(392) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1, 2, and 3
[Docket No. PTO-P-2008-0022]
RIN 0651-AC27
Changes to Practice for Documents
Submitted to the United States
Patent and Trademark Office
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
SUMMARY: The United States Patent and Trademark Office (Office) is
proposing to revise the rules of practice to limit the types of
correspondence that may be submitted to the Office by facsimile. The
Office is also proposing an increased minimum font size for use on
papers submitted to the Office for a patent application, patent or
reexamination proceeding. The proposed changes will improve the
legibility of documents in the Office's files of patent applications
and reexamination proceedings.
DATES: Written comments must be received on or before October 6, 2008.
No public hearing will be held.
ADDRESSES: Comments should be sent by electronic mail over the Internet
addressed to AC27.comments@uspto.gov. Comments may also be submitted by
mail addressed to: Mail Stop Comments-Patents, Commissioner for
Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the
attention of Raul Tamayo, Legal Advisor, Office of Patent Legal
Administration (OPLA). Although comments may be submitted by mail, the
Office prefers to receive comments via the Internet.
Comments may also be sent by electronic mail message over the
Internet via the Federal eRulemaking Portal. See the Federal eRulemaking
Portal Web site (http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=
leavingFR.html&log=linklog&to=http://www.regulations.gov) for additional
instructions on providing comments via the Federal eRulemaking Portal.
The comments will be available for public inspection at the Office
of Patent Legal Administration, Office of the Deputy Commissioner for
Patent Examination Policy, currently located at Room 7D74 of Madison
West, 600 Dulany Street, Alexandria, Virginia and will also be available
through anonymous file transfer protocol (ftp) via the Internet (address:
http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.html&
log=linklog&to=http://www.uspto.gov).
Because comments will be made available for public inspection,
information that is not desired to be made public, such as an address or a
telephone number, should not be included in the comments.
FOR FURTHER INFORMATION CONTACT: Hiram H. Bernstein ((571) 272-7707),
Senior Legal Advisor, or Raul Tamayo, Legal Advisor, ((571) 272-7728),
Office of Patent Legal Administration, Office of Deputy Commissioner
for Patent Examination Policy, directly by telephone, or by mail
addressed to: Mail Stop Comments-Patents, Commissioner for Patents,
P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of
the Office of Patent Legal Administration.
For information regarding reexamination issues, contact Stephen
Marcus ((571) 272-7743) or Kenneth Schor ((571) 272-7710), Senior Legal
Advisors, Office of Patent Legal Administration, Office of Deputy
Commissioner for Patent Examination Policy.
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SUPPLEMENTARY INFORMATION: The Office is proposing to revise the rules
of practice in title 37 of the Code of Federal Regulations (CFR) for
facsimile transmissions of correspondence, and the minimum font size
required to be used. The Office is specifically proposing revising
§§ 1.6, 1.52, 1.366, 2.195, 3.24, and 3.25.
I. Background
The number of patent applications and patent-related correspondence
received by the Office has increased substantially over the last few
years, and submissions are expected to continue to increase in the next
few years. Processing paper is extremely labor-intensive and subject to
error and misfiling, particularly as the Office must sort through
several thousand pieces of patent correspondence that are received on a
daily basis. Although the Office has made substantial changes in an
attempt to accurately and efficiently process the increased number of
correspondence received, the Office believes that it should make
further changes in its business practices to improve its handling of
patent correspondence.
II. Facsimile Transmission
In 1988, the Office, due to widespread use of facsimile transmission
and the resulting time saved in correspondence between applicants and the
Office, established a trial program to accept facsimile transmission
of certain correspondence. In light of the success of the trial program,
a policy on acceptance of facsimile transmissions was incorporated into the
rules of practice. See Changes in Signature and Filing Requirements for
Correspondence Files in the Patent and Trademark Office, 58 FR 54494
(October 22, 1993). Facsimile transmission of correspondence has grown to
over 240,000 pieces of patent correspondence per year sent to the Office's
central facsimile number. While the number of facsimile transmissions in
any one application may be small, the overall number of facsimile
transmissions represents a significant processing burden on the Office.
The advantage of facsimile transmitting patent and assignment
correspondence has been the quick submission of such correspondence to
the particular area of the Office concerned with promptly acting on
them. The advantage, however, is not exclusive to facsimile
transmissions. EFS-Web offers this advantage as well as others not
available with facsimile transmission. For example, EFS-Web submissions
are "soft scanned" (i.e., electronically uploaded) directly into the
official application file, so multiple Office employees can
simultaneously view the document(s). Furthermore, when documents are
submitted via EFS-Web, the Office's electronic system sends an auto-
generated message notifying the appropriate area which treats the type
of documents submitted. Additionally, EFS-Web offers applicants the
opportunity to review the content of their submissions after the "soft
scanning" process is complete.
It should be recognized that correspondence received by the Office
via facsimile are often of low image quality when printed and viewed.
The low image quality is not so much dependent upon the type of printer
used by the Office when receiving and printing the transmitted
correspondence, but rather is dependent upon the quality of the machine
used by an applicant in generating the facsimile transmission. When the
Office scans these low image quality correspondence into the Office's
official application file called the Image File Wrapper (IFW), the
image quality can be further compromised.
In addition to low image quality, a number of other adverse
consequences, from the Office's perspective, exist when applicant
submits patent and assignment documents via facsimile. For example, a
number of applicants are not meticulous in determining the specific
facsimile transmission number to which a correspondence should be sent.
Under the current rules, receipt by the Office via any facsimile
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transmission number may suffice to represent a completed, effective
transmission. However, the area of the Office needing to act on the
errant transmission would not be aware of its receipt, and the area
receiving it may not immediately recognize what type of correspondence
has been received, or where the correspondence should be forwarded for
prompt action. Such circumstances cause unnecessary delays and add
unnecessary costs to the processing of errant correspondence. In some
instances, routing errant correspondence to the correct area of the
Office is not possible or is not done in a timely manner (e.g., the
paper copy becomes misplaced before the proper forwarding area can be
determined, or the proper forwarding area is not readily identifiable
by the receiving area), thereby forcing the applicant to rely on a
transmission receipt via a petition alleging that the correspondence
was timely submitted. Additionally, even where the facsimile
transmission is sent to the designated transmission number, the Office
must print the transmitted correspondence, process the paper, scan the
possibly low-quality image, and update the IFW. All of these steps are
additionally time-consuming and costly.
Accordingly, the Office believes that given: (1) The costs and
quality concerns regarding facsimile transmitted correspondence; and
(2) the newly upgraded EFS-Web electronic filing system, which offers
the same benefit of quick submission to the particular area of the
Office that needs to act on the correspondence, it is now appropriate
to terminate the use of facsimile transmissions as a method for filing
most correspondence intended to become part of the file record of a
patent application, patent or reexamination proceeding. Specifically,
correspondence that can be submitted via EFS-Web would no longer be
accepted via facsimile transmission. For example, a petition to
withdraw a patent application from issue per 37 CFR 1.313 would no
longer be accepted via facsimile transmission and would need to be
submitted via EFS-Web.
Similarly, it is also appropriate to eliminate facsimile
transmission of other types of correspondence that can be submitted via
certain other electronic systems of the Office. Specifically, any type
of patent or trademark correspondence that can be submitted via the
Office's Electronic Patent Assignment System (EPAS) (discussed in
Manual of Patent Examining Procedure (MPEP) § 302.10), and
Electronic Trademark Assignment System (ETAS) (discussed in Trademark
Manual of Examination Procedure (TMEP) § 503.03(a)), such as
assignment documents submitted for recording in Assignment Services
Division, would no longer be permitted to be submitted via facsimile
transmission. While such documents are intended to become part of the
official assignment records, they are not intended to become part of
the official patent or trademark file to which they relate.
Additional aspects of the proposed rule making would require
applicants, third party requesters, and patent owners: (1) To utilize a
facsimile transmission number identified by the Office for a particular
type of correspondence, i.e., the submission must be transmitted
directly to the area of the Office appropriate to receive the
transmission at its identified transmission number (as opposed to
transmission to any other facsimile transmission number, such as a
facsimile transmission number identified for a different type of
correspondence), or otherwise the transmission would not be effective
(see § 1.6(d)(3)); and (2) to limit each submission made via
facsimile transmission to one application or other matter before the
Office, except for a single submission of multiple patent maintenance
fee payments or requests for refunds thereof. The submission for a
single application or other matter may address more than one issue with
more than one piece or type of correspondence in regard to the single
application or matter if each correspondence can be properly submitted
via facsimile.
While this Notice proposes to restrict facsimile transmissions of
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correspondence directed to the Office, nothing in the proposed rule
making is intended to curtail the ability of the Office to utilize
facsimile transmissions for its outgoing correspondence as it deems
appropriate, such as replies to certain inquiries from applicants.
III. EFS-Web
The Office's Web-based electronic filing system (EFS-Web) went into
full operation on March 17, 2006, and is supported by the LEGAL FRAMEWORK
FOR EFS-WEB (http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=
leavingFR.html&log=linklog&to=http://www.uspto.gov/ebc/portal/efs/legal.
htm), which identifies what documents may be submitted via EFS-Web. The
rules of practice were amended so that EFS-Web submissions would be treated
analogously to submissions filed via First-Class Mail or facsimile
transmissions with a certificate of mailing or transmission. See
Changes to Facilitate Electronic Filing of Patent Correspondence, 72 FR
2770 (January 23, 2007); 1315 Off. Gaz. Pat. Office 57 (February 13,
2007) (final rule). EFS-Web is easy to use as correspondence can be
submitted to the Office at the click of a button, and EFS-Web is available
twenty-four hours a day, seven days a week. An increasing amount of
patent-related correspondence has been filed via EFS-Web. In particular,
the percentage of utility, plant, reissue, national stage applications,
and requests for continued examination (RCE) filed via EFS-Web has
dramatically increased from approximately 28% in the first week in October
2006 to approximately 70% in the second week in January 2008.
As discussed above in item II, "Facsimile transmission,"
increased use of EFS-Web would increase efficiency and improve the
quality of the images in the IFW used for prosecution and publication
purposes. Additionally, system delays caused by paper processing and
scanning would be much reduced.
With EFS-Web being available for the submission of patent
correspondence twenty-four hours a day, seven days a week, patent
applicants, owners, and third party requesters in reexamination
proceedings (both ex parte and inter partes) are provided easy and
convenient access to a system for submitting their patent
correspondence. Shortly after patent correspondence is officially
submitted to the Office via EFS-Web, the Office receives the correspondence
and issues an acknowledgment receipt. 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 received. Accordingly, an acknowledgment
receipt is the legal equivalent of a post card receipt described in
MPEP § 503, with the added convenience of being automatically generated.
In contrast, a return receipt for correspondence transmitted to the Office's
central facsimile number is only automatically generated when (1) the
sender's facsimile number is properly programmed in the sending facsimile
machine and (2) the sender's facsimile machine is capable of receiving a
return facsimile transmission immediately following receipt of the original
transmission.
For the filing of patent applications, the official filing date will
continue to be stated on the filing receipt under § 1.54(b), which is sent
to applicants after the submitted application parts are reviewed for
compliance with the filing date requirements. Under § 1.6(a)(4), patent
correspondence filed via EFS-Web is considered to have been filed on the
date the Office receives the submission (regardless of whether that date is
a Saturday, Sunday, or Federal holiday within the District of Columbia).
Thus, by using EFS-Web, applicants and other EFS-Web users (e.g.,
practitioners) can, in a short period of time, ensure that they have
received a "date certain" for any submission made via EFS-Web.
Correspondence submitted by facsimile transmission is received in
paper form and is considered paper correspondence (although it has an
electronic transmission component), while EFS-Web transmissions are
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electronic transmissions that remain in electronic form after receipt.
Critical data concerning patent correspondence submitted via EFS-Web is
entered into the automated systems much sooner than if the
correspondence was received in paper in that the electronic document of
an EFS-Web submission is directly available in the IFW system (by
"soft scanning"), while the printed paper for a facsimile submission
requires manual handling and scanning of the paper in order to make
such documents available in the IFW system.
Continued increases in the amount of patent correspondence
encourage the Office to change its business approach for serving its
users. With EFS-Web, users are provided with better quality, as well as
improved accuracy of the information submitted to and processed by the
Office, while using fewer resources, thus reducing the time required
for processing and handling. Users have greater assurance that the
content of the IFW is accurate. Submitting correspondence via EFS-Web
provides a level of consistency, accuracy, quality and predictability
that a paper-based facsimile transmission cannot provide. EFS-Web users
have repeatedly stated that they are satisfied with the ease of access
and use of EFS-Web, and appreciate the automatic generation of the
acknowledgment receipt after they officially submit their
correspondence to the Office. Accordingly, the need for the submission
of patent correspondence to a central facsimile number or a facsimile
number for a particular type of correspondence is greatly reduced.
The Legal Framework for EFS-WEB permits submission of all types of
correspondence that are not specifically excepted. See Item XXXIII.
Documents Policy, in the legal framework document at http://frwebgate.
access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.html&log=linklog&to=
http://www.uspto.gov/ebc/portal/efs/legal.htm. The following is a non-
exclusive list of correspondence types that are identified in the legal
framework document as currently not permitted:
1. Correspondence concerning Registration to Practice submitted
under § 1.4(e).
2. Certified copies submitted under § 1.4(f).
3. Correspondence to be filed in a patent application subject to a
secrecy order under §§ 5.1 through 5.5 of this chapter.
4. Submissions in contested cases before the Board of Patent
Appeals and Interferences, except as the Board may expressly authorize.
5. Papers filed in contested cases before the Board of Patent
Appeals and Interferences, which are governed by § 41.106(f).
6. Correspondence filed in connection with a disciplinary
proceeding pursuant to 37 CFR part 10.
7. Submissions that are not associated with an application or a
reexamination proceeding.
8. Third party papers under § 1.99.
9. Protests under § 1.291.
10. Public use hearing papers under § 1.292.
11. Maintenance fees submitted under § 1.366.
Although a main purpose of the proposed changes to the facsimile
transmission rules is to prohibit submission by facsimile transmission
of those types of correspondence that can be submitted via EFS-Web, the
Office is proposing to also terminate the ability of third parties to
submit correspondence via facsimile transmission that cannot be
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submitted via EFS-Web, as third party submissions under § 1.99, protests
under § 1.291, and public use hearing papers under § 1.292 are all ill-
suited for facsimile transmission.
Assignment documents submitted for recording under 35 U.S.C. 261
are also barred from submission via EFS-Web by item 7 (even though
related to an application or a patent), but they may be electronically
filed using the Electronic Patent Assignment System (EPAS) or the
Electronic Trademark Assignment System (ETAS). Hence, there is no
continued need to submit assignments for recording via facsimile
transmission. Information regarding EPAS is available by sending an
e-mail to epas@uspto.gov. Information regarding ETAS is available by
sending an e-mail to etas@uspto.gov.
EFS-Web permits registered users to file both new submissions and
follow-on documents. Some examples of papers that may be submitted via
EFS-Web and therefore would no longer be able to be submitted by
facsimile transmission are: (1) Amendments; (2) information disclosure
statements; (3) petitions, including petitions to withdraw an
application from issue, petitions for express abandonment to avoid
publication, and maintenance fee related petitions; (4) requests for
continued examination; (5) papers in ex parte or inter partes
reexamination proceedings; (6) Design continued prosecution application
(CPA) filings; (7) refund requests related to an application or a
reexamination proceeding; (8) papers submitted to the U.S. Receiving
Office; (9) papers submitted in regard to a pre-appeal or an appeal
conference or an appeal to the Board of Patent Appeals and
Interferences; and (10) status inquiries related to the issuance of the
next Office action on the merits or the issuance of a decision on
petition.
Correspondence submitted via EFS-Web should be intended to become
part of the official file record. Generally, EFS-Web submissions are
automatically made part of the official file record, except for pre-
grant publication submissions (i.e., amended republications, amended
first publications, voluntary publications), which must be submitted
via EFS-Web but are not made part of the official file record if
submitted properly. Maintenance fee payments, refunds of such payments,
and related papers would continue to be able to be submitted via
facsimile transmission. See the preamble discussion in regard to
§ 1.6(d)(2)(i). Related papers would include a petition to transfer a
maintenance fee payment from the "wrong" patent where the fee had not
previously been paid (and therefore payment could be applied thereto) to
the right patent (where the maintenance fee had not already been paid).
Where a maintenance fee has already been paid, payment of an additional
maintenance fee will result in an automatic refund. Maintenance fee
payers should consult http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?
from=leavingFR.html&log=linklog&to=https://ramps.uspto.gov/eram/
patentMaintFees.do.
Types of reexamination proceeding correspondence that may be submitted
via EFS-Web when the correspondence is intended to become part of the
official file in reexamination proceeding are: (1) An original request for
ex parte or inter partes reexamination; (2) any corrected request for
ex parte or inter partes reexamination submitted in response to either a
Notice of Failure to Comply with Reexamination Request Filing Requirements
or a Decision vacating the filing date that was accorded to a previously-
submitted request for reexamination; (3) all follow-on prosecution papers
(including appeal papers) filed by either the patent owner or a third
party requester in any reexamination proceeding (including papers that are
submitted together with a petition to expunge the papers from the record);
(4) notices of prior or concurrent proceedings and decisions pursuant to
MPEP sections 2282 and 2686; and (5) petition papers filed by the patent
owner or third party requester that are directed to any reexamination
proceeding.
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Types of application correspondence not intended to become part of
the official file record and currently not permitted to be submitted
via EFS-Web would be able to continue to be submitted via facsimile
transmission, unless specifically excepted, until such time that the
Legal Framework for EFS-WEB is amended to permit such type of
correspondence to be submitted via EFS-Web. Some examples of
correspondence that are not intended to be part of the official
application or patent file record and therefore are not permitted to be
submitted via EFS-Web and would be able to continue to be submitted via
facsimile transmission are:
(1) Proposed amendments for examiner review, such as in regard to
an upcoming interview;
(2) an inquiry as to whether a 35 U.S.C. 371 national stage
application, or a 35 U.S.C. 111(a) continuing application of a PCT
application has been filed for a particular PCT application (which
inquiry is obviously not intended to become part of an application file
but only seeks to ascertain whether an application has been filed); and
(3) orders for copies of application, patent, and reexamination
files.
Any proposed amendment submitted by facsimile transmission would
not be part of the official file record, but must be made part of the
official file record, when such amendment is referred to in another
correspondence (e.g., interview summary) that is part of the official
file record (whether referred to by applicant or the examiner).
Correspondence directed to a reexamination proceeding that is not
intended for entry into the record of the reexamination proceeding is
considered to be an "unofficial paper," and must not be submitted via
EFS-Web. A patent owner or third party requester who desires to submit
correspondence to be treated as an "unofficial paper" in an ex parte
reexamination proceeding may expedite consideration of the
correspondence by contacting the Central Reexamination Unit (CRU)
((571) 272-7705) for instructions on how to submit the "unofficial
paper" via transmission to a facsimile machine designated for such
purpose in the CRU.
Examples of an "unofficial paper" that a party to an ex parte
reexamination proceeding may submit via facsimile transmission are: (1)
A courtesy paper identifying issues to be discussed that is submitted
prior to a permitted interview with the examiner; (2) a paper submitted
for review by Office personnel (in rare instances where such is
permitted, and the Office has been contacted for permission to submit
the paper for review) to determine the formal sufficiency of the paper;
and (3) a paper submitted to obtain examiner review of a proposed
amendment intended to overcome an examiner rejection. Any such proposed
amendment that is submitted unofficially, and as such is not part of
the official file record, must be made part of the official file
record, when such proposed amendment is referred to in a paper that is
part of the official file record (whether referred to by a party to the
reexamination proceeding or by the examiner or other Office official).
Where there are two parties to the ex parte reexamination proceeding,
an "unofficial paper" submitted to the Office by one party need not
be served on the other party to the reexamination proceeding, since
such a paper is not considered to have been "filed" in the
reexamination proceeding within the meaning of the rules (e.g.,
§§ 1.510(a), 1.550(f), 1.903 or 1.913) because an "unofficial
paper" is a paper not intended to become part of the official record.
It is to be noted that an "unofficial paper" (i.e., an ex parte
communication) directed to an inter partes reexamination is strictly
prohibited. Interviews are not permitted in inter partes reexamination,
and the submission of a proposed amendment would constitute an
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impermissible interview. It is also noted that no correspondence is to
be submitted directly to any examiner in inter partes reexamination
irrespective of the delivery method.
The Office will presume that application correspondence submitted
via EFS-Web is intended to be an "official paper" whereas
correspondence that could be submitted via EFS-Web but is instead
submitted via facsimile transmission will be presumed an "unofficial
paper" (i.e., a paper not to be made part of the official file
record). For example, an amendment to the application proposed by
applicant and facsimile transmitted to an examiner for discussion
during a scheduled interview would be considered an "unofficial
paper." Conversely, for an amendment submitted by EFS-Web, the Office
will presume that the amendment should be part of the application file
record, and the amendment will automatically become part of the
application file record.
A status inquiry regarding the issuance of an Office action on the
merits, unlike an inquiry regarding the presence of a PCT filing
(above), will be made part of the file record. See MPEP § 203.08.
Accordingly, use of facsimile transmission would not be permitted for
status inquiries regarding the issuance of Office actions. Rather, a
status inquiry submitted via EFS-Web, which is directed to the
Technology Center where the application is docketed and not to the
examiner, would be appropriate.
In view of the linkage of what would be permitted as a facsimile
transmission to what would not be permitted to be submitted via EFS-
Web, applicants and other parties, prior to determining whether to
submit documents via facsimile transmission, would need to review the
current version of the Legal Framework for EFS-WEB, http://frwebgate.
access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.html&log=linklog&to=
http://www.uspto.gov/ebc/portal/efs/legal.htm, to determine what is
permitted to be submitted via EFS-Web or some other Office electronic
system and thus not permitted to be facsimile transmitted.
As it is noted in the Legal Framework for EFS-WEB, except for the
initial filing of an application, use of a public key infrastructure
(PKI) certificate for follow-on submissions is required. See
Item X of the legal framework. The process for obtaining a PKI
certificate requires the completion of some paperwork, though the
Office believes that the process is not unduly burdensome. However,
should an applicant not wish to obtain a PKI certificate, the types of
correspondence that would no longer be allowed to be submitted to the
Office by facsimile transmission would still be able to be submitted by
hand-carry, U.S. Postal Service first class mail using a § 1.8
certificate of mailing, or the U.S. Postal Service "Express Mail Post
Office to Addressee" service as set forth in § 1.10 along with the
benefits and protections currently contained therein.
The Legal Framework for EFS-WEB does not permit a simple text file
larger than 25 megabytes. See Item XV of the legal framework. However,
a text file of more than 25 megabytes may be broken up into multiple
text files that can be submitted together. There is a limitation of 60
files that can be submitted in one submission. Where there are more
than 60 files to be submitted, additional submissions may be made on
the same day. See Item XVI of the legal framework. These types of very
large submissions would probably not be appropriate for a facsimile
transmission due to the quantity of sheets that must be handled at both
the transmitting and receiving machines.
Similarly, where filing sequence listings, tables related to
sequence listings, or both are submitted for international applications
in the U.S. Receiving Office, the applicant may partition an oversized
file into multiple files, each of which is smaller or equal to 25
megabytes. See Item XIX. C. of the legal framework.
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Electronic forms of transmission, such as EFS-Web, EPAS, ETAS, and
facsimile transmission have historically been subject to disturbances
in service ("down time") from time to time. However, providing notice
as to down time is far faster in the EFS-Web environment than with an
isolated and infrequently attended facsimile machine. The Office is
continuing to address the need for fast notification of any disruption
in the EFS-Web system. (See Item XXVIII. of the Legal Framework for
EFS-WEB.)
Applicants and other users are reminded to always check the
availability of EFS-Web at the time a transmission is to be attempted.
If EFS-Web is unavailable, recourse is to use first class mail with a
certificate of mailing pursuant to § 1.8, or Express Mail pursuant
to § 1.10, depending on the type of correspondence being submitted
and based on the actual receipt date desired. The unavailability of
EFS-Web (e.g., due to an EFS-Web system failure, or an interruption in
a user's internet service provider) will not permit use of facsimile
transmission based on an argument that the correspondence was not
permitted to be submitted via EFS-Web.
IV. Font Size
The Office needs to receive application specifications and other
papers that are legible and can be easily read by examiners and other
Office personnel. In addition, the public will benefit when
applications that have been published or otherwise opened to public
inspection are legible. A key attribute of legible text is an
appropriate font size of the text. Previously, the Office was neither
able to define the preferred font size as the mandatory minimum font
size of text in view of limitations imposed by Patent Cooperation
Treaty (PCT) obligations and implementing regulations, nor had the
Office believed that mandatory rules would be needed in order that all
correspondence received by the Office be readily legible. Some
practitioners and applicants, however, have adopted a continuing
practice of submitting documents that are not readily legible, e.g.,
entire specifications with a font size as small as 6 point.
Font size as small as 6 point does not have sufficient clarity to
permit electronic capture by use of digital imaging and optical
character recognition (OCR) in accordance with § 1.52(a)(1)(v).
Accordingly, the results of the Office's electronic capture of the
unusually small font by OCR are often unsatisfactory. The accuracy of
OCR conversion is inversely proportional to the size of the text being
electronically captured and it has been found that electronic capture
by use of OCR of applications with smaller font sizes contain more
errors, which must then be corrected, thus wasting time and resources
on the part of both the Office and the applicant. The Office
experiences significant difficulties when trying to publish
applications and patents with specifications having unusually small
text. Some applications are not even capable of being electronically
captured by OCR as the text is too small. Errors in electronic capture
may not be caught immediately and may delay issuance of a patent or, if
not identified by the Office, represent problems with enforcement of
any patent that should issue.
The practice of using an unusually small font size has expanded to
other papers, such as remarks, amendments, and maintenance fee
payments. When requested to resubmit the paper with a larger font, some
strong resistance has been encountered based on the lack of a
regulatory requirement defining the minimum font needed by the Office
to process and read the paper. The Office anticipates moving forward
with a plan to OCR all amendments and remarks submitted by applicants.
This plan would be adversely impacted by the continued submission of
such papers with unusually small font size.
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Some practitioners argue that the Office should be capable of
adjusting the font size to produce any text size that it desires. The
Office, however, cannot automatically resize the document. Attempts to
change the parameters of the document received may introduce
substantive errors in the document, particularly where tables, charts,
formulas, and drawings are concerned.
In view of the significant problems facing the Office by
applicants' use of unusually small font size, and the recent amendment
of PCT regulations (effective April 1, 2007, PCT Rule 11.9(d) was
revised from "all text matter shall be in characters the capital
letters of which are not less than 0.21 cm high" to "all text matter
shall be in characters the capital letters of which are not less than
0.28 cm high"), the Office needs to and can now eliminate such practice.
Accordingly, it is proposed to: (1) Increase the mandatory minimum
font size where the font must have capital letters no smaller than 0.28
cm (0.11 inch) high (e.g., a font size of 12 point in Times New Roman);
(2) establish that the newly proposed font size requirement applies to
prosecution papers (specification, including the claims and abstract,
drawings, and oath or declaration, reexamination request, any
amendments or correction(s)) and any remarks, petitions, requests,
affidavits or other papers submitted during prosecution of an
application or a reexamination proceeding; (3) clarify that the
proposed font size requirement does not apply to pre-printed
information on paper forms provided by the Office or the copy of the
patent submitted on paper in double column format as the specification
in a reissue application or request for reexamination; and (4) clarify
that papers submitted electronically that are to become part of the
patent application or reexamination file must be readily legible.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Parts 1, 2, and 3, are
proposed to be amended as follows:
Section 1.6(a)(1) is proposed to be amended to add a descriptive
title, and to update the reference to facsimile transmissions to
paragraph (d)(1) of § 1.6 from the current reference to § 1.6(a)(3).
Section 1.6(a)(2) is proposed to be amended to add a descriptive title.
Section 1.6(a)(3) is proposed to be amended to add a descriptive
title, and to add a reference to paragraph (d)(1) of § 1.6 and the
correspondence permitted by that section to be submitted via facsimile
transmission.
Section 1.6(a)(4) is proposed to be amended to add a descriptive title.
Section 1.6(a)(5) is proposed to be newly added to set forth
current practice that non-facsimile electronic transmission of patent-
related correspondence other than correspondence filed via the Office's
patent-related electronic systems (e.g., EFS-Web, and EPAS) may not be
used for submission of correspondence to the Office intended to become
part of the official file record (e.g., Image File Wrapper) for an
application, patent, or reexamination proceeding, or other matter
before the Office, except as expressly authorized by the Board of
Patent Appeals and Interferences (BPAI) in cases before the BPAI, or
applicant when consistent with the Office's express policy on internet
usage. See Internet Usage Policy, 64 FR 33056 (June 21, 1999).
The prohibition includes e-mail, and additional forms of Internet-
based transmission other than the Office patent electronic systems,
i.e., EFS-Web, and EPAS. E-mail may continue to be used for inquiries,
such as questions regarding patent practice and procedure directed to
PatentPractice@uspto.gov. Communications by the Office via the Internet
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are governed by the published Internet Usage Policy. See MPEP § 502.03.
As it is recognized that Internet e-mail communications are not
secure, the Office will not respond via Internet e-mail to any Internet
correspondence which contains information subject to the
confidentiality requirement as set forth in 35 U.S.C. 122 without a
written authorization by the applicant. Current internet (e-mail)
policy covers both incoming correspondence to the Office from applicant
and outgoing correspondence to applicant from the Office. A copy of the
e-mail correspondence is required to be made of record in the file,
even though such correspondence can only be directed towards
communications other than those under 35 U.S.C. 132 or which otherwise
require a signature.
Section 1.6(d) is proposed to be amended by deleting material
duplicative of material in current § 1.6(a)(3), relating to the
receipt date accorded facsimile transmissions. Additional material
present in § 1.6(d) would be placed in amended paragraphs (d)(1)-(3),
leaving § 1.6(d) with only the introductory title.
Additionally, § 1.6(d) and paragraphs (d)(1)-(9) are proposed
to be amended to change facsimile transmission practice from the
existing practice that facsimile transmission is generally accepted but
for some limited exceptions set forth in current paragraphs (d)(1)-(9),
to the proposed practice that facsimile transmission would generally
not be accepted for most types of correspondence in view of the
availability of EFS-Web for submission of most types of correspondence.
Accordingly, new paragraphs (d)(1)(i)-(vi) would continue to prohibit
the specific types of correspondence that are currently prohibited in
current paragraphs (d)(1)-(6) (paragraphs (d)(7) and (8) are currently
reserved and do not recite prohibitions). The prohibition set forth in
proposed (d)(1)(iii) would not contain the exception in current § 1.6(d)(3)
and thus would result in the prohibition of the facsimile transmission
of continued prosecution applications. While the prohibition proposed in
(d)(1)(vi) only prohibits facsimile transmissions of correspondence in
secrecy order applications that are directly related to the secrecy order,
§ 1.6(d)(viii) would also prohibit facsimile transmission of correspondence
that is not directly related to the secrecy order but can be submitted
pursuant to § 1.6(a)(4) (EFS-Web).
Newly proposed § 1.6(d)(1)(vii) would prohibit facsimile
transmission of correspondence for cases before the Board of Patent
Appeals and Interferences (BPAI), except as the BPAI may expressly
authorize. This would expand the current facsimile transmission
prohibition now limited to contested cases before the BPAI of current
§ 1.6(d)(9).
Newly proposed § 1.6(d)(1)(viii) would prohibit facsimile
transmission of the type of correspondence that could be submitted via
EFS-Web, as would be set forth in the Legal Framework for EFS-WEB. This
would include most types of patent correspondence for applications
(including reissue and provisional applications), patents (including
Certificates of Correction pursuant to §§ 1.322 and 1.323, and
inventorship correction pursuant to § 1.324), and reexamination
proceedings (both ex parte and inter partes).
Newly proposed paragraph (d)(1)(ix) would prohibit facsimile
transmission of the type of correspondence permitted to be submitted
via the Office's patent-related electronic system for assignments to be
recorded, EPAS.
Newly proposed paragraphs (d)(1)(x)-(xii) would prohibit the
facsimile transmission of third party papers under § 1.99, protests
under § 1.291, and public use hearing papers under § 1.292 even
though such papers may not currently be submitted via EPS-Web. The
exclusions of third party papers and protests from EPS-Web submission,
even though these papers are intended to become part of the Official
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file, was based on the need to use a PKI certificate for follow-on
submissions, which a third party filing a paper under §§ 1.99
or 1.291 would not generally either have access to or would be given
access to by the applicant. The Office is committed to working on a
solution that would permit the filing of such papers via EPS-Web. As
such papers can be massive or frequently have detailed drawings, it
would not be in the interest of the parties submitting such papers to
continue to use facsimile transmission.
Section 1.6(d)(2) would be directed at setting forth the
requirements for facsimile transmission for the types of correspondence
not prohibited in § 1.6(d)(1).
Section 1.6(d)(2)(i) would make mandatory that a facsimile
transmission be limited to a single application or other matters before
the Office (e.g., patents and reexamination proceedings), except for
the payment of maintenance fees pursuant to § 1.366 and requests
for refunds thereof. For example, while an applicant may need to submit
the same type of document for more than one application file, such as
proposed amendments to claims in related applications that are to be
discussed in the same upcoming interview, the proposed amendments for
each application must be separately transmitted. The payment of
maintenance fees in multiple patents would be exempt from this proposed
requirement. Maintenance fee payments would continue to qualify for
facsimile transmission as they may not be submitted via EPS-Web.
Where a small entity assertion pursuant to § 1.27 is required
to support payment of a small entity maintenance fee or a request for a
maintenance fee refund, the payment or request for refund with the
accompanying small entity assertion may be facsimile transmitted.
Similarly, where, for example, the assignee is separately submitting a
small entity assertion to support payment of a maintenance fee,
and an annuity company is the party making the small entity payment,
the assignee may facsimile transmit the § 1.27 small entity
assertion. It should be noted, however, that small entity assertions
can be submitted via EPS-Web and the Office recommends that EPS-Web be
used to ensure that the assertion becomes part of the patent file. For
small entity fees other than maintenance fees, such as an issue fee in
an application, which can be submitted via EPS-Web (as well as the
small entity assertion), the fee and the supporting small entity
assertion cannot be facsimile transmitted. It is only in situations
where the fee payment, i.e., a maintenance fee payment, cannot be
submitted via EPS-Web, that the small entity assertion for the payment
(which would not otherwise be permitted to be facsimile transmitted)
can also be facsimile transmitted. The facsimile transmission must be
made to a facsimile number identified by the Office as appropriate for
maintenance fee payments and refunds thereof.
Section 1.6(d)(2)(ii) would set forth requirements set forth in
current § 1.6(d) for identifying the application or matter before
the Office for which the transmitted correspondence is intended.
Section 1.6(d)(2)(ii) continues to advise the use of sufficient
information to identify the application or matter before the Office
for which the correspondence is intended as part of the sender's
identification on the required cover sheet. The inability to be able
to readily ascertain the appropriate application or other matter for
the transmission may result in: A delay in acting on the paper, or
discarding of the paper without notice to the sender if the Office
cannot reasonably determine to which application or other matter the
paper is directed.
Section 1.6(d)(2)(iii) would require that permitted facsimile
transmissions must be sent to the specific facsimile transmission
number identified by the Office for that type of correspondence. In
the case of reexamination proceedings, contacting the CRU for the
transmission number would be required. For applications, the Office
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would provide a Web page that would contain the usable transmission
numbers and identification of types of correspondence that can be
facsimile transmitted, as well as a link to EPS-Web for the submission
of types of correspondence that cannot be facsimile transmitted but can
be transmitted via EPS-Web. Therefore, the central facsimile number
would no longer be usable since the rules as proposed to be amended
would require that the transmission for any remaining use must be sent
directly to the area of the Office needing to receive the transmission
at its identified transmission number. Office forms for which facsimile
transmission would no longer be appropriate, such as the express
abandonment forms PTO/SB/24, PTO/SB/24a, and the PTO/SB/24b, and the
issue fee payment form PTOL-85, Part B, would have the facsimile
transmission information removed.
Section 1.6(d)(2)(iv) would require that each unofficial
correspondence transmitted by facsimile include a conspicuous marking
that identifies it as an "unofficial paper" (correspondence that
could be submitted via EPS-Web but is instead submitted via facsimile
transmission). Unofficial papers, regardless of whether they are
properly marked as such, will not be entered into the record of the
application or reexamination proceeding unless expressly permitted by
rule or Office policy. Further, any of these unofficial papers
submitted via facsimile without the required conspicuous marking may be
discarded without consideration of the paper and without notification
to the sender that the paper has been discarded without consideration.
This requirement for conspicuous marking of facsimile transmitted
papers and the discarding of unmarked or mis-marked papers would act to
discourage applicants, patent owners, and third party requesters from
attempting to file official papers via facsimile, instead of via EPS-
Web.
Section 1.6(d)(3) would set forth the consequences resulting from:
(1) Transmitting correspondence to a number other than the specific
facsimile transmission number identified by the Office for that type of
correspondence; (2) facsimile transmission of correspondence not
permitted to be submitted by facsimile transmission; or (3) facsimile
transmission of an "unofficial paper" without the conspicuous marking
required in (d)(2)(iv). The consequences would be equally applicable to
any copy of such correspondence created by the Office (e.g., paper
copies made directly from the facsimile transmission or copies made
from scanning the paper copy of the transmission). The consequences
would be that such correspondence: (1) Would not be given a receipt
date; (2) would not operate to be an effective paper (e.g., will not be
considered a reply to the Office action, or a request for action by the
Office); and (3) could be discarded by the Office without notification
to the sender. When the Office discards submitted material it is
without notification to the submitter, unless such notification is
specifically provided for by rule or Office policy. The specific
provision in the rule of lack of notification to the sender would be
added merely to reinforce the concept of lack of notification.
For example, an otherwise timely reply submitted by facsimile
transmission to an outstanding first Office action would not be
effective to toll the time period for reply as this type of
correspondence would no longer (after implementation of the rule
revision) be permitted to be submitted by facsimile transmission.
Additionally, applicant could not simply later affirm the prior
submission of the reply within the period for reply and rely on the
previously submitted facsimile transmission of the reply. A new reply
would need to be timely submitted to avoid abandonment.
Current § 1.6(f), relating to a petition remedy where the
facsimile transmission of a continued prosecution application (CPA) was
not received by the Office, would be canceled and reserved.
Section 1.52(a) is proposed to be amended to remove the italics.
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Sections 1.52(a), (a)(1) and (a)(2) are proposed to be amended to
remove "United States Patent and Trademark" for conformity with the
use of "Office" in the remaining sections of § 1.52.
Section 1.52(a)(5) is proposed to be amended to contain only a
descriptive title.
Section 1.52(a)(5)(i) would contain the language of current
1.52(a)(5).
Sections 1.52(a)(5)(ii) would be an added paragraph intended to
clarify that submissions must be presented in a form that is readily
legible to the Office after receipt thereof by the Office.
Section 1.52(b) would be amended to address a problem involving the
font size used for specifications and prosecution papers.
Section 1.52(b) is proposed to be amended by removing the italics
and simplifying the recitation of the papers that are subject to the
rule. Sections 1.52(b)(1) and (b)(2) would be expanded to cover
application and reexamination papers other than just the specification
and amendments or corrections. These sections would be applicable to
cover sheets, remarks, petitions, requests, affidavits, or other papers
submitted in support of prosecution of the application or the
reexamination proceeding. These sections would also be applicable to
IDS listings and any other IDS requirements such as a concise
explanation or a translation of a non-English language document (but
not the actual non-English language document). "Amendment" covers all
types of amendments, including amendments to the claims, specification
and the drawings. "Amendment" covers amendments made at any time during
prosecution of the patent application or reexamination proceeding (e.g.,
amendments under §§ 1.111, 1.115, 1.116, 1.312, 1.530, 1.941, etc.).
Section 1.52(b)(2)(ii) is proposed to be amended to correspond to
the amendment of PCT Rule 11.9(d) by requiring a text lettering style
having capital letters, which capital letters must be no smaller than
0.28 cm. (0.11 inch) high (e.g., a font size of 12 point in Times New
Roman). The requirement for a nonscript font lettering style means
utilization of a commercially available nonscript font in its
commercially available form. Altering the font from its commercially
available form (e.g., by changing the look of the characters or the
automatic spacing between the characters) may not be in compliance with
the rule. Compliance with the proposed font size and style requirements
should not impose much difficulty as the Office has suggested their use
for a number of years. The recitation of font size in terms relative to
a type font having capital letters of a minimum size permits the normal
and expected deviation for non-capital letters and numbers that a
commercially available font complying with the required font size would
utilize. It should be noted that utilizing capital letters that meet
the 0.28 cm. requirement and then reducing the font size of the non-
capital letters and numbers would not present a text lettering style
within the rule. Further, by altering the line height to fit more
characters per page, one runs the risk of presenting correspondence
that is unreadable by Office personnel or presents a problem for
optical character recognition in the electronic capture operation,
which would require re-submission of the correspondence in compliant
form. Specialized usage of the type font in a word processing program,
such as "2nd", super and subscripts, etc., must comply also with the
minimum font size requirements. In other words, the normal font size
produced by the program for these specialized characters when the
program is set to comply with the capital letter requirement must be
maintained. Additionally, applicants also need to be aware that as a
word processing program may normally set a footnote numeral and the
text of a footnote to be smaller than the required 0.28 cm. capital
letter height to be used in the main text, applicants must adjust the
font size of the footnote accordingly to meet the requirements of the
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rule.
Forms: Sections 1.52(a) and (b) do not apply to applicant's use of
the Office's pre-printed forms (that may contain smaller font size).
Section 1.52(a)(3), which is reproduced in the rules section to provide
context, is not proposed to be changed. Office forms have been exempt
and continue to be exempt from font size requirements as: (1) The
information in lower font size is standardized information, such as
required of the Office by statute under the Paperwork Reduction Act,
form number, etc., but is not required information that applicant must
supply; (2) it is common practice for agencies to place this
standardized information in a smaller font size, and doing so keeps the
forms from being too long and makes them more usable by the public; and
(3) the Office does not need to process such information when an Office
form is submitted. Commercial forms that are subject to § 1.52(b),
e.g., an application data sheet pursuant to § 1.76, must comply
with the font size requirement. An Office form that has been altered in
any way is considered a commercial form and must comply with the
requirements of § 1.52. Such form must also have its OMB approval
removed. Therefore, an applicant desiring to use a compact form (e.g.,
cover or transmittal sheet) that meets the requirements of § 1.52
should consider using an Office form in its original, unaltered state.
Office-generated fillable forms containing the font size built into the
form by the Office would comply with font size requirements.
The strictness of the proposed rule and its application by the
Office results from the Office's need to efficiently process, read, and
publish the text. It is emphasized that should the Office encounter
difficulty in reading or electronically capturing the font for any
portion of text, a substitute paper will be required.
As the Office intends to strictly enforce the font size
requirement, in a rare instance where applicant believes some variation
should be permitted, a petition under § 1.183 would be required.
Section 1.366 is proposed to be amended to add paragraph (h) that
would require maintenance fee payments, when submitted in paper, by
mail or facsimile transmission (which would continue as such type of
correspondence may not be submitted via EFS-Web), to comply with
§§ 1.52(a) and (b). Failure to comply with the format
requirements of § 1.52 would not jeopardize the date of payment but
would require a new submission in a compliant format.
Section 2.195(d) is proposed to be amended to prohibit facsimile
transmission of the type of correspondence that can be submitted via
the Office's electronic trademark system for assignments to be
recorded, ETAS.
Section 3.24(a) is proposed to be amended by inserting a reference
in the title to EPAS as the electronic form of submission of patent
assignment documents to be recorded.
Section 3.24(b) is proposed to be amended as a conforming amendment
to § 1.6(d)(1)(ix), which would only permit patent-related
assignments to be submitted via EPAS and no longer via facsimile
transmission. Accordingly, the reference to facsimile transmissions in
the title would be deleted. Material relating to return of recorded
documents would be transferred to newly added paragraph (c).
Section 3.24(c) is proposed to be added to highlight current
material related to the non-return of patent documents submitted for
recording, so that original documents would not be submitted. The rule
is also proposed to be amended to delete "recorded" to clarify that
any document submitted for recording will not be returned whether or
not it is recorded.
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Section 3.25 is proposed to be amended by inserting a reference in
the title to ETAS as the electronic form of submission of trademark
assignment documents to be recorded.
Section 3.25(c) is proposed to be amended as a conforming amendment
to § 2.195(d), which would only permit trademark-related
assignments to be submitted via ETAS and on paper and no longer via
facsimile transmission. Accordingly, the reference to facsimile
transmissions in the title would be deleted. The phrasing of the rule
is also proposed to be amended so that it is consistent with the
analogous rule for patent assignment documents.
Material relating to return of recorded documents would be
transferred to newly added paragraph (c)(3). Section 3.24(c)(3) is
proposed to be added to highlight current material related to the non-
return of trademark documents submitted for recording, so that original
documents would not be submitted. The rule is also proposed to be
amended to delete "recorded" to clarify that any document submitted
for recording will not be returned whether or not it is recorded.
Rule Making Considerations
A. Administrative Procedure Act
This notice proposes changes to the rules of practice to limit the
submission of correspondence by facsimile transmission in patent
prosecution matters, and assignments to be recorded. The notice also
proposes changes to the rules of practice to increase the size of the
minimum font used on papers submitted to the Office for patent
applications, patents or reexamination proceedings. The changes being
proposed in this notice do not change the substantive criteria of
patentability and do not effectively foreclose the applicant's
opportunity to make a case on the merits. Applicants, when no longer
able to submit most types of patent prosecution or assignments
to be recorded by facsimile transmission, may still rely on mail delivery
in all instances and may almost always utilize an electronic system
provided by the Office for filing submissions. Therefore, these rule
changes involve interpretive rules, or rules of agency practice and
procedure. See Bachow Communs., Inc. v. FCC, 237 F.3d 683, 690 (DC
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 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 trademark 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 opportunity for comment is 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). Nevertheless, the Office is seeking public comment on
changes contemplated to these rules of practice to obtain the benefit
of such input prior to adopting changes to the rules of practice.
B. Regulatory Flexibility Analysis
As prior notice and an opportunity for public comment are not
required pursuant to 5 U.S.C. 553 (or any other law), neither a
regulatory flexibility analysis nor a certification under the
Regulatory Flexibility Act (5 U.S.C. 601 et seq.) are required. See 5
U.S.C. 603. Nevertheless, for the reasons set forth herein, the Deputy
General Counsel for General Law of the United States Patent and
Trademark Office has certified to the Chief Counsel for Advocacy of the
Small Business Administration that the changes proposed in this notice
will not have a significant economic impact on a substantial number of
small entities. See 5 U.S.C. 605(b).
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The primary impact of the changes proposed in this notice are that:
(1) Certain documents may no longer be submitted to the Office via
facsimile transmission; and (2) certain documents submitted to the
Office must have a minimum font size, namely a font that has capital
letters no smaller than 0.28 cm (0.11 inch) high (e.g., a font size of
12 point in Times New Roman). The elimination of the availability of
facsimile transmission will not have a significant economic impact
because these documents may be submitted to the Office via EFS-Web or
via the USPS by first class mail. The requirement that documents
submitted to the Office must have a minimum font size will not have a
significant economic impact because the current rules of practice
require that such documents be "[p]resented in a form having
sufficient clarity and contrast between the paper and the writing
thereon to permit the direct reproduction of readily legible copies in
any number by use of photographic, electrostatic, photo-offset, and
microfilming processes and electronic capture by use of digital imaging
and optical character recognition" (37 CFR 1.52(a)(1)(v)), and set
forth that font size below the proposed minimum font size generally
does not comply with this pre-existing requirement of the rules of
practice. In addition, the overwhelming majority of the documents to
which this provision applies are created using word processors, and it
will not have a significant economic impact to change the font size on
a word processor. Therefore, the changes proposed in this notice will
not have a significant economic impact on a substantial number of small
entities.
C. Executive Order 13132 (Federalism)
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).
D. Executive Order 12866 (Regulatory Planning and Review)
This rule making has been determined to be not significant for
purposes of Executive Order 12866 (Sept. 30, 1993), as amended by
Executive Order 13258 (Feb. 26, 2002) and Executive Order 13422
(Jan. 18, 2007).
E. Executive Order 13175 (Tribal Consultation)
This rule making will not: (1) Have substantial direct effects on
one or more Indian tribes; (2) impose substantial direct compliance
costs on Indian tribal governments; or (3) preempt tribal law.
Therefore, a tribal summary impact statement is not required under
Executive Order 13175 (Nov. 6, 2000).
F. Executive Order 13211 (Energy Effects)
This rule making is not a significant energy action under Executive
Order 13211 because this rule making is not likely to have a
significant adverse effect on the supply, distribution, or use of
energy. Therefore, a Statement of Energy Effects is not required under
Executive Order 13211 (May 18, 2001).
G. Executive Order 12988 (Civil Justice Reform)
This rule making meets applicable standards to minimize litigation,
eliminate ambiguity, and reduce burden as set forth in sections 3(a)
and 3(b)(2) of Executive Order 12988 (Feb. 5, 1996).
H. Executive Order 13045 (Protection of Children)
This rule making is not an economically significant rule and does
not concern an environmental risk to health or safety that may
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disproportionately affect children under Executive Order 13045
(Apr. 21, 1997).
I. Executive Order 12630 (Taking of Private Property)
This rule making will not effect a taking of private property or
otherwise have taking implications under Executive Order 12630
(Mar. 15, 1988).
J. Congressional Review Act
Under the Congressional Review Act provisions of the Small Business
Regulatory Enforcement Fairness Act of 1996 (5 U.S.C. 801 et seq.),
prior to issuing any final rule the United States Patent and Trademark
Office will submit a report containing the final rule and other
required information to the U.S. Senate, the U.S. House of
Representatives and the Comptroller General of the Government
Accountability Office. The changes proposed in this notice are not
expected to result in an annual effect on the economy of 100 million
dollars or more, a major increase in costs or prices, or significant
adverse effects on competition, employment, investment, productivity,
innovation, or the ability of United States-based enterprises to
compete with foreign-based enterprises in domestic and export markets.
Therefore, this rule making is not likely to result in a "major rule"
as defined in 5 U.S.C. 804(2).
K. Unfunded Mandates Reform Act of 1995
The changes proposed in this notice do not involve a Federal
intergovernmental mandate that will result in the expenditure by State,
local, and tribal governments, in the aggregate, of 100 million dollars
(as adjusted) or more in any one year, or a Federal private sector
mandate that will result in the expenditure by the private sector of
100 million dollars (as adjusted) or more in any one year, and will not
significantly or uniquely affect small governments. Therefore, no
actions are necessary under the provisions of the Unfunded Mandates
Reform Act of 1995. See 2 U.S.C. 1501 et seq.
L. National Environmental Policy Act
This rule making will not have any effect on the quality of
environment and is thus categorically excluded from review under the
National Environmental Policy Act of 1969. See 42 U.S.C. 4321 et seq.
M. National Technology Transfer and Advancement Act
The requirements of section 12(d) of the National Technology
Transfer and Advancement Act of 1995 (15 U.S.C. 272 note) are
inapplicable because this rule making does not contain provisions which
involve the use of technical standards.
N. 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
collections of information involved in this notice have been reviewed
and previously approved by OMB under OMB control numbers: 0651-0031,
0651-0032, and 0651-0059. The United States Patent and Trademark Office
is not resubmitting the other information collections listed above to
OMB for its review and approval because the changes proposed in this
notice do not affect the information collection requirements associated
with the information collections under these OMB control numbers. The
principal changes proposed in this notice are to provide that: (1)
Certain documents may no longer be submitted to the Office via
facsimile transmission; and (2) certain documents submitted to the
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Office must have a minimum font size, namely a font that has capital
letters no smaller than 0.28 cm (0.11 inch) high (e.g., a font size of
12 point in Times New Roman).
Comments are invited on: (1) Whether the collection of information
is necessary for proper performance of the functions of the agency;
(2) the accuracy of the agency's estimate of the burden; (3) ways to
enhance the quality, utility, and clarity of the information to be
collected; and (4) ways to minimize the burden of the collection of
information to respondents.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this
burden, to: (1) The Office of Information and Regulatory Affairs,
Office of Management and Budget, New Executive Office Building, Room
10202, 725 17th Street, NW., Washington, DC 20503, Attention: Desk
Officer for the Patent and Trademark Office; and (2) Robert A. Clarke,
Director, Office of Patent Legal Administration, Commissioner for
Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
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
37 CFR Part 1
Administrative practice and procedure, Inventions and patents,
Reporting and recordkeeping requirements, Small businesses.
37 CFR Part 2
Administrative practice and procedure, Trademarks.
37 CFR Part 3
Administrative practice and procedure, Patents, Trademarks.
For the reasons set forth in the preamble, 37 CFR parts 1, 2, and 3
are proposed to be 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 1.6 is amended by removing and reserving paragraph (f)
and revising paragraphs (a) and (d) to read as follows:
§ 1.6 Receipt of correspondence.
(a) Date of receipt and Express Mail date of deposit.
Correspondence received in the United States Patent and Trademark
Office is stamped with the date of receipt except as follows:
(1) Open for receipt of correspondence. The United States Patent
and Trademark Office is not open for the filing of correspondence on
any day that is a Saturday, Sunday, or Federal holiday within the
District of Columbia. Except for correspondence transmitted by
facsimile under paragraph (d)(1) of this section, or filed
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electronically under (a)(4) of this section, no correspondence is
received in the Office on Saturdays, Sundays, or Federal holidays
within the District of Columbia.
(2) "Express Mail" stamp date. Correspondence filed in accordance
with § 1.10 will be stamped with the date of deposit as "Express
Mail" with the United States Postal Service.
(3) Receipt date of facsimile transmission. Correspondence
permitted by paragraph (d)(1) of this section to be filed by facsimile
transmission to the United States Patent and Trademark Office will be
stamped with the date on which the complete transmission is received in
the United States Patent and Trademark Office unless that date is a
Saturday, Sunday, or Federal holiday within the District of Columbia,
in which case the date stamped will be the next succeeding day which is
not a Saturday, Sunday, or Federal holiday within the District of
Columbia.
(4) Office electronic filing system (EFS-Web). Correspondence may
be submitted using the Office electronic filing system only in
accordance with the Office's electronic filing system requirements.
Correspondence submitted to the Office by way of the Office's
electronic filing system will be accorded a receipt date, which is the
date the correspondence is received at the correspondence address for
the Office set forth in § 1.1 when it was officially submitted.
(5) Non-facsimile electronic transmission of patent-related
correspondence other than correspondence filed via the Office's patent-
related electronic systems (e.g., EFS-Web, and Electronic Patent
Assignment System (EPAS)). Non-facsimile electronic transmission of
patent-related correspondence other than correspondence filed via the
Office's patent-related electronic systems may not be used for
submission of correspondence to the Office intended to become part of
the official file record for an application, patent, reexamination
proceeding, or other matter before the Office, except as expressly
authorized by:
(i) The Board of Patent Appeal and Interferences in cases before
the Board of Patent Appeals and Interferences, or
(ii) Applicant pursuant to the Office's express policy for internet
usage.
* * * * *
(d) Facsimile transmission. (1) Facsimile transmission of
correspondence to the Office is not permitted for:
(i) Correspondence as specified in § 1.4(e);
(ii) Certified documents as specified in § 1.4(f);
(iii) Correspondence which cannot receive the benefit of the
certificate of mailing or transmission as specified in §§
1.8(a)(2)(i)(A) through (D) and (F), and § 1.8(a)(2)(iii)(A);
(iv) Color drawings submitted under §§ 1.81, 1.83 through
1.85, 1.152, 1.165, 1.173, or 1.437;
(v) A request for reexamination under § 1.510 or 1.913;
(vi) Correspondence to be filed in a patent application subject to
a secrecy order under §§ 5.1 through 5.5 of this chapter and
directly related to the secrecy order content of the application;
(vii) Cases before the Board of Patent Appeals and Interferences,
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except as the Board may expressly authorize;
(viii) Correspondence permitted to be submitted pursuant to
paragraph (a)(4) of this section;
(ix) Correspondence permitted to be submitted via the Office's
patent-related electronic system for recording assignments (e.g.,
Electronic Patent Assignment System (EPAS));
(x) Third party papers under § 1.99;
(xi) Protests under § 1.291; and
(xii) Public use hearing papers under § 1.292.
(2) A facsimile transmission of correspondence when not prohibited
pursuant to paragraph (d)(1) of this section must:
(i) Be limited to a single application or other matter before the
Office, except for payments of maintenance fees pursuant to § 1.366
or requests for refunds thereof;
(ii) Include a facsimile cover sheet with the sender's
identification, which should contain sufficient identifying information
of the application or other matter to which the transmission is
intended, such as:
(A) The application number of a patent application;
(B) The control number of a reexamination proceeding;
(C) The interference number of an interference proceeding; or
(D) The patent number of a patent;
(iii) Be transmitted to the specific facsimile transmission number
identified by the Office for that type of correspondence; and
(iv) Include a conspicuous marking on each correspondence intended
to be unofficial that identifies such correspondence as an unofficial
paper.
(3) Transmission to a facsimile number other than that identified
by the Office for the type of correspondence transmitted, facsimile
transmission of a type of correspondence that is not permitted to be
facsimile transmitted, or facsimile transmission of correspondence
without the conspicuous marking pursuant to paragraph (d)(2)(iv) of
this section, and any copy of such correspondence created by the
Office:
(i) Will not be given a receipt date;
(ii) Will not operate to be an effective paper; and
(iii) May be discarded by the Office without notification to the
sender.
* * * * *
3. Section 1.52 is amended by revising the introductory text of
paragraph (a)(1), paragraphs (a)(2), (a)(3), (a)(5), the introductory
text of paragraph (b), (b)(1), and (b)(2) to read as follows:
§ 1.52 Language, paper, writing, margins, compact disc specifications.
(a) Papers that are to become a part of the permanent Office
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records in the file of a patent application or a reexamination
proceeding. (1) All papers, other than drawings, that are submitted on
paper or by facsimile transmission, and are to become a part of the
permanent Office records in the file of a patent application or
reexamination proceeding, must be on sheets of paper that are the same
size, not permanently bound together, and:
* * * * *
(2) All papers that are submitted on paper or by facsimile
transmission, and are to become a part of the permanent records of the
Office should have no holes in the sheets as submitted.
(3) The provisions of this paragraph and paragraph (b) of this
section do not apply to the pre-printed information on paper forms
provided by the Office, or to the copy of the patent submitted on paper
in double column format as the specification in a reissue application
or request for reexamination.
* * * * *
(5) All papers submitted electronically to the Office must be:
(i) Formatted and transmitted in compliance with the Office's
electronic filing system requirements; and
(ii) Readily legible to the Office after receipt thereof.
(b) The application (specification, including the claims and
abstract, drawings, and oath or declaration) or a reexamination
request, any amendments or correction(s) to an application or patent
undergoing reexamination, and any remarks, petitions, requests,
affidavits or other papers submitted during prosecution of an
application or a reexamination proceeding:
(1) Except as provided for in § 1.69 and paragraph (d) of this
section, must:
(i) Comply with the requirements of paragraph (a) of this section;
and
(ii) Be in the English language or be accompanied by a translation
of the application and a translation of any corrections or amendments
into the English language together with a statement that the
translation is accurate; and
(2) Except for the specifications of reissue applications (but not
amendments thereto made by a separate paper pursuant to § 1.173(b))
and specifications for patents for which reexamination has been
requested (but not amendments thereto pursuant to § 1.530) and as
provided for in §§ 1.821 through 1.825, must have:
(i) Lines that are 1 1/2 or double spaced;
(ii) Text written in a nonscript font (e.g., Arial, Times New
Roman, or Courier) lettering style having capital letters which must be
no smaller than 0.28 cm (0.11 inch) high (e.g., a font size of 12 point
in Times New Roman); and
(iii) Only a single column of text.
* * * * *
4. Section 1.366 is amended by adding paragraph (h) to read as
follows:
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§ 1.366 Submission of maintenance fees.
* * * * *
(h) Paper submissions of maintenance fee-related payments must
comply with § 1.52(a) and (b).
PART 2 - RULES OF PRACTICE IN TRADEMARK CASES
5. The authority citation for 37 CFR part 2 continues to read as
follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
6. Section 2.195 is amended by adding a new paragraph (d)(6) to
read as follows:
§ 2.195 Receipt of trademark correspondence.
* * * * *
(d) * * *
(6) Correspondence permitted to be submitted via the Office's
electronic system for recording assignments (e.g., Electronic Trademark
Assignment System (ETAS)).
* * * * *
PART 3 - ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
7. Section 3.24 is revised to read as follows:
§ 3.24 Requirements for documents and cover sheets relating to
patents and patent applications.
(a) For electronic submissions (e.g., Electronic Patent Assignment
System (EPAS)): Either a copy of the original document or an extract of
the original document may be submitted for recording. All documents
must be submitted as digitized images in Tagged Image File Format
(TIFF) or another form as prescribed by the Director. When printed to a
paper size of either 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or
21.0 by 29.7 cm (DIN size A4), the document must be legible and a 2.5
cm (one inch) margin must be present on all sides.
(b) For paper: Either a copy of the original document or an extract
of the original document must be submitted for recording. Only one side
of each page may be used. The paper size must be either 21.6 by 27.9 cm
(8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4), and in
either case, a 2.5 cm (one inch) margin must be present on all sides.
The paper used should be flexible, strong, white, non-shiny, and
durable.
(c) Non-return of submissions: The Office will not return documents
submitted for recording. Therefore, original documents must not be
submitted for recording.
8. Section 3.25 is amended by revising paragraph (c) as follows:
§ 3.25 Recording requirements for trademark applications and
registrations.
* * * * *
(c) All documents. (1) For electronic submissions (e.g., Electronic
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Trademark Assignment System (ETAS)): All documents must be submitted as
digitized images in Tagged Image File Format (TIFF) or another form as
prescribed by the Director. When printed to a paper size of either 21.6
by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size
A4), the document must be legible and a 2.5 cm (one inch) margin must
be present on all sides.
(2) For paper: Only one side of each page may be used. The paper
size must be either 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or
21.0 by 29.7 cm (DIN size A4), and in either case, a 2.5 cm (one inch)
margin must be present on all sides. The paper used should be flexible,
strong, white, non-shiny, and durable.
(3) Non-return of submissions: The Office will not return documents
submitted for recording. Therefore, original documents must not be
submitted for recording.
July 31, 2008 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
[1335 OG 55]