Q) Certificate of Mailing (4.03.29a)

by admin on April 10, 2010 · 6 comments

in Exam Questions

Question #29 from the April 2003 (AM) patent bar exam is reported by exam takers as a question in the current exam database.

29. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following papers is precluded from receiving the benefit of a certificate of mailing or transmission under 37 CFR 1.8?
(A) An amendment, replying to an Office action setting a period for reply, transmitted by mail with a certificate of mailing to the USPTO from a foreign country.
(B) An amendment, replying to an Office action setting a period for reply, transmitted by facsimile with a certificate of transmission to the USPTO from a foreign country.
(C) An information disclosure statement (IDS) under 37 CFR 1.97 and 1.98 transmitted after the first Office action.
(D) A request for continued examination (RCE) under 37 CFR 1.114.
(E) An appeal brief.


ANSWER: (A) is the most correct answer. See MPEP § 512, which states “The Certificate of Mailing procedure does not apply to papers mailed in a foreign country.” (B) is not correct. See MPEP § 512. Certificate of transmission procedure applies to correspondence transmitted to the Office from a foreign country and an amendment is not prohibited from being transmitted by facsimile and is not precluded from receiving the benefits under 37 CFR § 1.8. (C) is not correct. See MPEP § 609, under the heading “Time for Filing.” An IDS will be considered to have been filed on the date of mailing if accompanied by a properly executed certificate of mailing or facsimile transmission under 37 CFR § 1.8. (D) is not correct. See MPEP § 706.07(h) Comparison Chart. An RCE is entitled to the benefit of a certificate of mailing or transmission under 37 CFR § 1.8. (E) is not correct. See MPEP § 1206. An appeal brief is entitled to the benefit of a certificate of mailing or transmission under 37 CFR § 1.8 because it is required to be filed in the Office within a set time period which is 2 months from the date of appeal.

{ 6 comments… read them below or add one }

1 PHOSITANo Gravatar February 25, 2011 at 5:42 pm

how does this jive with the current 37 CFR § 1.8(2)(i)(c): “(2) The procedure described in paragraph (a)(1) of this section does not apply to, and no benefit will be given to a Certificate of Mailing or Transmission on, the following:
(i) Relative to Patents and Patent Applications-
(C) Papers filed in contested cases before the Board of Patent Appeals and Interferences, which are governed by § 41.106 (f) of this title;”
???

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2 PHOSITANo Gravatar February 25, 2011 at 5:44 pm

So it seems like (E) should be a possibly answer.

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3 ELSNo Gravatar March 5, 2011 at 5:07 pm

Just guessing, but maybe it’s because you send the Appeal Brief to the Examiner rather than the Board? I don’t know if this is the case, but it would make sense because the examiner reviews the Appeal Brief for compliance with formalities before the Board gets it.

4 BigbadvoododaddyNo Gravatar July 11, 2011 at 3:07 pm

It is my belief that a contested case would imply two parties as opposed to a single party appealing before the board.
see section 41
41.100 Definitions.
In addition to the definitions in § 41.2, the following definitions apply to proceedings under this subpart:
Business day means a day other than a Saturday, Sunday, or Federal holiday within the District of Columbia.
Involved means the Board has declared the patent application, patent, or claim so described to be a subject of the contested case.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
§ 41.101 Notice of proceeding.
(a)Notice of a contested case will be sent to every party to the proceeding. The entry of the notice initiates the proceeding.
(b)When the Board is unable to provide actual notice of a contested case on a party through the correspondence address of record for the party, the Board may authorize other modes of notice, including:
(1)Sending notice to another address associated with the party, or
(2)Publishing the notice in the Official Gazette of the United States Patent and Trademark Office.

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5 littleyellowduckNo Gravatar July 11, 2011 at 5:41 pm

This is a so hard question. 500-79 right column, 3rd line
The certificate of mailing procedure does not apply to papers mailed in a foreign country.

The certificate of transmission procedure, for both faacsimile and via EFS-Web, however, also applies to papers transmitted to the office from a foreign country provided that the correspondence being transmitted or via EFS-Web and is nnot otherwise precluded from receiving the benefit under 37 CFR 1.8

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6 fengyuwuzuNo Gravatar October 11, 2011 at 4:40 pm

but the logic is so simple: USPS has different express system from foreign country, and it is hard to control the delivery of international mails

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