Addressing of Correspondence – no penalty, expect to the general solicitor, to addressing the mail to the wrong area within the PTO
Hand Delivery – all correspondence except relating to pending litigation can be hand delivered
Express Mail – if USPS “Post Office to Addressee” service is used, use date of deposit
Facsimile – date stamped is the date that the transmission is complete at the PTO (EST). If fax is not received, it can still receive the date that it was sent if sender provides statement that fax was sent and the provides the sender’s report confirming transmission. Fax is usually acceptable after an application has commenced including:
- issue fee transmittals
- authorizations to charge deposit account
Fax is not acceptable for:
- document that is required by statute to be certified
- application or other doc for obtaining an application filing date
- drawings under certain rules
- judge order
- interference agreements
- some interference correspondence
- secrecy related
- international application
- copy of application and fee to enter national stage
- request for reexam
Internet – Permissible communication includes all situations except those which otherwise require a signature, or replies to office actions. When email is used, a printed copy must be given a paper number and entered into PALM. Written authorization is required for PTO employees to communicate via internet with an applicant for reissues and reexams.
Signature Requirements – original signatures are generally not required. Copies are not permitted for: 1) docs that relate to registration practice before the PTO in patent cases, 2) enrollment and disciplinary investigations, and 3) disciplinary proceedings
Date of Receipt of Correspondence
Express Mail – date stamped with the date it is deposited; requires “Express Mail Post Office to Addressee”
Facsimile – date stamped on date the transmission is complete (EST)
Certificate of Mailing or Transmission – only applies if paper is received after the applicable deadline has passed. If date on certificate meets the deadline, it’s considered timely.
- The PTO will still stamp the correspondence with the actual date of receipt. This date stamp will be used for all other purposes including calculations of future deadlines
- Cannot use certificate of mailing – obtaining an app filing date, including CPA; interferences; agreements of interfering parties; international application; UPS or FedEx; etc.
- Contents – requires a signature; must be attached or part of document; if on separate sheet, it must be signed and clearly identify the paper it’s with, including filing date and serial number; each document must have a separate certificate.
- Lost Mail or Transmission – will be considered timely if applicant: 1) promptly notifies Office that it was sent, 2) supplies a copy of the original correspondence and certificate, 3) and provides a statement that attests on personal knowledge on timeliness
Application Number and Filing Receipt – will be assigned to applications upon receipt. A filing receipt with application number and filing date will be returned upon receipt at the PTO of the 1) specification, including claims, and 2) drawings. The filing receipt is mailed when a determination is made that the application meets minimum requirements. Provisional applications – a filing receipt will be sent upon receipt of specification and required drawings. A cover sheet or letter identifying application as a provisional is required to prevent the provisional from being treated as a regular application.
Completeness of Original Application (to get a filing date) – Regular, non-Provisional: 1) specification, 2) claim, and 3) drawing. Provisional: 1) specification, 2) drawing, and 3) cover sheet.
Verification of Receipt
The PTO will verify receipt upon applicant’s request. This does not verify completeness or guarantee a filing date.
Return Receipt of other papers – should clearly identify the paper for which receipt is requested.
Postcards – should include reference to: applicant’s name or ID number, title, number of pages of specification, claims, drawings, oath/declaration if included, provisional cover sheet (if provisional), amount and manner of paying the fee
Payment of Fees
Refunds – only fees paid by mistake or in excess of that required at the time of payment are refundable – provided electronically
Deposit Accounts – minimum deposit of $1,000 is required to establish an account; each month the minimum balance must be restored promptly to avoid a $25 service charge; charges to accounts with insufficient funds will not be accepted; the PTO will immediately suspend an overdrawn account and will not accept any more charges against it until the proper balance is restored and $10 service charge is paid
Authorization to charge deposit account – authorization must be clear and unambiguous; an applicant may make a general authorization that will apply to all fees that may be addressed during the pendency of the application
Small Entity Status – 50% reduction of fees
Applies to: 1) Independent Inventor, 2) Small Business (< 500 employees), and 3) Nonprofit Organization
- Applies to following fees: filing fees; EOT, revival, and appeal; issue fees; statutory disclaimer; maintenance fees
- Does not apply to: petition and processing; document supply; certificate of correction; request for reexam; miscellaneous and charges under 1.21; international app
To claim small entity status – must file statement containing: signature; statement of qualification as small entity; statement regarding transferred rights; English language/translation. Small Entity Status (SES) must be claimed on each patent app filed by the inventor, including continuations. Refunds for paying full fee are given if statement is filed within 3 months of the payment of the full fee.
How can a patent app be deposited at the USPTO? (37 CFR 1.5, 1.6)
- Usually done either by Express Mail, or by using the Electronic Filing System (EFS)
- P.O. Box 1450, Alexandria, VA, 22313-1450
- Hand delivery: Hand delivery is not allowed to the TC directly except for papers that are under a secrecy order. As of Dec. 1, 2003 all official patent app related correspondance should be delivered to the Customer Window.
- the app itself cannot be faxed
What reference info is needed for filing papers related to a patent app?
- All correspondence related to an already-filed national patent app must include the ID of the application number, or (usually if the application does not have a number yet) the serial number and filing date assigned to app by the USPTO.
Rules on mailing to the USPTO, and on when mail is “received”:
- Express Mailing: 2 major types, Post office to Addressee and Post Office to Post Office. The type to use for filing an app is Post office to Addressee where the ‘addresee’ is the USPTO
- In Express mailing, the sender completes a label, with the post office completing part for the “date in” address. The important point is that the “date in” will be used by the USPTO, so if the mail is labeled by the post office as (for example) Jan. 15, 1998, then that is the date the USPTO will use for the filing, not the date that the mailing actually arrives at the USPTO office.
When is a fax actually considered as “received” by the USPTO?
- Normally it is “received” on the date that the fax completes transmission to the USPTO using the USPTO’s local time (not the timezone of the sending party). If a fax completes on a weekend or federal holiday, the USPTO will consider it “received” on the next business day
- There is an exception, if the sender has a Certificate of Transmission then the fax is considered received as of the date of the certificate of transmission instead. This is covered in detail later, it may apply to some actions taken under deadlines with the USPTO.
When is is OK to fax and when is it NOT OK? (502.01; 37 CFR 1.6(d),(f) in Charts):
When faxes are not permitted:
- docs that statute requires to be certified
- National patent app and drawing (provisional or non-provisional) or any correspondence needed to get a filing date, other than a CPA under 1.53(d) (CPA’s are the main exception to the rule in not being allowed to file apps by fax)
- Color drawings, unless the drawings are being submitted along with the issue fee (the patent is being issued)
- Correspondence relating to an interference when the judge orders files to be delivered by hand or express mail
- Agreements between parties to an interference under 35 U.S.C. 135(c)
- Correspondences in contested cases that are before the Board of Patent Appeals, unless expressly authorized by the board.
- Any correspondence in an app under a secrecy order and directly related to the material covered by the secrecy order (some parts of the patent might not be under the secrecy order and might be OK).
- International patent apps. (same as national apps, no faxing)
- The copy of an international app and fee that are necessary to bring an international app into the national stage.
- Requests for reexamination.
What about email? (502.3)
- Internet communication is at the discretion of the applicant, and without written authorization by the applicant the USPTO will not respond via email to any Internet correspondence containing information subject to cofnidentiality requirements (see 35 U.S.C. 122)
- Interviews: Interviews that need to take place between examiner and applicants (usually done in person or on the phone) unless there is express authorization.
What is needed for a signature on documents? (502.02; 37 CFR 1.4(d))
- Handwritten Signatures: What you expect, needs to be done in permanent, dark ink.
- S-Signature: These are signatures made by electronic or mechanical means, and they are inserted between forward-slash marks (/sig/). S-signatures can be used in paper, fax, TIFF files, for patent apps and patent reexamination proceedings. However, S-signatures do not authorize e-mail correspondence. For patent practitioners, the S-signature also must include the practitioner’s registration number.
- EFS Character Coded Signatures: These signatures are used with the USPTO’s Electronic Filing System (EFS).
Filing Receipts (503, 505):
Main filing receipt:
- If the application has the sufficient parts (description, at least 1 claim, necessary drawings) to receive a filing date, the filing receipt contains the: (1) app #; (2) filing date; (3) confirmation #; (4) suggested class & TC. For some apps it also contains: (1) continuing data; (2) national stage data; (3) foreign priority data; (4) foreign filing license data; (5) small entity status data; (6) the anticipated date of publication.
- Make sure to check the filing receipt for inaccuracies, if there are inaccuracies, then the USPTO may be notified to request a correction.
- Except for filings, the USPTO usually will not give a receipt for filing papers.
- For any kind of filing (including patent apps that get the full receipt seen above) the filing party can include a stamped, self-addressed postcard that identifies each item in the filing. The USPTO will stamp this postcard and then mail it back to the filing party.
- The postcard gives a much faster (but unofficial) confirmation that the USPTO has received paperwork. Also, it can act as proof that the USPTO received documents which can be useful if the USPTO loses a filing. However, note that the postcard must specifically identify the items in the filing for it to act as prima facie evidence that those items were received by the USPTO.
Official Date Stamps: (37 CFR 1.6 in charts)
- The USPTO stamps filings with the date of receipt known as the Office Date stamp.
- If the deadline for an action is on the weekend or federal holiday, the action is considered timely if the receipt is by the next business day.
- As seen above, for express mailing the date put on by the post office will be used as the Office Date, not the date upon which the document actually arrives at the USPTO.
- If an app has the necessary components for a filing date, then the the Office Date is taken as the filing date.
For a non-provisional App what is needed to get a filing date:
- There must be a specification containing: description of the invention (37 CFR 1.71), at least 1 claim (37 CFR 1.75), and any necessary drawings (37 CFR 1.81(a)) for the invention.
- If all the inventors are not listed & signed on for the oath or the app. fee is not paid upon filing, then the OIPE will send out a notice to complete those along with a surcharge (37 CFR 1.16(f))
- For any app after July 1, 2005, if any: filing, search, or examination fee is paid AFTER the filing date, then the same 37 CFR 1.16(f) surcharge is added on.
- App Size Fees (add more pages, pay more $$): Under 37 CFR 1.16(s) any app under 35 U.S.C. 111 after Dec. 8, 2004 exceeding 100 pages pays an extra fee, with more fees added for each additional 50 pages.
- Prescribed Filing Fee (37 CFR 1.51(b)(4)): Extra fees for filing > 3 independent claims (37 CFR 1.16(h)), for filing > 20 claims (37 CFR 1.16(i), filing multiple dependent claims (37 CFR 1.16(j)).
- Filing date: most important date in the life of the patent!
- If the above is not complete, the applicant receives a notice to file missing items in order to get a filing date.
- However: If the USPTO does not grant a filing date, the applicant may file a petition to argue that the app was sufficient to get a filing date. There is a fee associated with the petition that may be refunded if the applicant is successful in arguing the app was complete.
- Drawings in nonprovisionals:
- Drawings generally have to be publishable since apps are published after 18 months (except design apps that never get published)
- If drawings are not suitable for publication, the OIPE (Office of Initial Patent Examination) will normally notify the applicant to submit acceptable drawings (usually within 2 months of filing the app).
For a provisional App what is needed to get a filing date:
- Papers must include a description of the invention, and a drawing if necessary, no need for claims.
- Once again, if filing is incomplete applicant is notified and the filing date will be when applicant corrects the filing.
- Review: provisional apps must be specific enough in subject matter so that later nonprovisional apps may get the benefit of the earlier filing date!
What to do when the USPTO loses your files:
- 1. The USPTO sends a notice (3 month response period with automatic 3 month extension under 37 CFR 1.136(a) available) to applicant or patentee that docs have been lost.
- 2. Most common response: Provide a copy of all correspondence between applicant & USPTO, a listing of the correspondance, and a statement that the copy is a complete & accurate copy of the record, and if the applicant is aware of any missing documents not in the copy.
- 3. Alternate response: Hand-delivering all the correspondence between applicant & USPTO, providing the statement that all papers and complete and accurate, and stating whether the applicant is aware of any missing papers.
- 4. OR: IF the applicant does NOT possess a copy of the correspondence, the applicant may respond by stating it does not have the copy.
- 5. If none of 2-4 are done, then after the deadline passes for the notice, if there is no reply then the app is considered abandoned. Note: for patentees that already have the patent, this deadline does not abandon the granted patent however.
Show me the $$: How to pay fees to the USPTO:
- Cash, check, or money orders (in U.S. $$)
- Credit Card: AMEX, Master Card, Discover, Visa
- There is a special Credi Card Payment Form that is not included with normal records of filings (and therefore not open to normal inspection by the public). The form is not strictly necessary, but if the CC info is put into the app in any other way, then the CC info will be open to public inspection along with the rest of the app. (The Credit Card Payment Form lets you keep CC information separate from the app that will eventually be published!)
- Deposit Accounts: (direct-transfer accounts)(See 37 CFR 1.25 in charts)
- 1st Type: minimum deposit of $1K and may be used for paying any fee.
- 2nd Type: minimum deposit of $300, used exclusively for ordering copies of patents.
- For either account, each month the USPTO will send out a statement if the account needs to be refilled with $$ and a service fee is the balance went below minimum values.
- Papers will specify an account to use for fees, there can be a specific auhtorization for just 1 payment, or a broader general authorization so that all fees that come up during a patent app get charged to an account.
- The notice for general authorization should be in the cover letter of the patent app.
- LIMITS: Only fees in 27 CFR 1.16-18 are covered in a general authorization, fees in 37 CFR 1.19-21 are NOT covered. Also: authorization to charge an issuing fee (37 CFR 1.18) may only be filed AFTER THE MAILING OF NOTICE OF ALLOWANCE.
How to claim Small Entity Status: (509.02, see 37 CFR 1.27(a) in Charts)
- A “small entity” may get reduced fees including 50% off:
- app filing fees, time extensions, revival, appeal fees, patent issue fees, statutory disclaimer fees, & maintenance fees on patents.
- Other fees: not reduced
- Who Gets it:
- Individual inventor who has not & is under no obligation to assign, grant, convey, or license any rights on the inventions to parties that don’t also qualify as small entities.
- A “small business concern”
- Non-profits, especially universities.
- Any small entity may get the reduced benefits as long as the party is a small entity in its native country.
- How to claim status:
- At time of filing of app or of payment of first fee, applicant must file an assertion to small entity status:
- 1st: file a written assertion stating that applicant is a small entity (simple written assertion, may be signed of atty/agent of record, atty/agent not of record acting in a representative capacity, assignee, or applicant (only 1 inventor or partial assignees need to sign affirmation))
- 2nd: assertion by payment just pay the exact amount a small entity should pay and this acts as an assertion that the applicant is a small entity. The general authorization to charge to an account is NOT sufficient for this assertion, unless it also expressly states to charge the exact amount for the small entity filing fees as well.
- After asserting SES, the party may continue to pay small-entity fees up until the issuance fee or a maintenance fee is due (even if the status of the applicant changes in the meantime). At the time of issuance fee or maintenance fee, the continuing entitlement to SES has to be reestablished (showing that the party is still a small entity) to get the lower rates.
- The SES needs to be established in every patent where the applicant is eligible for it.
- Notification of status Change: If an applicant has his status change, the applicant should notify the USPTO at a time upt ot or including the payment of issue fee or maintenance fee. The applicant should inform the USPTO, simply paying the larger fee is not sufficient to properly change status.
- Refunds: If a small entity pays a large-entity fee, there is a non-extendable 3 month period to request a refund. The request must have an assertion that the applicant is a small entity.
- At time of filing of app or of payment of first fee, applicant must file an assertion to small entity status:
- Even more savings on filing of Utility Apps after Dec. 8, 2004:
Express mailings, Certificates of Mailing, & LOST MAIL
Certs of Mailing or Transmission: (37 CFR 1.8 in Charts)
When there is a deadline for filing a response, the USPTO will allow a Certificate of Mailing (for Express Mail) or a Certificate of Transmission (for faxes) to be sent with the response in order to have the USPTO use the earlier date on the certificate.
- The certification just states the date on which the paper was sent. For mailing there will also be a stamp applied by the post-office. For faxes,
- Certifications require a signature (by themselves) so if there is a paper that needs a signature on its own, there must be 2 sigs (one for the certification, one for the paper actually being filed)
- The certification is usually stamped directly onto the paper being submitted. The stamp should be clearly visible on the first page of the paper (but does not need to be on every page).
- Sometimes the certfication will be on a separate page that should be securely attached to the paper being submitted.
- EACH paper being submitted must have its own certification. So even if there are 2 or 3 papers in one mailing envelope, each one needs a separate certification.
- Certifications are also useful when a doc never reaches the USPTO. The applicant may promptly petition the USPTO with the following:
- a showing that the mailing label number was on each document sent.
- a true copy of the original documents, showing the mailing number
- a copy of any returned postcard receipts
- a copy of the Express Mail label (see express mailing for more info)
When does the Cert apply to get the earlier date?
- Except for the situations listed below, when the USPTO wants a correspondence within a set time period (deadline) then by following the proper procedure for a certificate of mailing or transmission, the applicant may have the date of the certificate used instead of the date the USPTO receives the document.
When does the Cert NOT apply to get the earlier date? (37 CFR 1.8(a)(2))
For Patent Apps:
- Filings of national or international patent apps themselves, specifications & drawings, or other papers needed to get a filing date, including filings of CPAs under 37 CFR 1.53(d). (this is an initial filing, the certificates are only used when there is a deadline involved).
- Papers involved in cases that are contested before the Board of Patent Appeals and Interferences
- Interference correspondences must be hand delivered to the USPTO
- Agreements on interference are also included in this category
- The filing of correspondence in an international application before the U.S. Receiving Office, the U.S. International Searching Authority, or the U.S. International Preliminary Examining Authority;
- The filing of a copy of the international application and the basic national fee necessary to enter the national stage, as specified in § 1.495(b).
For Disciplinary Reasons:
- Correspondence filed in connection with a disciplinary proceeding under part 10 of this chapter. (If related to a disciplinary proceeding, no benefit of certificate of mailing or transmission).
Express Mailing & The Mailing Label Number: (37 CFR 1.10)
- The USPTO only accepts “Post office to Addressee” express mail.
- The mailing can either be directly taken to the post office (where it can be stamped by a postal employee directly) or it can be put in a drop-box, but if the post office has already made the final pickup from that drop-box the mailng will not get labeled until the date of the next pickup. (Take it to the post office to be certain).
- Post office stamps the mailing with a date in box on the mailing label.
- Wacky but: ANY paper (including patent apps) can be filed via express mail, and can receive the benefit of the filing date stamped by the post office, and there is no need to self-certify the mailing date (the post office is trusted by the USPTO). The certificate of mailing is a different thing from getting the benefit of the mailing date.
- What is the important difference? With a certificate of mailing/transmission, then even if the mail or USPTO loses the document, the applicant can still petition to get the error corrected and keep the date used on the certificate.
- The Mailing Label Number: This is a number that the post office gives to each express mailing. After Dec. 2, 1996 it is not required to be on each document in a mailing in order to benefit from the date of the mailing. However, if the number still must be on each document when there is a discrepancy between the date-in the Post Office gave, and the date the USPTO gave a document!
- The upshot: If nothing goes wrong, no need to have the mailing number on each document. If something does go wrong, the mailing label number must be on each document to be able to petition for correction.
- Discrepancies with the date in box and the date given a mailing by the USPTO:
- The applicant must file a petition to correct the error
- The applicant must show the Mailing Label Number was on each document sent to the USPTO prior to the mailing.
- As a practical matter, the label for the mailing should be selected and the number put on each document before sealing the envelope to mail the paper.
- Errors when the Post Office puts the wrong date in the date-in box:
- Easiest way: Make sure the post office employee puts the correct date on!
- Harder way: Petition for correction that must be filed promptly after learning of mistake.
- Mailing label numbers must again be on each document.
- Showing must be corroborated by docs from the USPS itself about the mailing. (Corporate Account Mailing Statement).
Dates on which the USPTO accepts docs:
- (Review): The USPTO will accept the doc either on the date it receives it, or if that date is a weekend/federal holiday then it will be considered as accepted on the next following business day.
- If there is a certificate of mailing/transmission and the doc is allowed to benefit from the earlier date, then the earlier date is used instead of the day the doc arrived at the USPTO.
- IMPORTANT: For an EXPRESS MAILING after Dec 2, 1996, under 37 CFR 1.6(a)(2) then EVEN IF the mailing is stamped by the post office with a date in that is a weekend or federal holiday, the USPTO will still use that date for the effective date.
- Deadlines: If a deadline is on a weekend or federal holiday, then the deadline is pushed back to the next business day.
- Wackiness with an ‘N month deadline’ . Say there is a 3 month deadline starting on Nov 30, meaning it will end in Feb. The due date (assuming no weekends are involved) is either Feb 28 or Feb 29 for leap years. If there is a deadline starting on the LAST day of a month, then it extends to the LAST day of the deadline month no matter if that month has more or fewer days. Nov. 29 is either Feb. 28 OR 29 (leap years). But: A 3 month deadline from Feb. 28 is still May 28 (last day of a short month does not push forward to last day of a longer month).