e-Office Action Program

(Last modified: March2023)

Any registered attorney or agent of record, or a named inventor acting pro se, in a patent application that is associated with a Customer Number is eligible to participate in the Patent Center e-Office Action program by accessing Patent Center. To access Patent Center, the participant must have a registered MyUSPTO account linked to the participant’s Customer Number. For information on the creation of a MyUSPTO account and the method for accessing Patent Center, please contact the Patent EBC.

To register for the Patent Center e-Office Action program and receive email notifications of subsequent Office communications, Patent Center users must:

1. Log-on to Patent Center and select Manage/Manage customer numbers;
2. Select the Customer Number to enroll;
3. Select “Edit”;
4. Select the “Receive Correspondence Notification via e-Mail” option within the “Edit” Customer Number screen; and
5. Designate at least one e-mail address to receive e-mail notifications for Office communications issued in the applications associated with the Customer Number.

The user may designate up to three email addresses. After registration, Office communications entered by participating USPTO business units (see item 7 below) in each application associated with the Customer Number will be processed under the Patent Center e-Office Action program.

(Last modified: March2023)

When one of the participating business units within the USPTO enters an Office communication in an application that is associated with a registered Customer Number, the USPTO will send an email notification to the designated email addresses. The email notification will contain the following information: (a) the date and time the USPTO sends the email notification, (b) the Customer Number, and (c) information regarding each new Office communication. The Office communication information will include: (i) the application number of the application in which the Office communication is entered; (ii) the document code associated with the Office communication; (iii) the mailroom/notification date indicated on the form PTOL-90, which accompanies the Office communication (generally, any time period for reply set forth in the Office communication will commence on the mailroom/notification date (see item 4 below)); and (iv) the attorney docket number.

The Office communication will be available and retrievable immediately through Patent Center. The USPTO will not mail a paper copy of the Office communication. Upon receipt of the email notification, the participant can download or view the new Office communication by logging in to Patent Center and using either: (a) the “Workbench/View correspondence” option, or (b) the “Application Search” option, and accessing the “Documents & Transactions” tab.

If the user has multiple applications associated with the Customer Number, a single consolidated email notification will be sent to the user, and it will list all the new Office communications entered on that day in the applications associated with the Customer Number. An abridged version of the email notification that contains only data pertinent to an individual application will be scanned into that application file as part of the official record. The abridged email notification scanned into the application file will not contain information regarding other applications.

(Last modified: March2023)

The USPTO will send an email notification to the designated email addresses only when there is a new Office communication in the applications associated with the participant’s Customer Number. If there are multiple new Office communications entered in the applications on the same day, the participant will receive a single email notification listing all the new Office communications. Therefore, participants will receive a single email notification per day for each Customer Number when there is a new Office communication.

(Last modified: March2023)

Generally, any time period for reply set forth in the Office communication will commence on the mailroom/notification date indicated on the form PTOL-90 accompanying the Office communication. The mailroom/notification date is treated like the mailing date of a paper communication. More specifically, for Office actions under 35 U.S.C. 132(a), the mailroom/notification date is the date of the notice under 35 U.S.C. 133. See Electronic Office Action, 1343 Off. Gaz. Pat. Office at 46. The mailroom/notification date will also be considered the date of mailing of the correspondence for all other purposes (e.g., 37 CFR 1.71(g)(2), 1.97(b), 1.701-1.705).

However, the 63-day time period set forth in 37 CFR 90.3 for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit, or for commencing a civil action, begins on the date of the decision of the Patent Trial and Appeal Board (PTAB). The time period is not measured from the mailroom/notification date. See also 35 U.S.C. 142. Participants may request extensions of time pursuant to 37 CFR 90.3(c).

Once the participant receives an email notification, the USPTO highly recommends that the participant log in to Patent Center to view the new Office communication as soon as possible to determine whether the communication requires a reply and when the reply is due.

(Last modified: April2024)

The USPTO will send a courtesy postcard notifying the applicant if none of the Office communications listed in the email notification are viewed or downloaded through Patent Center within seven calendar days after the date of the email notification and at least one of the Office communications requires an applicant’s reply. The courtesy postcard will be sent electronically.

(Last modified: March2023)

The program includes provisional applications filed under 35 U.S.C. 111(b); nonprovisional applications filed under 35 U.S.C. 111(a) (including utility, plant, design, and reissue applications); and international applications that have entered the national stage under 35 U.S.C. 371. International applications that have not entered the national stage in the United States, reexamination proceedings, and PTAB trial proceedings are not included in the program.

Participants will receive email notifications for all Office communications prepared by the following participating business units:

• Technology Centers (including the examining corps), which enter Office actions and notices, including notices of allowance;
• The Office of Patent Application Processing, which enters application formality review notices, including notices to file missing parts;
• The Office of Data Management (Pre-Grant Publications and Office of Publications), which enters notices of publication and issues patents;
• The PTAB for ex parte appeals of rejections of claims in patent applications;
• The Office of Petitions; and
• The Office of Licensing and Review.

Since several areas of the Office have independent mailing processes, participants will continue to receive paper mailings for communications prepared by the non-participating business units, including (but not limited to):

• The Patent Cooperation Treaty Operations Division, International Branch;
• The PTAB for trial proceedings and reexamination proceedings;
• The Central Reexamination Unit for ex parte reexamination and inter partes reexamination proceedings;
• The Office of Enrollment and Discipline; and
• The Office of the Solicitor.

(Last modified: March2023)

Participants may opt out of the program at any time. To change back to paper delivery of any subsequent Office communications, Patent Center users must:

1. Log in to Patent Center and select the “Manage/Manage customer numbers” screen;
2. Select the Customer Number to opt out;
3. Select the “Edit” button; and
4. Select the “Receive correspondence via Postal mail” option on the “Edit customer” screen.

Any Office communications prepared after the withdrawal is recognized by the USPTO will be mailed to the correspondence address associated with the application. However, if the Office communication has been prepared before the withdrawal is recognized by the USPTO, the Office communication may be processed under the email notification procedure. This means that the USPTO may send an email notification for the communication rather than mailing a paper copy of the communication. Prior to the completion of the withdrawal process, participants may receive some Office communications on paper (those that were prepared after the withdrawal was recognized) and email notifications for those that were prepared before the withdrawal was recognized. Therefore, it is important for the participants to check their designated email addresses for email notifications and review the Office communications via Patent Center, even after withdrawing from the program. Furthermore, the participants may receive courtesy postcards in the previously elected mode (postal postcard or e-postcard) for any unviewed communication (that has a time period for reply) for which an email notification was sent.

Participants may change email addresses at any time. To change or add an email address, a participant must:

1. Log in to Patent Center and select “Manage/Manage Customer Number”;
2. Select the “Edit” button; and
3. Change or add the email address to receive email notifications for Office communications entered in the applications associated with the Customer Number. The participant may designate up to three email addresses. The Patent Center system will send a test email to each of the new email addresses associated with the Customer Number.

The participant should contact the Patent EBC if an Office communication is available in Patent Center but the participant did not receive an email notification for the Office communication. The USPTO will take appropriate corrective actions. For example, the USPTO will send the participant an email notification if an email notification was not previously sent to the designated email addresses. Any time period for reply (except for the 63-day time period under 37 CFR 90.3) set forth in the Office communication will be restarted when the USPTO sends the email notification. For more information on the time period for reply, see item 4 above.

However, if the USPTO did send an email notification to each of the email addresses designated by the user, the USPTO will not send a new email notification, and any time period for reply set forth in the Office communication will not be restarted. The time period for reply will continue to run from the original mailroom/notification date. Therefore, it is important for the user to designate the correct email addresses when signing up for the program.

The participant should contact the Patent EBC if an improper communication has been scanned into the application file, so that the USPTO can take appropriate corrective actions. For example, if the improper communication belongs to another application, the USPTO will move the communication to the correct application. The USPTO will send a new email notification when a proper communication is available and retrievable through Patent Center.

Please note that the document code corresponding to an Office communication identified on the email notification is informal (unofficial) information. If there is any discrepancy between the document code corresponding to an Office communication identified on the email notification and the document code corresponding to the image of the communication available through Patent Center, the document code corresponding to the image of the Office communication available through Patent Center is the official record. The USPTO will not send a new email notification for an incorrect document code on the email notification.

If an Office communication contains an error that affects an applicant’s ability to reply to the Office communication and this error is called to the attention of the USPTO in writing within one month of the email date, the USPTO will follow the procedure set forth in section 710.06 of the Manual of Patent Examining Procedure (MPEP) (9th ed., rev. 7.2022, February 2023).

If the Office communication (e.g., an application filing receipt or a notice of publication) does not require a reply from an applicant and it does not have a time period for reply, it is not necessary for the participant to contact the Office. However, if the Office communication requires a reply and it sets forth a time period for reply, the participant should call the Patent EBC within one month from the email date so the USPTO can reset the time period for reply (except for the 63-day period under 37 CFR 90.3) to the original email date. For more information on the time period for reply, see item 4 above.

For example, an email notification sent on October 6, 2022, could indicate that an Office action with a mailroom/notification date of October 3, 2022, has been entered in the application. The time period for reply set forth in the Office action commences on the mailroom/notification date (October 3, 2022). If the participant contacts the Patent EBC within one month from the email date (October 6, 2022), the USPTO will reset the time period for reply to commence on October 6, 2022.

The email notification will have the following language in the subject line: “USPTO: Patent Electronic System - Correspondence Notification for Customer Number xxx.,” where “xxx” will be the participant’s Customer Number. The sender’s address will be “noreply@uspto.gov.” Any inquiries regarding the email notification should be directed to the Patent EBC. Participants should not reply to the “noreply” email address.

By registering for the Patent Center e-Office Action program, a participant is authorizing the USPTO to send email notifications of Office communications entered by the participating USPTO business units in the applications associated with the Customer Number. The Patent Center e-Office Action program does not, otherwise, change the policy for communications via the internet as set forth in section 502.03 of the MPEP.

The Patent Center e-Office Action program does not alter the USPTO’s policy prohibiting an applicant or examiner from engaging in improper email correspondence. For example, the applicant may not send a reply to an Office action to the USPTO via email, and the examiner may not send an Office action to the applicant via email. See section 502.03 of the MPEP.

Log into Patent Center, select the Manage menu, then select Manage customer numbers.  Next, select the customer number to update, then select the Edit button.  Scroll down the page until "Postcard notification method" is displayed, then select the checkbox next to "Receive correspondence notification via Email". Finally, complete filling out the online form, submit the request or notify the sponsoring attorney so they can submit the request.

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