The Office published a Patent Internet Usage Policy to :
· (A) establish a policy for use of the Internet by the Patent Examining Corps and other organizations within the USPTO,
· (B) address use of the Internet to conduct interview-like communications and other forms of formal and informal communications,
· (C) publish guidelines for locating, retrieving, citing, and properly documenting scientific and technical information sources on the Internet,
· (D) inform the public how the USPTO intends to use the Internet, and
· (E) establish a flexible Internet policy framework which can be modified, enhanced, and corrected as the USPTO, the public, and customers learn to use, and subsequently integrate, new and emerging Internet technology into existing business infrastructures and everyday activities to improve the patent application, examining, and granting functions.
See Internet Usage Policy, 64 FR 33056 (June 21, 1999). The Articles of the Patent Internet Usage Policy pertinent to communications via electronic mail are summarized below. See MPEP § 904.02(c) for information pertinent to Internet searching, and MPEP § 707.05(e) for information pertaining to the citation of electronic documents. See also MPEP § 713.04 for recordation of email interviews.
If security and confidentiality cannot be attained for a specific use, transaction, or activity, then that specific use, transaction, or activity shall NOT be undertaken/conducted.
All use of the Internet by Patent Organization employees, contractors, and consultants shall be conducted in a manner that ensures compliance with confidentiality requirements in statutes, including 35 U.S.C. 122, and regulations. Where a written authorization is given by the applicant for the USPTO to communicate with the applicant via Internet email, communications via Internet email may be used.
Backup, archiving, and recovery of information sent or received via the Internet is the responsibility of individual users. The OCIO does not, and will not, as a normal practice, provide backup and recovery services for information produced, retrieved, stored, or transmitted to/from the Internet.
Communications via Internet email are at the discretion of the applicant. All Internet communications between USPTO employees and applicants must be made using USPTO tools.
Without a written authorization by applicant in place, the USPTO will not respond via Internet email to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122. A paper copy of such correspondence and response will be placed in the appropriate patent application by the examiner. Except for correspondence that only sets up an interview time, all correspondence between the Office and the applicant including applicant's representative must be placed in the appropriate patent application. If an email contains any information beyond scheduling an interview, such as an interview agenda, it must be placed in the application. The written authorization may be submitted via EFS-Web, mail, or fax. It cannot be submitted by email .
For those applications where applicant wishes to communicate with the examiner via Internet communications, e.g., email or video conferencing tools, the following is a sample authorization form which may be used by applicant:
"Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file."
A written authorization for electronic communication may not be filed through an email communication. In limited circumstances the applicant may make an oral authorization for Internet communication. See MPEP § 713.01, subsection II.
A written authorization may be withdrawn by filing a signed paper clearly identifying the original authorization. The following is a sample form which may be used by applicant to withdraw the authorization:
"The authorization given on______, to the USPTO to communicate with any practitioner of record or acting in a representative capacity in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application via video conferencing, instant messaging, or electronic mail is hereby withdrawn."
To facilitate processing of the internet communication authorization or withdraw of authorization, the Office strongly encourages use of Form PTO/SB/439, available at www.uspto.gov/patent/patents-forms. The form may be filed via EFS-Web using the document description Internet Communications Authorized or Internet Communications Authorization Withdrawn to facilitate processing. The internet authorization must be submitted on a separate paper to be entitled to acceptance in accordance with 37 CFR 1.4(c). The separate paper will facilitate processing and avoid confusion.
A reply to an Office action or a paper requiring a signature may NOT be communicated by applicant to the USPTO via Internet email even if written authorization is on record. In order to ensure security and authorization for replies to Office actions and papers that require a signature, such replies and papers must be filed electronically using the USPTO patent electronic filing system (see MPEP § 502.05) or in paper. Where a written authorization is given by the applicant, communications via Internet email, other than replies to Office Actions under 35 U.S.C. 132 or papers that require a signature, may be used. In such case, a printed copy of the Internet email communications MUST be entered into One Patent Service Gateway (via Patent Data Portal) and entered in the patent application file (Doc Code is EMAIL). If a reply to an Office action is improperly submitted by applicant via Internet email, the email submission will not be accepted as an adequate reply to avoid abandonment under 35 U.S.C. 133 and 37 CFR 1.135. A copy of the email submission will be placed in the appropriate patent application file with an indication that the reply is NOT ENTERED.
USPTO employees are NOT permitted to initiate communications with applicants via Internet email unless there is a written authorization of record in the patent application by the applicant.
If applicant has authorized Internet communications, USPTO employees may respond to Internet email and initiate communications with applicants via Internet email.
All reissue applications are open to public inspection under 37 CFR 1.11(a) and all papers relating to a reexamination proceeding which have been entered of record in the patent or reexamination file are open to public inspection under 37 CFR 1.11(d). USPTO employees are NOT permitted to initiate communications with applicant in a reissue application or a patentee of a reexamination proceeding via Internet email unless written authorization is given by the applicant or patentee.
The misrepresentation of a sender’s identity (i.e., spoofing) is a known risk when using electronic communications. Therefore, Patent Organization users have an obligation to be aware of this risk and conduct their Internet activities in compliance with established procedures.
Email must be initiated by a registered practitioner, or an applicant in a pro se application, and sufficient information must be provided to show representative capacity in compliance with 37 CFR 1.34. Examples of such information include the attorney registration number, attorney docket number, and patent application number.
Similar to the policy set forth in MPEP 100 for handling telephone calls, when responding to an email, no information should be disclosed until the identity of the requester can be adequately verified. Examiners should verify the identity of the person by checking Patent Data Portal or the application file, such as checking the email address previously provided in Patent Data Portal or the application.
Once email correspondence has been received from the applicant, as set forth in Patent Internet Usage Policy Article 4, such correspondence must be responded to appropriately. The Patent Examiner may respond to an applicant’s email correspondence by telephone, fax, or other appropriate means.
Email and instant messaging shall NOT be used to conduct an exchange of communications similar to those exchanged during telephone or personal interviews unless a written authorization has been given under Patent Internet Usage Policy Article 5 to use Internet email. In such cases, a paper copy of the Internet email or instant messaging contents MUST be made and placed in the patent application file, as required by the Federal Records Act, in the same manner as an Examiner Interview Summary Form is entered.
USPTO video conferencing tools may be used to conduct examiner interviews in both published and unpublished applications under the Patent Internet Usage Policy. Authorization by the practitioner is required and must be obtained prior to sending a meeting invite using an official USPTO communication link or tools. Authorization is required to confirm that the practitioner is able to conduct a video conferencing interview and to confirm the email address to which the invitation must be sent. The practitioner’s participation in the interview is considered consent to the use of the video conferencing tool for the interview.
All Internet communications between USPTO employees and applicants must be made using USPTO tools. Video conferencing communications must be hosted by USPTO personnel. All interviews done by video conference must originate from USPTO links provided by the examiner. Links provided by the applicant from non-USPTO video conferencing tools are not acceptable to use for an interview. No personal phones, email, PDAs, etc. may be used by USPTO employees for Official communications.
Within the Patent Organization, any questions regarding Internet usage policy should be directed to the user’s immediate supervisor. Non-USPTO personnel should direct their questions to the Office of the Deputy Commissioner for Patent Examination Policy.
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· (b) Since each file must be complete in itself, a separate copy of every paper to be filed in a patent, patent file, or other proceeding must be furnished for each file to which the paper pertains, even though the contents of the papers filed in two or more files may be identical. The filing of duplicate copies of correspondence in the file of an application, patent, or other proceeding should be avoided, except in situations in which the Office requires the filing of duplicate copies. The Office may dispose of duplicate copies of correspondence in the file of an application, patent, or other proceeding.
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When the Office does not require duplicate copies of a paper, the filing of multiple copies may cause a delay in processing by the Office. Accordingly, the Office may discard duplicate copies of correspondence filed in an application or patent file.
[Editor’s Note: The following section is a substantial reproduction of the Legal Framework for Patent Electronic System published in October of 2019. Users are advised to review the Legal Framework for Patent Electronic System website at www.uspto.gov/patents-application-process/ filing-online/legal-framework-efs-web for updated versions.]
The October 2019 version of the Legal Framework for Patent Electronic System is posted on the USPTO website at www.uspto.gov/patents-application- process/filing-online/legal-framework-efs-web.
The Patent Electronic System currently comprises EFS-Web, which is the USPTO’s web-based system for electronic filing of patent correspondence; and PAIR, which is the USPTO’s web-based means for electronically viewing the status of, and documents filed in or associated with, patent applications and proceedings. The Patent Electronic System is accessible via the USPTO website.
Users may use the Patent Electronic System to access and file documents securely in a variety of applications and proceedings, including patent applications, applications for international registration of industrial designs, reexamination requests and proceedings, and supplemental examination requests and proceedings. The term "users" includes anyone who accesses the EFS-Web system, including inventors, third parties (who may submit some papers such as third party submissions via a dedicated interface), practitioners, and sponsored support staff. For purposes of readability, the term "application" is used in this document to represent any and all of the possible types of applications and proceedings, except where specifically noted otherwise. Users also may use EFS-Web to submit payments of most patent fees including patent application filing fees.
In particular, users may use the web-based interfaces of EFS-Web to submit documents in Portable Document Format (PDF) directly to the USPTO. All EFS-Web submissions are required to be in PDF unless otherwise indicated in this framework. EFS-Web permits submission of the following non-PDF formats: (1) the American Standard Code of Information Interchange (ASCII) plain text files (.TXT) to submit nucleotide and/or amino acid sequence listings, computer program listings, mega tables, and Complex Work Units; (2) zip compressed files to submit the request form generated by PCT-SAFE or ePCT in international applications filed under the Patent Cooperation Treaty (PCT) with the United States Receiving Office; and (3) JPEG reproductions in international design applications. See sections L, M, and N, respectively, of this Legal Framework for further information. (Note: All references to ASCII text in this document, whether specified or not, refers to ASCII plain text only.) Users need not provide a duplicate copy of any document filed through EFS-Web unless the USPTO specifically requires the filing of a duplicate in a particular situation.
The USPTO provides users with PDF EFS-Web-fillable forms, such as the Provisional Application for Patent Cover Sheet, the Information Disclosure Statement (IDS), the Application Data Sheet (ADS), the Petition to Make Special Under Accelerated Examination Program, and the Request for Continued Examination (RCE) Transmittal. When users submit information for an ADS or an IDS using an EFS-Web-fillable form (not a scanned image (PDF) of a document), the information will directly load into the USPTO databases, which will increase accuracy and facilitate faster processing. Users may use other USPTO-created PDF fillable forms available on the USPTO website, or user-created forms in PDF, and submit the completed forms via EFS-Web. The information entered on non-EFS-Web-fillable forms, however, will not be automatically loaded into the USPTO databases.
Users also may use EFS-Web to submit web-based documents, such as ePetitions, Requests for Withdrawal as Attorney or Agent of Record, and eTerminal Disclaimers. Such documents can be filled out completely online through web-based interfaces without the need for any fillable PDF form. These ePetitions, requests, and eTerminal Disclaimers are auto-processed and granted or approved immediately upon submission if the ePetition, request, or eTerminal Disclaimer meets all of the requirements. An ePetition, request, or eTerminal Disclaimer document is generated by EFS-Web based on the information entered into EFS-Web. The ePetition, request, or eTerminal Disclaimer, and a decision granting the ePetition or request, or an approval letter approving of the eTerminal Disclaimer, will be loaded into the electronic application file (i.e., the Image File Wrapper (IFW)), if the ePetition or request is granted, or if the eTerminal Disclaimer is approved. If the ePetition, request, or eTerminal Disclaimer does not meet all of the requirements, it will not be loaded into the electronic application file (i.e., IFW).
Users also may use EFS-Web to submit other documents, such as application data sheets, as web-based documents that can be filled out completely online through web-based interfaces without the need for any fillable PDF form. Documents submitted in this manner will be automatically loaded into the USPTO databases.
Users may review and check their electronic submissions, including their attached PDF files, before submitting the documents to the USPTO. After submitting the documents via EFS-Web, the system will display a page that states the USPTO has received the user’s submission and that provides an application number. Users of EFS-Web will receive an Electronic Acknowledgement Receipt (which can be printed or saved) of a successful submission received by the USPTO on their device, usually within a few minutes. A copy of the receipt is entered into the application file and may be obtained using PAIR. The processing of fees may delay the issuance of the Electronic Acknowledgement Receipt. The Electronic Acknowledgement Receipt is the electronic equivalent of a postcard receipt. See MPEP § 503. Most documents submitted via EFS-Web will be viewable by the registered user via Private PAIR within an hour after the USPTO receives the documents, if the user has associated the application with the user’s customer number. Therefore, users will immediately be able to check the contents of their applications for completeness and accuracy of their electronic submissions. Users may also choose to have an email sent to an email address with limited information such as the application number.
A user may become a registered user by first obtaining a USPTO.gov account and undergoing a required authentication process, detailed further in section E of this framework. All users - whether registered or not - can file most patent applications via EFS-Web. Registered users can also file follow-on documents in a patent application. However, an unregistered user can only file limited types of follow-on documents in a patent application (e.g., petitions to make special based on age and petitions to accept an unintentionally delayed payment of a maintenance fee). See section B of this framework for more information.
The USPTO website provides additional information on EFS-Web and PAIR, such as instructions, guidelines, frequently asked questions, and tutorials. Users may contact the Patent Electronic Business Center (Patent EBC) for assistance with EFS-Web and PAIR as well as for information for registration for two-step authentication and customer numbers.
This Legal Framework sets forth the USPTO’s policies concerning documents submitted electronically using EFS-Web, including patent applications, applications for international registration of industrial designs, reexamination requests and proceedings, and supplemental examination requests and proceedings, as well as follow-on documents for such applications, requests, and proceedings. Applicable regulations will be interpreted consistent with this framework for any document submitted electronically using EFS-Web.
EFS-Web permits registered users (see section E) and unregistered users to file the following applications, requests for reexamination, and documents:
· (1) Provisional patent applications filed under 35 U.S.C. 111(b).
· (2) Nonprovisional utility patent applications filed under 35 U.S.C. 111(a), which can include other papers such as Track One requests or accelerated examination requests on initial filing.
· (3) Nonprovisional design patent applications filed under 35 U.S.C. 111(a) (see 35 U.S.C. 171 ).
· (4) International applications filed under the PCT in the United States Receiving Office (see 35 U.S.C. 361 ).
· (5) Submissions to enter the national stage under 35 U.S.C. 371.
· (6) International design applications filed under the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (see 35 U.S.C. 382 ).
· (7) Requests for ex parte reexamination under 35 U.S.C. 302 for utility or design patents, as a new submission (i.e., not in the patent file).
· (8) Requests for supplemental examination under 35 U.S.C. 257 for utility, design, or plant patents, as a new submission (i.e., not in the patent file).
· (9) Third-Party Preissuance Submissions under 35 U.S.C. 122(e) and 37 CFR 1.290 for utility, design, or plant patent applications using a dedicated EFS-Web interface, where the information is not directly placed into the patent file. See section I.
· (10) Citation of prior art and written statements in patent files under 37 CFR 1.501 for utility applications using a dedicated EFS-Web interface where the information is not directly placed into the patent file. See section I.
· (11) Petitions to make special based on age under 37 CFR 1.102(c).
· (12) Petitions to accept an unintentionally delayed payment of a maintenance fee under 37 CFR 1.378, and payments of maintenance fees when submitted with the petition.
· (13) Reissue utility patent applications and reissue design patent applications.
Registered users have the capability to file follow-on documents, via EFS-Web. No user, whether registered or unregistered, is permitted to file documents in applications, reexamination proceedings or supplemental examination proceedings in which they are not authorized. Authorization to act comes from being a practitioner of record or acting in a representative capacity pursuant to 37 CFR 1.32 and 1.34 respectively. Note however, that one is not permitted to file papers in an application or proceeding if they are not a practitioner of record or acting in a representative capacity (37 CFR 1.34 ), including third parties, or parties who represent less than all inventors or less than all applicants, unless specifically authorized under this framework (see section E).
Follow-on documents are any documents filed after the initial submission of the application, request for reexamination, or request for supplemental examination. Follow-on documents include, but are not limited to, the following: amendments, information disclosure statements (IDS), replies to Office actions and notices, evidence, petitions, and terminal disclaimers. Follow-on documents also include any documents submitted on the same day as the application, but after the initial submission. In addition, registered users may file a copy of a patent application (e.g., a copy of the amended specification including the claims, and drawings) for the purposes of publication of the application when filed with any of the following pre-grant (eighteen-month) publication requests via EFS-Web: amended publication under 37 CFR 1.215(c), redacted publication under 37 CFR 1.217, early publication under 37 CFR 1.219, and voluntary publication or republication under 37 CFR 1.221(a). See section G for more information on filing these publication requests via EFS-Web. In reexamination proceedings, both the reexamination requester and the patent owner may file documents via EFS-Web, if they are registered users. Registered users may also file a second or subsequent submission for patent term extension under35 U.S.C. 156 in a patent file via EFS-Web.
Unregistered users cannot file documents after the initial submission via EFS-Web, except for ePetitions to make special based on age and ePetitions to accept an unintentionally delayed payment of a maintenance fee. Unregistered users may file follow-on documents by mail (with a certificate of mailing in accordance with 37 CFR 1.8 ), Priority Mail Express® from the USPS in accordance with 37 CFR 1.10, or hand-delivery.
Amendments and other papers filed in an application must be signed. Any follow-on document must be signed in accordance with 37 CFR 1.33(b) and it must identify on the top page in a conspicuous location, the application number (consisting of the series code and the serial number, e.g., 07/123,456), the serial number and filing date assigned to that application by the Office, the international application number of the international application (PCT), or the international registration number of the international design registration. See 37 CFR 1.4, 1.5, and 1.33(b).
The following is a list of submission types that are not permitted to be filed using EFS-Web:
· (1) Plant patent applications (see 35 U.S.C. 161 ) filed under 35 U.S.C. 111(a) and follow-on documents associated with plant patent applications, other than third party preissuance submissions under 37 CFR 1.290, which may be submitted via a dedicated EFS-Web interface wherein the information is not directly placed into the application file.
· (2) Requests for Reexamination under 35 U.S.C. 302 for plant patents and documents associated with reexamination proceedings for plant patents.
· (3) Third party inquiries, petitions or papers, unless specifically authorized by this Legal Framework and filed in the manner required by the EFS-Web interface. See B1 discussed previously. For example, a third party may file a citation of prior art and written statements in patent files under 37 CFR 1.501 or a Third Party Preissuance Submission under37 CFR 1.290 via a dedicated EFS-Web interface; however, the filer must select the appropriate option identifying the type of submission or the submission will be improper. Third party filing of papers directly into an application, patent, or reexamination is not permitted under the regulations or this Legal Framework. The Office considers inappropriate any third-party inquiry or submission in an application that is not provided for in 37 CFR 1.290. Some examples of third party papers that may not be filed by EFS-Web or in paper include inquiries into the timing of future actions on an application, disputes over inventorship in an application, requests to change inventorship, correspondence address, a power of attorney, and 37 CFR 3.73 statements.
Note further that EFS-Web may not be used by third parties to file papers that have no right to entry in an application or proceeding under USPTO rules and procedures. For example, a third party is prohibited from filing a demand that the Office withdraw an application from issue under 37 CFR 1.313 on the basis of unpatentability of a claim, and may not attempt to use the Patent Electronic System to evade this prohibition.
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· (4) Initial submissions for patent term extension under 35 U.S.C. 156.
· (5) Correspondence concerning registration to practice as specified in 37 CFR 1.4(e).
· (6) Certified documents as specified in 37 CFR 1.4(f). See also 37 CFR 1.6(d)(2).
· (7) Certified copies of priority documents. An example of such a submission is a certified copy of a foreign patent application filed pursuant to 35 U.S.C. 119 and 37 CFR 1.55 or a certified copy of an international application filed pursuant to 35 U.S.C. 365 and 37 CFR 1.55.
· (8) Correspondence to be filed in an application subject to a secrecy order under 37 CFR 5.1 through 37 CFR 5.5. See also 37 CFR 1.6(d)(6).
· (9) Documents filed in contested cases and trials before the Patent Trial and Appeal Board (PTAB), except as the PTAB may expressly authorize. See also 37 CFR 1.6(d)(7).
· (10) Documents filed in contested cases and trials before the PTAB which are governed by 37 CFR part 41, subpart D and part 42, respectively. For example, petitions for inter partes review, post grant review, covered business method patent review, and derivation proceedings cannot be filed via EFS-Web, but instead are filed electronically via the USPTO Patent Trial and Appeal Board End to End System athttps://ptab.uspto.gov/#/login. See also 37 CFR 1.6(d)(3) and 1.8(a)(2)(i)(B) and (C).
· (11) Correspondence filed in connection with a disciplinary proceeding under 37 CFR part 11. See also 37 CFR 1.6(d)(3) and 37 CFR 1.8(a)(2)(iii)(A).
· (12) Maintenance fees submitted under 37 CFR 1.366 that are not submitted with a petition under 37 CFR 1.378 (see item 12 in subsection B.1 above). Patent owners may pay electronically using the Patent Maintenance Fees Storefront at https://fees.uspto.gov/MaintenanceFees. See MPEP § 2510 for information regarding the proper methods for submitting maintenance fees.
· (13) Assignment documents under 35 U.S.C. 261, which may be electronically filed using the Electronic Patent Assignment System (EPAS). Information regarding EPAS is available at: https://epas.uspto.gov.
· (14) Submissions that are not associated with a patent, patent application, international design application, reexamination proceeding, or supplemental examination proceeding.
· (15) Notices of appeal to a court, district court complaints, or other complaints or lawsuits involving the USPTO. See MPEP § 1216 for instructions on how to properly serve and/or file such documents seeking judicial review of a decision by the PTAB.
If a document or submission listed previously is submitted via EFS-Web, the document or submission will not be accorded a date of receipt and it will not be considered officially filed in the USPTO. Furthermore, no benefit will be given to a certificate of transmission under 37 CFR 1.8 for the document or submission.
Registered users may use EFS-Web to submit web-based documents such as ePetitions, Requests for Withdrawal as Attorney or Agent of Record, and eTerminal Disclaimers. These ePetitions, requests, and eTerminal Disclaimers are auto-processed and granted or approved immediately upon submission if the ePetition, request, or eTerminal Disclaimer meets all of the requirements. See the ePetition Resource Page at www.uspto.gov/ patents-application-process/applying-online/epetition- resource-page for a list of ePetitions.
Registered users may sign into EFS-Web and provide information in web-based interfaces. An ePetition, request, or eTerminal Disclaimer document (PDF) is generated by EFS-Web based on the information entered into EFS-Web. This document may be reviewed prior to submission to ensure accuracy. This document and a decision granting the ePetition or request, or an approval letter approving of the eTerminal Disclaimer, will be loaded into the electronic application file (i.e., IFW), if the ePetition or request is granted, or if the eTerminal Disclaimer is approved. If the ePetition, request, or eTerminal Disclaimer does not meet all of the formal requirements, it will not be accepted for submission and loaded into the electronic application file (i.e., IFW).
EFS-Web permits registered users (see subsection E, below) to file the following auto-processed ePetitions, requests, and eTerminal Disclaimers:
· 1. Request for withdrawal as attorney or agent;
· 2. Petition to withdraw an application from issue under 37 CFR 1.313, with some restrictions;
· 3. Petition for revival of an application under 37 CFR 1.137, with some restrictions;
· 4. eTerminal Disclaimers for nonprovisional utility applications under 37 CFR 1.321(b) and (c); and
· 5. Petition to correct assignee after payment of Issue Fee under 37 CFR 3.81(b).
EFS-Web permits registered and unregistered users (see subsection E, below) to file the following auto-processed ePetitions:
· 1. Petition to make special based on age under 37 CFR 1.102; and
· 2. Petition to accept unintentionally delayed payment of the maintenance fee under 37 CFR 1.378(b).
When the USPTO successfully receives PDF documents filed in accordance with the EFS-Web requirements, the USPTO will convert the PDF files submitted by users into Tagged Image File Format (TIFF) image files and then store the TIFF image files in the IFW as part of the official record, in addition to those drawings which are stored in the Supplemental Complex Repository for Examiners (SCORE) as part of the official record (i.e., color and grayscale drawings and drawings submitted in design applications). The USPTO also will store JPEG drawing files successfully received in international design applications in accordance with the EFS-Web requirements in SCORE as part of the official record. In addition, certain submissions filed as ASCII plain text files (e.g., sequence listings or computer program listings), are stored in SCORE as part of the official record. Accordingly, the official record for the patent application, international design application, reexamination proceeding, or supplemental examination proceeding comprises:
· (1) ASCII text documents and drawings stored in SCORE as previously set forth;
· (2) TIFF images of all other original documents as stored in IFW;
· (3) The Electronic Acknowledgement Receipt and the Electronic Patent Application Fee Transmittal, both of which contain information entered via the EFS-Web graphical user interface (GUI) data collection interfaces; and
· (4) TIFF images stored in IFW in international design applications generated from XML data received from the International Bureau.
The original documents submitted via EFS-Web (e.g., applications and reexamination and supplemental examination proceeding documents) are stored exactly as filed in an independent location. See subsection L. below for more information on ASCII text documents and subsections K. and M.2. below for information on color and grayscale drawings and subsection N below for information on international design applications. Submissions for pre-grant (eighteen-month) publication are forwarded to the Pre-Grant Publication Division and are not stored in IFW or SCORE as part of the official record of the patent application. See subsection G. below for more information on publication requests.
When filing a new application via EFS-Web, EFS-Web requires the input of certain application data. This includes the type of application being filed (e.g., nonprovisional application under 35 U.S.C. 111(a), U.S. national stage application under 35 U.S.C. 371, international application (PCT) or international design application), the title of the application (unless the application is an international design application), the name of an inventor or applicant, and a correspondence address. In addition, other application data, such as a docket number, may be provided.
Routing of the submission to the appropriate area of the Office for processing is based on the application type indicated in EFS-Web, and such indication will be treated as an instruction to treat the submission as the selected application type. Where the submission includes conflicting indications as to the type of application being filed, and there is no provision under the U.S. rules to resolve such conflict (see, e.g., 37 CFR 1.495(g) ), the submission may be treated in accordance with the indication provided in EFS-Web, and a petition under 37 CFR 1.182 with the appropriate fee under 37 CFR 1.17(f) may be required to correct the error. In the case of other conflicting information in the submission, the conflict will be resolved in accordance with the applicable regulations. For example, inventorship will be determined in accordance with the provisions of 37 CFR 1.41. Where no correspondence information is included in the submission, or the correspondence information was not made in accordance with the applicable regulations, the Office may use the application data furnished through EFS-Web for purposes of correspondence until corrected by the applicant. For example, the Office may use the correspondence address associated with a customer number entered through EFS-Web rather than an address furnished in an unsigned paper in the new application submission.
See 37 CFR 1.52(f)(2) and MPEP § 607 for the paper size equivalency for application size fee purposes. The paper size equivalency under 37 CFR 1.52(f)(2) for EFS-Web filings does not apply to the application size fee under 37 CFR 1.492(j) for national stage submissions under 35 U.S.C. 371. See MPEP § 1893.01(c).
Both unregistered and registered users may submit the filing fees (e.g., the basic filing fee, search fee, examination fee, and excess claims fee) using the online fee payment in EFS-Web at the time of filing a patent application, request for reexamination, or request for supplemental examination, and may submit fees for third party preissuance submissions under 37 CFR 1.290. Only registered users may submit payment of fees in a previously filed application, reexamination proceeding, or supplemental examination proceeding. EFS-Web permits users to electronically submit the payment of fees with a credit/debit card, USPTO deposit account, or electronic fund transfer. Users may also provide authorizations to charge fees to a deposit account with the documents being submitted electronically via EFS-Web (e.g., a fee transmittal letter or form PTO/SB/17). However, users should not submit a credit/debit card charge authorization including the Credit Card Payment Form (PTO-2038) electronically via EFS-Web, because the electronic submission automatically will be loaded into the application file in IFW, and the credit/debit card information may become part of the record of an application file that is open to public inspection.
A credit/debit card charge authorization transmittal (e.g., PTO-2038) may be submitted by facsimile transmission to the USPTO Central Facsimile (571) 273-8300, or sent via Priority Mail Express® from the United States Postal Service (USPS) in accordance with 37 CFR 1.10. Applicants must include the application number from the Electronic Acknowledgement Receipt to ensure that the fees are paid in the correct application. Facsimile submission of the basic national fee for a national stage application under 35 U.S.C. 371 is not accepted. Failure to timely pay the basic national fee prior to the expiration of 30 months from the priority date will result in abandonment of the international application for purposes of the U.S. national phase.
If an applicant wishes to submit the application filing fees on the filing date of a patent application to avoid the surcharge, the payment of the filing fees must be submitted and received by the USPTO before midnight ET on the filing date of the application. The previous paragraph discusses alternative methods that may be used instead of EFS-Web to pay the fees. Failure to pay the fees on the filing date of the application will result in a surcharge.
When the online fee payment in EFS-Web is unavailable, the following types of submissions cannot be filed via EFS-Web, since online fee payment must accompany the submission:
· (1) Petitions that require a fee for auto-processing by EFS-Web;
· (2) Pre-grant publication submissions under 37 CFR 1.211 to 1.221 that require a fee;
· (3) Third-party preissuance submissions under 37 CFR 1.290 that require a fee; and
· (4) Web-based Issue Fee Payment (Web 85b).
The Electronic Acknowledgement Receipt establishes the date of receipt by the USPTO of documents submitted via EFS-Web. The electronic documents are itemized in the Electronic Acknowledgement Receipt, which will contain a full listing of the documents submitted to the USPTO as described by the user during the submission process, including the count of pages and/or byte sizes for each document. Thus, the Electronic Acknowledgement Receipt is the electronic equivalent of the postcard receipt described in MPEP § 503.
The official application filing date will be noted on the filing receipt (37 CFR 1.54 ) after the submitted application parts are reviewed for compliance with 35 U.S.C. 111 (or for compliance with 35 U.S.C. 371 for entry into the U.S. national stage of an international application). The filing date of an application filed under 35 U.S.C. 111 via EFS-Web is based on the dates indicated on the Electronic Acknowledgement Receipt assuming that, after review, the documents submitted are found to be entitled to an application filing date. Likewise, the official reexamination filing date will be noted on the "Notice of Ex Parte Reexamination Request Filing Date" and the official supplemental examination filing date will be noted on the "Notice of Supplemental Examination Request Filing Date" after Central Reexamination Unit (CRU) review for filing date compliance, and is based on the dates indicated on the Electronic Acknowledgement Receipt.
If the official version of any document received by EFS-Web is lost, damaged or rendered unreadable and if it cannot be recovered from the stored files received by electronic submission, then the user will be promptly notified. Such events are expected to be rare. In that situation, the user may have to resubmit any lost document and petition for the original filing date. The user would be required to present: (1) the Electronic Acknowledgement Receipt; (2) a copy of the missing files as submitted; and (3) a signed petition accompanied by a statement stating that the attached files are the same as those originally submitted and mentioned in the Electronic Acknowledgement Receipt for that application number (e.g., a petition under 37 CFR 1.53(e) or 1.182 with the appropriate petition fee under 37 CFR 1.17(f) ).
The Electronic Acknowledgement Receipt and statement will serve as prima facie evidence that the resubmitted documents are the same as those submitted on the date of receipt, except when the document description used by the user does not match the document. For example, if an applicant originally filed a specification and a set of claims and used the correct document descriptions for a specification and a set of claims, then the Electronic Acknowledgement Receipt will serve as prima facie evidence that the applicant filed the specification and set of claims on the original filing date. However, if the applicant actually filed two sets of claims, i.e., no specification was filed,the Electronic Acknowledgement Receipt will not serve as prima facie evidence that the applicant filed a specification and a set of claims (even though the applicant used the document descriptions for a specification and a set of claims). Note the Electronic Acknowledgement Receipt only indicates that the USPTO received what was actually sent, as opposed to what may have been intended to be transmitted. Users should exercise the same care in preparing and preserving a copy of a submission in electronic form as in paper.
Follow-on documents filed in an application or reexamination proceeding after the initial filing of the application or request for reexamination will be accorded a receipt date, which is the date the follow-on document is received at the USPTO. See 37 CFR 1.6(a)(4).
A follow-on document required to be filed in the USPTO within a set period of time (e.g., a reply to an Office action) will also be considered as being timely filed if the follow-on document is submitted in compliance with the procedure set forth in 37 CFR 1.8(a):
· (1) The follow-on document is submitted via EFS-Web prior to expiration of the set period of time in accordance with the requirements for EFS-Web; and
· (2) The document includes a certificate of transmission stating the date of transmission and signed by a person that has reasonable basis to expect that the document would be transmitted on or before the date of transmission. See 37 CFR 1.8(a)(1)(i)(C) and (a)(1)(ii)
However, the certificate of transmission practice under 37 CFR 1.8 does not apply to the documents listed in 37 CFR 1.8(a)(2) (e.g., a document filed for the purpose of obtaining an application filing date).
The time and date of receipt of an application filed via EFS-Web is the local time and date in USPTO headquarters in Alexandria, Virginia. Accordingly, the date of receipt of an application officially submitted through EFS-Web will be the date in the Eastern Time zone when the USPTO received the submission. As such, the submission’s "date of receipt," as shown on the Electronic Acknowledgement Receipt, is the Eastern Time zone date that the documents are fully, successfully, and officially received at the USPTO, after the user clicks the SUBMIT button on the Confirm and Submit screen. See 37 CFR 1.6(a)(4). This date is controlling for filing date purposes of a newly filed application. There is no "certificate of transmission" practice for new application filings (37 CFR 1.8 ). <
