(16) Waiver of Certificate of Mailing
Requirement Under 37 CFR 1.10
The Patent and Trademark Office (PTO) will propose to amend 37 CFR 1.10,
regarding the "Filing of papers and fees by `Express Mail' with
certificate" by, among other things, deleting the requirement for a
"Certificate of Mailing by Express Mail" currently necessary to obtain the
benefit of the date of deposit with the United States Postal Service
(U.S.P.S.) as the filing date of the paper.
Background of 37 CFR 1.10 and Rationale for Amendment
35 U.S.C. 21 authorizes the Commissioner "by rule [to] prescribe
that any paper or fee required to be filed in the Patent and Trademark
Office will be considered filed in the Office on the date on which it was
deposited with the United States Postal Service." 37 CFR 1.10 was
promulgated to implement this provision.
Pursuant to 37 CFR 1.6, papers are stamped with the date of receipt in
the PTO. An exception is made for papers filed in accordance with 37 CFR
1.10, which provides for the filing of papers and fees by Express Mail
with a certificate. However, in order to claim the benefits of 37 CFR
1.10, a party must comply with its specific requirements that the papers
have the number of the Express Mail label placed thereon prior to mailing,
be properly addressed to the PTO (see "Change of Address For Trademark
Applications and Trademark Related Papers," 1163 TMOG 80 (June 28, 1994),
which waived 37 CFR 1.10 to the extent that certain trademark related
papers could be addressed to the Assistant Commissioner for Trademarks,
2900 Crystal Drive, Arlington, Va. 22202-3513; and "Change of Address For
Patent Applications and Patent Related Papers," 1173 OG 13 (April 4,
1995), which waived 37 CFR 1.10 to the extent that patent related papers
could be addressed to the Assistant Commissioner for Patents, Washington,
D.C. 20231 ), and include a Certificate of Mailing by Express Mail which
states the date of mailing and is signed by the person mailing the papers.
37 CFR 1.10 was promulgated in response to concerns that mail service
was sometimes subject to delay and, except for hand-delivery, that there
was no way to ensure the timely filing of time-critical documents with the
PTO. "Express Mail" was chosen because, among other things, a person other
than the filer, that is a disinterested third party working for the
U.S.P.S., enters the date of deposit on the Express Mail label.
Under the current rule, the filer is required to include a Certificate
of Mailing by Express Mail, certifying the date of deposit as Express
Mail. Some papers filed with the PTO, although deposited as Express Mail
with the U.S.P.S., have been denied the filing date of the date of deposit
as Express Mail because the required Certificate of Mailing by Express
Mail was omitted or deficient. The lost filing date for a significant
number of these papers has resulted in the loss of substantive rights. For
example, a trademark registration may be canceled if the required
affidavit of continued use or excusable non-use is not filed by the end of
the sixth year of registration. 15 U.S.C. 1058.
In light of the problematic nature of the requirement for a Certificate
of Mailing by Express Mail and its apparent redundancy in purpose,
inasmuch as the date of deposit has already been entered by a
disinterested third party, the PTO will propose to delete this requirement
from 37 CFR 1.10.
This notice applies only to correspondence actually received (not to
papers lost or misplaced by the U.S.P.S.) at the PTO via Express Mail Post
Office to Addressee service where there is a clear indication of the "date
in" on the Express Mail label by the U.S.P.S. Filers are encouraged to
continue the practice of placing a Certificate of Mailing by Express Mail
on papers filed in the PTO by Express Mail since, in some cases, the
certificate may provide useful evidence.
Interim Waiver of 37 CFR 1.10 for Documents Filed without Certificate of
Express Mail
Because a significant period of time will elapse before any final rule
change can be promulgated, and because there appears to be no harmful
consequence to any party, effective as of the publication date of this
notice, the PTO will, sua sponte, waive 37 CFR 1.10 to the extent of
granting a filing date as of the "date in" entered on the Express Mail
label by the U.S.P.S. employee (unless the "date in" is a Saturday, Sunday
or Federal holiday within the District of Columbia; see 1.6(a)) for all
papers actually received at the PTO via Express Mail, regardless of
whether the requirement for a Certificate of Mailing by Express Mail has
been met provided all other requirements of 37 CFR 1.10 are met.
For all papers filed prior to the date of this notice, which were not
in compliance with the Certificate of Mailing by Express Mail requirements
under 37 CFR 1.10, a petition to the Commissioner will be required to
request that the date of deposit as shown by the "date in" entered on the
Express Mail label be accorded as the filing date of the paper. The
petition should include a copy of the Express Mail label showing the "date
in" entered by the U.S.P.S. employee and a declaration attesting to the
contents of the envelope to which the Express Mail label was attached. See
37 CFR 1.183 or 2.146.
Summary
In summary, the PTO is waiving, sua sponte, the requirement of 37 CFR
1.10 for a Certificate of Mailing by Express Mail and will propose to
amend 37 CFR 1.10 to delete the requirement for a Certificate of Mailing
by Express Mail. This waiver becomes effective upon the publication of
this notice. For all documents filed by Express Mail prior to this notice,
but not in compliance with the Certificate of Mailing by Express Mail
requirement, a petition to the Commissioner under either 37 CFR 1.183 or
2.146 must be filed to request that the date of deposit as shown by the
"date in" entered on the Express Mail label be accorded as the filing date
of the paper.
PHILIP G. HAMPTON, II EDWARD R. KAZENSKE
Assistant Commissioner Deputy Assistant Commissioner
for Trademarks for Patents
[1174 OG 92]