United States Patent and Trademark Office OG Notices: 16 January 2007
Electronic Notification of Outgoing Correspondence
(e-Office Action)
Effective December 16, 2006, the United States Patent and Trademark
Office (Office) will begin a pilot program to provide a limited number of
Private PAIR users with the option of receiving electronic notification of
some outgoing correspondence related to their US patents and US national
patent applications retrievable through Private PAIR instead of a paper
mailing of the correspondence. Patent Cooperation Treaty (PCT) applications
will not be included in this pilot.
Participants in this pilot program will no longer receive paper mailings
for most correspondence originating from a Technology Center. However,
since several areas of the Office have independent mailing processes, pilot
participants will continue to receive paper mailings for correspondence
originating from several areas of the Office including, but not limited to:
Office of Initial Patent Examination, Petitions, PCT, Appeals,
Publications, Interference, and Reexamination.
A Private PAIR user will be able to opt-in to receive electronic mail
message (email) notifications of outgoing correspondence by selecting the
appropriate choice on the Customer Number Details screen for a customer
number associated with a correspondence address after logging in to Private
PAIR and providing between one and three email addresses to be used for
these notifications. The Private Pair user must be a registered patent
attorney or agent of record, or a pro se inventor who is a named inventor
in the application associated with the customer number through which
Private PAIR is accessed. The Office will then send a notification to each
provided email address if a new outgoing correspondence has been prepared
for the patents or patent applications associated with the user's Customer
Number. Each email notification will list all applications, associated with
the corresponding Customer Number, in which new outgoing correspondence was
prepared for the corresponding electronic application files within the
preceding 24 hours. Each email notification will be entered into the
corresponding application files. The new outgoing correspondence will
become available for viewing and downloading through Private PAIR within
two business days of the date of the email notification.
Applicants will have the ability to opt-in or opt-out of receiving
electronic notification of Office actions at any time. However, the status
of each individual outgoing correspondence, whether electronic or paper,
will be determined at the time of the printing of the form PTOL-90 cover
sheet (at the time the outgoing correspondence becomes available for
viewing, i.e., the date indicated on the correspondence).
The email notification described above will be sent after the Office
action has been prepared and entered into the record. The period for reply
to any Office correspondence to which a reply is required will commence on
the date indicated on the outgoing Office correspondence (i.e., the date
the correspondence becomes available for viewing). The date indicated on
the Office correspondence will also be considered the date of mailing of
such outgoing correspondence for all other purposes (e.g., 37 CFR
1.71(g)(2), 1.97(b), 1.701 through 1.705). The Office communication will
become available for downloading and viewing through Private PAIR on the
date indicated on the correspondence.
If none of the documents in each of the applications listed in the email
notifications are viewed or downloaded through Private PAIR within seven
calendar days after the emails are sent, a courtesy postcard notifying the
applicant of the availability of electronic Office action will be mailed to
the correspondence address associated with the applicant's corresponding
Customer Number for each of those applications. The mailing of a courtesy
postcard will not restart the time period for reply, and the period for
reply to any outgoing Office correspondence to which a reply is required
will continue to be measured from the date indicated on such outgoing
Office correspondence.
Please note that the email notification procedure outlined above is
simply an automated email sent by the Office to alert applicant that an
official Office correspondence has been entered in the official record that
will be available for viewing via private PAIR. It is not an email sent by
the examiner and does not alter the Office policy prohibiting an applicant
or examiner from engaging in improper email correspondence. See MPEP
section 502.03.
The e-Office Action Pilot Program will begin with a limited number of
participants. The Pilot Program will last approximately six months. Upon
the conclusion of the pilot program the success of the pilot will be
evaluated. At that time decisions will be made as to whether or not to make
modifications to the e-Office action program and whether or not to
permanently implement the program.
Thus, if the pilot program is successful and a decision is made to
permanently implement the program, it is expected that the e-Office Action
Program will go into full production sometime around June 2007 at which
point the program will be open to all users (registered patent attorney or
agent of record, or a pro se inventor who is a named inventor in the
application associated with the customer number through which Private PAIR
is accessed) having a Customer Number and access to Private PAIR.
For further information please contact the Patent Electronic Business
Center (EBC) 866-217-9197 (toll-free) or 571-272-4100 Monday through Friday
from 6 a.m. to 12 Midnight Eastern Time or send e-mail to ebc@uspto.gov.
December 19, 2006 JOHN DOLL
Commissioner for Patents