| Mail Issues, Office Closures, Postal Emergencies, etc. |
Referenced Items (5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45, 46, 47, 48, 49, 50, 51, 52, 53, 54, 55, 56, 57, 58, 59, 60) |
(49) Processing of, and Requirements for, the Filing of
Duplicate Applications and Papers in
Patent Applications in view of USPS Mail Delays
Although mailed correspondence is being received by the United
States Patent and Trademark Office (USPTO or Office), many papers that
were mailed by first class mail or Express Mail through the United
States Postal Service (USPS) in October and November of 2001 have had
their delivery delayed. See Mitigation of Delays in Mail Deliveries to the
USPTO, which is posted on the USPTO Internet Web site at:
http://www.uspto.gov/september11/mitigationofmaildelays.htm.
Some of those papers still have not been received by the USPTO. Although
the USPS reports (http://www.usps.com/news/2001/press/pr01_1023fact.htm)
that "98% of mail at the Brentwood facility has been sanitized and
delivered," the USPS has also informed the USPTO that some of the
mail that was in the Brentwood Mail facility on October 21 or 22, 2001
may never be received by the USPTO because of anthrax-related
decontamination activities. Some applicants, concerned about papers
mailed during this time period that have not been received by the
USPTO, have filed duplicate copies of the original correspondence along
with a statement that meets the requirement in 37 CFR 1.8(b)(3) prior
to any holding of abandonment to permit the Office to more timely act
on the correspondence. While Office processing of such duplicates will
enable the examination process to move forward, applicants should be
aware that the submission of duplicate copies may be unnecessary (and
could slow down the processing of the application) and that double
charging (collection) of the fees may result from subsequent processing
by the Office of the delayed original, which may lead to the submission
for, and the processing of, refund requests. The Office will try,
however, to avoid double charging (collection) of fees as much as is
possible.
I. Timeliness of Replies Whose Delivery to the Office has been Delayed:
In accordance with the Office's usual practice, if a paper was
mailed with a certificate of mailing, the Office will determine the
timeliness (e.g., 35 U.S.C. 133) of the paper based on the
certificate of mailing date as set forth in 37 CFR 1.8(a). See
Manual of Patent Examining Procedure (MPEP), Eighth Edition, 512,
(August 2001). If a paper was sent by Express Mail, the Office will
determine the timeliness and filing date of the paper based on the date of
deposit with the USPS, which is the "date-in" on the Express Mail mailing
label as set forth in 37 CFR 1.10(a). See MPEP 513. Therefore, if the
procedures under 37 CFR 1.8 or 1.10 have been followed, any delays in
delivery of the paper to the Office will not impact the timeliness of the
paper. The Office will process a reply (whose delivery to the Office has
been delayed) as timely if the date on the certificate of mailing, or the
"date-in" on the Express Mail mailing label, is within the period for reply
set forth in the prior Office action or notice.
II. Timeliness of Duplicate Replies Filed when the Original has not been
Received by the Office:
A. If the duplicate is, itself, timely filed: If applicant submits a
duplicate copy of a paper that has not been received in the Office, the
duplicate paper will be processed by the Office as timely if the duplicate
is filed within the period for reply to the prior Office action or notice
(not considering any extensions of time that may have been available).
B. If a duplicate is filed after the expiration of reply
period but with acceptable proof of prior timely filing: If the
original reply was timely mailed within the period from October 13,
2001 to December 1, 2001 using the certificate of mailing procedure
under 37 CFR 1.8, and a duplicate copy is received in the Office after
the period for reply has expired, then the Office shall accept the
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duplicate as the reply, and to have been timely filed, if applicant
submits:
(1) a copy of the previously mailed reply and certificate of
mailing of the previously mailed reply (the certificate of mailing must
be signed and the certificate of mailing must itself indicate the date
of mailing); and
(2) a statement that the reply was previously mailed to the USPTO on the
date indicated on the certificate of mailing.
It is not sufficient to stamp the reply "Duplicate" or "Copy" and to fax
the document to the USPTO, a statement is always required. The statement
can be part of the fax transmittal cover sheet or the cover letter so long
as the fax transmittal sheet is signed as specified below. The statement
must be signed by: the person who personally mailed the original reply, a
registered patent attorney or agent, the assignee of the entire
interest, or the applicant (all of the inventors or the party qualified
under 37 CFR 1.42, 1.43 or 1.47). For example, the statement may be:
"This is a copy of correspondence that was mailed to the USPTO on
_____ date" or "This is a copy of an amendment that was mailed to the USPTO
on the date of the certificate of mailing."
If a certificate of mailing as set forth in 37 CFR 1.8 was not
used (or if the certificate of mailing was not signed, or if the
certificate of mailing did not include a date), and applicant does not
have a post card receipt for the correspondence, the Office cannot
accord the duplicate correspondence any date other than the date that
the duplicate was actually received in the Office. If the duplicate
copy was not itself timely filed, applicant should consider filing a
petition to revive under 37 CFR 1.137(a) or (b).
To the extent that this treatment of showings as set forth 37 CFR 1.8(b)
(3) is less stringent than the requirements set forth in 37 CFR 1.8(b)(3),
the provisions of 37 CFR 1.8(b)(3) are hereby sua sponte waived for replies
mailed on or after October 13, 2001 and no later than December 1, 2001.
III. Establishing that a Paper other than a Reply was Mailed to the USPTO
A paper that is not a reply to an Office action or is not a
correspondence that is required to be filed in the USPTO within a set
period of time is NOT entitled to the benefit of a certificate of
mailing under 37 CFR 1.8(a). The filing date of such a paper is the
actual date of receipt in the USPTO, except as provided by 37 CFR 1.10.
For example, a preliminary amendment is not a reply to an Office action
and, therefore, would not receive the benefit of a certificate of
mailing under 37 CFR 1.8(a). On the other hand, an information
disclosure statement (IDS) will be considered to have been filed on the
"date that it was received in the Office, or an earlier date of
mailing if accompanied by a properly executed certificate of
mailing." See MPEP 609, page 600-124. An IDS is entitled
to the benefit of a certificate of mailing under 37 CFR 1.8(a) since
the IDS is a correspondence that is required to be filed in the USPTO
within a set period of time. To establish that a paper not entitled to
the benefit of a certificate of mailing under 37 CFR 1.8(a) was filed
in the USPTO, applicant must have used Express Mail and comply with the
provisions of 37 CFR 1.10, or have a post card receipt establishing
that the paper was actually received in the USPTO. Other than in these
circumstances, the rules do not provide a mechanism for establishing
that such a paper was filed in the USPTO.
IV. Office Will Try to Call Before Abandoning Applications Without a Reply:
In most circumstances, before holding an application to be
abandoned, staff from the Technology Centers and the Office of Patent
Publication will attempt to call applicants to see if a reply has been
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previously filed. If a reply has been filed, applicant will be
requested to fax (or file) a duplicate copy of the prior (original)
paper along with a showing as set forth in 37 CFR 1.8(b)(3) in order to
avoid the application from being held abandoned.
If applicant files a duplicate with an acceptable showing as
set forth in 37 CFR 1.8(b)(3), it will avoid both the Office holding
the application as abandoned, and the processing delays associated with
the withdrawal of such abandonment.
V. Duplicate Fee Charges (Collections) are Possible When Duplicates are
Filed:
When the Office is processing a duplicate before processing the
original, the Office shall charge (collect) all fees that are due for
the proper processing of the paper, and will not process any papers
that are not accompanied by the appropriate fee. Accordingly,
applicants should expect that the same fees may inadvertently be
charged (collected) when the Office later processes the original paper.
The Office will try to avoid this type of double charging (collecting)
by checking to see if the fees required to process a delayed original
paper were previously charged (collected) and, if previously charged
(collected), the Office will not charge (collect) the fees a second
time. The Office, however, cannot guarantee that double charging
(collecting) will not occur. If the Office processes fees with both the
duplicate and then the original papers, applicant may request a refund
under 37 CFR 1.26. If the application has been allowed, the refund
request should be filed after the patent has been issued in order to
avoid printing delays. When the original paper corresponding to the
duplicate is received, the original paper will be attached to the
duplicate in the application file wrapper and will not be listed as a
separate contents entry for the application in the Office's records.
This procedure will be used notwithstanding the procedure set forth in
MPEP 719.01(a).
VI. How to File a Duplicate Reply during Examination or after Allowance:
A. If the Application is in a Technology Center: If applicant desires to
file a duplicate copy of a reply to an Office action, with an appropriate
showing as set forth in 37 CFR 1.8(b)(3), the duplicate should be faxed to
the appropriate Technology Center. The reply facsimile numbers for each
Technology Center that should be used are posted on the USPTO Internet web
site at: http://www.uspto.gov/september11/faxnotice.htm.
B. If the Application has been Allowed: If applicant desires to file a
duplicate Issue Fee transmittal (e.g., a duplicate PTOL-85B) in order to
pay the issue fee and any publication fee, along with a duplicate copy of
other post allowance correspondence that was submitted with the issue fee
transmittal, accompanied by an appropriate showing as set forth 37 CFR
1.8(b)(3), the duplicate submission(s) and the showing(s) should be faxed
to Box Issue Fee: (703) 746-4000. If an amendment under 37 CFR 1.312 was
mailed before payment of the issue fee, and the Office has not yet received
the amendment, applicant should include a copy of the amendment (and a
statement explaining when the amendment was filed) with the issue fee
payment so that the amendment under 37 CFR 1.312 is not treated as having
been filed after payment of the issue fee, and therefore not entered
(because amendments after payment of the issue fee are no longer
permitted).
VII. Filing of Duplicate New Applications and Replies to OIPE:
The USPTO appreciates, that, where warranted, applicants should
take advantage of 37 CFR 1.8(b) and 1.10(e), which permits the filing
of duplicate copies of prior correspondence in place of lost or missing
originals. While applicants should, as a general rule, promptly file a
duplicate (of a new application filing or a reply to an OIPE notice)
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when they become aware that the Office has not received, and may not
ever receive, an item of correspondence, the level of urgency usually
associated with such action should take into account the fact that the
USPTO expects to receive all, or substantially all, of the delayed
correspondence. In addition, correspondence will be treated as filed
(37 CFR 1.10) or timely (37 CFR 1.8), if applicant originally filed
under those provisions regardless of the length of time that the
correspondence took to reach the Office. In the event the Office has
not received the original by March 1, 2002 applicant then should file a
duplicate. The Office will mail a return post card receipt and/or
filing receipt or notice, as it usually does, when correspondence is
received by the Office so applicant will be informed when delayed
correspondence has been received.
When the USPTO receives a duplicate submission, it shall consider a
showing that a reply was timely mailed as set forth 37 CFR 1.8(b), or a
petition for a filing date under 37 CFR 1.10(e), to have been timely filed
so long as the showing or petition is filed by May of 2002. To the extent
that this standard for timeliness is less stringent than the requirements
set forth in 37 CFR 1.8(b)(1), 1.10(e)(1) and 1.181(f), the provisions of
37 CFR 1.8(b)(1), 1.10(e)(1) and 1.181(f) are hereby sua sponte
waived for applications and papers mailed on or after October 13, 2001 and
no later than December 1, 2001. Where there is a special need, however,
applicants should take advantage of the rules and file duplicates without
delay. Special needs could include the following: applications and
correspondence mailed on or after October 17, and before October 23, 2001
that have not yet been received by the Office, Patent Cooperation Treaty
application filings where priority has been claimed, design applications,
replies to a Notice of Incomplete Application (filing date not granted)
which was mailed under 37 CFR 1.8, and where certified copies of an
application will be needed for priority purposes. In all other situations,
before filing a duplicate of a prior mailed correspondence pursuant to 37
CFR 1.8(b) and 1.10(e), applicants might want to wait to see if the
original is later received.
If correspondence sent via Express Mail was returned to
applicant by the USPS, applicants should not file a duplicate, and
should instead mail the original correspondence back to the USPTO as
described in the notice "Suspension of the `Express Mail' Service of
United States Postal Service for mail addressed to ZIP Codes 202xx
through 205xx" that is posted on the USPTO Internet Web site at:
http://www.uspto.gov/september11/uspsmaildisrup.htm.
Applicants who did not file an application using Express Mail may wish
to consider filing a duplicate copy of the application via Express
Mail, and not including the basic filing fee, or an
authorization to charge the basic filing fee to a deposit account. When
a duplicate application is submitted, applicant should anticipate that
the duplicate (copy) application will be processed as a new
application, any fees due will be attempted to be collected (as by
either charging a deposit account if an authorization is given, or by
mailing a Notice to File Missing Parts, requiring the filing fee(s)),
and a filing receipt mailed. If the filing date accorded to the
duplicate copy is an earlier filing date than that accorded the
application that was previously mailed by first class mail, then
applicant should respond to the Notice to File Missing Parts and pay
the basic filing fee. If the application that was previously mailed by
first class mail is given a filing date before that of the duplicate,
applicant need not reply to the Notice to File Missing Parts in the
duplicate application, and can just prosecute the original application
(thereby allowing the later-filed duplicate application to go abandoned).
When applicant mails a reply to a Notice from OIPE using a
certificate of mailing, the reply will be considered to be timely so
long as the certificate of mailing was dated before the due date set in
the Notice, regardless of the length of time that it took to reach the
USPTO. If the date of receipt of the correspondence was important, and
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applicant did not use Express Mail, and the response has not yet been
received, applicant may wish to file a duplicate copy of the reply by
Express Mail. An example of such a situation would be where a reply to
a Notice of Omitted Items included a copy of a missing page of
specification and requested a filing date of the date of receipt of the
page of specification. The duplicate correspondence mailed to the
Office pursuant to the Express Mail provisions of 37 CFR 1.10 will be
given a filing date of the "date in" accorded by the USPS. If the
duplicate is faxed to OIPE, the correspondence will be given a filing
date as of the date of receipt, or if the actual date of receipt is a
Saturday, Sunday or Federal Holiday, the next business day (see 37 CFR
1.6(a)(3)).
At the present time applications held in OIPE that are awaiting
replies will not be processed as abandoned (if a reply could have been
timely made during this period of delayed mail) and, therefore, calls
requesting applicants to submit duplicate copies of replies to such
notices will not generally be made. Calls to request such papers may be
made for design applications.
VIII. Patent Term Adjustment:
Applications filed on or after May 29, 2000 may be eligible for
patent term adjustment if issue of the patent has been delayed due to
the failure of the Office to meet one of the time periods set forth in
35 U.S.C. 154(b)(1). See 35 U.S.C. 154(b). 37 CFR 1.703(f)
provides that the date indicated on any certificate of mailing or
transmission under 37 CFR 1.8 is not taken into account in a patent
term adjustment calculation. If a reply to any Office action or notice
is filed more than three months after the mailing date of the Office
action or notice, the period between the date that is three months
after the mailing date of the Office action or notice and the date of
receipt (37 CFR 1.6) of the reply is considered a failure to engage in
reasonable efforts to conclude prosecution, and any patent term
adjustment to which the applicant would otherwise be entitled is
required to be reduced by this period. See 35 U.S.C.
154(b)(2)(C)(ii) and 37 CFR 1.704(b). 35 U.S.C. 154(b)(3)(C) and 37 CFR
1.705(c), however, provide that an applicant may request reinstatement
of all or part of the period of adjustment reduced pursuant to 35
U.S.C. 154(b)(2)(C) and 37 CFR 1.704(b) for failing to reply to an
Office action or notice within three months of the date of mailing of
the Office action or notice if the applicant provides a showing that,
in spite of all due care, the applicant was unable to reply to the
Office action or notice within three months of the date of mailing of
the Office action or notice, but 35 U.S.C. 154(b)(3)(C) does not permit
the Office to grant any request for reinstatement for more than three
additional months for each reply beyond three months from the date of
mailing of the Office action or notice.
If a reply to an Office action or notice was mailed on or after
October 13, 2001 and no later than December 1, 2001 (as shown on a
certificate of mailing under 37 CFR 1.8), and the applicant is
otherwise entitled to patent term adjustment (or additional patent term
adjustment) but for the fact that there was a reduction of such patent
term adjustment under 35 U.S.C. 154(b)(2)(C)(ii) and 37 CFR 1.704(b)
due to the receipt of such reply by the Office more than three business
days after the date indicated on the certificate of mailing, the Office
will consider the USPS mail situation discussed in this notice to
constitute a sufficient showing that, in spite of all due care, the
applicant was unable to reply to the Office action or notice within
three months of the date of mailing of the Office action or notice. In
this situation, the Office will, subject to the conditions set forth
below, reinstate a period equal to the period beginning on the date
that is four business days after the date indicated on the certificate
of mailing on the reply and the date of receipt (37 CFR 1.6) of the
reply in the Office up to a maximum of three months.
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If an applicant's request for reinstatement of patent term
adjustment for the reason set forth above is the sole basis for
requesting a change to the patent term adjustment indicated on the
notice of allowance, the Office will waive the requirements of 37 CFR
1.705 (including fees) if the applicant submits a request for
reinstatement of patent term meeting the following conditions:
(1) The request is submitted no later than the payment of the issue
fee but no earlier than the date of mailing of the notice of allowance
(unless the paper that was delayed in the mail was the issue fee payment or
other paper submitted with or after payment of the issue fee, in which case
the request must be submitted as soon as possible but no later than the day
before the date of issue of the patent).
(2) The request is transmitted by facsimile to the Office of Petitions
at (703)308-6916.
(3) The request includes:
(a) a copy of the part of page with the certificate of mailing
under 37 CFR 1.8 and a description of the paper (e.g., amendment, issue
fee transmittal, notice of appeal);
(b) the date of receipt in the Office of the paper; and (c) the
number of days requested to be reinstated as a result of the USPS mail
situation discussed in this notice.
In addition, if applicant has access to the Patent Application
Information Retrieval (PAIR) system, a copy of the PAIR contents
records with the entry highlighted should also be included.
Applicants are again reminded that to maximize patent term
adjustment they may wish to consider filing replies to Office actions:
(1) under the "Express Mail" provisions of 37 CFR 1.10; (2) by facsimile;
or (3) by hand-delivery. See Changes to Implement Patent Term Adjustment
Under Twenty-Year Patent Term, 65 Fed. Reg. 56366, 56376 (Sept. 18, 2000),
1239 Off. Gaz. Pat. Office 14, 22-23 (Oct. 3, 2000) (final rule) (response
to comment 10).
IX. Contact Information:
If you have a question relating to the status of a reply for an
application in a Technology Center, please contact the Customer Service
Representative of that Technology Center. If you have a question
relating to the receipt of a new application or a reply for an
application in OIPE, please contact the Customer Service Center in OIPE
at (703) 308-1202. If you have a question relating to the receipt of
post allowance correspondence, including issue and publication fee
payments, please contact the Customer Service Center of the Office of
Publications at (703) 305- 8283.
Questions concerning this notice should be directed to Darnell Jayne,
Legal Advisor, Office of Patent Legal Administration at (703) 308-6906.
December 20, 2001 ROBERT SPAR for
STEPHEN G. KUNIN
Deputy Commissioner for
Patent Examination Policy
[1254 OG 92]