Hours of operation of EFS-Web will be clearly provided in the EFS-Web instructions when users log on to the system. The USPTO will post information on any scheduled down time due to system maintenance in advance. Users may file patent documents electronically during the hours of operation of EFS-Web every day of the week, including weekends and holidays. If the submission is successfully received (even on a Saturday, Sunday or Federal holiday within the District of Columbia), the USPTO will assign that receipt date to the submission.
If a transmission is attempted during a down time, i.e., the electronic filing system is unavailable, the USPTO cannot accept it and will, if possible, transmit back a notice that the USPTO is not accepting submissions. No Electronic Acknowledgement Receipt will be sent. Instead a notice will advise the user to use alternative filing methods, such as Priority Mail Express® from the USPS in accordance with 37 CFR 1.10 or hand delivery of paper to the USPTO, to establish the filing date. Note that applications filed under 37 CFR 1.53, international applications (PCT), international design applications, reexamination requests, and requests for supplemental examination cannot be submitted by facsimile transmission (37 CFR 1.6(d)(3) and (5) ), and that certificate of mailing procedures do not apply to new applications, copies of the international application and the basic national fees neccassary to enter the national stage as specified in 37 CFR 1.495(b) and reexamination requests (37 CFR 1.8(a)(2)(i)(A), (D), and (F) ). Users are strongly advised to transmit their electronic filings sufficiently early in the day to allow time for alternative paper filing when transmission cannot be initiated or correctly completed.
The USPTO will provide an EFS-Web Contingency option to users to file new applications, national stage submissions under 35 U.S.C. 371, requests for reexamination, requests for supplemental examination, and certain petitions when the primary portal to EFS-Web is unavailable during an unscheduled outage. The USPTO will post a notification of any unscheduled outage of the primary portal to EFS-Web and provide the link to EFS-Web Contingency on the EFS-Web Internet page www.uspto.gov/patents-application- process/applying-online/about-efs-web. The EFS-Web Contingency (www.uspto.gov/patents- application-process/applying-online/efs-web-contingency ) has the same functionality as EFS-Web for unregistered users. It permits users to sign on as unregistered EFS-Web users to file new applications, national stage submissions under 35 U.S.C. 371 submitted with the basic national fee necessary to enter the national stage, requests for reexamination, requests for supplemental examination and certain petitions. However, other follow-on documents and fee payments filed after the initial submission of the application, reexamination request, or supplemental examination request (e.g., amendments and replies to Office actions) cannot be filed using EFS-Web Contingency Option.
If systems that EFS-Web Contingency depend on are unavailable, submission types and features in EFS-Web Contingency may be unavailable (e.g., payment processing and data processing). If the USPTO payment system is unavailable, then online payment processing will be unavailable for EFS-Web Contingency (e.g., online payment option is not available for payment of the basic national fee with a national stage submission under 35 U.S.C. 371 ). If the Patent Application Locating and Monitoring (PALM) database is unavailable, then EFS-Web Contingency cannot access data for processing certain submission types. The unavailability of the PALM system may affect filing types such as national stage submissions under 35 U.S.C. 371 and ePetitions.
Specifically, EFS-Web Contingency Option only permits users to electronically file the following items:
· (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);
· (3) Nonprovisional design patent applications (see 35 U.S.C. 171 ) filed under 35 U.S.C. 111(a) ;
· (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;
· (8) Requests for supplemental examination under 35 U.S.C. 257 for utility, design, or plant patents;
· (9) Petitions to make special based on age under 37 CFR 1.102(c) when filed as an ePetition (for more information see www.uspto.gov/patents-application-process/ applying-online/epetition-resource-page );
· (10) Petitions to accept an unintentionally delayed payment of maintenance fee under 37 CFR 1.378(b) when filed as an ePetition, for the automatic processing of the ePetition (for more information see www.uspto.gov/patents-application-process/ applying-online/epetition-resource-page );
· (11) Petition to make special under the accelerated examination program (must be filed with a nonprovisional utility patent application under 35 U.S.C. 111(a) );
· (12) Reissue utility patent applications and reissue design patent applications;
· (13) 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 wherein the information is not directly placed into the application. See subsection I, below; and
· (14) 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 subsection I, below.
Documents filed via EFS-Web Contingency as part of the submissions previously listed must meet the same file format requirements established for EFS-Web, e.g., file size and PDF embedded-font requirements. The same file validation performed in EFS-Web will be performed in EFS-Web Contingency . Similar to EFS-Web, EFS-Web Contingency will provide an Electronic Acknowledgement Receipt that establishes the date of receipt by the USPTO of an application or document submitted via EFS-Web Contingency. The applicant is not required to, and should not, resubmit the application or document that was submitted via the EFS-Web Contingency Option when the primary portal to EFS-Web is once again available. Any resubmission of an application will result in filing a duplicate application and, if applicant pays the filing fees again when submitting the duplicate application, no refund will be provided. 35 U.S.C. 42.
Applications filed via EFS-Web Contingency are protected with the same level of security as EFS-Web for unregistered users by using Transport Layer Security (TLS) to encrypt transmission over the Internet. Registered users who have uploaded documents to a Saved Submission package in EFS-Web will not be able to access those Saved Submission documents through EFS-Web Contingency. Applicants can submit online fee payments by selecting fees on the fee calculation screen and completing their payment at the time of submission (i.e., choose the "Yes! I want to pay now" button rather than "No - I will pay later" button).
When the primary portal to EFS-Web is unavailable during an unscheduled outage, applicants may also file new applications, national stage submissions under 35 U.S.C. 371 submitted with the basic national fee necessary to enter the national stage, reexamination requests, and requests for supplemental examination by either hand-delivery to the USPTO, or Priority Mail Express® from the United States Postal Service (USPS) in accordance with 37 CFR 1.10, to establish the filing date or national stage submission date. New applications, national stage submissions under 35 U.S.C. 371 submitted with the basic national fee necessary to enter the national stage, reexamination requests, and requests for supplemental examination cannot be submitted by facsimile transmission and certificate of mailing procedures under 37 CFR 1.8 do not apply to these items.
The EFS-Web Contingency Option does not permit follow-on fee payments and follow-on documents other than those previously listed. Applicants may file the documents or fee payments by: (1) facsimile transmission in accordance with 37 CFR 1.6(d) and 1.8, (2) first class mail with a certificate of mailing in accordance with 37 CFR 1.8, (3) hand-delivery to the USPTO, or (4) Priority Mail Express® from USPS in accordance with 37 CFR 1.10. Documents that are required to establish the filing date of an application (e.g., a missing drawing figure or page of the specification) cannot be submitted by facsimile transmission, and certificate of mailing procedures under 37 CFR 1.8 do not apply to these documents.
As previously stated, EFS-Web Contingency and (EFS-Web for unregistered users) permits users to sign on as unregistered EFS-Web users to file new applications, national stage submissions under 35 U.S.C. 371 submitted with the basic national fee necessary to enter the national stage, requests for reexamination, requests for supplemental examination, and certain ePetitions. EFS-Web Contingency (and EFS-Web for unregistered users) have limited functionality, and do not permit users to file other follow-on documents and follow-on fee payments after the initial submission of the application, reexamination request, or supplemental examination request (e.g., amendments and replies to Office actions). Note that it is improper for registered and unregistered users to file follow-on documents as new applications. The USPTO provides answers to frequently asked questions, and other helpful information on the USPTO website. Users are encouraged to check the USPTO website for more information and contact the Patent Electronic Business Center for questions related to the usage of USPTO Patent Electronic Systems. When an applicant improperly files a follow-on document as a new application via EFS-Web Contingency (or EFS-Web) and wishes the USPTO to move the follow-on document to an existing intended application, a petition under 37 CFR 1.182 accompanied by the petition fee under 37 CFR 1.17(f) will be required in the intended application.
The basic national fee is required in order for an international application to enter the national stage under 35 U.S.C. 371. See 37 CFR 1.495. Users are permitted to submit the basic national fee with the national stage submission under 35 U.S.C. 371 via EFS-Web and EFS-Web Contingency using the USPTO payment page. If the payment system is unavailable, neither EFS-Web nor EFS-Web Contingency will permit users to make payment using the interactive payment interfaces. Applicant may pay the necessary national stage entry fees by including a written authorization to charge a deposit account the desired fees together with the national stage submission under 35 U.S.C. 371, or by sending the payment via Priority Mail Express® from the USPS in accordance with 37 CFR 1.10 on the same date that the national stage submission is electronically filed.
For any national stage submissions under 35 U.S.C. 371 filed via EFS-Web or EFS-Web Contingency, the system automatically checks the PALM system to verify that no previous national stage submission has been made for the particular international application (PCT) referenced in the initial national stage submission. If the PALM system is unavailable, neither EFS-Web nor EFS-Web Contingency can complete the PALM verification, and thus EFS-Web and EFS-Web Contingency will not permit any national stage submissions under 35 U.S.C. 371 to be filed. Therefore, if PALM is unavailable, applicants may use hand-delivery or Priority Mail Express® from the USPS in accordance with 37 CFR 1.10 to submit documents and fees for national stage entry. However, applicants may not file national stage submissions under 35 U.S.C. 371 or the basic national fee necessary to enter the national stage via facsimile transmission. See 37 CFR 1.6(d)(3) and 1.8(a)(2)(i)(F).
See subsection M, below, for additional information pertaining to the filing of international applications (PCT) and entry into the national stage under 35 U.S.C. 371.
One advantage of filing a patent application via EFS-Web is that a registered user may view his or her submission in Private PAIR and file a document directly into the application file on the same day as the filing date of the application. In certain situations, applicant may correct an error by filing a missing item(s) on the same day as the filing date of the application. Applicant, however, may wish to file a new application in other certain situations.
The following examples describe implications raised when applicant inadvertently omits an item when filing an application under 35 U.S.C. 111 electronically via EFS-Web:
· (1) Oath or Declaration - Applicant may file an executed oath or declaration on the same day as the filing date as the application via EFS-Web. The oath or declaration will not be considered late and a surcharge for filing a late oath or declaration will not be required.
· (2) Filing Fees - Applicant may file the filing fees (e.g., the basic filing fee, search and examination fees, application size fee, or excess claims fee) on the same day as the filing date of the application via EFS-Web. The fees will not be considered late and a surcharge for filing the filing fees will not be required.
· (3) Nonpublication request - Because 37 CFR 1.213(a)(1) requires any nonpublication request to be filed with the application, applicant cannot simply file the nonpublication request to correct the error. If applicant does not wish to have the application publish, applicant must file: (a) a new application with a nonpublication request; and (b) in the initial application, a petition for express abandonment to avoid publication under 37 CFR 1.138(c) and the fee under 37 CFR 1.17(h) in sufficient time to permit the appropriate officials in the Pre-Grant Publication Division to recognize the abandonment and remove the application from the publication process.
· (4) Drawings - Applicant may file missing drawings as a preliminary amendment on the same day as the filing date of the application. The drawings will be considered as part of the original disclosure of the application. See 37 CFR 1.115(a)(1). If the application was filed with the "wrong drawings," a preliminary amendment could be filed on the same day as the filing date of the application adding the correct drawings and deleting the "wrong drawings." An amendment adding new drawings and deleting the "wrong drawings," filed on a day after the filing date of the application may raise new matter issues.
· (5) Claims - Applicant may file claims as a preliminary amendment on the same day that applicant filed the application papers and such claims will be considered as part of the original disclosure of the application.
· (6) Part of the specification - Applicant may file any missing portion of the written description as a preliminary amendment on the filing date of the application. Such amendment will be considered as part of the original disclosure.
If applicant files a second application to correct an error in the first application, applicant will have filed two applications. Applicant may continue to prosecute the first application that has the error or abandon the first application by filing a petition for express abandonment. Please note that any fees paid in the first application will not be refunded or applied to the second application. Applicant may request refund of the search fee and any excess claims fees (but not the basic filing fee, examination fee, and application size fee) paid in the first application if the application was filed under 35 U.S.C. 111(a), and the applicant files a petition for express abandonment in accordance with 37 CFR 1.138(d).
Applicants may file patent applications electronically during the hours of operation of EFS-Web every day of the week, including weekends and holidays. EFS-Web will provide applicants with the opportunity to receive a filing date on any day of the week, including Saturday, Sunday, and Federal holidays. In addition, 35 U.S.C. 21(b) states:
When the day, or the last day, for taking any action or paying any fee in the United States Patent and Trademark Office falls on Saturday, Sunday, or a Federal holiday within the District of Columbia, the action may be taken, or fee paid, on the next succeeding secular or business day.
Further, 35 U.S.C. 119(e)(3) states, in pertinent part:
If the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the period of pendency of the provisional application shall be extended to the next succeeding secular or business day.
Thus, under United States law, applicants will be permitted to take action on the next business day when the last day for taking action falls on a weekend or Federal holiday within the District of Columbia, regardless of the mode or form of filing.
However, Article 4 of the Paris Convention addresses the priority period Article 4(C)(3) states:
If the last day of the period is an official holiday, or a day when the Office is not open for the filing of applications in the country where protection is claimed, the period shall be extended until the first following working day.
As previously stated, the USPTO is capable of accepting electronic patent application filings every day of the week, including weekends and holidays, through EFS-Web. Thus, applicants filing international applications with the United States Receiving Office or international design applications with the USPTO as an office of indirect filing are cautioned to consider possible adverse consequences regarding the determination in other countries of priority periods under Article 4(C)(3) of the Paris Convention. Specifically, the ability to file applications electronically on weekends and holidays in the USPTO could potentially result in loss of priority rights in foreign jurisdictions designated in either international applications filed under the PCT with the United States Receiving Office or international design applications filed with the USPTO as an office of indirect filing if applicants choose to avail themselves of 35 U.S.C. 21(b) or 119(e)(3). In such circumstances, other patent offices may deny the priority claim on the basis that the international application or international design application was not timely filed if their national law strictly incorporates the provision of Paris Convention Article 4(C)(3) such that it considers the USPTO to be open for the filing of applications on weekends and holidays. For this reason, applicants should consider whether to rely upon the "next business day" provisions of 35 U.S.C. 21(b) and 119(e)(3) when filing international applications or international design applications with the USPTO, and instead file the international application or international design application before the Paris Convention priority period has expired.
Users should follow the instructions and guidelines for EFS-Web provided on the USPTO website. Before clicking the SUBMIT button, the user should check whether the correct documents have been attached to the submission, and whether the information related to the submission has been entered correctly. Once the user clicks the SUBMIT button on the Confirm and Submit screen, the submission will be electronically sent to the USPTO. A submission is officially filed at the USPTO when the documents are received by the USPTO (the local time and date in Alexandria, VA, which is located in the Eastern Time zone). Use of EFS-Web in a manner significantly in violation of the instructions and guidelines for EFS-Web provided on the USPTO website and in this framework may result in non-entry of the submission or failure to accord a filing date in the event the USPTO does not fully, successfully, and officially receive all of the elements necessary to obtain a filing date for an intended submission. Furthermore, electronic files submitted via EFS-Web must be free of executables, worms, viruses, or any other type of potentially malicious content. Please note that under 18 U.S.C. 1030 users may not intentionally cause damage to federal government computers.
EFS-Web accepts standard PDF documents up to 25 megabytes for each file, and 60 electronic files per submission. For international design applications, EFS-Web can accept more than 60 electronic files in a single submission, subject to certain conditions. See subsection L.4. below for more information. PDF files created from scanned documents and submitted via EFS-Web must be created using a scanning resolution no lower than 300 dpi. Lower resolution scans have significantly delayed processing and publication of applications, e.g., resubmission has been required for documents failing to comply with the legibility requirements. See 37 CFR 1.52(a)(1)(v) and (a)(5) regarding document legibility requirements.
In addition, because the PDF format is so feature-rich, certain PDF features are currently not supported by the USPTO systems. For example, PDF documents with multiple layers must be flattened prior to submission to ensure that the complete document is received by the USPTO and readable to the examiner or other deciding officials. If a document contains layers that are marked as "invisible," the invisible layers will be lost when the document is processed by the USPTO, and thus the official records in IFW will not contain the information on the invisible layers. Furthermore, if a user enters information on a form using the PDF comments or annotations features, only the blank form without the PDF comments and annotations will be processed. Therefore, the complete document will not be officially filed at the USPTO and the user cannot rely on the Electronic Acknowledgement Receipt as evidence that the completed form was filed at the USPTO. Users are encouraged to check the contents of their submissions for completeness and accuracy via PAIR.
Users must follow the PDF Guidelines for EFS-Web and PDF Creation for EFS-Web (available on the USPTO website) to create and submit PDF files via EFS-Web to ensure that all of the information in the PDF files is successfully received and processed by the USPTO.
EFS-Web collects information from on-screen entries made by the user through the EFS-Web data collection interfaces. Through these data collection interfaces, the user provides the USPTO with information regarding the electronic submission, such as the type of application being filed, the application number of the application in which a follow-on document is being submitted, or the type of document being submitted. The USPTO systems (e.g., EFS-Web, IFW, etc.) will use the information entered by the user on the EFS-Web interfaces to automatically: (1) assign the application number, create the application, and process the application, if a new application is being filed; (2) upload the follow-on document into the application file specified by the user; or (3) message the deciding official based on the document description selected by the user. Providing incorrect information regarding the submission could lead to, for example: (1) an incorrect type of application file being created; (2) a delay in processing the document; (3) a document being filed in an incorrect application; or (4) the deciding official not recognizing the document in sufficient time to avoid publication, to withdraw the application from issue, or to avoid the abandonment of the application.
When a user is submitting a new application via EFS-Web, the user is required to select the application type (e.g., design, utility, provisional or nonprovisional) being filed on the EFS-Web interface. Only document descriptions and fee codes pertinent to the selected application type will be available for the submission. The system will also automatically generate the application number based on the user’s selection. For example, if the user indicates that the submission is a provisional application by selecting the EFS-Web option for a provisional application, the application will be assigned a provisional application number, provisional application fees will be collected or required, and the application will be further processed as a provisional application. Furthermore, the application will not be assigned to an examiner for examination and will not be published because the submission is processed as a provisional application. Therefore, it is important for the user to select the correct application type on the EFS-Web interface, and to review the Electronic Acknowledgement Receipt and the application file using PAIR after the submission is completed.
When a user submits a follow-on document (e.g., a reply to an Office action or notice) via EFS-Web, the user is required to enter the correct application number, control number or proceeding number, and confirmation number of the application in which the follow-on document is being filed. Providing the incorrect application number and confirmation number pair will result in filing the follow-on document in the wrong application and the intended application could become unintentionally abandoned for failure to reply to the Office action or notice, this also applies to reexamination proceedings and supplemental examination proceedings. Therefore, it is important for the user to enter the correct application number and confirmation number on the EFS-Web screen when filing the follow-on document. Furthermore, users cannot file a follow-on document as a new application.
After the submission of the follow-on document is completed, the user should log on to PAIR to review the application file and check whether the follow-on document has been filed in the correct application. Checking the application file via PAIR would also help the user to discover other filing errors, such as filing a wrong document or omitting a portion of the document.
Documents filed in the incorrect application may require a petition to expunge under 37 CFR 1.59 with the appropriate fee under 37 CFR 1.17(g) filed in the incorrect application or a petition to move the document under 37 CFR 1.182 with the appropriate fee under 37 CFR 1.17(f) filed in the intended application.
When a user submits an application or a follow-on document in an application using EFS-Web, the user must select from the list of document descriptions to specify the files being submitted via EFS-Web. For instance, when the user is filing a patent application, the submission must be separated into appropriate sections: specification, claims, abstract, and drawing; and when the user is filing an amendment, the user must select the appropriate type of amendment: amendment after non-final, amendment after allowance, preliminary amendment, and amendment after final. Based on the document description selected by the user, a document code is assigned and a message regarding the document submitted to the USPTO will be forwarded to the appropriate organization for processing, and to the appropriate official for consideration. Furthermore, the IFW and PAIR systems use the document code for identifying the document maintained in the application file. Therefore, accurate document indexing is important to facilitate efficient processing and proper consideration of the document by the USPTO. For example: (a) if the user indicated an after-final amendment as a non-final amendment, the processing of such amendment may be delayed and the examiner may not have sufficient time to consider the amendment before the time period for reply expires; (b) if the user selects the "Pre-Grant Publication" option on the EFS-Web data collection screen for submitting a substitute specification filed in response to a non-final Office action, the submission will be forwarded to the publication branch rather than processed into IFW and forwarded to the examiner for consideration; and (c) if the user selects "drawings - only black and white line drawings" for submitting color drawings in a utility application rather than "drawing - other than black and white line drawings", the color drawings would not be processed as color drawings, and would be maintained as black and white drawings in IFW.
More information on document indexing is available on the USPTO website. It is important for users to select the correct document description, and check the application file via PAIR after the submission is completed.
The USPTO will grant refunds to users when, due to a malfunction with the EFS-Web system, the EFS-Web system has misled a user into paying a fee in error. If it cannot be determined that a malfunction occurred, but rather it seems to be a user error, no refund will be given. Users should contact the Patent EBC if there are any issues associated with their submissions.
As the USPTO transitions its Patent Electronic System from EFS-Web and PAIR to Patent Center, changes have been made to the protocols for accessing EFS-Web and PAIR. PKI certificates are no longer being used, and have been replaced with a new authentication and log-in method for EFS-Web and PAIR to comply with the latest Federal Information Security Management Act (FISMA) requirements. The new authentication and log-in method is a two-step authentication paradigm requiring each individual registered user of EFS-Web or PAIR to have a unique USPTO.gov account. Users of Financial Manager may already have a USPTO.gov account.
A two-step authentication paradigm also will be implemented in the forthcoming Patent Center. The two-step authentication paradigm will be in effect during the interim period prior to full implementation of Patent Center.
Thus, the PKI authentication access system has been phased out and replaced by an authentication system in which each user must obtain his or her own credentials. A practitioner must be a registered user to sponsor support staff. Support staff for practitioners must obtain their own credentials and be sponsored by the practitioner who directs and controls the non-practitioner’s work. Credentials may only be used by the person to whom they are registered and assigned. Sharing of credentials is no longer permitted. More information on the new system may be found at the website for the Patent Electronic Business Center, located at https://www.uspto.gov/learning-and-resources/ support-centers/patent-electronic-business-center and "Authentication Change for EFS-Web and PAIR," located at https://www.uspto.gov/ patent/authentication-changes-efs-web-and-pair.
PKI certificates were usable through July 2, 2019. The information contained in the previous version of this section and in the PKI Subscriber Agreement remained applicable until that date.
Since January 18, 2019, under the new Patent Electronic System Verification process, to become a registered user, an individual creates a USPTO.gov account and completes the Patent Electronic System Electronic System Verification Form PTO-2042a, available on the USPTO website.
Inventors, applicants, and patent practitioners; i.e., patent attorneys and agents registered to practice before the USPTO, may obtain credentials to access the Patent Electronic System. No other person may access the Patent Electronic System unless they are sponsored by a patent practitioner. A patent practitioner may sponsor other individuals to access the Patent Electronic System so as to access information and file documents on behalf of that patent practitioner. Such sponsorship is limited to those individuals acting under the direction and control of that practitioner. The sponsoring practitioner will be responsible for the actions of each sponsored individual. Sponsorship is further limited to those individuals performing the role of support staff to the practitioner through an employment agreement, including contractual agreements.
Support staff individuals who are going to be sponsored by one or more patent practitioners will need to create an individual USPTO.gov account. A sponsored support staff individual acting under the direction and control of a patent practitioner may file documents signed by the practitioner via EFS-Web, in compliance with the Patent Electronic System Subscriber Agreement.
When a sponsoring relationship no longer exists (e.g., the practitioner or the sponsored support staff individual are no longer at the same firm) the sponsoring practitioner should remove the sponsorship.
Registered users are permitted to access and file via EFS-WEb follow-on documents in applications in which they are acting on behalf of the applicant, and in reexamination and supplemental examination proceedings in which they are acting on behalf of the owner. Note that pursuant to 37 CFR 1.31 juristic entity applicants must be represented by a patent practitioner.
Documents submitted through EFS-Web must be signed in accordance with 37 CFR 1.4, 1.33(b), and 11.18. Registered users who are joint inventors, or who represent less than all inventors or less than all applicants, may access their applications, but may not file documents lacking the signatures of all applicants unless specifically authorized under this framework. A sponsored support staff individual may file documents that are properly signed by the practitioner who directs and controls that individual’s work. Such a sponsored support staff individual, who is not an authorized party to sign the documents, is not responsible for the contents of the documents submitted. For all submissions through EFS-Web, the person who signs the documents (e.g., the applicant or a patent practitioner who is representing the applicant) is responsible for the contents. For example, the documents may be electronically signed or ink signed by the applicant or patent practitioner of record in accordance with 37 CFR 1.4(d). The sponsored support staff individual who serves the ministerial function of pickup and delivery of documents may submit the signed documents electronically via EFS-Web under the direction and control of the patent practitioner. (Ink signed documents can be electronically scanned and then e-filed.) This sponsored support staff individual may also view and retrieve documents from Private PAIR under the direction and control of that practitioner.
It also should be noted that the sponsored support staff individual could pay the fees associated with the submission in the EFS-Web process. This is comparable to the paper practice in which law firms designate individuals to pay fees.
Users that do not have, or do not wish to use, a Patent Electronic System Account to authenticate to the USPTO, may submit new application filings via a non-authenticated workflow as an unregistered user. The user would go to the EFS-Web page and choose to submit without a Patent Electronic System Account as an unregistered user, which would generate a TLS connection for the session, thus allowing secure data transmission to the USPTO. Unregistered users have the same level of protection for filing as a registered user, but are limited to submission of initial filings (except as noted in section B1). This practice minimizes the risk of improperly-filed third party submissions and other documents. Unregistered users may file follow-on documents by mail (with a certificate of mailing in accordance with 37 CFR 1.8 ), by Priority Mail Express® from the USPS in accordance with 37 CFR 1.10, or by hand delivery.
Note: Users are advised that the USPTO may revoke a user’s Patent Electronic System Account if the user makes an improper submission through EFS-Web. See section B of this framework. See also section 5 of the "United States Patent and Trademark Office Patent Electronic System Subscriber Agreement" (available at http://www.uspto.gov/patents/ process/file/efs/guidance).
The Patent Electronic System subscriber agreement (November 2018) explains that a holder of a Patent Electronic System account must update changes in the information in their Patent Electronic System Verification Form (Verification Form) within thirty (30) calendar days of the change. Information may be updated by submitting a new Verification Form and some information can be updated on the account holder’s USPTO.gov account profile.
A Patent Electronic System account holder may only use the account for applications for which the account holder is authorized to access; unauthorized use, such as attempting or gaining access to nonpublic information or inadvertently disclosed nonpublic information, may lead to immediate revocation of the Patent Electronic System Account. A Patent Electronic System account holder may only use the account for securing communication with the USPTO, and may not encourage or permit others to use or rely on their Patent Electronic System account log-in credentials.
A Patent Electronic System subscriber who is a practitioner may grant sponsorship to a reasonable number of practitioner support individuals to work on their behalf under their direction and control. A sponsoring practitioner must take reasonable steps to ensure that the access of each sponsored practitioner support individual is consistent with the tasks assigned to that individual. Such reasonable steps include removing sponsorship where appropriate, including where the individual leaves the practitioner’s organization or the contractor’s organization or when the contractor is no longer under contract to the practitioner or the practitioner’s organization.
Each of the practitioner support individuals who are sponsored must have their own USPTO.gov account and must not share accounts among other support staff individuals. Each sponsored practitioner support staff individual must only be an employee of the practitioner or an employee of practitioner’s organization, an individual under contract to the practitioner or the practitioner’s organization, or an employee of a contractor under contract to the practitioner or the practitioner’s organization.
A practitioner may only sponsor support staff individuals and may not sponsor any other individuals or organizations including a company, a group, a client, a practitioner (see 37 CFR 11.1), or an invention promoter (see 37 CFR 4.2(a)), to become users of the Patent Electronic System. A sponsoring practitioner is responsible for verifying the identity of any person who is sponsored as stated in the Patent Electronic System Access Document. A sponsoring practitioner may only sponsor a reasonable number of practitioner support individuals to work under their direction for whom he/she can maintain proper control.
A sponsoring practitioner must take reasonable steps to ensure compliance by each sponsored practitioner support person with the requirements set forth in the subscriber agreement, including the restrictions on the software use in section 6 and the restrictions on the export (including deemed export) of technology and software included in patent applications in section 7. If a sponsored practitioner support person is not a U.S. citizen, their access to the technology and software constitutes an export.
A sponsored practitioner support person’s access to the Patent Electronic System may not extend beyond those duties performed under the direction and control of a sponsoring practitioner.
A sponsored practitioner support person may only use their Patent Electronic System account to access, in an authorized support capacity, customer numbers and application information associated with their Patent Electronic System profile in accordance with the laws, regulations, and policies of the USPTO including this Legal Framework. A sponsored practitioner support person may only use or rely on their Patent Electronic System accounts for communication with the USPTO in compliance with the laws, regulations, and policies of the USPTO.
More information about the Patent Electronic System subscriber agreement is available on the USPTO website.
A law firm should promptly remove any practitioner who leaves the firm from the list of practitioners associated with the law firm's Customer Number. A practitioner leaving a law firm can also remove themselves from the law firm’s Customer Number.
Signatures included in image attachments submitted via EFS-Web are governed by the requirements of 37 CFR 1.4(d).
If the signer is submitting an application through EFS-Web as PDF files, he or she may apply either a handwritten signature in compliance with 37 CFR 1.4(d)(1) or an S-signature in compliance with 37 CFR 1.4(d)(2) before scanning the document or converting it to a PDF file. Alternatively, correspondence submitted through EFS-Web may be signed by a graphic representation of a handwritten signature as provided for in 37 CFR 1.4(d)(1) or a graphic representation of an S-signature as provided for 37 CFR 1.4(d)(2). See 37 CFR 1.4(d)(3). Follow-on documents, such as responding to a Notice to File Missing Parts of Nonprovisional Application or an amendment filed in an application, must also be signed in accordance with applicable requirements. See 37 CFR 1.33(b). Even though a new patent application is entitled to a filing date if it complies with all the statutory requirements set forth in 35 U.S.C. 111(a) or (b), it is noted that when filing a new application by EFS-Web, a signed transmittal form or a signed application data sheet (ADS) is recommended for identification purposes, and any nonpublication request and certification that accompanies the application must be signed. The correspondence address must be set forth in either an application data sheet or clearly set forth in another paper submitted with the application, which must be signed. See 37 CFR 1.33(a).
The presentation to the USPTO (whether by signing, filing, submitting, or later advocating) of any document constitutes a certification under 37 CFR 11.18(b). See 37 CFR 1.4(d)(4).
EFS-Web enables registered users to electronically submit pre-grant publication requests for amended publication, redacted publication, early publication, voluntary publication, or republication under 37 CFR 1.215, 1.217, 1.219, and 1.221(a) via EFS-Web. When filing pre-grant publication requests via EFS-Web, the appropriate form-fillable application data sheet (PTO/AIA/14 or PTO/SB/14) is required to be used for fulfilling the bibliographic data requirements. An electronic submission for voluntary publication, amended publication, republication (37 CFR 1.221(a) ) or redacted publication must be submitted as a "Pre-Grant Publication" by selecting the "Pre-Grant Publication" option on the EFS-Web data collection screen. It is not sufficient for a user to submit a document via EFS-Web requesting amended publication, redacted publication, voluntary publication, or republication without also selecting the "Pre-Grant Publication" option on the EFS-Web data collection screen.
While the Office may publish certain amendments in the pre-grant publication, to be entitled to have the patent application publication be based upon a copy of the application (specification, drawings, and the application data sheet and/or the inventor’s oath or declaration) as amended, applicant must supply such a copy via EFS-Web as previously set forth. See 37 CFR 1.215(c).
Patent owners may submit a request for supplemental examination via EFS-Web. When filing a new request for supplemental examination, the patent owner should select the filing option "New application/proceeding," and then select "Supplemental Examination." Any paper(s) that are to be filed in an existing supplemental examination proceeding, and any paper(s) that are to be filed in a reexamination proceeding ordered as a result of a supplemental examination proceeding, may be filed by: (1) selecting "Existing application/patent/proceeding" (e.g., a proceeding that has already been assigned a control number); (2) selecting "Documents/Fees for an existing application/proceeding"; and (3) entering the assigned control number and confirmation number for the proceeding.
Registered and unregistered users may submit a third-party preissuance submission for any non-provisional utility, design, or plant application, including any continuing application. The application may be pending or abandoned and need not be published. To submit a third-party preissuance submission, the option "Third-Party Preissuance Submission under 37 CFR 1.290 " must be selected. To submit a Third-Party Preissuance Submission, sign on to EFS-Web, and select the "Existing application/patent"option. The Web screen will expand to display additional options. Select the "Third-Party Preissuance Submission under 37 CFR 1.290 " option and enter the Application Number and Confirmation Number. The Confirmation Number can be obtained by viewing the application in the PAIR System. This places the submission in a segregated area separate from the application file. After review by appropriate USPTO personnel, the submission may be placed in the application file.
Registered and unregistered users may submit a prior art and/or written statement submission for entry into a patent file under 37 CFR 1.501. The patent must be enforceable for the submission to be entered. A submission into a patent file under 37 CFR 1.501 cannot be filed via EFS-Web in design or plant patents. To submit a 37 CFR 1.501 submission, select "Prior Art Submission into Patent File under 37 CFR 1.501 " and enter the Application Number and Patent Number. This places the submission in a segregated area separate from the patent file. After review by appropriate USPTO personnel, the submission may be placed in the patent file.
Interim copies of foreign priority documents as provided for in 37 CFR 1.55(j) may be submitted via EFS-Web in (i) applications filed under 35 U.S.C. 111(a), except for plant patent applications and design applications, and (ii) national stage applications under 35 U.S.C. 371. See 37 CFR 1.55 for details regarding claims for foreign priority, including the timing for submitting interim copies. See also MPEP § 215 et seq.
The following are Frequently Asked Questions (FAQs) regarding interim copies of foreign priority applications:
· 1. If an applicant submits an interim copy of a foreign priority application, will the applicant still need to provide a certified copy of the foreign priority document? How will an interim copy submission be reflected in the USPTO’s records?
· Yes. If an applicant files an interim copy of a foreign priority application, in com
