant by “institution of higher education” in the context of 37 CFR 1.29(d). See 20 U.S.C. 1001. Section 101(a) of the Higher Education Act states that the term “institution of higher education” means:

an educational institution in any State that—

  • 1. admits as regular students only persons having a certificate of graduation from a school providing secondary education, or the recognized equivalent of such a certificate, or persons who meet the requirements of section 1091(d)(3) of this title;
  • 2. is legally authorized within such State to provide a program of education beyond secondary education;
  • 3. provides an educational program for which the institution awards a bachelor’s degree or provides not less than a 2-year program that is acceptable for full credit toward such a degree, or awards a degree that is acceptable for admission to a graduate or professional degree program, subject to review and approval by the Secretary;
  • 4. is a public or other nonprofit institution; and
  • 5. is accredited by a nationally recognized accrediting agency or association, or if not so accredited, is an institution that has been granted pre-accreditation status by such an agency or association that has been recognized by the Secretary for the granting of pre-accreditation status, and the Secretary has determined that there is satisfactory assurance that the institution will meet the accreditation standards of such an agency or association within a reasonable time.’

Additionally, section 103 of the Higher Education Act of 1965 provides that the term “State” means the 50 States of the United States as well as “the Commonwealth of Puerto Rico, the District of Columbia, Guam, American Samoa, the United States Virgin Islands, the Commonwealth of the Northern Mariana Islands, and the Freely Associated States’’ and that the Freely Associated States means the ‘‘Republic of the Marshall Islands, the Federated States of Micronesia, and the Republic of Palau.’’ See 20 U.S.C. 1003.

Based upon these definitions, public or non-profit institutions located in one of the 50 States or U.S. territories offering certain undergraduate educational programs credited toward a bachelor’s degree or educational programs awarding “a degree that is acceptable for admission to a graduate or professional degree program” are eligible as an “institution of higher education” for purposes of establishing micro entity status under 37 CFR 1.29(d). Except for universities or other institutions of higher education located outside the United States, any university or other U.S. institution of higher education that qualifies for small entity status by virtue of being a nonprofit organization under 37 CFR 1.27(a)(3) meets the criteria of an “institution of higher education” for micro entity status purposes.

An institution such as a non-profit research foundation, technology transfer organization, or Federal Government research laboratory does not qualify as an “institution of higher education” under the definition of “institution of higher education” set forth in the Higher Education Act of 1965 for purposes of establishing micro entity status.

A.   Universities and Colleges that Do Not Qualify as Institutions of Higher Education

One of the requirements for an “institution of higher education” under section 101(a) of the Higher Education Act of 1965 is that the institution be non-profit. Therefore, for-profit universities and colleges do not qualify as an “institution of higher education” for purposes of establishing micro entity status. As previously stated, foreign universities do not qualify as an “institution of higher education” for purposes of establishing micro entity status. A foreign university may offer an on-line educational program in the United States, however, on-line classes offered in the United States would not qualify the foreign university as an “institution of higher education” for purposes of establishing micro entity status. That’s because the university must be located “in any State” in the context of what “in any State” meant in 1965 – the year of the Higher Education Act of 1965. In addition, institutions that only grant graduate degrees do not qualify as an “institution of higher education” for purposes of establishing micro entity status because section 101(a) of the Higher Education Act of 1965 is limited to an institution that “provides an educational program for which the institution awards a bachelor’s degree or provides not less than a 2-year program that is acceptable for full credit toward such a degree, or awards a degree that is acceptable for admission to a graduate or professional degree program…”

B.   The University Cannot be the Micro Entity Applicant

Although the 37 CFR 1.29(d) basis for qualifying for micro entity status is referred to as the “institution of higher education” basis, it is not the institution of higher education that can qualify for micro entity status, but rather inventors who are employees of an institution of higher education (see 37 CFR 1.29(d)(2)(i)) or inventors or applicants who have conveyed ownership rights to an institution of higher education (see 37 CFR 1.29(d)(2)(ii)). The institution (university) logically cannot make the certifications required under 37 CFR 1.29(d)(2)(i) and (d)(2)(ii) (that the employer from which the university obtains the majority of its income is an institution of higher education as defined by section 101(a) of the Higher Education Act of 1965, or that the university itself has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular application).

C.   CERTIFICATION FORM – INSTITUTION OF HIGHER EDUCATION BASIS

The Office’s form PTO/SB/15B contains the certifications under 37 CFR 1.29(d) that are required to establish micro entity status on the institution of higher education basis. There are 2 signature blocks reflecting that in addition to the small entity requirement under 37 CFR 1.29(d)(1), there are two alternative requirements under 37 CFR 1.29(d)(2). The first signature block is for certifying under 37 CFR 1.29(d)(2)(i) that the applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education. The second signature block is for certifying under 37 CFR 1.29(d)(2)(ii) that the applicant has assigned, granted, or conveyed a license or other ownership interest in the subject application (or is obligated to do so) to such an institution of higher education.

Certification of Micro Entity Status (Higher Education Basis)
Privacy Act Statement

509.04(c)   Parties Who Can Sign the Micro Entity Certification [R-11.2013]

A certification of micro entity status, on either the gross income basis or the institution of higher education basis, can be signed only by an authorized party as set forth in 37 CFR 1.33(b), which includes:

  • (1) A patent practitioner of record;
  • (2) A patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34; or
  • (3) The applicant (37 CFR 1.42). Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.

For joint inventor applicants, each joint inventor should sign a separate copy of the relevant micro entity certification form. However, if one joint inventor is appointed to prosecute the application on behalf of all the other joint inventors, then only that one joint inventor need sign the micro entity certification form. See USPTO form number AIA/81 titled “Power Of Attorney To One Or More Of The Joint Inventors And Change Of Correspondence Address” available on the USPTO forms Web page at http://www.uspto.gov/forms.

Additionally, if any applicant is an assignee or other party under 37 CFR 1.46, and the assignee or other party is a corporation or organization rather than a person, a registered practitioner must sign the certification of micro entity status. An officer of the assignee corporation, for example, is not authorized to sign a certification of micro entity status.

 

509.04(d)   Continued Obligation to Determine Micro Entity Qualification [R-11.2013]

37 C.F.R.   § 1.29 Micro entity status.

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  • (g) A certification of entitlement to micro entity status need only be filed once in an application or patent. Micro entity status, once established, remains in effect until changed pursuant to paragraph (i) of this section. However, a fee may be paid in the micro entity amount only if status as a micro entity as defined in paragraph (a) or (d) of this section is appropriate on the date the fee is being paid. Where an assignment of rights or an obligation to assign rights to other parties who are micro entities occurs subsequent to the filing of a certification of entitlement to micro entity status, a second certification of entitlement to micro entity status is not required.
  • (h) Prior to submitting a certification of entitlement to micro entity status in an application, including a related, continuing, or reissue application, a determination of such entitlement should be made pursuant to the requirements of this section. It should be determined that each applicant qualifies for micro entity status under paragraph (a) or (d) of this section, and that any other party holding rights in the invention qualifies for small entity status under 37 CFR 1.27. The Office will generally not question certification of entitlement to micro entity status that is made in accordance with the requirements of this section.

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An applicant is not required to provide a certification of micro entity status with each fee payment once micro entity status has been established by filing a certification in an application. While an applicant is not required to provide such a certification with each fee payment, the applicant must still be entitled to micro entity status to pay a fee in the micro entity amount at the time of all payments of fees in the micro entity amount. Thus it must be determined whether the requirements for micro entity status exist at the time each fee payment is made. If any requirement for micro entity status is no longer met, then the applicant must notify the Office of loss of micro entity status and pay the required fee in the small entity or undiscounted amount, as appropriate.

For micro entity status on the gross income basis under 37 CFR 1.29(a), the applicant must determine that the applicant and each inventor or joint inventor still meet the applicable conditions of 37 CFR 1.29(a) to claim micro entity status. For example, the applicant must determine that neither the applicant nor inventor nor joint inventor has had a change in gross income that exceeds the “maximum qualifying gross income” as reported on the USPTO Web site (a new determination must be made each year because gross income may change from year to year, and micro entity status is based upon gross income in the calendar year preceding the calendar year in which the applicable fee is being paid). In addition, the applicant must determine that neither the applicant nor inventor nor joint inventor has made, or is obligated by contract or law to make, an assignment, grant, or conveyance to an entity exceeding the “maximum qualifying gross income,” and that no new inventor or joint inventor has been named in the application who does not meet the conditions specified in 37 CFR 1.29(a). See MPEP § 509.04(a), subsection I, for additional information.

For micro entity status under 35 U.S.C. 123(d), the applicant must determine that each applicant still complies with 37 CFR 1.29(d) (e.g., still obtains the majority of his or her income from an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)). 37 CFR 1.29(g) also provides that where an assignment of rights or an obligation to assign rights to other parties who are micro entities occurs subsequent to the filing of a certification of entitlement to micro entity status, a second certification of entitlement to micro entity status is not required.

 

509.04(e)   Notification of Loss of Entitlement to Micro Entity Status [R-11.2013]

37 C.F.R.   § 1.29 Micro entity status.

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  • (i) Notification of a loss of entitlement to micro entity status must be filed in the application or patent prior to paying, or at the time of paying, any fee after the date on which status as a micro entity as defined in paragraph (a) or (d) of this section is no longer appropriate. The notification that micro entity status is no longer appropriate must be signed by a party identified in § 1.33(b). Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate. A notification that micro entity status is no longer appropriate will not be treated as a notification that small entity status is also no longer appropriate unless it also contains a notification of loss of entitlement to small entity status under § 1.27(f)(2). Once a notification of a loss of entitlement to micro entity status is filed in the application or patent, a new certification of entitlement to micro entity status is required to again obtain micro entity status.

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37 CFR 1.29(i) contains provisions for a micro entity that correspond to the provisions of 37 CFR 1.27(g)(2) for a small entity. 37 CFR 1.29(i) provides that notification of a loss of entitlement to micro entity status must be filed in the application or patent prior to paying, or at the time of paying, any fee after the date on which status as a micro entity as defined in 37 CFR 1.29(a) or 1.29(d) is no longer appropriate. The notification that micro entity status is no longer appropriate must be signed by a party identified in 37 CFR 1.33(b). Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate. An applicant can make a simple statement that the applicant is no longer eligible for micro entity status without identifying the particular reason(s) for loss of entitlement to micro entity status.

37 CFR 1.29(i) further provides that a notification that micro entity status is no longer appropriate will not be treated as a notification that small entity status is also no longer appropriate unless it also provides notification of loss of entitlement to small entity status under 37 CFR 1.27(f)(2). Thus, an applicant or patentee who files a notification that micro entity status is no longer appropriate will be treated as a small entity by default. For applications under micro entity status, regular unreduced fee status will result from: (1) a notification of loss of entitlement to micro entity status accompanied by regular unreduced fees or some other indication of loss of entitlement to small entity status; or (2) a notification of loss of entitlement to small entity status by itself.

37 CFR 1.29(i) finally provides that once a notification of a loss of entitlement to micro entity status is filed in the application or patent, a new certification of entitlement to micro entity status is required to again obtain micro entity status. It is strongly recommended that the following document descriptions in EFS-Web be used as appropriate:

  • • Notification of loss of entitlement to small entity status
  • • Notification of loss of entitlement to micro entity status
  •  

509.04(f)   Correcting Errors in Micro Entity Status [R-11.2013]

37 C.F.R.   § 1.29 Micro entity status.

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  • (k) If status as a micro entity is established in good faith in an application or patent, and fees as a micro entity are paid in good faith in the application or patent, and it is later discovered that such micro entity status either was established in error, or that the Office was not notified of a loss of entitlement to micro entity status as required by paragraph (i) of this section through error, the error will be excused upon compliance with the separate submission and itemization requirements of paragraph (k)(1) of this section and the deficiency payment requirement of paragraph (k)(2) of this section.
    • (l) Any paper submitted under this paragraph must be limited to the deficiency payment (all fees paid in error) required for a single application or patent. Where more than one application or patent is involved, separate submissions of deficiency payments are required for each application or patent (see § 1.4(b)). The paper must contain an itemization of the total deficiency payment for the single application or patent and include the following information:
      • (i) Each particular type of fee that was erroneously paid as a micro entity, (e.g., basic statutory filing fee, two-month extension of time fee) along with the current fee amount for a small or nonsmall entity, as applicable;
      • (ii) The micro entity fee actually paid, and the date on which it was paid;
      • (iii) The deficiency owed amount (for each fee erroneously paid); and
      • (iv) The total deficiency payment owed, which is the sum or total of the individual deficiency owed amounts as set forth in paragraph (k)(2) of this section.
    • (2) The deficiency owed, resulting from the previous erroneous payment of micro entity fees, must be paid. The deficiency owed for each previous fee erroneously paid as a micro entity is the difference between the current fee amount for a small entity or non-small entity, as applicable, on the date the deficiency is paid in full and the amount of the previous erroneous micro entity fee payment. The total deficiency payment owed is the sum of the individual deficiency owed amounts for each fee amount previously and erroneously paid as a micro entity.
    • (3) If the requirements of paragraphs (k)(1) and (2) of this section are not complied with, such failure will either be treated at the option of the Office as an authorization for the Office to process the deficiency payment and charge the processing fee set forth in § 1.17(i), or result in a requirement for compliance within a one-month time period that is not extendable under § 1.136(a) to avoid the return of the fee deficiency payment.
    • (4) Any deficiency payment (based on a previous erroneous payment of a micro entity fee) submitted under this paragraph will be treated as a notification of a loss of entitlement to micro entity status under paragraph (i) of this section, but payment of a deficiency based upon the difference between the current fee amount for a small entity and the amount of the previous erroneous micro entity fee payment will not be treated as an assertion of small entity status under § 1.27(c). Once a deficiency payment is submitted under this paragraph, a written assertion of small entity status under § 1.27(c)(1) is required to obtain small entity status.

37 CFR 1.29(k) contains provisions for a micro entity that correspond to the provisions of 37 CFR 1.28(c) for a small entity. 37 CFR 1.28(c) permits an applicant or patentee to correct the erroneous payment of a patent fee in the small entity amount if status as a small entity was established in good faith, and fees as a small entity were paid in good faith. See DH Tech. Inc. v. Synergystex Int’l Inc., 154 F.3d 1333 (Fed. Cir. 1998). 37 CFR 1.29(k) provides that if: (i) An applicant or patentee establishes micro entity status in an application or patent in good faith; (ii) the applicant or patentee pays fees as a micro entity in the application or patent in good faith; and (iii) applicant or patentee later discovers that such micro entity status either was established in error, or that the Office was not notified of a loss of entitlement to micro entity status as required by 37 CFR 1.29(i) through error, the error will be excused upon compliance with the separate submission and itemization requirements of 37 CFR 1.29(k)(1) and the deficiency payment requirement of 37 CFR 1.29(k)(2).

37 CFR 1.29(k)(1) provides that any paper submitted under 37 CFR 1.29(k) must be limited to the deficiency payment (all fees paid in error) required for a single application or patent. 37 CFR 1.29(k)(1) provides that where more than one application or patent is involved, separate submissions of deficiency payments (e.g., checks) and itemizations are required for each application or patent. 37 CFR 1.29(k)(1) also provides that the paper must contain an itemization of the total deficiency payment and include the following information: (1) Each particular type of fee that was erroneously paid as a micro entity, (e.g., basic statutory filing fee, two-month extension of time fee) along with the current fee amount for a small or non-small entity; (2) the micro entity fee actually paid, and the date on which it was paid; (3) the deficiency owed amount (for each fee erroneously paid); and (4) the total deficiency payment owed, which is the sum or total of the individual deficiency owed amounts as set forth in 37 CFR 1.29(k)(2).

37 CFR 1.29(k)(2) provides that the deficiency owed, resulting from the previous erroneous payment of micro entity fees, must be paid. The deficiency owed for each previous fee erroneously paid as a micro entity is the difference between the current fee amount for a small entity or non-small entity, as applicable, on the date the deficiency is paid in full and the amount of the previous erroneous micro entity fee payment. The total deficiency payment owed is the sum of the individual deficiency owed amounts for each fee amount previously and erroneously paid as a micro entity. This corresponds to the procedure for fee deficiency payments based upon the previous erroneous payment of patent fees in the small entity amount. See 37 CFR 1.28(c)(2)(i) ("[t]he deficiency owed for each previous fee erroneously paid as a small entity is the difference between the current full fee amount (for non-small entity) on the date the deficiency is paid in full and the amount of the previous erroneous (small entity) fee payment").

37 CFR 1.29(k)(3) provides that if the requirements of 37 CFR 1.29(k)(1) and (k)(2) are not complied with, such failure will either be treated at the option of the Office as an authorization for the Office to process the deficiency payment and charge the processing fee set forth in 37 CFR 1.17(i), or result in a requirement for compliance within a one-month nonextendable time period under 37 CFR 1.136(a) to avoid the return of the fee deficiency payment.

Section 1.29(k)(4) provides that any deficiency payment (based on a previous erroneous payment of a micro entity fee) submitted under 37 CFR 1.29(k) will be treated as a notification of a loss of entitlement to micro entity status under 37 CFR 1.29(i).

 

510    U.S. Patent and Trademark Office Business Hours [R-11.2013]

The U.S. Patent and Trademark Office (USPTO or Office) working hours are 8:30 a.m. to 5:00 p.m., Monday through Friday, excluding Federal holidays in the District of Columbia. Outside these hours, only USPTO employees are authorized to be in areas of the USPTO other than the Public Search Facilities.

The hours for the Public Search Facility in Alexandria are 8:00 a.m. to 8:00 p.m., Monday through Friday, excluding Federal holidays in the District of Columbia.

See subsections II and III below for information regarding public access to, and conduct on, USPTO premises.

I.   FILING OF PAPERS DURING UNSCHEDULED CLOSINGS OF THE U.S. PATENT AND TRADEMARK OFFICE

37 CFR 1.9(h) provides that the definition of “Federal holiday within the District of Columbia” includes an official closing of the Office. When the entire USPTO is officially closed for business for an entire day, for reasons due to adverse weather or other causes, the Office will consider each such day a “Federal holiday within the District of Columbia” under 35 U.S.C. 21. Any action or fee due on such a day may be taken, or fee paid, on the next succeeding business day the Office is open. In addition, 37 CFR 1.6(a)(1) provides “[t]he 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” to clarify that any day that is a Saturday, Sunday or Federal holiday within the District of Columbia is a day that the USPTO is not open for the filing of applications within the meaning of Article 4(C)(3) of the Paris Convention. Note further that in accordance with 37 CFR 1.6(a)(2), even when the 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, correspondence deposited as Express Mail with the United States Postal Service in accordance with 37 CFR 1.10 will be considered filed on the date of its deposit, regardless of whether that date is a Saturday, Sunday or Federal holiday within the District of Columbia (under 35 U.S.C. 21(b) or 37 CFR 1.7).

When the USPTO is open for business during any part of a business day between 8:30 a.m. and 5:00 p.m., papers are due on that day even though the Office may be officially closed for some period of time during the business day because of an unscheduled event. The procedures of37 CFR 1.10 may be used for filing applications.

Information regarding whether or not the Office is officially closed on any particular day may be obtained by calling 1-800-PTO(786)-9199 or (571) 272-1000.

New patent applications filed in accordance with 37 CFR 1.10 will be stamped by the Office with the date of deposit as “Express Mail” (Priority Mail Express) with the United States Postal Service. For example, if a new patent application is deposited in “Express Mail” (Priority Mail Express) in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date. 37 CFR 1.6(a)(2).

II.   CONDUCT IN PUBLIC INFORMATION FACILITIES

The USPTO has established procedures and regulations governing public conduct on all Office premises, and additional regulations specific to the use of public information facilities, including the Lutrelle F. Parker Sr. Public Search Facility, the Scientific and Technical Information Center, and the File Information Unit. A valid Public User or Visitor’s badge is required to enter USPTO facilities. This badge can be obtained from the Office of Security next door to the Public Search Facility located on the first floor of the Madison East Building, 600 Dulany Street, Alexandria, VA 22314. User badges will be issued to persons not under prohibition from using the search facilities who sign an application form and acknowledge receipt of a copy of the noted regulations. User badges are nontransferable and are valid until reissue or revocation for cause. Office employees must show their Building badges in order to enter the Patent Search Room. An On-line Service Card is required for access to all Public Search Facilities and on-line systems. On-line Service Cards are obtained at the Public Search Facility Receptionist Desk on a user’s first visit.

Persons violating the regulations governing public conduct on Office premises (reproduced below) may be denied the use of Office facilities, and may further be subjected to prosecution under the Criminal Code. Additionally, the name of any person violating these regulations who is registered to practice before the Office may be forwarded to the Office of Enrollment and Discipline for appropriate action under 37 CFR Part 11.

Conduct in Public Information Facilities page 1
Conduct in Public Information Faciilites page 2

III.   USE OF TECHNOLOGY CENTER FACILITIES

In addition to the rules set forth above with regard to public conduct on USPTO premises, authorized members of the public using the facilities of the Technology Centers (TCs) are required to follow the rules set forth below.

  • (A) TC facilities are defined as those areas in Carlyle (Alexandria, VA) where the TCs are located.
  • (B) The use of the TC facilities is strictly limited to the regular business hours of the USPTO, i.e., between the hours of 8:30 a.m. and 5:00 p.m. on regular business days (see subsection I above).
  • (C) Authorized Officials, under these regulations, include Supervisory Patent Examiners and TC Directors.
  • (D) Under applicable statutes and regulations, including Title 41, Code of Federal Regulations, Part 102-74, Subpart C:
    •  

    • (1) No records, or other documents of the USPTO shall be removed from the TC facilities except by express written authorization by an authorized official in the TC where the material resides.
    • (2) The presence or use of equipment such as dictation equipment, reproducing machines, typewriters, and photographic equipment is prohibited without prior permission from an authorized official in the TC where the use is intended.
    • (3) All packages, briefcases, or other personal effects brought into the TC Facilities are subject to search by authorized officials upon request and must be removed when leaving the TC facilities.
    • (4) All verbal requests for compliance with these regulations or other posted USPTO Notices pertaining to activity in the TC facilities, when made by authorized officials, must be promptly complied with.
  • (E) Persons violating these regulations may be denied the use of the facilities in the TC and Office public information facilities, and may further be subject to prosecution under the Criminal Code. Additionally, the name of any person violating these regulations who is registered to practice before the USPTO may be forwarded to the Office of Enrollment and Discipline for appropriate action under 37 CFR Part 11.

If any individual is observed in violation of any of the regulations, immediate compliance should be courteously requested. If a verbal request is not complied with, a note should be made of the individual’s name and Visitor or User badge number, if possible (the badge is required to be prominently displayed) and a report of the incident should be made to the Supervisory Patent Examiner, Supervisory Applications Examiner, or other appropriate supervisor who will take further action.

In addition, if any individual in TC Facilities appears to be a stranger and is not wearing a Visitor badge or User badge, some identification, such as a Visitor, User, or Building badge (issued to Office employees and contractors), should be requested. If the individual refuses, notify a supervisor. Consequently, all Office employees are expected to carry their Building badge with them at all times.

Supervisors, when aware of violations of the posted regulations, should prepare a memorandum detailing the facts of the incident and forward this memorandum to the Deputy Commissioner for Patent Operations via their TC Director. Supervisory Patent Examiners and TC Directors are authorized to demand surrender of a User or Visitor badge on-the-spot. If the Supervisory Patent Examiner exercises this function, the TC Director should be immediately notified, followed up by a memorandum as previously set forth.

 

511    Postal Service Interruptions and Emergencies [R-11.2013]

In the event of a postal interruption or emergency, an announcement will be placed on the USPTO Web site at www.uspto.gov and a notice will be published in the Official Gazette, providing instructions about the filing of patent applications, and other papers related to patent applications and patents.

35 U.S.C. 21   Filing date and day for taking action.

  • (a) The Director may by rule prescribe that any paper or fee required to be filed in the Patent and Trademark Office will be considered filed in the Office on the date on which it was deposited with the United States Postal Service or would have been deposited with the United States Postal Service but for postal service interruptions or emergencies designated by the Director.

*****

37 C.F.R. 1.10   Filing of correspondence by “Express Mail.”

*****

  • (g) Any person who mails correspondence addressed as set out in § 1.1(a) to the Office with sufficient postage utilizing the “Express Mail Post Office to Addressee” service of the USPS, but has the correspondence returned by the USPS due to an interruption or emergency in “Express Mail” service, may petition the Director to consider such correspondence as filed on a particular date in the Office, provided that:
    • (1) The petition is filed promptly after the person becomes aware of the return of the correspondence;
    • (2) The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by “Express Mail”;
    • (3) The petition includes the original correspondence or a copy of the original correspondence showing the number of the “Express Mail” mailing label thereon and a copy of the “Express Mail” mailing label showing the “date-in”; and
    • (4) The petition includes a statement which establishes, to the satisfaction of the Director, the original deposit of the correspondence and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally deposited with the USPS on the requested filing date. The Office may require additional evidence to determine if the correspondence was returned by the USPS due to an interruption or emergency in “Express Mail” service.
  • (h) Any person who attempts to mail correspondence addressed as set out in § 1.1(a) to the Office with sufficient postage utilizing the “Express Mail Post Office to Addressee” service of the USPS, but has the correspondence refused by an employee of the USPS due to an interruption or emergency in “Express Mail” service, may petition the Director to consider such correspondence as filed on a particular date in the Office, provided that:
    • (1) The petition is filed promptly after the person becomes aware of the refusal of the correspondence;
    • (2) The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the attempted mailing by “Express Mail”;
    • (3) The petition includes the original correspondence or a copy of the original correspondence showing the number of the “Express Mail” mailing label thereon; and
    • (4) The petition includes a statement by the person who originally attempted to deposit the correspondence with the USPS which establishes, to the satisfaction of the Director, the original attempt to deposit the correspondence and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally attempted to be deposited with the USPS on the requested filing date. The Office may require additional evidence to determine if the correspondence was refused by an employee of the USPS due to an interruption or emergency in “Express Mail” service.
      • (i) Any person attempting to file correspondence under this section that was unable to be deposited with the USPS due to an interruption or emergency in “Express Mail” service which has been so designated by the Director, may petition the Director to consider such correspondence as filed on a particular date in the Office, provided that:
    • (1) The petition is filed in a manner designated by the Director promptly after the person becomes aware of the designated interruption or emergency in “Express Mail” service;
    • (2) The petition includes the original correspondence or a copy of the original correspondence; and
    • (3) The petition includes a statement which establishes, to the satisfaction of the Director, that the correspondence would have been deposited with the USPS but for the designated interruption or emergency in “Express Mail” service, and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally attempted to be deposited with the USPS on the requested filing date.

I.   “EXPRESS MAIL” RENAMED “PRIORITY MAIL EXPRESS”

Effective July 28, 2013, the United States Postal Service (USPS) changed the name of “Express Mail” to “Priority Mail Express.” All characteristics of the “Priority Mail Express” service are the same as those of the former “Express Mail” service (although the mailing labels differ). References to “Express Mail” or “Express Mail from the USPS in accordance with 37 CFR 1.10” throughout this Manual should be construed as applicable to the “Priority Mail Express” service of the USPS on or after July 28, 2013.

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). The Office does not have resources for picking up any mail. Therefore mail should NOT be sent using the “Hold for Pickup” service option (whereby the mail is retained at the destination postal facility for retrieval by the addressee). Mail sent using the “Hold for pickup” service will not reach the Office.

See MPEP § 513 for the use of the Priority Mail Express (formerly “Express Mail”) Mailing procedure of 37 CFR 1.10.

II.   PETITION DUE TO A POSTAL SERVICE INTERRUPTION OR EMERGENCY

37 CFR 1.10(i) provides a procedure under which applicant may petition the Director to have correspondence (papers and fees) which was unable to be deposited with the United States Postal Service (USPS) because of an interruption or emergency in "Express Mail" (Priority Mail Express) service which is so designated by the Director considered as having been filed on a particular date in the Office. Authority for such a practice is found in 35 U.S.C. 21(a). In addition, the Director has designated certain events as a postal service interruption or emergency by rule (37 CFR 1.10(g) and (h)). 37 CFR 1.10(g) provides a procedure under which applicant may petition the Director to have correspondence that was returned by the USPS due to an interruption or emergency in "Express Mail" service considered as filed on a particular date in the Office. 37 CFR 1.10(h) provides a procedure under which applicant may petition the Director to have correspondence that was refused by an employee of the USPS due to an interruption or emergency in "Express Mail" service considered as filed on a particular date in the Office. For more information on filing a petition under 37 CFR 1.10(g), (h), or (i), see MPEP § 513, especially subsections IX-XI.

Applicants are cautioned that the provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) to (i) only apply to postal interruptions and emergencies. The provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) to (i) do not provide for granting of a filing date to correspondence as of the date on which it would have been filed but for other exigencies, such as the unavailability of a computer or word processing equipment, or the inaccessibility of an office or building other than a USPS facility. 35 U.S.C. 21(a) requires, in part, that “any paper or fee required to be filed in the Patent and Trademark Office…would have been deposited with the United States Postal Service but for postal service interruptions or emergencies designated by the Director.” The statute requires that the correspondence was complete and ready to be deposited with the USPS on the filing date requested (e.g., complete application papers have been prepared and printed) and that the correspondence could not have been deposited with the USPS on the requested filing date for the sole reason that the postal service was not available due to the interruption or emergency designated by the Office.

III.   ALTERNATIVES TO FILING CORRESPONDENCE VIA PRIORITY MAIL EXPRESS (FORMERLY “EXPRESS MAIL”)

The Office strongly recommends that applicants file new applications by “Express Mail” (Priority Mail Express) in accordance with 37 CFR 1.10 (if such applications are not filed via EFS-Web) because such correspondence will be accorded the date of deposit in “Express Mail” with the USPS as the filing date. See 37 CFR 1.6(a) and MPEP § 513. Applications that are not filed by “Express Mail” can only be accorded the date of receipt in the Office as the filing date (unless there is a postal interruption or emergency designated by the Office and applicants are instructed to file their applications in a manner other than by “Express Mail”), thus any applicant who files an application by first class mail bears the risk of any delay in the delivery of the application to the Office, even if the delay is unusually significant due to some unforeseen event.

In general, applicants should consider filing new patent applications (as well as patent-related correspondence) via the Office electronic filing system (EFS-Web) whenever permitted. See the Legal Framework for EFS-Web posted on the USPTO Web site (http://www.uspto.gov/patents/process/file/efs/guidance /New_legal_framework.jsp) for information pertaining to the types of patent applications and documents that are permitted to be filed via EFS-Web. See also MPEP § 502.05. New applications cannot be transmitted by facsimile and are not entitled to the benefit of a Certificate of Transmission under 37 CFR 1.8. A request for a continued prosecution application (CPA) filed under 37 CFR 1.53(d) (available only for design applications) may be transmitted to the Office by facsimile (37 CFR 1.6(d)(3)); however, it is not entitled to the benefit of a Certificate of Transmission (see 37 CFR 1.8(a)(2)(i)(A)). See 37 CFR 1.6(d) and MPEP § 502.01. New patent applications may also be hand-delivered to the Office. See MPEP § 501.

Correspondence in a patent application can be filed via the USPS, hand-delivery, or, when permitted, via EFS-Web or facsimile. Applicants should file correspondence with a Certificate of Mailing or a Certificate of Transmission under 37 CFR 1.8 when permitted. See MPEP §§ 502.01and 512. Even if the post office is closed due to an emergency, applicants should ordinarily be able to deposit correspondence in a mailbox for first class mail.

 

512    Certificate of Mailing or Transmission [R-11.2013]

37 C.F.R. 1.8   Certificate of mailing or transmission.

  • (a) Except in the situations enumerated in paragraph (a)(2) of this section or as otherwise expressly excluded in this chapter, correspondence required to be filed in the U.S. Patent and Trademark Office within a set period of time will be considered as being timely filed if the procedure described in this section is followed. The actual date of receipt will be used for all other purposes.
    • (1) Correspondence will be considered as being timely filed if:
      • (i) The correspondence is mailed or transmitted prior to expiration of the set period of time by being:
        • (A) Addressed as set out in § 1.1(a) and deposited with the U.S. Postal Service with sufficient postage as first class mail; or
        • (B) Transmitted by facsimile to the Patent and Trademark Office in accordance with § 1.6(d); or
        • (C) Transmitted via the Office electronic filing system in accordance with § 1.6(a)(4); and
      • (ii) The correspondence includes a certificate for each piece of correspondence stating the date of deposit or transmission. The person signing the certificate should have reasonable basis to expect that the correspondence would be mailed or transmitted on or before the date indicated.
    • (2) The procedure described in paragraph (a)(1) of this section does not apply to, and no benefit will be given to a Certificate of Mailing or Transmission on, the following:
      • (i) Relative to Patents and Patent Applications—
        • (A) The filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date, including a request for a continued prosecution application under § 1.53(d);
        • (B) Papers filed in trials before the Patent Trial and Appeal Board, which are governed by § 42.6(b) of this title;
        • (C) Papers filed in contested cases before the Patent Trial and Appeal Board, which are governed by § 41.106(f)of this title;
        • (D) The filing of an international application for patent;
        • (E) The filing of correspondence in an international application before the U.S. Receiving Office, the U.S. International Searching Authority, or the U.S. International Preliminary Examining Authority;
        • (F) The filing of a copy of the international application and the basic national fee necessary to enter the national stage, as specified in § 1.495(b).
        • (G) The filing of a written declaration of abandonment under § 1.138;
        • (H) The filing of a submission under § 1.217 for publication of a redacted copy of an application;
        • (I) The filing of a third-party submission under § 1.290; and
        • (J) The calculation of any period of adjustment, as specified in § 1.703(f).
      • (ii) [Reserved]
      • (iii) Relative to Disciplinary Proceedings—
        • (A) Correspondence filed in connection with a disciplinary proceeding under part 11 of this chapter.
        • (B) [Reserved]
  • (b) In the event that correspondence is considered timely filed by being mailed or transmitted in accordance with paragraph (a) of this section, but not received in the U.S. Patent and Trademark Office after a reasonable amount of time has elapsed from the time of mailing or transmitting of the correspondence, or after the application is held to be abandoned, or after the proceeding is dismissed or decided with prejudice, or the prosecution of a reexamination proceeding is terminated pursuant to § 1.550(d) or § 1.957(b) or limited pursuant to § 1.957(c), or a requester paper is refused consideration pursuant to § 1.957(a), the correspondence will be considered timely if the party who forwarded such correspondence:
    • (1) Informs the Office of the previous mailing or transmission of the correspondence promptly after becoming aware that the Office has no evidence of receipt of the correspondence;
    • (2) Supplies an additional copy of the previously mailed or transmitted correspondence and certificate; and
    • (3) Includes a statement that attests on a personal knowledge basis or to the satisfaction of the Director to the previous timely mailing, transmission or submission. If the correspondence was sent by facsimile transmission, a copy of the sending unit’s report confirming transmission may be used to support this statement. If the correspondence was transmitted via the Office electronic filing system, a copy of an acknowledgment receipt generated by the Office electronic filing system confirming submission may be used to support this statement.
  • (c) The Office may require additional evidence to determine if the correspondence was timely filed.

A suggested format for a Certificate of Mailing and a Certificate of Transmission for facsimile transmissions and for transmissions via the Office electronic filing system (EFS-Web) under 37 CFR 1.8 to be included with the correspondence is reproduced below.

Certificate of Mailing

I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to:

Commissioner for Patents

P.O. Box 1450

Alexandria, Virginia 22313-1450

on ___________.

(Date)

Typed or printed name of person signing this certificate

___________________________________________

Signature________________________________________

Certificate of Facsimile Transmission

I hereby certify that this correspondence is being facsimile transmitted to the U.S. Patent and Trademark Office (Fax No. (___)___-____)

on____________.

(Date)

Typed or printed name of person signing this certificate

___________________________________________

Signature________________________________________

Certificate of EFS-Web Transmission

I hereby certify that this correspondence is being transmitted via the U.S. Patent and Trademark Office electronic filing system (EFS-Web) to the USPTO.

on____________.

(Date)

Typed or printed name of person signing this certificate

___________________________________________

Signature________________________________________

¶ 5.02    Format of Certificate of Mailing or Transmission

The following are suggested formats for either a Certificate of Mailing or Certificate of Transmission under 37 CFR 1.8(a). The certification may be included with all correspondence concerning this application or proceeding to establish a date of mailing or transmission under 37 CFR 1.8(a). Proper use of this procedure will result in such communication being considered as timely if the established date is within the required period for reply. The Certificate should be signed by the individual actually depositing or transmitting the correspondence or by an individual who, upon information and belief, expects the correspondence to be mailed or transmitted in the normal course of business by another no later than the date indicated.

Certificate of Mailing

I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to:

Commissioner for Patents

P.O. Box 1450

Alexandria, VA 22313-1450

on ___________.

(Date)

Typed or printed name of person signing this certificate:

_____________________________________________

Signature: ________________________________________

Registration Number: ______________________________

Certificate of Transmission

I hereby certify that this correspondence is being facsimile transmitted to the United States Patent and Trademark Office, Fax No. (___)_____ -_________ on _____________. (Date)

Typed or printed name of person signing this certificate:

_________________________________________

Signature: ________________________________________

Registration Number: ______________________________

Certificate of EFS-Web Transmission

I hereby certify that this correspondence is being transmitted via the U.S. Patent and Trademark Office (USPTO) electronic filing system (EFS-Web) to the USPTO on _____________. (Date)

Typed or printed name of person signing this certificate:

_________________________________________

Signature: ________________________________________

Registration Number: ______________________________

Please refer to 37 CFR 1.6(a)(4)1.6(d) and 1.8(a)(2) for filing limitations concerning transmissions via EFS-Web, facsimile transmissions and mailing, respectively.

Under 37 CFR 1.8, a person may state on certain papers directed to the Office (some exceptions are stated in 37 CFR 1.8), the date on which the paper will be deposited in the United States Postal Service, transmitted by facsimile or transmitted via the USPTO electronic filing system (EFS-Web). If the date stated is within the period for reply, the reply in most instances will be considered to be timely. This is true even if the paper does not actually reach the Office until after the end of the period for reply. The Certificate of Mailing procedure does not apply to papers mailed in a foreign country.

The Certificate of Transmission procedure for both facsimile transmissions and transmissions via EFS-Web, however, also applies to papers transmitted to the Office from a foreign country provided that the correspondence being transmitted is not prohibited from being transmitted by facsimile or via EFS-Web and is not otherwise precluded from receiving the benefits under 37 CFR 1.8.

It should be noted, however, that the Office will continue its normal practice of stamping the date of receipt (“Office Date” Stamp; see MPEP § 505) on all papers received through the mail, by facsimile or via EFS-Web except those filed under 37 CFR 1.10 (See MPEP § 513). The receipt date stamped on all papers will also be the date which is entered on Office records and from which any subsequent periods are calculated. For example, 37 CFR 41.37 gives an appellant 2 months from the receipt date of the notice of appeal to file an appeal brief. If the last day to reply to a final Office action was November 10, 1997, and applicant deposited a Notice of Appeal with fee in the U.S. mail on November 10, 1997, and so certified, that appeal is timely even if it was not received in the U.S. Patent and Trademark Office until November 16, 1997. Since the date of receipt of the notice of appeal will be used to calculate the time at which the brief is due, the brief was due on January 16, 1998. This is 2 months after the date of receipt of the notice of appeal.

37 CFR 1.8(a)(2)(i)(A) specifically refers to a request for a continued prosecution application (CPA) filed under 37 CFR 1.53(d) (available only for design applications) as a correspondence filed for the purposes of obtaining an application filing date and the procedures and benefit set forth in37 CFR 1.8(a)(1) are not applicable to a request for a CPA. The date on a certificate of mailing or transmission (37 CFR 1.8(a)) of a CPA is not controlling or even relevant. A CPA filed by facsimile transmission or via EFS-Web will not be accorded a filing date as of the date on the certificate of transmission unless Office records indicate, or applicant otherwise establishes pursuant to 37 CFR 1.6(f), receipt in the Office of the complete CPA on the date on the certificate of transmission and that date is not a Saturday, Sunday, or Federal holiday within the District of Columbia (for EFS-Web transmission, that date can be a Saturday, Sunday, or Federal holiday within the District of Columbia).

I.   PROCEDURE BY APPLICANT

  • (A) The certification requires a signature. Specifically, if the certification appears on a paper that requires a signature, two signatures are required, one for the paper and one for the certification. Although not specifically required by 37 CFR 1.8, it is preferred that the certificate be signed by the applicant or registered practitioner.
  • (B) When possible, the certification should appear on a portion of the paper being submitted. However, if there is insufficient space to make the certification on the same paper, the certification should be on a separate sheet securely attached to the paper.
  • (C) When the certification is presented on a separate sheet, that sheet must (1) be signed and (2) fully identify and be securely attached to the paper it accompanies. The required identification should include the application number and filing date of the application as well as the type of paper being filed, e.g., reply to rejection or refusal, Notice of Appeal, etc. An unsigned certification will not be considered acceptable.

    Moreover, without the proper identifying data, a certification presented on a separate sheet will not be considered acceptable if there is any question or doubt concerning the connection between the sheet and the paper filed.

    For submissions by the U.S. Postal Service or facsimile transmissions, if the sheet should become detached from the paper and thereafter not associated with the appropriate file, evidence that this sheet was received in the Office can be supported by submitting a copy of a postcard receipt specifically identifying this sheet and the paper and by submitting a copy of the sheet as originally mailed. Attention is directed to MPEP § 503 relative to the use of postcards as receipts. For submissions via EFS-Web, evidence that this sheet was received in the Office can be supported by submitting a copy of an electronic acknowledgement receipt specifically identifying this sheet and the paper and by submitting a copy of the sheet as originally submitted. See MPEP §§ 502.05 and 503.

  • (D) In situations wherein the correspondence includes papers for more than one application (e.g., a single envelope containing separate papers responding to Office actions in different applications) or papers for various parts of the Office (e.g., a patent issue fee transmittal form PTOL-85B and an assignment), each paper must have its own certification as a part thereof or attached thereto.

    Although Part B of Form PTOL-85, Notice of Allowance and Fee(s) Due, may contain a Certificate of Mailing thereon, a separate Certificate of Mailing is required for all papers included with this form, including replacement drawings. Checks submitted with the papers do not require certification.

  • (E) In situations wherein the correspondence includes several papers directed to the same area of the Office for the same application (for example, a proposed reply under 37 CFR 1.116 and a Notice of Appeal), each paper should have its own certification as a part thereof or attached thereto.
  • (F) For the purposes of 37 CFR 1.8(a)(1)(i)(A), first class mail is interpreted as including “Express Mail” and “Priority Mail” deposited with the U.S. Postal Service.

Alternatively, the correspondence may be submitted with a cover or transmittal letter that itemizes and properly identifies the papers and on which is placed the certificate under 37 CFR 1.8.

II.   USE OF STAMPED CERTIFICATION

Some practitioners place the certification language on the first page of a paper with an inked stamp. Such a practice is encouraged because the certification is not only readily visible but also forms an integral part of the paper.

III.   OFFICE PROCEDURE

A.   Mail Center of the Office of Patent Application Processing

The Mail Center of the Office of Patent Application Processing (OPAP) will continue to date stamp the actual date of receipt of all papers received by mail in the Office. No attempt will be made to retain the envelopes in which the papers are received or to indicate on the papers the postal cancellation date (postmark).

However, the benefits of 37 CFR 1.8 or 37 CFR 1.10 apply only to documents delivered to the Office by the U.S. Postal Service. A number of instances have been uncovered where individuals are certifying that documents were deposited with the U.S. Postal Service when, in fact, the documents were hand-carried or delivered to the Office via commercial couriers, e.g., “Federal Express,” “DHL,” “Purolator,” “Air Borne,” “UPS.” In those instances where documents include a Certificate of Mailing under 37 CFR 1.8 or “Express Mail” mailing label (commonly used to comply with 37 CFR 1.10) but were delivered to the Office by other than the U.S. Postal Service, (OPAP) personnel are placing a notice indicating that fact on the correspondence involved to alert Office personnel that the benefits of 37 CFR 1.8 or 37 CFR 1.10 do not apply.

B.   Processing Areas

When papers are received in a specific location of the Office (e.g., Pre-Grant Publication Division, Office of Data Management, Office of Petitions - see MPEP §§ 502 and 502.01), the date of receipt in the Office is stamped on the papers in accordance with 37 CFR 1.6(a).

The date indicated on the Certificate of Mailing or of Transmission will be used by the Office only to determine if the paper was deposited in the United States Postal Service, transmitted by facsimile or transmitted via EFS-Web within the period for reply. If the paper was actually received in the Office within the period for reply, there is no need to refer to the Certificate. Note however, that 37 CFR 1.6(a)(3) provides that “[c]orrespondence 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.” Note further that 37 CFR 1.6(a)(4) provides that “[c]orrespondence 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.” This date can be a Saturday, Sunday, or Federal holiday within the District of Columbia.

If, however, the paper was received in the U.S. Patent and Trademark Office after the end of the period for reply, the paper should be inspected to determine if a Certificate of Mailing or of Transmission has been included. Where no such Certificate is found, the paper is untimely since applicant did not reply within the period for reply. This may result in abandonment of the application or other loss of rights.

In those instances where a Certificate of Mailing or of Transmission does appear in the paper or a cover letter thereto, a check should be made to determine whether the indicated date of deposit or transmission is within the period for reply. If the date indicated in the Certificate is after the end of the period for reply, the paper is untimely and no notation of the date need be made. Where the date indicated on the Certificate is within the period for reply, the paper should be considered to be timely filed. A notation should be made adjacent to the Office stamp indicating the date of receipt (“Office Date” Stamp) which notes the date stated on the Certificate. This notation should be “C of Mail” , “C of Fax” >or “C of EFS-Web” followed by the date. A paper with a certificate dated November 10, 1997, would be noted next to the “Office Date” Stamp “(C of Mail. 11/10/97).” This notation should also appear on the “Contents” portion of the file wrapper.

If the period set for taking an action in the U.S. Patent and Trademark Office ends on a Saturday, Sunday, or Federal holiday within the District of Columbia (37 CFR 1.7), the action will be considered to be timely if deposited in the United States mail , transmitted by facsimile or transmitted by EFS-Web and certified under 37 CFR 1.8(a) on the next succeeding day which is not a Saturday, Sunday, or a Federal holiday.

It should be noted that the filing of a paper for the purpose of obtaining a continuation or division application under 37 CFR 1.53(d) (available only for design applications) is excluded from the Certificate practice under 37 CFR 1.8(a)(2)(i)(A) since it is considered to be the filing of a national patent application.

Pursuant to 35 U.S.C. 119(e)(3), the period of pendency of a provisional application is extended to the next succeeding business day 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. See also 37 CFR 1.7(b).

No benefit will be given to a Certificate of Mailing or Certificate of Facsimile Transmission relative to the filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date. A national patent application specification and drawing or other correspondence for the purpose of obtaining a filing date may be filed via EFS-Web. New patent applications filed in accordance with 37 CFR 1.10 will be stamped by the Office with the date of deposit as “Express Mail” with the United States Postal Service. For example, if a new patent application is deposited as “Express Mail” in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date. 37 CFR 1.6(a)(2).

All Certificates of Mailing or Transmission filed in applications should be placed in the image file wrappers.

Office personnel receiving a hand-delivered paper from other than U.S. Postal Service personnel should inspect the paper to ensure that the benefits of 37 CFR 1.8 or “Express Mail” benefits under 37 CFR 1.10 are not accorded in error. If the paper contains a certificate of mailing under37 CFR 1.8 or “Express Mail” mailing label (commonly used to comply with 37 CFR 1.10), the words “HAND DELIVERED” should be written adjacent to the date stamp.

Applicant should be notified in the next Office action when a paper containing a Certificate of Mailing has been denied the benefits under 37 CFR 1.8 or a paper containing an “Express Mail” mailing label (commonly used to comply with 37 CFR 1.10) is denied benefits under 37 CFR 1.10 by including, for example, form paragraph 5.04.

¶ 5.04    Benefit of Certificate of Mailing Denied

The [1] filed [2] is not entitled to the benefits of 37 CFR 1.[3] since it was not deposited with the U. S. Postal Service for delivery to the U.S. Patent and Trademark Office. Therefore, the date of receipt in the U.S. Patent and Trademark Office has been used to determine the timeliness of the paper.

Examiner Note:

1. This form paragraph is to be used in those situations where correspondence contains a Certificate of Mailing under 37 CFR 1.8 or requests the benefit of “Express Mail” under 37 CFR 1.10, but the correspondence was not actually deposited with the U. S. Postal Service.

2. In bracket 3, insert --8-- or --10--, as appropriate.

Misuse of a Certificate of Mailing under 37 CFR 1.8 or improperly claiming the benefit of 37 CFR 1.10 which appears to be more than a one-time, inadvertent error should be brought to the attention of the Office of Enrollment and Discipline.

IV.   ORIGINAL MAILED PAPER NOT DELIVERED

Paragraphs (b) and (c) of 37 CFR 1.8 concern the situation where a paper containing a Certificate was timely deposited in the U.S. Postal Service, transmitted by facsimile or transmitted via EFS-Web, but never received by the U.S. Patent and Trademark Office. In the TCs, all submissions under these paragraphs should be considered and the sufficiency thereof determined by the TC Director.

37 CFR 1.8(b) permits a party to notify the Office of a previous mailing through the U.S. Postal Service, or transmission by facsimile or EFS-Web, of correspondence when a reasonable amount of time has elapsed from the time of mailing or transmission of the correspondence. In the event that correspondence may be considered timely filed because it was mailed or transmitted in accordance with 37 CFR 1.8(a), but was not received in the Office after a reasonable amount of time has elapsed, (e.g., more than one month from the time the correspondence was mailed), applicant is not required to wait until the end of the maximum extendable period for reply set in a prior Office action (for the Office to hold the application abandoned) before informing the Office of the previously submitted correspondence. Applicant may notify the Office of the previous mailing or transmission and supply a duplicate copy of the previously mailed or transmitted correspondence and a statement attesting on a personal knowledge basis or to the satisfaction of the Director to the previous timely mailing or transmission. If the person signing the statement did not sign the certificate of mailing or the certificate of transmission, then the person signing the statement should explain how they have firsthand knowledge of the previous timely mailing or transmission. Such a statement should be filed promptly after the person becomes aware that the Office has not received the correspondence.

Before notifying the Office of a previously submitted correspondence that appears not to have been received by the Office, applicants are encouraged to check the private Patent Application Information Retrieval (PAIR) System to see if the correspondence has been entered into the application file.

 

513    Deposit as Priority Mail Express with U.S. Postal Service [R-11.2013]

  “EXPRESS MAIL” RENAMED “PRIORITY MAIL EXPRESS”

Effective July 28, 2013, the United States Postal Service (USPS) changed the name of “Express Mail” to “Priority Mail Express.” All characteristics of the “Priority Mail Express” service are the same as those of the former “Express Mail” service (although the mailing labels differ). References to “Express Mail” or “Express Mail from the USPS in accordance with 37 CFR 1.10,” throughout this Manual should be construed as applicable to the “Priority Mail Express” service of the USPS on or after July 28, 2013.

35 U.S.C. 21   Filing date and day for taking action.

  • (a) The Director may by rule prescribe that any paper or fee required to be filed in the Patent and Trademark Office will be considered filed in the Office on the date on which it was deposited with the United States Postal Service or would have been deposited with the United States Postal Service but for postal service interruptions or emergencies designated by the Director.

*****

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.

*****

37 C.F.R. 1.10   Filing of correspondence by “Express Mail”.

  • (a)
    • (1) Any correspondence received by the U.S. Patent and Trademark Office (USPTO) that was delivered by the “Express Mail Post Office to Addressee” service of the United States Postal Service (USPS) will be considered filed with the USPTO on the date of deposit with the USPS.
    • (2) The date of deposit with USPS is shown by the “date in” on the “Express Mail” label or other official USPS notation. If the USPS deposit date cannot be determined, the correspondence will be accorded the USPTO receipt date as the filing date. See § 1.6(a).
  • (b) Correspondence should be deposited directly with an employee of the USPS to ensure that the person depositing the correspondence receives a legible copy of the “Express Mail” mailing label with the “date-in” clearly marked. Persons dealing indirectly with the employees of the USPS (such as by deposit in an “Express Mail” drop box) do so at the risk of not receiving a copy of the “Express Mail” mailing label with the desired “date-in” clearly marked. The paper(s) or fee(s) that constitute the correspondence should also include the “Express Mail” mailing label number thereon. See paragraphs (c), (d) and (e) of this section.
  • (c) Any person filing correspondence under this section that was received by the Office and delivered by the “Express Mail Post Office to Addressee” service of the USPS, who can show that there is a discrepancy between the filing date accorded by the Office to the correspondence and the date of deposit as shown by the “date-in” on the “Express Mail” mailing label or other official USPS notation, may petition the Director to accord the correspondence a filing date as of the “date-in” on the “Express Mail” mailing label or other official USPS notation, provided that:
    • (1) The petition is filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date other than the USPS deposit date;
    • (2) The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by “Express Mail;” and
    • (3) The petition includes a true copy of the “Express Mail” mailing label showing the “date-in,” and of any other official notation by the USPS relied upon to show the date of deposit.
  • (d) Any person filing correspondence under this section that was received by the Office and delivered by the “Express Mail Post Office to Addressee” service of the USPS, who can show that the “date-in” on the “Express Mail” mailing label or other official notation entered by the USPS was incorrectly entered or omitted by the USPS, may petition the Director to accord the correspondence a filing date as of the date the correspondence is shown to have been deposited with the USPS, provided that:
    • (1) The petition is filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date based upon an incorrect entry by the USPS;
    • (2) The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by “Express Mail”; and
    • (3) The petition includes a showing which establishes, to the satisfaction of the Director, that the requested filing date was the date the correspondence was deposited in the “Express Mail Post Office to Addressee” service prior to the last scheduled pickup for that day. Any showing pursuant to this paragraph must be corroborated by evidence from the USPS or that came into being after deposit and within one business day of the deposit of the correspondence in the “Express Mail Post Office to Addressee” service of the USPS.
  • (e) Any person mailing correspondence addressed as set out in § 1.1(a) to the Office with sufficient postage utilizing the “Express Mail Post Office to Addressee” service of the USPS but not received by the Office, may petition the Director to consider such correspondence filed in the Office on the USPS deposit date, provided that:
    • (1) The petition is filed promptly after the person becomes aware that the Office has no evidence of receipt of the correspondence;
    • (2) The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by ”Express Mail”;
    • (3) The petition includes a copy of the originally deposited paper(s) or fee(s) that constitute the correspondence showing the number of the “Express Mail” mailing label thereon, a copy of any returned postcard receipt, a copy of the “Express Mail” mailing label showing the “date-in,” a copy of any other official notation by the USPS relied upon to show the date of deposit, and, if the requested filing date is a date other than the “date-in” on the “Express Mail” mailing label or other official notation entered by the USPS, a showing pursuant to paragraph (d)(3) of this section that the requested filing date was the date the correspondence was deposited in the “Express Mail Post Office to Addressee” service prior to the last scheduled pickup for that day; and
    • (4) The petition includes a statement which establishes, to the satisfaction of the Director, the original deposit of the correspondence and that the copies of the correspondence, the copy of the “Express Mail” mailing label, the copy of any returned postcard receipt, and any official notation entered by the USPS are true copies of the originally mailed correspondence, original “Express Mail” mailing label, returned postcard receipt, and official notation entered by the USPS.
  • (f) The Office may require additional evidence to determine if the correspondence was deposited as “Express Mail” with the USPS on the date in question.
  • (g) Any person who mails correspondence addressed as set out in § 1.1(a) to the Office with sufficient postage utilizing the “Express Mail Post Office to Addressee” service of the USPS, but has the correspondence returned by the USPS due to an interruption or emergency in “Express Mail” service, may petition the Director to consider such correspondence as filed on a particular date in the Office, provided that:
    • (1) The petition is filed promptly after the person becomes aware of the return of the correspondence;
    • (2) The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by “Express Mail”;
    • (3) The petition includes the original correspondence or a copy of the original correspondence showing the number of the “Express Mail” mailing label thereon and a copy of the “Express Mail” mailing label showing the “date-in”; and
    • (4) The petition includes a statement which establishes, to the satisfaction of the Director, the original deposit of the correspondence and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally deposited with the USPS on the requested filing date. The Office may require additional evidence to determine if the correspondence was returned by the USPS due to an interruption or emergency in “Express Mail” service.
  • (h) Any person who attempts to mail correspondence addressed as set out in § 1.1(a) to the Office with sufficient postage utilizing the “Express Mail Post Office to Addressee” service of the USPS, but has the correspondence refused by an employee of the USPS due to an interruption or emergency in “Express Mail” service, may petition the Director to consider such correspondence as filed on a particular date in the Office, provided that:
    • (1) The petition is filed promptly after the person becomes aware of the refusal of the correspondence;

    • (2) The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the attempted mailing by “Express Mail”;
    • (3) The petition includes the original correspondence or a copy of the original correspondence showing the number of the “Express Mail” mailing label thereon; and
    • (4) The petition includes a statement by the person who originally attempted to deposit the correspondence with the USPS which establishes, to the satisfaction of the Director, the original attempt to deposit the correspondence and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally attempted to be deposited with the USPS on the requested filing date. The Office may require additional evidence to determine if the correspondence was refused by an employee of the USPS due to an interruption or emergency in “Express Mail” service.
  • (i) Any person attempting to file correspondence under this sect ion that was unable to be deposited with the USPS due to an interruption or emergency in “Express Mail” service which has been so designated by the Director, may petition the Director to consider such correspondence as filed on a particular date in the Office, provided that:
    • (1) The petition is filed in a manner designated by the Director promptly after the person becomes aware of the designated interruption or emergency in “Express Mail” service;
    • (2) The petition includes the original correspondence or a copy of the original correspondence; and
    • (3) The petition includes a statement which establishes, to the satisfaction of the Director, that the correspondence would have been deposited with the USPS but for the designated interruption or emergency in “Express Mail” service, and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally attempted to be deposited with the USPS on the requested filing date.

The statutory authority for the granting of a filing date based on the date of deposit for correspondence sent by “Express Mail” and received by the Office is found in section 21(a) of Title 35 of the United States Code.

The specific rule for obtaining a filing date as of the date of deposit in “Express Mail” (rather than the date of receipt at the Office) is 37 CFR 1.10.

35 U.S.C. 21(a) is limited to correspondence deposited with the United States Postal Service (USPS). The procedure in 37 CFR 1.10 is limited to correspondence deposited in the “Express Mail Post Office to Addressee” service of the USPS. There are no similar provisions and no similar benefit can be obtained for correspondence deposited in International Express Mail.

I.   EFFECTIVE DATE, WEEKENDS & HOLIDAYS

Effective December 2, 1996, 37 CFR 1.6(a)(2) provides that correspondence deposited as “Express Mail” in accordance with 37 CFR 1.10 will be stamped, and, therefore, considered as filed on the date of its deposit, regardless of whether that date is a Saturday, Sunday or Federal holiday within the District of Columbia. 37 CFR 1.10 provides a procedure for assigning the date on which any paper or fee is deposited as “Express Mail” with the USPS as the filing date of the paper or fee in the U.S. Patent and Trademark Office (Office). The date of deposit with the USPS is shown by the “date-in” on the “Express Mail” mailing label or other official USPS notation. This holds true for any day that the correspondence may be accepted as “Express Mail” by the USPS, even when the paper or fee is deposited and accepted on a Saturday, Sunday or Federal holiday within the District of Columbia. For example, if a person files a patent application by “Express Mail” with the USPS on a Saturday in compliance with 37 CFR 1.10, he or she will receive the benefit of the Saturday date, even though the Office is closed on Saturdays and, therefore, the person could not have filed the application by depositing it directly at the Office on that Saturday. See 37 CFR 1.6(a)(1). In those cases where the procedure of37 CFR 1.10(a) has not been properly followed, e.g., the “date-in” is illegible, the filing date of the correspondence will be the date of actual receipt in the Office. An applicant may file a petition under the conditions specified in 37 CFR 1.10(c), (d) or (e) (discussed below) presenting whatever arguments and evidence that the paper or fee is entitled to a filing date other than the filing date accorded by the Office.

II.   DATE-IN, DIRECT DEPOSIT, “EXPRESS MAIL” BOX RECEPTACLES & LOG BOOKS

The procedure in 37 CFR 1.10(a) requires the use of the “Express Mail Post Office to Addressee” service of the USPS. This service provides for the use of a mailing label on which the USPS clearly indicates the date on which it was deposited. Correspondence sent by the “Express Mail Post Office to Addressee” service is considered filed in the Office on the “date-in” entered by the USPS. The “date-in” on the “Express Mail” mailing label must be completed by the USPS, not by the applicant. For correspondence filed in accordance with 37 CFR 1.10, Office personnel will routinely look to the “Express Mail” mailing label, and stamp the “date-in” or other official USPS notation as the filing date of the correspondence. Accordingly, if the USPS enters the deposit date as its “date-in,” the correspondence will receive the deposit date as its filing date. If the USPS deposit date cannot be determined, the correspondence will be accorded the date of receipt in the Office as the filing date. An applicant may file a petition under the conditions specified in 37 CFR 1.10(c), (d), (e), (g), (h), or (i) (discussed below) presenting whatever arguments and evidence that the paper or fee is entitled to a filing date other than the filing date accorded by the Office.

37 CFR 1.10(b) further provides that correspondence should be deposited directly with an employee of the USPS to ensure that the person depositing the correspondence receives a legible copy of the “Express Mail” mailing label with the “date-in” clearly marked, and that persons dealing indirectly with the employees of the USPS (such as by depositing correspondence in an “Express Mail” drop box) do so at the risk of not receiving a copy of the “Express Mail” mailing label with the desired “date-in” clearly marked. On petition, the failure to obtain an “Express Mail” receipt with the “date-in” clearly marked may be considered an omission that could have been avoided by the exercise of due care, as discussed below. While the Office strongly urges direct deposit of “Express Mail” correspondence in order to obtain a legible copy of the “Express Mail” mailing label, parties are not precluded from using “Express Mail” drop boxes, but do so at their own risk.

A paper or fee placed in an “Express Mail” box receptacle after the box has been cleared for the last time on a given day will be considered to be deposited as of the date of receipt (“date-in”) indicated on the “Express Mail” mailing label by the Postal Service “Express Mail” acceptance clerk.37 CFR 1.10(d) permits the Office to correct a USPS “date-in” error when the correspondence is deposited in an “Express Mail” drop box prior to last scheduled pick up of the day, that is, the time clearly marked on the “Express Mail” drop box indicating when the box will be cleared for the last time on the date of deposit. 37 CFR 1.10(d) sets forth the procedures to be followed to be entitled to such a correction.

Parties who do use drop boxes can protect themselves from uncertainty due to illegible mailing labels by routinely maintaining a log of “Express Mail” deposits in which notations are entered by the person who deposited the correspondence as “Express Mail” within one business day after deposit with the USPS. Such evidence could be useful to later support a petition filed under 37 CFR 1.10(c), (d), (e), or (g). Evidence that came into being after deposit and within one day after the deposit of the correspondence as “Express Mail” may be in the form of a log book which contains information such as the “Express Mail” number; the application number, attorney docket number or other such file identification number; the place, date and time of deposit; the time of the last scheduled pick-up for that date and place of deposit; the depositor’s initials or signature; and the date and time of entry in the log.

III.   “EXPRESS MAIL” MAILING LABEL NUMBER

While 37 CFR 1.10(b) does not require placement of the “Express Mail” mailing label number on the correspondence prior to mailing, it is advisable to do so. If the number of the mailing label did not appear on the correspondence as originally filed, relief will not be granted on petition under 37 CFR 1.10(c), (d), (e), (g) or (h), even if the party who filed the correspondence satisfies the other requirements of 37 CFR 1.10(c),1.10(d)1.10(e)1.10(g), or 1.10(h). To be effective, the number must be placed on each separate paper and each fee transmittal either directly on the document or by a separate paper firmly and securely attached thereto. In situations wherein the correspondence includes several papers directed to the same application (for example, the specification, drawings, and declaration for a new application), the correspondence may be submitted with a cover or transmittal letter which should itemize the papers. It is not necessary that the number be placed on each page of a particular paper or fee transmittal. Merely placing the number in one prominent location on each separate paper or fee transmittal (or cover sheet or transmittal letter which should itemize the separate papers and fees) will be sufficient.

Since the filing of correspondence under 37 CFR 1.10 without the number of the “Express Mail” mailing label thereon is an oversight that can be avoided by the exercise of reasonable care, requests for waiver of this requirement will not be granted on petition. A party’s inadvertent failure to comply with the requirements of a rule is not deemed to be an extraordinary situation that would warrant waiver of a rule under 37 CFR 1.183, 2.146(a)(5) or 2.148, nor is such an inadvertent omission considered “unavoidable,” within the meaning of 35 U.S.C. 13337 CFR 1.137(a). SeeHonigsbaum v. Lehman, 903 F. Supp. 8, 37 USPQ2d 1799 (D.D.C. 1995) (Commissioner did not abuse his discretion in refusing to waive requirements of 37 CFR 1.10(c) in order to grant filing date to patent application, where applicant failed to produce “Express Mail” customer receipt or any other evidence that application was actually deposited with USPS as “Express Mail.”), aff’d without opinion, 95 F.3d 1166 (Fed. Cir. 1996); Nitto Chemical Industry. Co., Ltd. v. Comer, 39 USPQ2d 1778, 1782 (D.D.C. 1994) (Commissioner’s refusal to waive requirements of 37 CFR 1.10 in order to grant priority filing date to patent application not arbitrary and capricious, because failure to comply with the requirements of37 CFR 1.10 is an “avoidable” oversight that could have been prevented by the exercise of ordinary care or diligence, and thus not an extraordinary situation under 37 CFR 1.183.); Vincent v. Mossinghoff, 230 USPQ 621 (D.D.C. 1985) (misunderstanding of 37 CFR 1.8 not unavoidable delay in responding to Office Action); Gustafson v. Strange, 227 USPQ 174 (Comm’r Pat. 1985) (counsel’s unawareness of 37 CFR 1.8 not extraordinary situation warranting waiver of a rule); In re Chicago Historical Antique Automobile Museum, Inc., 197 USPQ 289 (Comm’r Pat. 1978) (since certificate of mailing procedure under 37 CFR 1.8 was available to petitioner, lateness due to mail delay not deemed to be extraordinary situation).

IV.   PETITIONS

37 CFR 1.10(c) through 1.10(e) and 1.10(g) set forth procedures for petitioning the Director to accord a filing date as of the date of deposit as “Express Mail” (Priority Mail Express). Briefly, 37 CFR 1.10(c) applies where there is a discrepancy between the filing date accorded by the Office and the “date-in” entered by the USPS on the “Express Mail” mailing label or other official USPS notation; 37 CFR 1.10(d) applies where the “date-in” is incorrectly entered by the USPS; 37 CFR 1.10(e) applies where correspondence deposited with the USPS as “Express Mail” is not received by the Office; and 37 CFR 1.10(g) applies where correspondence deposited with the USPS as "Express Mail" was returned by the USPS due to an interruption or emergency in "Express Mail" service.

37 CFR 1.10(h) and 1.10(i) set forth procedures for petitioning the Director when correspondence was attempted to be deposited as "Express Mail." 37 CFR 1.10(h) applies where correspondence was refused by an employee of the USPS due to an interruption or emergency in "Express Mail" service; and 37 CFR 1.10(i) applies where correspondence was unable to be deposited with the USPS due to an interruption or emergency in "Express Mail" service which has been so designated by the Director.

V.   PETITION TO CORRECT FILING DATE AND DATE-IN DISCREPANCY

37 CFR 1.10(c) sets forth procedures for filing a petition to the Director for a filing date as of the date of deposit with the USPS, where there is a discrepancy between the filing date initially accorded by the Office and the “date-in” entered by the USPS or other official USPS notation. Such a petition should:

  • (A) be filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date other than the USPS deposit date;
  • (B) include a showing that the number of the “Express Mail” mailing label was placed on each piece of correspondence prior to the original mailing; and
  • (C) include a true copy of the “Express Mail” mailing label showing the “date-in” or other official notation by the USPS.

VI.   PETITION TO CORRECT INCORRECTLY ENTERED DATE-IN

37 CFR 1.10(d) sets forth procedures for filing a petition to the Director to accord a filing date as of the actual date of deposit with the USPS, where the “date-in” or other official notation is incorrectly entered by the USPS. Such a petition should:

  • (A) be filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date based upon an incorrect entry by the USPS;
  • (B) include a showing that the number of the “Express Mail” mailing label was placed on each piece of correspondence prior to the original mailing; and
  • (C) include a showing that the correspondence was deposited as “Express Mail” prior to the last scheduled pickup on the requested filing date.

The showing under 37 CFR 1.10(d) must be corroborated by (1) evidence from the USPS, or (2) evidence that came into being after deposit and within one business day of the deposit of the correspondence as “Express Mail.” Evidence from the USPS may be the “Express Mail” Corporate Account Mailing Statement. Evidence that came into being within one day after the deposit of the correspondence as “Express Mail” may be in the form of a log book which contains information such as the “Express Mail” number; the application number, attorney docket number or other such file identification number; the place, date and time of deposit; the time of the last scheduled pick-up for that date and place of deposit; the depositor’s initials or signature; and the date and time of entry in the log.

The reason the Office considers correspondence to have been filed as of the date of deposit as “Express Mail” is that this date has been verified by a disinterested USPS employee, through the insertion of a “date-in,” or other official USPS notation, on the “Express Mail” mailing label. Due to the questionable reliability of evidence from a party other than the USPS that did not come into being contemporaneously with the deposit of the correspondence with the USPS, 37 CFR 1.10(d) specifically requires that any petition under 37 CFR 1.10(d) be corroborated either by evidence from the USPS, or by evidence that came into being after deposit and within one business day after the deposit of the correspondence as “Express Mail.”

A petition alleging that the USPS erred in entering the “date-in” will be denied if it is supported only by evidence (other than from the USPS) which was:

  • (A) created prior to the deposit of the correspondence as “Express Mail” with the USPS (e.g., an application transmittal cover letter, or a client letter prepared prior to the deposit of the correspondence); or
  • (B) created more than one business day after the deposit of the correspondence as “Express Mail” (e.g., an affidavit or declaration prepared more than one business day after the correspondence was deposited with the USPS as “Express Mail”).

On the other hand, a notation in a log book, entered after deposit by the person who deposited the correspondence as “Express Mail” within one business day of such deposit, setting forth the items indicated above, would be deemed on petition to be an adequate showing of the date of deposit under 37 CFR 1.10(d)(3).

37 CFR 1.10(d)(3) further provides that a party must show that correspondence was deposited as “Express Mail” before the last scheduled pickup on the requested filing date in order to obtain a filing date as of that date.

VII.   PETITION FOR CORRESPONDENCE NEVER RECEIVED

37 CFR 1.10(e) sets forth procedures for filing a petition to the Director to accord a filing date as of the date of deposit with the USPS, where correspondence deposited as “Express Mail” is never received by the Office. Such a petition should:

  • (A) be filed promptly after the person becomes aware that the Office has no evidence of receipt of the correspondence;
  • (B) include a showing that the number of the “Express Mail” mailing label was placed on each piece of correspondence prior to the original mailing;
  • (C) include a true copy of the originally deposited correspondence showing the number of the “Express Mail” mailing label thereon, a copy of any returned postcard receipt, a copy of the “Express Mail” mailing label showing the “date-in” or other official notation entered by the USPS; and
  • (D) include a statement, signed by the person who deposited the documents as “Express Mail” with the USPS, setting forth the date and time of deposit, and declaring that the copies of the correspondence, “Express Mail” mailing label, and returned postcard receipt accompanying the petition are true copies of the correspondence, mailing label and returned postcard receipt originally mailed or received.

37 CFR 1.10(e) provides for the filing of a petition to accord correspondence a filing date as of the date of deposit with the USPS as “Express Mail” only where the correspondence was mailed with sufficient postage and addressed as set out in 37 CFR 1.1(a). There is no corresponding provision that correspondence be properly addressed and mailed with sufficient postage in 37 CFR 1.10(a), (c) and (d), because these sections apply only to correspondence that is actually received by the Office. Correspondence mailed by “Express Mail” that is actually received by the Office will not be denied a filing date as of the date of deposit as “Express Mail” simply because the correspondence was not mailed with sufficient postage or not addressed as set out in 37 CFR 1.1(a)37 CFR 1.10(e)(3) provides that if the requested filing date is a date other than the “date-in” on the “Express Mail” mailing label, the petition should include a showing under 37 CFR 1.10(d)(3), as discussed above, that the correspondence was deposited as “Express Mail” before the last scheduled pickup on the requested filing date in order to obtain a filing date as of that date. 37 CFR 1.10(e) applies only in those situations in which the correspondence at issue was lost in toto (i.e., the entire correspondence was not delivered to the Office). Where there is a dispute as to the contents of correspondence submitted to the Office (e.g., an applicant asserts that three sheets of drawings were submitted under 37 CFR 1.10 with an application, but the Office records indicate receipt of only two sheets of drawings with the application), an applicant may not rely upon the provisions of 37 CFR 1.10(e) to establish what document(s) and/or fee(s) were filed in the Office with such correspondence. Rather, where the records of the Office (e.g., the file of the application) contain any document(s) or fee(s) corresponding to the contents of the correspondence at issue, the Office will rely upon its official record of the contents of such correspondence in absence of convincing evidence (e.g., a postcard receipt under MPEP § 503 containing specific itemization of the document(s) or fee(s) purported to have been filed with the correspondence at issue) that the Office received and misplaced any document(s) or fee(s) that is not among the official records of the Office.

VIII.   ADDITIONAL EVIDENCE MAY BE REQUIRED

37 CFR 1.10(f) provides that the Office may require additional evidence to determine whether the correspondence was deposited as “Express Mail” with the USPS on the date in question.

IX.   PETITION FOR CORRESPONDENCE RETURNED DUE TO POSTAL INTERRUPTION OR EMERGENCY

37 CFR 1.10(g) provides that any person who mails correspondence addressed as set out in 37 CFR 1.1(a) to the Office with sufficient postage utilizing the "Express Mail Post Office to Addressee" service of the USPS, but has the correspondence returned by the USPS due to an interruption or emergency in "Express Mail" service, may petition the Director to consider the correspondence as filed on a particular date in the Office. Such a petition must:

  • (A) be filed promptly after the person becomes aware of the return of the correspondence;
  • (B) include a showing that the number of the "Express Mail" mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by "Express Mail;"
  • (C) include the original correspondence or a copy of the original correspondence showing the number of the "Express Mail" mailing label thereon and a copy of the "Express Mail" mailing label showing the "date-in;" and
  • (D) include a statement which establishes, to the satisfaction of the Director, the original deposit of the correspondence and that the correspondence or the copy of the correspondence is the original correspondence or a true copy of the correspondence originally deposited with the USPS on the requested filing date.

The Office may require additional evidence to determine if the correspondence was returned by the USPS due to an interruption or emergency in "Express Mail" service. For example, the Office may require a letter from the USPS confirming that the return was due to an interruption or emergency in the "Express Mail" service.

This procedure does not apply where the USPS returned the "Express Mail" for a reason other than an interruption or emergency in "Express Mail" service such as the address was incomplete or the correspondence included insufficient payment for the "Express Mail" service.

X.   PETITION FOR CORRESPONDENCE REFUSED DUE TO POSTAL INTERRUPTION OR EMERGENCY

37 CFR 1.10(h) provides that any person who attempts to mail correspondence addressed as set out in 37 CFR 1.1(a) to the Office with sufficient postage utilizing the "Express Mail Post Office to Addressee" service of the USPS, but has the correspondence refused by an employee of the USPS due to an interruption or emergency in "Express Mail" service, may petition the Director to consider the correspondence as filed on a particular date in the Office. Such a petition must:

  • (A) be filed promptly after the person becomes aware of the refusal of the correspondence;
  • (B) include a showing that the number of the "Express Mail" mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the attempted mailing by "Express Mail;"
  • (C) include the original correspondence or a copy of the original correspondence showing the number of the "Express Mail" mailing label thereon; and
  • (D) include a statement by the person who originally attempted to deposit the correspondence with the USPS which establishes, to the satisfaction of the Director, the original attempt to deposit the correspondence and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally attempted to be deposited with the USPS on the requested filing date.

The Office may require additional evidence to determine if the correspondence was refused by an employee of the USPS due to an interruption or emergency in "Express Mail" service. For example, the Office may require a letter from the USPS confirming that the refusal was due to an interruption or emergency in the "Express Mail" service.

This procedure does not apply where the USPS refused the "Express Mail" for a reason other than an interruption or emergency in "Express Mail" service such as the address was incomplete or the correspondence included insufficient payment for the "Express Mail" service. In addition, this procedure does not apply because an "Express Mail" drop box is unavailable or a Post Office facility is closed.

XI.   PETITION FOR CORRESPONDENCE UNABLE TO BE DEPOSITED DUE TO A DIRECTOR-DESIGNATED POSTAL INTERRUPTION OR EMERGENCY

37 CFR 1.10(i) provides that any person attempting to file correspondence by "Express Mail" that was unable to be deposited with the USPS due to an interruption or emergency in "Express Mail" service which has been so designated by the Director may petition the Director to consider such correspondence as filed on a particular date in the Office. Such a petition must:

  • (A) be filed in a manner designated by the Director promptly after the person becomes aware of the designated interruption or emergency in "Express Mail" service;
  • (B) include the original correspondence or a copy of the original correspondence; and
  • (C) include a statement which establishes, to the satisfaction of the Director, that the correspondence would have been deposited with the USPS but for the designated interruption or emergency in "Express Mail" service, and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally attempted to be deposited with the USPS on the requested filing date.

This procedure applies only when the Director designates an interruption or emergency in "Express Mail" service. In the notice designating the interruption or emergency the Director will provide guidance on the manner in which petitions under 37 CFR 1.10(i) should be filed. The notice will be placed on the USPTO Web site at www.uspto.gov and published in the Official Gazette.