United States Patent and Trademark Office OG Notices: 13 February 2007
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
[Docket No.: PTO-P-2005-0021]
RIN 0651-AB92
Changes To Facilitate Electronic Filing
of Patent Correspondence
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark Office
(Office) is amending the rules of practice to support implementation of
the Office's electronic filing system (EFS) for patent correspondence,
and in particular, the Web-based electronic filing system (EFS-Web).
EFS-Web permits most patent correspondence, that is, most patent
applications and other patent related documents, to be submitted in a
portable document file ("PDF") format. The major changes that the
Office is adopting are changes to provide patent users with a process
for showing that correspondence submitted in an application which has
entered national stage under 35 U.S.C. 371 submitted via EFS-Web was
actually received by the Office by relying on the acknowledgment
receipt, and to treat certain correspondence as received, for
timeliness purposes, as of the date submitted by applicant rather than
the date received by the Office if the correspondence is filed via
EFS-Web.
DATES: Effective Date: January 23, 2007. The changes apply to any paper,
application, or reexamination proceeding filed in the Office on or after
January 23, 2007.
FOR FURTHER INFORMATION CONTACT: Fred A. Silverberg ((571) 272-7719),
Senior Legal Advisor, Office of Patent Legal Administration, Office of the
Deputy Commissioner for Patent Examination Policy, or Robert A. Clarke
((571) 272-7735), Deputy Director of the Office of Patent Legal
Administration, Office of the Deputy Commissioner for Patent Examination
Policy, directly by phone, or by facsimile to (571) 273-7719, or by mail
addressed to: Mail Stop Comments-Patents, Commissioner for Patents, P.O.
Box 1450, Alexandria, VA 22313-1450.
SUPPLEMENTARY INFORMATION: The United States Patent and Trademark Office
(Office) is amending the rules of practice to support implementation of
the Office's electronic filing system (EFS) for patent correspondence,
and in particular, the new Web-based electronic filing system (EFS-Web),
which went into production (for the public) on March 17, 2006.
Specifically, the changes in this final rule: (1) Provide patent users
with a process for showing that certain national stage correspondence
submitted via EFS-Web was actually received by the Office by relying on
the acknowledgment receipt; and (2) create a new certificate of EFS-Web
transmission, which will allow the Office to treat certain correspondence
as received (for timeliness purposes) as of the date submitted by
applicant rather than the date received by the Office if the correspondence
is filed by EFS-Web. The procedure for the certificate of EFS-Web
transmission is similar to the procedure for the existing certificate of
mailing or transmission under Sec. 1.8. For example, correspondence sent
in reply to an Office action setting a three-month shortened statutory
period for reply would be considered timely if transmitted via EFS-Web
at 11:59 p.m. Pacific Time on the last day of the three-month period for
reply even though it was received in the Office more than three months
from the mailing of the Office action. Thus, the rules are amended so that
EFS-Web submissions would be treated analogously to submissions filed via
First-Class Mail or facsimile transmission with a certificate of mailing or
transmission. This notice is also making minor changes to Secs. 1.4,
1.6, and 1.33 to align the rules of practice to existing practices
regarding EFS-Web.
Discussion of EFS-Web: The Office's electronic filing system previously
provided two distinct electronic filing systems for filing patent
correspondence namely: (1) EFS-Web, and (2) the client-side components
ePAVE for form generation, validation and submission to the Office in
combination with EFS-ABX for authoring the patent application
specification. Prior to EFS-Web, the Office only provided for the
electronic submission of limited patent correspondence using ePAVE and
EFS-ABX. ePAVE and EFS-ABX were discontinued on November 1, 2006. See
Retirement of Electronic Filing System - Application Body Extensible
Markup Language (EFS-ABX) and Electronic Packaging and Validation Engine
(ePAVE) Components, 1311 Off. Gaz. Pat. Off. 155 (October 24, 2006).
Thus, EFS-Web is the sole system for electronic filing of most patent
correspondence. EFS-Web permits most patent applications and other
patent-related documents, to be submitted in a "PDF" file format.
In addition, EFS-Web does not require any significant client side
components (unlike ePAVE and EFS-ABX). Accordingly, EFS-Web allows
users to streamline processing and filing of patent correspondence, and
better integrates electronic filing into their current computer
systems.
Under EFS-Web, correspondence officially submitted is accorded a
"receipt date," which is the date the correspondence was received
by the Office (e.g., in Alexandria, Virginia (Eastern Time
zone)). The receipt date is not limited to an official business day,
but can be a Saturday, Sunday or Federal holiday within the District of
Columbia. Correspondence is officially submitted to the Office via
EFS-Web when a user clicks the submit button on the Confirm and Submit
screen after the correspondence has been uploaded to the USPTO server
for, inter alia, user review. An acknowledgment receipt is
automatically, electronically sent to the person filing the
correspondence after the correspondence is officially submitted. 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. Accordingly, an acknowledgment receipt is a legal equivalent
of a post card receipt described in the Manual of Patent Examining
Procedure (MPEP), Section 503. As the acknowledgment receipt contains
the time the correspondence was received at the Office, users may not
be able to solely rely on the acknowledgment receipt to support a
position that correspondence was submitted at a particular local time.
Therefore, users are advised to keep a copy of papers submitted,
including a certification of EFS-Web transmission under Sec. 1.8, as
evidence of the local time of all submissions to support a position
that correspondence was submitted at a particular local time in the
event such evidence is needed. For the filing of applications, the
official filing date will continue to be stated on the Filing Receipt
under Sec. 1.54(b), which is sent to applicants after the submitted
application parts are reviewed for compliance with the filing date
requirements.
An acknowledgment receipt will not be generated until EFS-Web
correspondence is officially submitted to and received by the Office.
If a user officially submits correspondence to the Office by clicking
on the submit button on the Confirm and Submit screen in EFS-Web, but
no acknowledgment receipt is generated thereafter, the user should
check private PAIR, if possible, for the acknowledgment receipt, which
should be entered in private PAIR a short period of time after the
correspondence is officially submitted to the Office. If no
acknowledgment receipt is available in private PAIR or the user does
not have access to private PAIR, then the user should contact the
Patent Electronic Business Center (EBC) for assistance. If a user
becomes disconnected from EFS-Web prior to officially submitting
correspondence to the Office or who otherwise has difficulty submitting
correspondence through EFS-Web, the user is encouraged to contact the
Patent EBC for assistance. Full technical support is currently
available through the Patent EBC during their Standard Hours of
Operation, which are Monday through Friday from 6 a.m. until midnight
(eastern time), and Saturday and Sunday from 10 a.m. through 6 p.m.
(eastern time) at 866-217-9197 (toll-free). The patent EBC may also be
contacted by E-mail: ebc@uspto.gov or FAX: 571-273-0177.
Limited assistance is available at all other times through the
Office's Electronic Business Support (EBS) at 1-800-786-9199 or
571-272-1000.
If a transmission is attempted during a time when the Office's
electronic filing system is down, the Office will not be able to accept
any correspondence electronically. In this situation, the user is
advised to use alternative filing methods. For the filing of an
application, alternative methods to establish the filing date for an
application are Express Mail under Sec. 1.10 or hand-delivery to the
Office. (Note that new applications filed underSec. 1.53 cannot be
submitted by facsimile transmission (Sec. 1.6(d)(3)).) For other patent
correspondence, alternative methods to establish timeliness of a
submission are First-Class Mail with a certificate of mailing under Sec.
1.8 (if applicable), facsimile transmission with a certificate of
transmission under Sec. 1.8 (if applicable), Express Mail under Sec. 1.10,
or hand-delivery to the Office. Certificate of mailing or transmission
procedures under Sec. 1.8 do not apply to: (1) 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 of a design application
under Sec. 1.53(d) (see Sec. 1.8(a)(2)(i)(A)); (2) the filing of
an international application for patent (see Sec. 1.8(a)(2)(i)(D));
(3) 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 (see Sec.
1.8(a)(2)(i)(E)); and (4) the filing of a copy of the international
application and the basic national fee necessary to enter the national
stage, as specified in Sec. 1.495(b) (see Sec. 1.8(a)(2)(i)(F))
regardless of the media that is used. Likewise, if the user cannot pay
fees on-line because the RAM interface is down, the user should pay fees
via alternative methods such as authorizing payment to a deposit account
or by a credit card in a document (e.g., a fee transmittal). Accordingly,
users are strongly advised to submit their correspondence via EFS-Web
sufficiently early in the day to allow time for alternative filing or
payment methods when submissions via EFS or RAM cannot be initiated or
correctly completed.
As EFS-Web is easy to use and readily available twenty-four hours a
day, every day, some users may find it tempting to include
correspondence to multiple applications in one, single EFS-Web
submission, or to submit the required reply piecemeal over multiple
sessions. Such submissions may result in processing delays in the
Office, and should be avoided. In order to facilitate proper processing
of any correspondence submitted via EFS-Web, each submission session
must be limited to correspondence for a single application, with each
distinct reply being contained in a separate paper (see Sec. 1.4(c)).
The application number or the patent number for which the correspondence
pertains must be included in any submission to assure proper matching with
the application file.
For more information on EFS-Web, see the Legal Framework for EFS-Web
(http://www.uspto.gov/ebc/portal/efs/legal.htm), which
provides guidance on the background statutes, regulations and policies
that support the Office electronic filing system, including EFS-Web and
the use of S-signature therein. The Legal Framework for EFS-Web is a
valuable reference for applicants and patent practitioners using
EFS-Web.
Although EFS-Web accepts most patent correspondence, there are still
certain types of correspondence that are not permitted to be filed by
EFS-Web, such as any correspondence for reexamination proceedings.
See the Legal Framework for EFS-Web for a current list of
types of correspondence that are not permitted to be filed using
EFS-Web. If any additional types of correspondence are permitted to be
filed via EFS-Web, they will be announced on the Office's Web site and
will be added to the Legal Framework for EFS-Web in due course.
Therefore, users are advised to periodically review the Legal Framework
for EFS-Web to view current information on types of correspondence that
are not permitted to be filed through EFS-Web.
Discussion of Specific Rules
Sections 1.4, 1.6, 1.8, and 1.33 governing applicant
correspondence are amended to reflect use of electronic commerce, in
particular EFS- Web, as follows:
Section 1.4: Section 1.4(d)(2) is amended to delete the
reference to the character coded signature of paragraph (d)(3), which
was only applicable to the ePAVE software, a component of the Office's
older, discontinued patent electronic filing system. Since S-signatures
are acceptable signatures in EFS-Web submissions in accordance with Sec.
1.4(d)(2), this paragraph is also amended to eliminate the reference to
"EFS Tag(ged) Image File Format (TIFF)" because EFS-Web does not
accept TIFF attachments. In addition, a reference to Sec. 1.6(a)(4) is
added as a conforming amendment. Accordingly, the relevant phrase has
been rewritten as "via the Office Electronic Filing System as an
attachment as provided in Sec. 1.6(a)(4)."
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 Sec.
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. That is, the legible
electronic image of a handwritten signature must be enclosed between
two single forward slashes, and the signer's name indicated below or
adjacent to the signature as required by Sec. 1.4(d)(2). The slashes must
be inserted in the correspondence prior to, or at the same time as, the
insertion of the signature. The slashes must not be added after the
insertion of the signature.
Section 1.4(d)(3) is amended to provide requirements in using Office
forms. The character coded signature requirements of former paragraph
(d)(3) have been removed because such requirements were only applicable
to the ePAVE software, which is now discontinued.
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. 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 the nonpublication request form) may be made.
For example, the following statements are certification statements on an
oath or declaration form PTO/SB/01: (1) "I believe the inventor(s) named
below to be the original and first inventor(s) of the subject matter
which is claimed and for which a patent is sought on the invention
entitled;" (2) "I hereby state that I have reviewed and understand the
contents of the above-identified specification, including the claims, as
amended by any amendment specifically referred to above;" (3) "I
acknowledge the duty to disclose information which is material to
patentability as defined in 37 CFR 1.56, including for continuation-in-part
applications, material information which became available between the
filing date of the prior application and the national or PCT
international filing date of the continuation-in-part application;"
and (4) "I hereby declare that all statements made herein of my own
knowledge are true and that all statements made on information and
belief are believed to be true; and further that these statements were
made with the knowledge that willful false statements and the like so
made are punishable by fine or imprisonment, or both, under 18 U.S.C.
1001 and that such willful false statements may jeopardize the validity
of the application or any patent issued thereon." As another example,
the following statement is a certification on the nonpublication
request form PTO/SB/35: "I hereby certify that the invention
disclosed in the attached application has not and will not be the
subject of an application filed in another country, or under a
multilateral international agreement, that requires publication at
eighteen months after filing." Other Office forms for patent
applications or patents that contain certification statements include,
but are not limited to, forms PTO/SB/01, PTO/SB/01A, PTO/SB/03,
PTO/SB/03A, PTO/SB/04, PTO/SB/25, PTO/SB/26, PTO/SB/28, PTO/SB/35,
PTO/SB/51, PTO/SB/51s, PTO/SB/53, PTO/SB/62, PTO/SB/63, PTO/SB/64,
PTO/SB/64a, PTO/SB/66, and PTO/SB/101-110.
Most of the Office forms are static in that the forms do not allow
users to customize the form to their particular needs. The existing
text of a static form, other than a certification statement, may be
modified, deleted or added to by a party, only if information
identifying the form as an Office form (e.g., the form
number and the Office of Management and Budget (OMB) approval
information in the header and footer of the form) is removed. For
example, a static form could be amended to add additional signature
blocks if the form number and OMB information is removed. EFS-Web
forms, however, do allow for customization. For example, users may add,
remove, or change certain additional data blocks (e.g.,
signature blocks) as needed by selecting the "add" or "remove"
buttons on the EFS-Web forms. These EFS-Web forms can be customized in
a way provided for by the form without removing the text identifying
the form as an Office form (e.g., the form number and OMB
information in the header and the footer). Currently, only forms
PTO/SB/08 Information Disclosure Statement, PTO/SB/14 Application Data
Sheet, PTO/SB/28 Petition to Make Special under the Accelerated
Examination Program, PTO/SB/30 Request for Continued Examination (RCE)
Transmittal, and PTO/SB/66 Petition to Accept Unintentionally Delayed
Payment of Maintenance Fee in an Expired Patent (37 CFR 1.378(c)) are
EFS-Web forms.
The presentation to the Office (whether by signing, filing, submitting,
or later advocating) of any form with text identifying the form as an
Office form (e.g., the form number and the OMB information
in the header and footer) by a party, whether a practitioner or
non-practitioner, constitutes a certification under Sec. 10.18(b) that
the existing text and any certification statement on the form has not been
altered other than permitted by EFS-Web customization.
Section 1.4(d)(4) is amended to make conforming changes due to the
removal of the character coded signature requirements of former
paragraph (d)(3).
Section 1.6: Section 1.6(a)(4) is added to indicate that most patent
applications and other patent correspondence, including, inter alia,
amendments, drawing changes and extensions of time, may be submitted using
the Office electronic filing system only in accordance with the Office
electronic filing system requirements (see the Legal Framework for EFS-Web,
which sets forth the electronic filing system requirements
(http://www.uspto.gov/ebc/portal/efs/legal.htm)). The phrase "using the
Office electronic filing system only in accordance with the Office
electronic filing system requirements" codifies and continues the current
EFS practice.
Under EFS-Web, correspondence is accorded a "receipt date" that is
the date the correspondence is received (Eastern Time) at the Office's
correspondence address set forth in Sec. 1.1 (e.g., Alexandria, Virginia)
when it was officially submitted. The receipt date is not limited to an
official business day, but can be a Saturday, Sunday or Federal holiday
within the District of Columbia. Correspondence is officially submitted
to the Office via EFS-Web when a user clicks the submit button on the
Confirm and Submit screen after the correspondence has been uploaded to
the USPTO server for, inter alia, user review.
The "receipt date" is recorded on an acknowledgment receipt, which
is automatically sent to the person filing the correspondence after the
correspondence is officially submitted. Under EFS-Web, the
acknowledgment receipt contains a full listing of the correspondence
submitted, including the count of pages and/or byte size for each piece
of correspondence in the submission. Accordingly, the acknowledgment
receipt is a legal equivalent of a post card receipt described in the
Manual of Patent Examining Procedure (MPEP), Section 503. For the
filing of applications, the official filing date will continue to be
stated on the filing receipt under Sec. 1.54(b), which is sent to
applicants after the submitted application parts are reviewed for
compliance with the filing date requirements.
Section 1.6(g) is added to provide a new procedure for establishing
that national stage correspondence, national stage filings, or
follow-on correspondence required by Sec. 1.495(b), which had
been submitted via EFS was, in fact, received by the Office in the
event that the Office has no evidence of receipt.
To begin entry into the national stage, applicant is required to comply
with Sec. 1.495(b) within thirty months from the priority date. Thus,
applicant must pay the basic national fee on or before thirty months
from the priority date and be sure that a copy of the international
application has been received by the U.S. Designated or Elected Office
prior to expiration of thirty months from the priority date. Where the
international application was filed with the United States Receiving
Office as the competent receiving Office, the copy of the international
application referred to in Sec. 1.495(b) is not required. Payment of the
basic national fee will indicate applicant's intention to enter the
national stage and will provide a U.S. correspondence address in most
instances. Applicants cannot pay the basic national fee with a
surcharge after the thirty-month deadline. Failure to pay the basic
national fee within thirty months from the priority date will result in
abandonment of the application. The time for payment of the basic fee
is not extendable. Similarly, the copy of the international
application, if required under Sec. 1.495(b), must be provided within
thirty months from the priority date to avoid abandonment of the
application. Accordingly, the ability to present evidence of timely
receipt of national stage correspondence is critical to potentially
avoid abandonment of the application.
This new procedure is equivalent to the Office's domestic filing
process for providing evidence of the Office's receipt of a continued
prosecution application (CPA) for a design application under Sec. 1.53(d)
submitted by facsimile transmission in the event that the Office does
not have evidence of receipt, as set forth in Sec. 1.6(f) and MPEP
502.01. For a CPA, the procedure for providing evidence of receipt by
the Office 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 (Sec. 1.6(f)). 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. Under the
new procedure for providing evidence of a prior submission via EFS-Web,
the petition and showing necessary to accept the re-submission of the
correspondence as being filed on an earlier date is the same as the
petition and showing required under Sec. 1.6(f) with the exception that
the acknowledgment receipt, or other equivalent evidence, must be
provided rather than the sender's facsimile report.
If applicant has the acknowledgment receipt, applicant must include a
copy of the acknowledgment receipt as evidence of the submission of the
national stage correspondence. In the rare situations where applicant
does not have the acknowledgment receipt, equivalent evidence, which is
another piece of correspondence that shows substantially similar
evidence that is provided by the acknowledgment receipt, will be
considered in support of the petition.
Section 1.8: Section 1.8(a)(1)(i) is amended by adding new
paragraph (C) to permit certain correspondence, excluding
correspondence not entitled to a certificate of mailing or transmission
or not permitted to be electronically transmitted, to be treated as
being timely received on the local date at the location where submitted
if filed with a certificate of transmission via the Office's
electronic filing system, which is EFS-Web. See the Legal
Framework for EFS-Web for a current list of types of correspondence
that are not permitted to be filed using EFS-Web, such as any
correspondence for reexamination proceedings. This rule change will
provide a similar procedure for correspondence filed via EFS-Web that
currently exists for correspondence filed via First-Class Mail under Sec.
1.10 and facsimile transmission using a certificate of mailing or
transmission under Sec. 1.8. Users should place the certificate of
transmission on the correspondence (e.g., transmittal
letter) submitted under EFS-Web in a similar manner as they would for
correspondence submitted by facsimile transmission. See MPEP
512 for more information on certificate of mailing or transmission
under Sec. 1.8.
Prior to this amendment to Sec. 1.8, a person could state on certain
papers directed to the Office, the date on which the paper will be
deposited in the United States Postal Service or transmitted by
facsimile. This amendment to Sec. 1.8 will permit a similar procedure for
establishing timeliness when correspondence is filed via EFS-Web.
Accordingly, if the date stated in the correspondence submitted via
EFS-Web 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.
Even with such procedures under Sec. 1.8, the Office will continue its
usual practice of recording the receipt date (e.g., "Office Date" Stamp) on
all papers received through the mail, by facsimile, or via EFS-Web
except those filed under Sec. 1.10 (See MPEP 513). The receipt date will
also be the date that is entered on Office records and from which any
subsequent periods are calculated.
The certificate of mailing or transmission under Sec. 1.8 is not
available for all correspondence. Paragraph (a)(2) of Sec. 1.8 lists some
correspondence for which the certification of mailing or transmission
does not apply to, and no benefit will be given to such certificates if
used. The list enumerated in Sec. 1.8(a)(2) is not exhaustive, and the
provisions of Sec. 1.8 do not apply to the time periods or situations
that have been explicitly excluded from Sec. 1.8. For example, provisions
of Sec. 1.8(a) do not apply to time periods and situations set forth in
Secs. 1.217(e) and 1.703(f) because the exceptions are provided
explicitly in Secs. 1.217(e) and 1.703(f).
Paragraphs (b) and (c) of Sec. 1.8 will also apply to a certification of
EFS-Web transmission by new paragraph (a)(1)(i)(C) of this section.
Paragraphs (b) and (c) concern the situation where a paper containing a
certificate was timely filed, but never received by the Office.
Specifically, Sec. 1.8(b) permits a party to notify the Office of a
previous mailing, or transmission, of correspondence when a reasonable
amount of time has elapsed from the time of mailing or transmitting of
the correspondence, but Office records do not show receipt of the
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 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 should check the Office's private
Patent Application Information Retrieval (PAIR) System to see if the
correspondence has been entered into the application file.
For EFS-Web submissions, applicants are encouraged to use the
acknowledgment receipt generated by EFS-Web, if available, as part of
the evidence to support the statement required by Sec. 1.8(b)(3). An
acknowledgment receipt is automatically electronically sent to the
person filing the correspondence after the correspondence is officially
submitted. As the acknowledgment receipt contains the time (Eastern
Time) the correspondence was received at the Office, users may not be
able to solely rely on the acknowledgment receipt to support a position
that correspondence was submitted at a particular local time.
Therefore, users are advised to keep a copy of papers submitted,
including a certification of EFS-Web transmission, as evidence of the
local time of all EFS-Web submissions to support a position that
correspondence was submitted at a particular local time in the event
such evidence is needed.
Section 1.33: Section 1.33(a) is amended to accommodate
changes due to electronic commerce. The Office anticipates that, in the
near term future, applicants may have the option to view Office
communications via the Office's private PAIR system instead of
receiving mailed communications. Also, when a submitter files
correspondence using EFS-Web, an acknowledgment receipt is typically
generated and automatically sent via e-mail to the submitter. The
acknowledgment receipt is also placed in the Office's electronic file
and is viewable in private PAIR. To accommodate these processes, the
phrases, "or otherwise make available," and "the person
associated with" was added so the third sentence will read as
follows: "The Office will direct, or otherwise make available, all
notices, official letters, and other communications relating to the
application to the person associated with the correspondence
address." In addition, the word "generally" was added to the
following sentence as a conforming change: "The Office will generally
not engage in double correspondence with an applicant and a patent
practitioner, or with more than one patent practitioner except as
deemed necessary by the Director."
Rule Making Considerations
Administrative Procedure Act
This notice adopts changes to the rules of practice that
concern the manner of submitting certain correspondence via the
Office's electronic filing systems. Specifically, the changes in this
final rule: (1) Provide patent users with a process for showing that
certain national stage correspondence submitted via EFS-Web was
actually received by the Office by relying on the acknowledgment
receipt; and (2) treat certain correspondence as received (for
timeliness purposes) as of the date submitted by applicant rather than
the date received by the Office if the correspondence is filed by
EFS-Web, which will provide a similar procedure as the existing
certificate of mailing or transmission under Sec. 1.8. Therefore, these
rule changes involve interpretive rules, or rules of agency practice
and procedure. See Bachow Communications Inc. v.
FCC, 237 F.3d 683, 690 (D.C. Cir. 2001) (rules governing an
application process are "rules of agency organization, procedure, or
practice" and exempt from the Administrative Procedure Act's notice
and comment requirement); see also Merck & Co., Inc. v.
Kessler, 80 F.3d 1543, 1549-50, 38 USPQ2d 1347, 1351 (Fed.
Cir. 1996) (the rules of practice promulgated under the authority of
former 35 U.S.C. 6(a) (now in 35 U.S.C. 2(b)(2)) are not substantive
rules (to which the notice and comment requirements of the
Administrative Procedure Act apply)), and Fressola v.
Manbeck, 36 USPQ2d 1211, 1215 (D.D.C. 1995) ("it is
extremely doubtful whether any of the rules formulated to govern patent
or trade-mark practice are other than `interpretive rules, general
statements of policy, * * * procedure, or practice.'") (quoting C.W.
Ooms, The United States Patent Office and the Administrative Procedure
Act, 38 Trademark Rep. 149, 153 (1948)). Accordingly, prior notice and
an opportunity for public comment were not required pursuant to 5
U.S.C. 553(b)(A) (or any other law), and thirty-day advance publication
is not required pursuant to 5 U.S.C. 553(d) (or any other law).
Regulatory Flexibility Act
As discussed previously, the changes in this final rule involve
rules of agency practice and procedure under 5 U.S.C. 553(b)(A), and
prior notice and an opportunity for public comment were not required
pursuant to 5 U.S.C. 553(b)(A) (or any other law). As prior notice and
an opportunity for public comment were not required pursuant to 5
U.S.C. 553 (or any other law) for the changes in this final rule, a
regulatory flexibility analysis under the Regulatory Flexibility Act (5
U.S.C. 601 et seq.) is not required for the changes in this final rule.
See 5 U.S.C. 603.
Executive Order 13132
This rule making does not contain policies with federalism
implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).
Executive Order 12866
This rule making has been determined to be not significant for
purposes of Executive Order 12866 (Sept. 30, 1993).
Paperwork Reduction Act
This notice involves information collection requirements which
are subject to review by the Office of Management and Budget (OMB)
under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et
seq.). The changes in this notice are limited to amending the
rules of practice to support implementation of the Office's electronic
filing system (EFS) for patent correspondence, and in particular, the
new web-based electronic filing system (EFS-Web). The changes in this
final rule: (1) Provide patent users with a process for showing that
certain national stage correspondence submitted via EFS-Web was
actually received by the Office by relying on the acknowledgment
receipt; and (2) treat certain correspondence as received (for
timeliness purposes) as of the date submitted by applicant rather than
the date received by the Office if the correspondence is filed by
EFS-Web, which will provide a similar procedure as the existing
certificate of mailing or transmission under Sec. 1.8. The collections of
information involved in this notice have been reviewed and previously
approved by OMB under the following OMB control numbers: 0651-0021,
0651-0031 and 0651-0032. The United States Patent and Trademark Office
is not resubmitting the information collections package for OMB control
numbers 0651-0031 and 0651-0032 to OMB for its review and approval
because the changes in this notice do not affect the information
collection requirements associated with the information collection
under OMB control numbers 0651-0031 and 0651-0032. The United States
Patent and Trademark Office is resubmitting the information collections
package for OMB control numbers 0651-0021 to OMB for its review and
approval because the changes in this notice do affect the information
collection requirements associated with the information collection
under OMB control number 0651-0021.
The title, description and respondent description of the information
collection under OMB control number 0651-0021 are shown below with
estimates of the annual reporting burdens. Included in the estimates is
the time for reviewing instructions, gathering and maintaining the data
needed, and completing and reviewing the collection of information.
OMB Number: 0651-0021.
Title: Patent Cooperation Treaty.
Form Numbers: PCT/RO/101, PCT/RO/134, PTO-1382, PTO-1390,
PCT/IPEA/401, PTO/SB/61/PCT, PTO/SB/64/PCT, PCT/Model of power of
attorney, PCT/Model of general power of attorney.
Type of Review: Approved through March 2007.
Affected Public: Individuals or households, businesses or
other for-profits, not-for-profit institutions, farms, the Federal
Government, and state, local or tribal governments.
Estimated Number of Respondents: 355,655.
Estimated Time per Response: 15 minutes to 8 hours.
Estimated Total Annual Burden Hours: 347,889.
Needs and Uses: The general purpose of the Patent
Cooperation Treaty (PCT) is to standardize the format and filing
procedures so that applicants may file one international application in
one location, in one language, and pay one initial set of fees to seek
protection for an invention in more than 100 designated countries. This
collection of information is necessary so that respondents can file an
international patent application and so that the USPTO can fulfill its
duties to process, search, and examine international patent applications
under the provisions of the PCT.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this
burden, to Robert J. Spar, Director, Office of Patent Legal
Administration, Commissioner for Patents, P.O. Box 1450, Alexandria, VA
22313-1450, or to the Office of Information and Regulatory Affairs,
Office of Management and Budget, New Executive Office Building, Room
10235, 725 17th Street, NW., Washington, DC 20503, Attention: Desk
Officer for the Patent and Trademark Office.
Notwithstanding any other provision of law, no person is required to
respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
. For the reasons set forth in the preamble, 37 CFR part 1 is
amended as follows:
PART 1 - RULES OF PRACTICE IN PATENT CASES
. 1. The authority citation for 37 CFR part 1 continues to read
as follows:
Authority: 35 U.S.C. 2(b)(2).
. 2. Section 1.4 is amended by revising paragraphs (d)(2) introductory text,
(d)(3), and (d)(4)(ii) to read as follows:
Sec. 1.4 Nature of correspondence and signature requirements.
* * * * *
(d) * * *
(2) S-signature. An S-signature is a signature inserted between forward
slash marks, but not a handwritten signature as defined by Sec. 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 Sec. 1.4(d)(1). Correspondence being filed in
the Office in paper, by facsimile transmission as provided in Sec. 1.6(d),
or via the Office electronic filing system as an attachment as provided
in Sec. 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.
* * * * *
(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 form) 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 Sec. 10.18(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) * * *
(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.
* * * * *
. 3. Section 1.6 is amended by adding new paragraphs (a)(4) and
(g) to read as follows:
Sec. 1.6 Receipt of correspondence.
(a) * * *
(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 Sec. 1.1 when it was officially
submitted.
* * * * *
(g) Submission of the national stage correspondence
required by Sec. 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 Sec. 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 Sec. 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.
. 4. Section 1.8 is amended by revising paragraphs (a)(1)(i) and (b)(3) to
read as follows:
Sec. 1.8 Certificate of mailing or transmission.
(a) * * *
(1) * * *
(i) The correspondence is mailed or transmitted prior to expiration of
the set period of time by being:
(A) Addressed as set out in Sec. 1.1(a) and deposited with the U.S.
Postal Service with sufficient postage as first class mail;
(B) Transmitted by facsimile to the Patent and Trademark Office in
accordance with Sec. 1.6(d); or
(C) Transmitted via the Office electronic filing system in accordance
with Sec. 1.6(a)(4); and
* * * * *
(b) * * *
(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.
* * * * *
. 5. Section 1.33 is amended by revising the introductory text
of paragraph (a) to read as follows:
Sec. 1.33 Correspondence respecting patent applications, reexamination
proceedings, and other proceedings.
(a) Correspondence address and daytime telephone
number. When filing an application, a correspondence address must
be set forth in either an application data sheet (Sec. 1.76), or
elsewhere, in a clearly identifiable manner, in any paper submitted
with an application filing. If no correspondence address is specified,
the Office may treat the mailing address of the first named inventor
(if provided, see Secs. 1.76(b)(1) and 1.63(c)(2)) as the correspondence
address. The Office will direct, or otherwise make available, all
notices, official letters, and other communications relating to the
application to the person associated with the correspondence address.
For correspondence submitted via the Office's electronic filing
system, however, an electronic acknowledgment receipt will be sent to
the submitter. The Office will generally not engage in double
correspondence with an applicant and a patent practitioner, or with
more than one patent practitioner except as deemed necessary by the
Director. If more than one correspondence address is specified in a
single document, the Office will select one of the specified addresses
for use as the correspondence address and, if given, will select the
address associated with a Customer Number over a typed correspondence
address. For the party to whom correspondence is to be addressed, a
daytime telephone number should be supplied in a clearly identifiable
manner and may be changed by any party who may change the
correspondence address. The correspondence address may be changed as
follows:
* * * * *
January 17, 2007 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office