Q) File by Fax (4.03.5a)

by admin on April 9, 2010 · 8 comments

in Exam Questions

Question #5  from the April 2003 (AM) patent bar exam is reported by exam takers as a question in the current exam database.

5. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following may not be filed by facsimile transmission?
(A) A request for continued examination under 37 CFR 1.114 along with a submission.
(B) A continued prosecution application under 37 CFR 1.53(d).
(C) An amendment in reply to a non-final Office action.
(D) The filing of a provisional patent application specification and drawing for the purpose of obtaining an application filing date.
(E) (B) and (D).

ANSWER: (D) is the most correct answer. 37 CFR § 1.6(d)(3); MPEP § 502.01. MPEP § 501.01, under the heading “Correspondence Relative To Patents And Patent Applications Where Filing By Facsimile Transmission Is Not Permitted,” identifies among the correspondence not permitted to be filed by facsimile transmission “(B) A national patent application specification and drawing (provisional or nonprovisional) or other correspondence for the purpose of obtaining an application filing date, other than a continued prosecution application filed under 37 CFR 1.53(d)” (A), (B) and (C) are incorrect. See 37 CFR § 1.6(d)(3); MPEP §§ 201.06(d), 502.01, 706.07(h) and 714. A request for continued examination (RCE) under 37 CFR § 1.114, which is not a new application, a continued prosecution application (CPA) under 37 CFR § 1.53(d) and an amendment in reply to a non-final Office action may be filed by facsimile transmission.

{ 7 comments… read them below or add one }

1 mdavis68No Gravatar April 13, 2010 at 7:03 am

502.01 Correspondence Transmitted by Facsimile

Facsimile transmissions are not permitted and, if submitted, will not be accorded a date of receipt in the following situations:

(1) Correspondence as specified in § 1.4(e), requiring an original signature;

(2) Certified documents as specified in § 1.4(f);

(3) Correspondence which cannot receive the benefit of the certificate of mailing or transmission as specified in § 1.8(a)(2)(i)(A) through (D) and (F), and § 1.8(a)(2)(iii)(A), except that a continued prosecution application under § 1.53(d) may be transmitted to the Office by facsimile;

(4) Color drawings submitted under §§ 1.81, 1.83 through 1.85, 1.152, 1.165, 1.173, or 1.437;

(5) A request for reexamination under § 1.510 or § 1.913;

(6) Correspondence to be filed in a patent application subject to a secrecy order under §§ 5.1 through 5.5 of this chapter and directly related to the secrecy order content of the application;

(7) [Reserved]

(8) [Reserved]

(9) In contested cases before the Board of Patent Appeals and Interferences except as the Board may expressly authorize

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2 mdavis68No Gravatar April 13, 2010 at 7:04 am

37 CFR 1.6(d) specifies the types of correspondence which may be transmitted by facsimile. These would include CPAs filed under 37 CFR 1.53(d) (available for design applications only), amendments, declarations, petitions, information disclosure statements (IDS), terminal disclaimers, notices of appeal and appeal briefs, requests for continued examination (RCEs) under 37 CFR 1.114, assignment documents, issue fee transmittals and authorizations to charge deposit accounts.

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3 LMNo Gravatar March 28, 2011 at 6:30 am

BUT Certificate of Mailing is NOT available to CPA

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4 SolNo Gravatar March 31, 2012 at 3:21 pm

Certificate of mailing or certificate of transmission is NOT available to CPA, but CPA can be mailed or faxed. Basically, you can mail or fax CPA but no benefit of certificate, i.e., the date accorded is the receipt date not the certified mailing or transmission date (i.e., the so-called benefit).

5 KerstinNo Gravatar January 22, 2012 at 10:28 pm

Just an FYI…I don’t think 37.1.6(d) lists what things CAN be faxed, rather it sets out what CANNOT be faxed. Not sure where MDavis68 got that list from because I don’t see if in 37.1.6(d), if it will save you the time spent looking for it.

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6 Churning Away NoMoreNo Gravatar July 1, 2012 at 2:51 pm

Got this. 06.30.2012

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7 youngNo Gravatar May 17, 2016 at 5:43 pm

37 CFR 1.8 sets forth circumstances where a Certificate of Mailing or Transmission cannot be used. This list includes all applications including a CPA.

37 CFR 1.6 sets forth the list of documents for which facsimile transmissions are NOT PERMITTED. This list includes all documents for which a Certificate of Mailing or Transmission cannot be used (which would include a CPA as noted above) but specifically excludes a CPA.

So, CPA may be filed via fax, but if faxed on a holiday, it will be accorded a filing date of the next business day.

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