Q) Express mail (10.02.34p)

by Lizzie on April 28, 2009 · 7 comments

in Exam Concepts, Exam Questions

34. On Monday, May 13, 2002, John’s secretary deposited in an “Express Mail” drop box prior to the last scheduled pick-up for that day, an envelope properly addressed to the USPTO for delivery to the USPTO by the “Express Mail Post Office to Addressee” service. The envelope was received by the USPTO on Wednesday, May 15, 2002, containing a reply to an Office action which set a shortened statutory period (“SSP”) for reply ending on Tuesday, May 14, 2002. The reply was marked by the Office as being received on May 15, 2002. The number of the “Express Mail” mailing label had not been placed on the response papers, and upon receipt of the “Express Mail” mailing label John learned that the “date in” was not clearly marked. John promptly filed a petition requesting the filing date to be the date of deposit. The petition included a showing that the date of deposit accompanied by evidence of USPS corroboration of the deposit. Accordingly,

(A) The reply will be regarded as timely filed in the USPTO on May 15, 2002.

(B) The reply will be regarded as timely filed in the USPTO on May 14, 2002.

(C) The reply will be regarded as timely filed in the USPTO on May 13, 2002.

(D) The reply will be regarded as timely filed in the USPTO if a petition with proper fee for a one month extension of time is filed in the USPTO on or before June 14, 2002.

(E) The reply will be regarded as timely filed in the USPTO if the number of the “Express Mail” mailing label is placed on each page of a copy of the original response and hand carried to the USPTO on May 15, 2002, rather than being sent by “Express Mail.”

34. ANSWER: (D) is correct. 37 C.F.R. § 1.136(a). 37 C.F.R. § 1.136(a) states, “[A]pplicant may extend the time period for reply up to the earlier of the expiration of any maximum period set by statute or five months after the time period set for reply, if a petition for an extension of time and the fee set in § 1.17(a) are filed…” (A) is wrong because the response was not timely filed since it was received by the USPTO after the SSP expired. (B) and (C) are wrong. The reply was not filed on May 14, 2002, because the conditions of 37 C.F.R. § 1.10(b) were not satisfied. For example, the number of the “Express Mail” mailing label must have been placed on each page of the response prior to the original mailing by “Express Mail.” The petition should not be expected to be granted inasmuch as the papers did not include the number of the “Express Mail” mailing label on them. See § 1.10(c)(2), (d)(2), and (e)(2). (E) is wrong because 37 C.F.R. § 1.10(b) requires that “the number of the ‘Express Mail’ mailing label must have been placed on each page of the response prior to the original mailing by ‘Express Mail.’” Emphasis added.

{ 7 comments… read them below or add one }

1 StephenNo Gravatar August 14, 2010 at 2:56 pm

If the Express Mailing label had been placed on the response this still would have been filed late right? It says in the MPEP tough luck if the “date in” isn’t clearly marked. It says the applicant takes the risk of using express mail in a drop box. Any thoughts?

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2 PhirebirdNo Gravatar August 28, 2010 at 12:12 am

No, it looks like they leave an out in CFR 1.10(d). If applicant is not happy with the “date-in” stamp because he thinks it is incorrect or accidentally omitted, then he can petition to have a provable deposit date be used as the “date-in”/PTO receipt date. But that option requires that the Express Mailing label number be placed on all the correspondence.

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3 SolNo Gravatar March 31, 2012 at 2:14 am

You are right, label should be placed in case of dispute. Howver, a legible copy of mailing lable with “date-in” clearly marked is also required.

(b)Correspondence should be deposited directly with an employee of the USPS to ensure that the person depositing the correspondence receives a legible copy of the “Express Mail” mailing label with the “date-in” clearly marked. Persons dealing indirectly with the employees of the USPS (such as by deposit in an “Express Mail” drop box) do so at the risk of not receiving a copy of the “Express Mail” mailing label with the desired “date-in” clearly marked.

4 OverworkkedNo Gravatar April 22, 2011 at 1:04 pm

Note that CFR 1.136 lets you file for an extension of time even if you are past the shortened deadline. Thus all is not lost (yet).

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5 KFNo Gravatar November 2, 2011 at 1:25 pm

I really don’t understand why D is the correct answer. Where does the deadline of June 14th come from? Just because the original reply was due on May 15th and it took the practioner a month past that date to respond? Ok fine, but then how would a reponse on June 14th ever be considered timely as answer D states. Is it because if you are allowed an extension your answer becomes timely, vs. if, for example etensions were not allowed or say you were butting up against the 6 month statutory timeline you could NOT get an extension by requesting it and paying for it, thus not being timely?

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6 RickyNo Gravatar November 2, 2011 at 1:46 pm

KF, SSP is 1.136(a) extendable, and 1.136(a) allows you to file extension with reply, even after the deadline set by the examiner, so long as the total time will not exceed 6 months (SSP). And it looks like USPTO will always allow those extension since they can collect more money…….Therefore D is the correct answer, filing reply and one-month extension by June 14, which is the date one month later than orginal deadline May 14.

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7 RickyNo Gravatar November 2, 2011 at 1:50 pm

To make it more clear,” filing reply and two-month extension by July 14″, “filing reply and three-month extension by August 14″, would bethe correct answers, too.

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