United States Patent and Trademark Office OG Notices: 21 May 2002
Legal Framework for the Use of the
Electronic Filing System
This document explains the legal framework for the treatment of
patent applications filed under the Electronic Filing System (EFS). It
describes how an electronic application will be processed by the United
States Patent and Trademark Office (USPTO or Office) and clarifies some
issues concerning these applications and the regulations of the USPTO.
General Rule: Effect of Patent Regulations
Effect of Patent Regulations
Section 22 of title 35 of the United States Code expressly
provides for electronic filing of documents. However, because the
current rules of practice (title 37, Code of Federal Regulations) are
directed almost exclusively to paper submissions, the rules do not
speak to electronic submissions. To the extent that any USPTO rule is
inconsistent with EFS, the rule will be waived until regulations
directed to electronic submissions are promulgated. See
Electronic Filing System Available to Public, 1240 Off. Gaz. Pat.
Office 45 (Nov 14, 2000) and 37 CFR 1.183. When the Office has more
experience with electronic submissions, the Office will amend the rules
of practice under its rulemaking authority.
The waiver applies only to the documents authorized for filing
under EFS. Documents that are not authorized for submission under EFS
will not be granted the coverage of the above mentioned waiver. For
example, the scanned image of an Information Disclosure Statement is
not among the documents that may be submitted under EFS, and cannot be
submitted under the guise of a drawing or declaration attachment.
The procedures and policies of the EFS are described in this
document and the published manuals for EFS located on the USPTO Patents
Electronic Business Center Web site, at
http://www.uspto.gov/ebc. Some of the current regulations,
for example, in 37 CFR 1.4, 1.6, and 1.52, refer to the paper and ink
physical counterparts of an electronic submission. Submitted documents
compliant with the requirements expressed in the EFS documentation will
not be held to violate such regulations solely because of
their electronic nature or the electronic submission process.
Currently, the EFS may only be used to submit 1) certain
non-provisional utility patent applications, provisional applications,
or "Sequence Listings," and 2) patent applications for purposes of
having the patent application published. Those submissions are itemized
in the USPTO web site, and discussed in this document below. Patent
assignment information may also be electronically filed for recording
with or without a patent application. Refer to the EFS user manuals for
guidance on the USPTO Patents Electronic Business Center Web site, at
http://www.uspto.gov/ebc.
The rest of this document explains, the submission process and
the subsequent handling of submissions under the EFS, including New
Utility Patent Application Submissions (Part I), Provisional
Application Submissions, (Part II), Submissions under Eighteen-Month
Publication (Part III) and Submissions on Compact Disc. (Part IV).
PART I: UTILITY PATENT APPLICATIONS FILED UNDER THE
ELECTRONIC FILING SYSTEM
Background: How are new applications processed under
the Electronic Filing System (EFS)?
Applications filed under the EFS are maintained in confidence as
required by 35 USC 122(a), until the application is published or a
patent is issued. Public Key Infrastructure (PKI) software assures the
integrity, authenticity, non-repudiation and confidentiality of the
applications. USPTO standards are commensurate with the state of the
art in electronic commerce across the Internet.
Most provisional and non-provisional utility patent applications
can be filed using EFS. However, the following types of applications
must be filed in paper form: continued prosecution applications (CPAs),
design applications, plant applications, national security
applications, and international applications under the PCT. Very large
applications (over 10 megabytes in size) are also inappropriate for the
EFS, unless the compact disc provisions of Part IV are utilized.
The process for handling the EFS applications is shown on
Attachment 1 at the end of this document. Note the following overview
of the process:
A. Applications are "authored" by the applicant or
attorney using the USPTO-provided word processing templates that render
the application into special eXtensible Markup Language (XML) formats
designed to be accurately processed by the Office's computers. The word
processing templates, available in either Microsoft Word or WordPerfect
format, render a patent application into an XML encoded document with
invisible tags that identify the text content of each element of the
specification. For example, one XML tag will identify the title and a
separate tag will identify the first claim. These tags also control the
presentation of the specification in a standard Internet browser form
that can be processed by the USPTO's automated systems. The XML tags
created in EFS submissions permit the development of automatic
application formality review processing and form the basis for the
future electronic file wrapper that will ultimately replace paper
application files in the USPTO. Drawings and complex work units, e.g.,
math or chemical equations, and complex tables, may be included in the
applications, formatted as TIFF files, and referenced in the text,
according to the instructions in the Users Guide.
B. Patent application files, once properly formatted in XML,
are saved on the users' computer. Additional XML files for the
application are created using the submission software, called ePAVE
(electronic packaging and validation engine). The complete patent
application is assembled from the various text and data files and
validated and electronically signed, after review by the applicant or
the representative. The application is then digitally signed,
encrypted, wrapped, and electronically transmitted to the USPTO by
ePAVE. Applicant is strongly urged to maintain an electronic copy of
this file, similar in concept to the admonition of 37 CFR
1.4(d)(1)(ii).
C. After receipt at the USPTO, the electronic files are
checked for technical compliance, virus infection and data integrity.
The digital signature system, part of the public key
infrastructure (PKI) mentioned above, will be tested and ordinarily
assure that the files were not altered since they were signed, and all
the documents were received from the applicant. After the automated
tests, an electronic Acknowledgement Receipt including the application
number will then be produced and sent to the applicant to as evidence
of a successful submission. The Acknowledgement Receipt also lists the
files received by the USPTO listing the file names and the sizes of
each file, and includes a Message Digest code that is derived from the
whole submission and is unique to the submission. The applicant should
retain this Acknowledgement Receipt as clear evidence that on the date
noted the files were successfully received by the USPTO. This
"Electronic Post Card" is a very valuable assurance to the
applicant should the files or their resultant paper documents ever be
lost or damaged.
Please note: Receipt of an Acknowledgement Receipt does not
mean that the application meets all the USPTO requirements for a filing
date. For example, any drawings that are submitted as part of an EFS
submission may not be of sufficient quality to provide an adequate
illustration of the invention (35 USC 113, first sentence). The
Office will contact applicant if problems are discovered in review of
the submission.
If the files are not complete, unaltered, readable and
usable, the applicant is immediately alerted by a return message that
does not include an Acknowledgement Receipt as described above. The
return message will, instead, indicate to the applicant that a problem
has occurred. The applicant will be advised to contact the USPTO for
help.
What is the official submission of the new application under the EFS?
The official copies of all documents are the paper copies printed
in step 8 in Attachment 1 below, entered into the Office files. After
appropriate processing, an official paper Filing Receipt will be sent
by postal mail.
May a Computer Readable Form (CRF) of Biotechnology Sequence Listings still
be submitted with the EFS?
Yes, the EFS may be used to submit the CRF submission required of
biotechnology applications under 37 CFR 1.821(e) for applications that
have already been submitted and have an Application Number and a
confirmation number, or for new biotechnology applications being
concurrently submitted using EFS.
May specification document appendix data (e.g. computer listings and/or
large tables) be submitted with the EFS?
Yes, the Fall 2001 release of EFS submission software enables the
electronic filing of appendix data authored in a text (ASCII) format
under 37 CFR 1.58(b) and 1.96.
What is the force and effect of the Acknowledgement Receipt sent by the
USPTO under the EFS?
The acknowledgements and notifications to the applicant indicated
above in this EFS process do not constitute the granting of an official
filing date for the application. That official date will be noted on
the paper Filing Receipt (37 CFR 1.54), PTO Form-103X, which is sent
after printing the application in step 8 in Attachment 1 below, and
reviewing the submitted application parts for compliance with 35 U.S.C.
111 filing date requirements. However, the Acknowledgement Receipt
establishes the date of successful submission of the associated
documents, and is thus a crucial part of the application process.
What is the value of the Acknowledgement Receipt if a problem occurs?
If the printed version of any document received by the EFS is
unreadable, and if it cannot be recovered from the stored files
received by electronic submission, then the applicant will be promptly
notified by phone, fax or e-mail as indicated in the EFS instruction.
Even with prompt processing, if EFS receipts are high the review may
take place a few days or a week later. If an error occurred and the
application cannot be reconstructed, the applicant may have to resubmit
the application and petition for the original filing date. Such events
are expected to be rare. Under this scenario, the applicant would
present 1) the Acknowledgement Receipt, 2) a paper version and an
electronic version (on floppy disk or CD-R) of the files as submitted
and 3) a petition verifying that the attached files are exactly the
same as mentioned in the Acknowledgement Receipt for that application
number. The Acknowledgement Receipt will establish that the resubmitted
documents were exactly those submitted on the date of receipt. However,
the Acknowledgement Receipt is of no value should an applicant submit
the wrong data files under EFS, just as a post card receipt has no
value should an applicant submit a wrong application in paper filings.
Applicants are responsible for ensuring that a filing contains the
correct, intended application files.
What is the date of receipt of an application received under the EFS?
The application's "date of receipt" is the date that it is
fully and successfully received at the USPTO, as shown on the
Acknowledgement Receipt. The date at the USPTO is controlling for the
purposes of original patent applications. There is no "certificate of
transmission" practice for new application or provisional application
e-filings (37 CFR 1.8).
Hours of operation of the EFS will be clearly expressed in the
EFS instructions. If a transmission is attempted during a down time,
the Office cannot accept it and will, if possible, transmit back a
notice that the Office is closed. No Acknowledgement Receipt will be
sent. The "closed" notice will advise the applicant to use
alternative filing methods, such as hand delivery of paper to the USPTO
or Express Mail (under 37 CFR 1.10), to establish the filing date. Note
that new applications filed under 37 CFR 1.53 cannot be submitted by
fax (37 CFR 1.6(d)(3)), and that normal certificate of mailing
procedures do not apply to new applications (37 CFR 1.8(a)(2)(i)(A) and
(D)). Applicants 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.
If an application is successfully received on a Saturday, Sunday
or Federal holiday within the District of Columbia, the Office will
assign that receipt date at the USPTO to the submission.
Are there any legal consequences of the Office's accepting electronic
patent applications on Saturday and Sunday?
The USPTO will be open for receiving applications in electronic
form during scheduled hours every day of the week. Hours will be
announced on the Patents Electronic Business Center Web Page, at the
USPTO Website: http://www.uspto.gov/ebc.
Electronic filing with EFS will provide applicants with the
opportunity to receive a filing date on any day of the week, including
Saturday, Sunday, and Federal holiday within the District of Columbia.
In addition, consistent with 35 U.S.C. 21(b), when the last day for
taking any action or paying any fee in the USPTO 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. Thus, under United States law, applicants will still 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.
Because the conditions for priority rights are governed by the
national law in the country of filing, applicants are cautioned to
consider possible adverse consequences regarding the determination of
priority periods under Article 4(C)(3) of the Paris Convention when
filing international applications in the United States. Specifically,
the ability to file applications electronically on weekends may
result in loss of priority rights in foreign jurisdictions
designated in international applications filed with the USPTO, if
applicants elect to take advantage of sections 21(b) or 119(e)(3) of
title 35. In such circumstances, other Patent Offices may
deny the priority claim on the basis that the international
application was not timely filed according to their national law. For
this reason, applicants may prefer not to rely upon the "next
business day" provisions of sections 21(b) and 119(e)(3) of title 35
when filing applications with the USPTO, and instead file the
application before the Convention year has expired.
PART 2: PROVISIONAL PATENT APPLICATIONS FILED UNDER THE ELECTRONIC FILING
SYSTEM (EFS)
Provisional applications under 35 U.S.C. 111(b) can be
electronically filed using EFS. The process for handling EFS
provisional patent applications follows the same process outlined in
Part 1 of the Legal Framework and in Attachment 1 for new utility
patent application EFS filings except for the following
features of the process:
A. Provisional application must include the Application Data
Sheet (37 CFR 1.76) as the cover sheet and to provide bibliographic
information required by 37 CFR 1.51(c) (1). The entry of a customer
number for a correspondence address will assign to the provisional
application the correspondence address associated with the customer
number and will enable information about the application to be obtained
using the private side of the Patent Application Information Retrieval
(PAIR) system. The ePAVE system allows for the creation of the required
Application Data Sheet.
B. The EFS transmittal form will automatically include
information identifying the electronic submission as a provisional
application.
C. If the provisional application submission to be electronically
filed is subject to U.S. government property interest, an explanation
should be entered on the EFS transmittal form comments section.
Provisional applications containing national security related matter
cannot be electronically filed.
D. Payment of the basic provisional filing fee is required.
E. The Acknowledgement Receipt returned after a successful
electronic filing of a provisional application will contain the USPTO
assigned provisional application number.
F. Provisional Application submissions under EFS will be printed
to paper, reviewed for completeness, and a paper Filing Receipt will be
mailed to the applicant. The paper File Wrapper containing the
electronically filed documents (i.e., the provisional application) will
not be examined or published. Note: the provisional application does
not require the inclusion of a claim, oath or declaration.
G. Provisional Applications submitted under EFS must be only in
the English language. The USPTO permits paper patent applications to be
filed in a language other than English (37 CFR 1.52(d)), but
applications submitted through the Electronic Filing System must
currently be in the English language.
PART 3: EIGHTEEN-MONTH PUBLICATION SUBMISSIONS SUBMITTED UNDER THE
ELECTRONIC FILING SYSTEM (EFS)
The same ePAVE software that is used for filing new patent
applications under the EFS is also used for the re-submission of patent
applications for the purposes of Eighteen-Month Publication. See 37 CFR
1.211-1.221 for the relevant rules.
Ordinarily, a paper copy of patent applications is used for the
production of the Patent Application Publication. However, if applicant
desires:
a) the publication of a redacted copy of an application (37 CFR
1.217) or
b) the publication of the application as amended (37 CFR 1.215) or
c) the voluntary publication of an application filed before, but
pending on November 29, 2000 under 37 CFR 1. 221, or
d) a republication under 37 CFR 1.221of an application previously
published under 37 CFR 1.211
then the application must be submitted in electronic
form using the EFS. If the applicant requests early
publication of the application under 37 CFR 1.219 he or she may
submit an electronic copy using EFS, but EFS submissions are
currently only able to be used for publication purposes if the
application was already on file in the USPTO. Accordingly, to obtain
early publication either file the application on paper or through EFS,
and, once a confirmation number is obtained (on the filing receipt),
re-submit the application using EFS and with a request for early
publication. Alternatively, the second EFS submission may be
eliminated, but publication will be based upon a paper version of the
application. Requests for early and voluntary publication and
republication all require payment of publication and/or processing
fees. See 37 CFR 1.217-221.
Background: How are submissions handled under the
Electronic Filing System (EFS) for Eighteen-Month Publication?
The process for handling the EFS submission for PG Pub is shown
on Attachment 2 below. Note the following features of the process:
A. Applications (including plant patent applications) that
are submitted for redacted, "as amended", voluntary, "previously
published" or, optionally, "early" Patent Application
Publications are authored using the USPTO-provided authoring tools as
described for new applications above. They must contain a statement
that the submission does not include any "new matter."
B. Application files, once properly authored, are assembled,
validated, encrypted, digitally signed, wrapped and electronically
transmitted to the USPTO. This is the same process used for new
applications described above.
C. After receipt at the USPTO, the electronic files are
checked for technical compliance, freedom from viruses and apparent
data integrity as described above for new applications. The
Eighteen-Month Publication submissions are transferred to the facility
that edits, publishes and produces the Published Patent Application
documents directly in electronic form.
Where does the applicant indicate or author the required
statement that this resubmission of the application contains no new
matter? What other certifications are effective?
The following statement is automatically entered and printed on
the completed EFS Application Data Sheet for every Eighteen-Month
Publication electronic submission:
"I state that this resubmission of the application contains no
new matter. If this resubmission is a redacted copy of an application
submitted under CFR 1.217, the applicant hereby certifies that the
redacted copy of the application eliminates only the part of
description of the invention that is not contained in any application
filed in a foreign country, directly or through a multilateral
international agreement, that corresponds to the application filed in
the Office and otherwise does not introduce any new matter.
Additionally, if this submission is a redacted copy of an application
submitted under 37 CFR 1.217, the applicant further certifies that the
documents and certification required by 37 CFR 1.217(c) will be filed
in paper."
In accordance with 37 CFR 10.18(b), by presenting to the Office
(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
Patent and Trademark Office, knowingly and willfully falsifies,
conceals, or covers up by any trick, scheme, or device a material fact,
or makes any false, fictitious or fraudulent statements or
representations, 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.
1001, and that violations of this paragraph may jeopardize the validity
of the application or document.
Entry of one electronic signature appearing on the EFS submission
transmittal will acknowledge all the certification statements contained
in the EFS submission.
May the applicant use a certificate of transmission?
Electronic submissions for Eighteen-Month Publication under EFS
of "as amended" applications, "voluntary" or "previously
published" publications, or, optionally, "early" publications
may be submitted with a certificate of transmission. Consistent with
the certificate practice of 37 CFR 1.8, the local date at the place of
submission as indicated on the certificate of transmission will be
considered for the purposes of determining if the electronic
applications were submitted in a timely manner. This does not apply to
"redacted" applications submitted under 37 CFR 1.217 that must be
received on the specified date at the USPTO.
PART 4: EFS FILING SCENARIO FOR LARGE SUBMISSIONS USING COMPACT DISCS:
If an applicant or attorney attempts to file a patent application
or Eighteen-Month Publication submission that exceeds the EFS system
limit of 10 Megabytes, the system will generate an error message and
advise the applicant to submit the large application on compact discs
(hereinafter CDs or CD-Rs). The submission cannot be forwarded to USPTO
over the Internet using ePAVE. If a large biotechnology sequence
listing, tables or computer program listing caused the large
application size, the applicant has the option of submitting the
application according to the requirements of 37 CFR 1.52(e) with the
large section on CD and the rest in paper. However, regardless of the
cause of the large size of the submission, EFS can also be used to file
the application in the following manner. The process requires the
workstation to be connected to a compact disc recorder:
The process for handling large submissions is diagramed in
Attachment 3. Applicant, on creating a large application (greater than
10 megabytes) will be instructed by ePAVE to:
1. Print out the transmittal form.
2. Copy the two files indicated by ePAVE to compact disc-recordable
(CD-R) media. These files contain the whole application; do not include
other files. Do not use floppy or Zip disks or other media.
3. Wrap the CD in a hard case within a padded protective mailing envelope,
attached to the transmittal form. Enclose a cover letter explaining that
the submission contains an application that was too large to be submitted
under the EFS ePAVE process.
4. Hand carry, or mail the CD-R and a copy of the paper Transmittal Form,
with the cover letter to the USPTO, or deposit them with the US Postal
Service under the Express Mail procedures of 37 CFR 1.10.
Applicant is advised to keep a copy of the CD and transmittal
form for his or her records. In step 2 above, an applicant with
concerns about readability may optionally make a backup copy of the CD
and send in both copies to the USPTO. Label the CDs "Copy 1" and
"Copy 2" and include a signed statement that the two copies are
identical. Copy 1 will be used for processing, unless it is unreadable.
Applicant is advised to electronically "compare" the file on the CD
with the files on the computer to be sure of accuracy.
The USPTO will receive the application package in the mailroom.
The date of receipt of the application will be recorded. In due course,
the CD will be "uploaded" to the EFS server, where the files are
unsigned, decrypted and unzipped. The application files will then be
processed as EFS submissions.
If the submission was a new application (as opposed to a
resubmission of an application under 18-Month Publication), an
Acknowledgement Form will be printed. However, the Acknowledgement Form
will be modified to indicate that the USPTO mail room date of receipt
of the CDs, or the Express Mail date when they were submitted to the
USPS, is the date of their receipt (the date of uploading to the server
will NOT be used). The Acknowledgement Form is placed in the file with
the printed application, and a copy is sent back to the applicant.
If the files contain large tables, sequence listings or computer
program listings, the Office has the option of not printing the large
files, but rather creating two CD-Rs of such data, and treating them
under the CD practice of 37 CFR 1.52(e). If the file is an amino acid/
nucleotide sequence listing, then one additional copy of such a
sequence listing will be created and used as the CRF. In any case, one
CD is placed in the file, and one is put in the Office's CD repository.
In other respects, processing will continue as if the application
had been submitted by the standard EFS channels.
What is Receipt Date for EFS New Utility or Provisional Application Filing?
The filing date of any EFS new utility or provisional application
sent in by CD (in a "CD package", including a paper copy of the
ePAVE transmittal form) will be based on the date the CD package is
received at USPTO, if delivered by hand or regular US mail. That date
will be indicated in any acknowledgment. If the CD package was sent to
the USPTO by Express Mail under 37 CFR 1.10, then the date of deposit
with the United States Postal Service will be used. The Office will
mail an Official filing receipt in due course if the submission is
entitled to a filing date.
What is the official copy of the Sequence Listing (37 CFR 1.821 (c)),
Table, Program Listing?
For applications that are originally filed using EFS, the paper
copy of the specification that is printed from the EFS submission, and
placed in the file wrapper is the official copy, with one exception.
Sequence listings, large tables, and computer program listings may be
submitted on only CD media, according to 37 CFR 1.52(e). If the Office
decides, in a particular instance, to copy a sequence listing file,
computer program listing or large table onto CDs instead of printing it
to paper, the CDs become the official copy. The decision of media,
paper or CD, is dependent on the length of the submission and
feasibility of printing it to paper. The Office will follow the
procedures of 37 CFR 1.821. "Official copy" means the active
authoritative copy.
May an applicant submit more than one copy of the CD to assure readability?
Applicant is required to submit only one EFS new utility
application CD. However, an applicant with concerns about readability
of the CD by the Office has the option of submitting a second copy of
the CD, but must label the two copies "Copy 1" and "Copy 2",
and certify that Copy 1 and Copy 2 are the same. Copy 1 would be used
for processing, unless it is unreadable.
Will Express Mail - submission of EFS New Utility Application CD be
accepted?
Yes
Should applicant/filer be advised to do a file size comparison between
encrypted files copied to EFS New Utility Application CD and the EFS files
residing on the applicant/filer's workstation?
Yes, the EFS Guide will advise applicants to do a file comparison.
For further information:
For further information, consult the EFS documentation on the
USPTO Patents Electronic Business Center web page which includes a
complete description of the EFS process and procedures. It is located
on the Internet at http://www.uspto.gov/ebc.
If there are any questions on the Legal Framework, please contact
Mr. Jay Lucas at jay.lucas@uspto.gov. Questions on the EFS
system should be directed to the SIRA/EFS project primary contact, Ms.
Shelia Summerlin shelia.Summerlin@uspto.gov.
Correspondence may also be addressed to Mr. Jay Lucas, United States
Patent and Trademark Office, Washington, D.C. 20231.
STEPHEN G. KUNIN
Deputy Commissioner for
Patent Examination Policy
To view Attachments 1, 2, and 3 please refer to the Official Gazette.