| Electronic Filing and Submission |
Referenced Items (355, 356, 357, 358, 359, 360, 361, 362, 363, 364, 365, 366, 367, 368, 369, 370, 371, 372, 373, 374, 375, 376, 377, 378) |
(363) Electronic Office Action
On December 16, 2006, the United States Patent and Trademark Office
(Office) implemented the Electronic Office (e-Office) Action Pilot Program
in which a limited number of patent applicants participated. See Electronic
Notification of Outgoing Correspondence (e-Office Action), 1314 Off. Gaz.
Pat. Office 1321 (Jan. 16, 2007). Under the program, applicants would
receive notifications via electronic mail message (e-mail) of Office
communications retrievable through Private Patent Application Information
Retrieval (PAIR) in lieu of paper mailings of the communications, with a few
exceptions. Participants experienced many benefits including the ability to
retrieve Office actions several days faster than mail. Based on the
suggestions from thr participants, the Office has made a number of
improvements and is expanding the program to permit all Private PAIR users
to participate. Participation in the e-Office Action program will continue
to be optional.
1. Who may participate and how does a participant sign up?
Effective on June 29, 2009, any registered attorney or agent of record,
or pro se inventor who is a named inventor, in a patent application
associated with a Customer Number through which Private PAIR is accessed,
may participate in the e-Office Action program. To access Private PAIR, the
participant must have a Public Key Infrastructure (PKI) certificate linked
to the participant's Customer Number.
To register for the e-Office Action program to receive e-mail
notifications of subsequent Office communications, Private PAIR users must:
a. Log-on to Private PAIR and select the Customer Number
Details screen;
b. elect the "Receive Correspondence Notification via e-Mail"
option within the Customer Number Details screen; and
c. Designate at least one e-mail address to receive e-mail
notifications for Office communications issued in the
applications associated with the Customer Number.
The user may designate up to three e-mail addresses. After registration,
Office communications entered by participating Office business units (see
item 7, below) in each application associated with the Customer Number will
be processed under the e-Office Action program.
2. How does e-Office Action work?
When one of the participating business units within the Office enters an
Office communication in an application that is associated with the user's
Customer Number, the Office will send an e-mail notification to the
designated e-mail addresses. The e-mail notification will contain the
following information:
a. The date and time when the e-mail notification is sent
by the Office;
b. The correspondence address that is associated with
the customer number;
c. The customer number;
d. The following information regarding each new Office
communication:
i. The application number of the application in which the
Office communication is entered;
ii. The Image File Wrapper (IFW) document code that is associated
with the Office communication;
iii. The mailroom/notification date indicated on the form PTOL-90
accompanying the Office communication (generally, any time
period for reply set forth in the Office communication will
commence on the mailroom/notification date (see item 4
below)); and
iv. The attorney docket number.
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The Office communication will be available and retrievable immediately
through Private PAIR. The Office will not mail a paper copy of the Office
communication.
Upon receipt of the e-mail notification, the participant may download or
view the new Office communication by logging-on to Private PAIR and using
either: (1) the Customer Number Outgoing Correspondence Search option; or
(2) the Application Search option and access the IFW tab.
If the user has multiple applications associated with the Customer
Number, a single consolidated e-mail notification will be sent to the user
and it will list all of the new Office communications entered on that day
in the applications associated with the Customer Number. An abridged
version of the e-mail notification, which contains only data pertinent to
an individual application, will be scanned into that application file as
part of the official record. The abridged e-mail notification scanned into
the application file will not contain information regarding other
applications.
3. How often will a participant receive the e-mail notification?
The Office will send an e-mail notification to the designated e-mail
addresses only when there is a new Office communication in the applications
associated with the user's Customer Number. If there are multiple new Office
communications entered in the applications on the same day, the participant
will receive a single e-mail notification listing all of the new Office
communications. Therefore, participants will receive a single e-mail
notification per day for each Customer Number when there is a new Office
communication.
4. When does the time period for reply start?
Generally, any time period for reply set forth in the Office
communication will commence on the mailroom/notification date indicated on
the form PTOL-90 accompanying the Office communication. The mailroom/
notification date is similar to the mailing date of a paper communication.
More specifically, for Office actions under 35 U.S.C. 132(a), the
mailroom/notification date is the date of the notice under 35 U.S.C. 133.
The mailroom/notification date will also be considered the date of mailing
of the correspondence for all other purposes (e.g., 37 CFR 1.71(g)(2),
1.97(b), 1.701 through 1.705).
However, the two-month time period set forth in 37 CFR 1.304 for filing
the notice of appeal to the U.S. Court of Appeals for the Federal Circuit,
or for commencing a civil action, commences on the date of the decision of
the Board of Patent Appeals and Interferences (BPAI). The time period is
not measured from the mailroom/notification date. See also 35 U.S.C. 142.
Participants may request extensions of time pursuant to 37 CFR 1.304(a)(3).
Once the participant receives an e-mail notification, it is highly
recommended that the participant log-on to Private PAIR to view the new
Office communication as soon as possible so that the participant may
determine whether the communication requires an applicant's reply and when
the reply is due.
5. What is a courtesy postcard?
The Office will mail a courtesy postcard notifying the applicant if none
of the Office communications are viewed or downloaded through Private PAIR
within seven (7) calendar days after the date of e-mail notification and at
least one of the Office communications requires an applicant's reply. The
courtesy postcard will be mailed to the correspondence address associated
with the Customer Number.
The mailing of a courtesy postcard will not restart any time period for
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reply, which will continue to run from the mailroom/notification date
indicated on the form PTOL-90 accompanying the communication.
6. What types of applications are included in the e-Office Action program?
The program includes the following types of applications:
a. Provisional applications;
b. Nonprovisional applications filed under 35 U.S.C. 111 (including
utility, plant, design, and reissue applications); and
c. National stage applications filed under 35 U.S.C. 371.
However, the following applications and proceedings are not included in
the program:
a. International applications that have not entered the national
stage in the United States;
b. Reexamination proceedings; and
c. Interference proceedings.
7. Which business units in the Office are participating in the program?
Participating business units
Participants will receive e-mail notifications for all Office
communications prepared by the following participating business units:
a. Technology Centers (including the examining corps) that enter
Office actions and notices, including notices of allowance;
b. The Office of Patent Application Processing (formerly Office of
Initial Patent Examination (OIPE)) that enters application
formality review notices, including notices to file missing
parts;
c. The Office of Data Management (Pre-Grant Publications and Office
of Publications) that enters notices of publication and issues
patents;
d. The Board of Patent Appeals and Interferences (BPAI) for ex parte
appeals of rejections of claims in patent applications;
e. The Office of Petitions; and
f. The Office of Licensing and Review.
Non-participating business units
Since several areas of the Office have independent mailing processes,
participants will continue to receive paper mailings for communications
prepared by the non-participating business units including (but not limited
to):
a. The PCT Operations Division, International Branch;
b. The BPAI for interference proceedings and reexamination
proceedings;
c. The Central Reexamination Unit (CRU) for ex parte reexamination
and inter partes reexamination proceedings;
d. The Office of Enrollment and Discipline; and
e. The Office of the Solicitor.
8. Can a participant withdraw from the program?
Participants may opt out of the program at any time. To change back to
PAPER Delivery of any subsequent Office communications, Private PAIR users
must:
a. Log-on to Private PAIR and select the Customer Number Details
screen;
b. Select the "Request Customer Data Change" button; and
c. Select the "Receive Correspondence via Postal Mail" option on the
Customer Number details screen.
Any Office communications that are prepared after the withdrawal is
recognized by the Office will be mailed to the correspondence address
associated with the application. However, if the Office communication has
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been prepared before the withdrawal is recognized by the Office, the
Office communication may be processed under the ELECTRONIC Notification
procedure. This means the Office may send an e-mail notification for the
communication rather than mailing a paper copy of the communication. During
the transition period, participants may receive some Office communications
in paper (those that were prepared after the withdrawal is recognized) and
electronic notifications for those that were prepared before the withdrawal
is recognized.
Therefore, it is important for the participants to check their designated
e-mail addresses for e-mail notifications and review the Office
communications via Private PAIR, even after withdrawing from the program.
Furthermore, the participants may receive courtesy postcards for any
unviewed communication (that has a time period for reply) for which an
e-mail notification was sent.
Please also note that switching repeatedly within a few days between
ELECTRONIC Notification and PAPER Delivery may result in delays in receiving
e-mail notifications or paper Office communications.
9. Can a participant change or add e-mail addresses?
Participants may change the e-mail addresses at any time. To change or
add an e-mail address, participant must:
a. Log-on to Private PAIR and select the Customer Number
Details screen;
b. Select the "Request Customer Data Change" button; and
c. Change or add the e-mail address to receive e-mail
notifications for Office communications entered in the
applications associated with the Customer Number. The user may
designate up to three e-mail addresses.
The PAIR system will send a test e-mail to each of the new e-mail
addresses.
10. Who should the participant contact if he or she did not receive an
e-mail notification for an Office communication?
The participant should contact the Patent Electronic Business Center
(Patent EBC) (see the contact information below) if an Office communication
is available in Private PAIR but participant did not receive an e-mail
notification for the Office communication. The Office will take appropriate
corrective actions. For example, the Office will send participant an e-mail
notification if an e-mail notification was not previously sent to the
designated e-mail addresses. Any time period for reply (except for the
two-month period under 37 CFR 1.304) set forth in the Office communication
will be restarted when the Office sends the e-mail notification. For more
information on time period for reply, see item 4 above.
However, if the Office did send an e-mail notification to each of
the e-mail addresses designated by the user, the Office will not send a new
e-mail notification and any time period for reply set forth in the Office
communication will not be restarted. The time period for reply will continue
to run from the original mailroom/notification date. Therefore, it is
important for the user to designate the correct e-mail addresses when the
user signs up for the program.
11. Who should the participant contact if an improper communication
has been scanned into the application?
The participant should contact the Patent EBC if he or she discovers
that an improper communication has been scanned into the application file,
so that the Office can take appropriate corrective actions. For example,
if the improper communication belongs to another application, the Office
will move the communication to the correct application. The Office will send
a new e-mail notification when a proper communication is available and
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retrievable through Private PAIR.
Please note that the IFW document code on the e-mail notification
is informal (unofficial) information. If there is any discrepancy between
the document code on the e-mail notification and the communication available
through Private PAIR, the image of the Office communication is the official
record. The Office will not send a new e-mail notification for an incorrect
document code on the e-mail notification.
If an Office communication contains some error that affects applicant's
ability to reply to the Office communication and this error is called to the
attention of the Office in writing within one month of the e-mail date, the
Office will follow the procedure set forth in MPEP § 710.06.
12. Who should the participant contact if the e-mail notification is
delivered a few days later than the mailroom/notification date?
If the Office communication (e.g., an application filing receipt or a
notice of publication) does not require a reply from applicant and it does
not have a time period for reply, it is not necessary for the participant
to contact the Office.
However, if the Office communication requires a reply and it sets forth a
time period for reply, the participant should call the Patent EBC within one
month from the e-mail date so that the Office will be able to reset the time
period for reply (except for the two-month period under 37 CFR 1.304) to the
original e-mail date. For more information on time period for reply, see
item 4 above.
For example, an e-mail notification sent on February 6, 2009, indicates
that an Office action with a mailroom/notification date of February 2, 2009,
has been entered in the application. The time period for reply set forth in
the Office action commences on the mailroom/notification date (February 2,
2009). If the participant contacts the Patent EBC within one month from the
e-mail date (February 6, 2009), the Office will reset the time period
for reply to commence on February 6, 2009.
13. How can a participant identify the e-mail notification sent
from the Office?
The e-mail notification will have the following in the subject line:
"Private PAIR Correspondence Notification for Customer Number xxx." "xxx"
is the participant's Customer Number. The sender's address is
"PAIR_eOfficeAction@uspto.gov".
Any inquiries regarding the e-mail notification should be directed
to Patent EBC. Participants should not reply to the PAIR e-Office Action
e-mail address.
14. Does the e-Office Action change the policy for communications
via the Internet?
By registering for the e-Office Action program, participant is
authorizing the Office to send e-mail notifications of Office communications
entered by the participating Office business units in the applications
associated with the Customer Number. The e-Office Action program does not,
otherwise, change the policy for communications via the Internet set forth
in the Manual of Patent Examining Procedure (MPEP) § 502.03.
The e-Office Action program does not alter the Office policy prohibiting
an applicant or examiner from engaging in improper e-mail correspondence.
For example, applicant may not send a reply to an Office action to the
Office via e-mail, and the examiner may not send an Office action to the
applicant via e-mail. See MPEP § 502.03.
15. Contact Information
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Any inquiries regarding PAIR and e-Office Action may be directed
to Patent Electronic Business Center (Patent EBC) by telephone at
(571) 272-4100 or toll free at (866) 217-9197, or by e-mail at
ebc@uspto.gov. Full technical support is available 6:00 a.m. to Midnight
Eastern Time, Monday through Friday.
Any legal inquiries regarding information technology (IT) policies
for U.S. national applications may be directed to the Office of Patent Legal
Administration (OPLA) at (571) 272-7701, Joni Y. Chang ((571) 272-7727) or
Mark Polutta ((571) 272-7709), Senior Legal Advisors, OPLA.
Any legal inquiries regarding IT policy for international patent
applications may be directed to Tamara Graysay ((571) 272-6728), Special
Program Examiner, the Office of PCT Legal Administration.
Any other inquiries regarding PAIR and e-Office Action may be directed
to Huong Esposo ((571) 272-5685), PAIR and e-Office Action Project Manager,
Search and Information Resources Administration.
May 11, 2009 JOHN J. DOLL
Acting Under Secretary of Commerce for
Intellectual Property and
Acting Director of the United States Patent
and Trademark Office
[1343 OG 45]