When applicants are required to submit drawings in patent applications, black and white line drawings as prescribed in 37 CFR 1.84(a)(1) are required except as follows. Pursuant to 37 CFR 1.84(a)(2), color drawings are permitted in design applications filed under 35 U.S.C. chapter 16. As stated in 37 CFR 1.84(a)(2) color drawings are not ordinarily permitted in utility patent applications, and as stated in 37 CFR 1.84(b), photographs are not ordinarily permitted in utility or design patent applications, but the USPTO will accept photographs in utility or design patent applications, or color drawings in utility patent applications, if they are the only practicable medium for illustrating the claimed subject matter. The photographs and color drawings submitted in utility or design patent applications must be of sufficient quality such that all details in the photographs and drawings are reproducible in black and white in the printed patent.
Drawings submitted in international applications (PCT) are required to comply with PCT Rule 11.13, which does not permit color drawings. Furthermore, there is no provision for photographs in international applications. Nevertheless, black and white photographs will be accepted where it is impossible to present in a drawing what is to be shown (e.g., crystalline structures). Color photographs are not permitted in international applications. Applicants should, where possible, adhere to PCT Rule 11.13 and provide any necessary explanation of relevant colors in the description, since black and white drawings may be required by some offices in the national phase. Providing drawings and photographs in black and white will also help avoid receiving an invitation from the United States Receiving Office (RO/US) to comply with PCT Rule 11.13. Furthermore, the RO/US converts color drawings/photographs into black and white TIFF images, and such conversion may result in details being lost. Similarly, the International Bureau will, for international publication purposes, convert color drawings/photographs into black and white (not grayscale), which may result in details being lost. Consequently, conversion from color to black and white could impact the disclosure of the invention in the international application and affect the processing of the international application in the international and national phases.
Color drawings and photographs (in black and white or in color) may be submitted in international design applications as provided under section 401 of the Administrative Instructions for the Application of the Hague Agreement. See subsection N for additional information concerning international design applications.
The USPTO may object to the drawings and photographs, and require corrections or deletions if they do not comply with 37 CFR 1.84 or PCT Rule 11.13. The USPTO will accept color drawings or photographs in utility applications only after granting a petition explaining why the color drawings or photographs are necessary (37 CFR 1.84 ). Additionally, because color drawings are not permitted in international applications (PCT), color drawings and color photographs filed in a national stage application under 35 U.S.C. 371 will be treated as an amendment and will be objected to if they introduce new matter.
Black and white line drawings may be submitted via EFS-Web in the types of applications and proceedings listed in subsection B.1., above. However, photographs, color drawings, grayscale drawings, and other drawings that are not black and white line drawings may be submitted via EFS-Web in only the following types of applications and proceedings:
· (1) Nonprovisional design patent applications, including reissue design patent applications;
· (2) Provisional applications under 35 U.S.C. 111(b);
· (3) Nonprovisional utility patent applications under 35 U.S.C. 111(a), including reissue utility patent applications;
· (4) U.S. national stage applications under 35 U.S.C. 371;
· (5) International design applications;
· (6) Reexamination proceedings for utility or design patents;
· (7) Supplemental examination proceedings under 35 U.S.C. 257.
Only black and white photographs, and black and white line drawings, may be submitted via EFS-Web in international applications (PCT).
Users must select the correct document description when submitting photographs and drawings via EFS-Web. Selecting an incorrect document description may cause the photographs and drawings to be processed in a quality that is not sufficient for examination and publication. Applicant must select:
· (1) "Drawings – only black and white line drawings" (document code "DRW") for the following:
· (a) Black and white line drawings in:
· (i) provisional applications under 35 U.S.C. 111(b);
· (ii) nonprovisional utility patent applications under 35 U.S.C. 111(a), including reissue utility patent applications;
· (iii) international applications (PCT) and national stage applications under 35 U.S.C. 371; and
· (iv) reexamination proceedings for utility patents.
· These drawings will be converted into TIFF images and stored in IFW.
· (b) Black and white line drawings in design applications, including reissue design patent applications, international design applications, and reexamination proceedings for design patents. These drawings will be stored in SCORE, and a black and white copy will be stored in IFW along with a SCORE placeholder sheet.
· (2) "Drawings – other than black and white line drawings" (document code "DRW.NONBW") for the following:
· (a) Photographs, color drawings, grayscale drawings, and other drawings that are not black and white line drawings in:
· (i) provisional applications under 35 U.S.C. 111(b);
· (ii) nonprovisional utility and design patent applications under 35 U.S.C. 111(a), including reissue utility and design patent applications;
· (iii) national stage applications under 35 U.S.C. 371;
· (iv) international design applications;
· (v) reexamination proceedings for utility patents and design patents; and
· (vi) supplemental examination proceedings.
· These drawings will be stored in the Supplemental Complex Repository for Examiners (SCORE), and a black and white copy will be stored in IFW along with a SCORE placeholder sheet.
· (b) Black and white photographs, and grayscale drawings, in international applications (PCT). These drawings will be stored in SCORE, and a black and white copy will be stored in IFW along with a SCORE placeholder sheet.
For color drawings in utility patent applications, a petition filed under 37 CFR 1.84(a)(2) explaining why the color drawings are necessary is required. See MPEP § 608.02. Pursuant to 37 CFR 1.84(a)(2)(ii), only one set of such color drawings is necessary when filing via EFS-Web.
EFS-Web supports the use of black and white, color, or grayscale images within the PDF document. However, grayscale or color images filed as "drawings - other than black and white line drawings" in a utility patent application will be electronically converted to black and white images when stored into IFW. The quality of black and white images may be degraded. To obtain sufficient quality so that all details in the images are reproducible in black and white in the eighteen-month publication and the printed patent, images should be scanned at a minimum resolution of 300 DPI. Furthermore, PAIR is only capable of displaying portrait orientation. Users should not submit landscape oriented drawings via EFS-Web because PAIR will automatically convert the image to portrait, which may cause the images to be distorted during viewing.
For international design applications, EFS-Web supports the use of black and white, color, or grayscale images within a JPEG document. To obtain sufficient image quality for purposes of WIPO publication of the international application and any subsequent U.S. patent that may issue thereon, image resolution should be between 250x250 DPI to 300x300 DPI. In addition, the images should have at least a one pixel border, and preferably a border of between 1-20 pixels. See subsection N for further information concerning reproductions in international design applications.
All of these types of documents may be submitted as ASCII text files with a ".txt" extension (e.g., "seqlist.txt") for applications filed under 35 U.S.C. 111, national stage applications under 35 U.S.C. 371, reexamination proceedings, and supplemental examination proceedings. The compact disc practice of 37 CFR 1.52(e) and 1.821 et seq. remains as a filing option. The filing of international applications (PCT) via EFS-Web is discussed in subsection M., below.
As discussed in MPEP § 608.05, users may submit the following document types, (specified in 37 CFR 1.52(e) ), as ASCII text files via EFS-Web instead of on compact disc, provided the specification contains a statement in a separate paragraph that incorporates by reference the material in the ASCII text file identifying the name of the ASCII text file, the date of creation, and the size of the ASCII text file in bytes:
· (1) A computer program listing (see 37 CFR 1.96 );
· (2) A sequence listing (submitted under 37 CFR 1.821 ); or
· (3) Any individual table (see 37 CFR 1.58 ), if the table is more than 50 pages in length, or if the total number of pages of all of the tables in an application exceeds 100 pages in length. A table page is a page printed on paper in conformance with 37 CFR 1.52(b) and 1.58(c).
If the "Sequence Listing" required by 37 CFR 1.821(c) was submitted in ASCII text format in an international application (PCT), indicated on the Request as part of the international application, and published as part of the international application for which national stage is entered under 35 U.S.C. 371, then no further submission, amendment, or incorporation by reference into the specification is required.
The requirements of 37 CFR 1.52(e)(3)-(6) for documents submitted on compact disc are not applicable to computer program listings, sequence listings, and tables submitted as ASCII text files via EFS-Web. However, each text file must be in compliance with ASCII and have a file name with a ".txt" extension. Further, the specification must contain an incorporation-by-reference of the material in the ASCII text file in a separate paragraph identifying the name of the ASCII text file, the date of creation, and the size of the ASCII text file in bytes similar to the requirements of 37 CFR 1.52(e)(5) and 1.77(b)(5) for compact discs. See MPEP § 608.05 .
It is recommended that a sequence listing be submitted in an ASCII text file via EFS-Web rather than in a PDF file. If a sequence listing ASCII text file submitted via EFS-Web on the application filing date complies with the requirements of 37 CFR 1.824(a)(2)-(6) and (b), and applicant has not filed a sequence listing in a PDF file (or on paper) on the same day, the text file will serve as both the paper copy required by 37 CFR 1.821(c) and the computer readable form (CRF) required by 37 CFR 1.821(e). Thus, the following are not required and should not be submitted: (1) a second copy of the sequence listing in a PDF file; (2) a statement under 37 CFR 1.821(f) (indicating that the paper copy and CRF copy of the sequence listing are identical); and (3) a request to use a compliant computer readable "Sequence Listing" that is already on file for another application pursuant to 37 CFR 1.821(e). If such a request is filed, the USPTO will not carry out the request but will use the sequence listing submitted in an ASCII text file on filing of the application via EFS-Web. Checker software that the applicant may use prior to submission to check a sequence listing for compliance with the requirements of 37 CFR 1.824 is available on the USPTO website at www.uspto.gov/patents-getting-started/patent-basics/ types-patent-applications/utility-patent/checker- version-446. The User Notes on the Checker website should be consulted for an explanation of errors that are not indicated, and content that is not verified, by the Checker software.
See subsection M.5. below for more information on the sequence listing in international applications (PCT) and national stage applications under 35 U.S.C. 371.
If a user submits a sequence listing (under 37 CFR 1.821(c) and (e) ) as an ASCII text file via EFS-Web in response to a requirement under 37 CFR 1.821(g) or (h), the sequence listing text file must be accompanied by a statement that the submission does not include any new matter which goes beyond the disclosure of the application as filed. In addition, if a user submits an amendment to, or a replacement of, a sequence listing (under 37 CFR 1.821(c) and (e) ) as an ASCII text file via EFS-Web, the sequence listing text file must be accompanied by: (1) a statement that the submission does not include any new matter, and (2) a statement that indicates support for the amendment in the application, as filed. See 37 CFR 1.825. The specification must be amended to contain an incorporation-by-reference statement of the sequence listing in both of these instances.
Submission of the sequence listing in a PDF file on the application filing date is not recommended. Applicant must still provide the CRF text file required by 37 CFR 1.821(e), and the sequence listing in the PDF file will not be excluded when determining the application size fee. The USPTO prefers the submission of a sequence listing in an ASCII text file via EFS-Web on the application filing date because as previously stated, if applicant has not filed a second copy of the sequence listing in a PDF file (or on paper) on the same day, the text file will serve as both the paper copy required by 37 CFR 1.821(c) and the CRF required by 37 CFR 1.821(e). Any sequence listing submitted in PDF format (or on paper) on the application filing date is treated as the paper copy required by 37 CFR 1.821(c). If applicant submits a sequence listing in both a PDF file and an ASCII text file via EFS-Web on the application filing date, a statement that the sequence listing content of the PDF copy and the ASCII text file copy are identical is required. In situations where applicant files the sequence listing in PDF format and requests the use of the CRF of another application under 37 CFR 1.821(e), applicant must submit a letter and request in compliance with 37 CFR 1.821(e) and a statement that the PDF copy filed in the new application is identical to the CRF filed in the other application.
Any sequence listing submitted as an ASCII text file via EFS-Web that is otherwise in compliance with 37 CFR 1.52(e), 1.824(a)(2)-(6) and (b), and any computer program listing submitted as an ASCII text file via EFS-Web that is otherwise in compliance with 37 CFR 1.52(e) and 1.96, will be excluded when determining the application size fee required by 37 CFR 1.16(s) as per 37 CFR 1.52(f)(1).
Regarding a table submitted as an ASCII text file via EFS-Web that is part of the specification or drawings, each three kilobytes of content submitted will be counted as a sheet of paper for purposes of determining the application size fee required by 37 CFR 1.16(s) or 1.492(j). Each table should be submitted as a separate text file. Further, the file name for each table should indicate which table is contained therein.
One hundred (100) megabytes is the size limit for sequence listing text files submitted via EFS-Web. If a user wishes to submit an electronic copy of a sequence listing text file that exceeds 100 megabytes, it is recommended that the user file the application without the sequence listing using EFS-Web to obtain the application number and confirmation number, and then file the sequence listing text file on compact disc in accordance with 37 CFR 1.52(e) on the same day by using Priority Mail Express® from the USPS in accordance with 37 CFR 1.10, or by hand delivery, in order to secure the same filing date for all parts of the application. Note: a submission of a sequence listing in electronic form of 300 MB or more in size is subject to the fee set forth in 37 CFR 1.21(o). Alternatively, a user may submit the application on paper and include the electronic copy of the sequence listing text file on compact disc in accordance with 37 CFR 1.52(e). Sequence listing text files may not be partitioned into multiple files for filing via EFS-Web as the EFS-Web system is not currently capable of handling such submissions. The sequence listing must be in a single ASCII plain text file. A sequence listing ASCII plain text file that does not fit on a single compact disc may be split into multiple file parts for subsequent reassembly of the single ASCII plain text file using software designed for that purpose. If the sequence listing is submitted on multiple compact discs, the compact discs must be labeled to indicate their order (e.g., "1 of X", "2 of X").
For nearly all other file types, 25 megabytes is the size limit. If a user wishes to submit an electronic copy of a computer program listing or table that is larger than 25 megabytes, it is recommended that the electronic copy be submitted on compact disc via Priority Mail Express® from the USPS in accordance with 37 CFR 1.10 on the date of the corresponding EFS-Web filing in accordance with 37 CFR 1.52(e) if the user wishes the electronic copy to be considered to be part of the application as filed. Alternatively, the user may submit the application on paper and include the electronic copies on compact disc in accordance with 37 CFR 1.52(e). Another alternative would be for the user to break up a computer program listing or table file that is larger than 25 megabytes into multiple files that are no larger than 25 megabytes each and submit those smaller files via EFS-Web. If the user chooses to break up a large computer program listing or table file so that it may be submitted electronically, the file names must indicate their order ( e.g., "1 of X", "2 of X").
The exceptions to the 25-megabyte size limit are JPEG image files submitted via EFS-Web in international design applications and PDF image files submitted in international design applications using the "Attach Reproductions" section of the "Attach Documents" EFS-Web screen. These are limited to a file size of two megabytes. See subsection N, below for additional information concerning international design applications.
The file number limit per submission is sixty (60) electronic files, as EFS-Web is not currently capable of accepting more than 60 electronic files in any one submission (subject to certain exceptions for international design applications set forth in the next paragraph). Accordingly, if an application file includes more than 60 electronic files, it is recommended that the user submit 60 or fewer files in an initial filing via EFS-Web at which time the application will be assigned an application number. Note that regarding the 60 electronic file limit, an applicant may upload and validate in sets of up to 20 files each, with a limit of three sets of 20 files. If applicant chooses to divide a file into multiple parts using the multi-doc feature, each part is counted as one file. Then the user may submit any additional electronic files as follow-on documents later on the same day as the initial filing. This will allow all of the electronic files making up the application to receive the same filing date.
For international design applications, the limit of 60 electronic files per submission excludes electronic files of reproductions that are attached via the "Attach Reproductions" section of the "Attach Documents" screen in EFS-Web (available for submissions through the USPTO as an office of indirect filing prior to transmittal of the application to the International Bureau) or are attached via the "Attach JPEG Reproductions" section of the "Attach Documents" screen in EFS-Web (available after transmittal of an international design application to the International Bureau or, where the USPTO was not an office of indirect filing, after receipt of the WIPO publication of an international design application designating the United States). The "Attach Reproductions" section allows up to 5000 (up to 100 designs with 50 views per design) additional single-page PDF and JPEG image files to be uploaded in one submission. The "Attach JPEG Reproductions" section allows up to 50 additional JPEG image files to be uploaded in one submission. See subsection N for further information concerning international design applications.
Under the Complex Work Unit Pilot Program, complex work units (such as chemical structure drawings, mathematical formulae, and three-dimensional protein crystalline structure data and table data) may be submitted as ASCII text files via EFS-Web for applications filed under 35 U.S.C. 111, national stage submissions under 35 U.S.C. 371, reexamination proceedings, and supplemental examination proceedings. Complex work units cannot be submitted as ASCII text files in international applications (PCT). More information is available on the USPTO website at www.uspto.gov/patent/initiatives/complex- work-unit-pilot-program.
The term "international application (PCT)" as used in this framework refers to an international application filed under the PCT. The term "national stage submission" as used in this subsection of the framework refers to an international application (PCT) designating the United States where a submission has been made to enter the U.S. national stage under 35 U.S.C. 371.
EFS-Web enables users to electronically file international applications (PCT) with the United States Receiving Office (RO/US). The required page size for international applications (PCT) filed via EFS-Web in PDF format is A4 (29.7 cm x 21 cm). See PCT Rule 11.5. See subsection M.7., below, for more information about follow-on submissions during the international phase.
EFS-Web permits users to submit zip files created by PCT-SAFE or ePCT. A zip file created using PCT-SAFE or ePCT will contain the PCT Request and a fee calculation sheet in PDF format, which are converted to TIFF images and loaded into the image file wrapper by the USPTO. PCT-SAFE and ePCT users may create and electronically sign using an S-signature the PCT Request, including the Declaration of Inventorship, for the purposes of filing via EFS-Web with the United States Receiving Office. PCT-SAFE and ePCT users may create a .zip file containing a validated PCT Request which will entitle the applicant to a reduction of the international filing fee when the PCT-SAFE or ePCT zip file is included in a new international application (PCT) filed with the United States Receiving Office via EFS-Web. See Use of WIPO's ePCT System for Preparing the PCT Request for Filing as Part of an International Application With the USPTO as Receiving Office, 81 FR 27417 (May 6, 2016). Alternatively, if the applicant chooses not to use PCT-SAFE or ePCT to create the PCT Request and fee calculation sheet, the applicant may use Form PCT/RO/101 (or equivalent) for the Request and attach the PDF file to the EFS-Web submission.
All other documents including application parts (e.g., description, claims, drawings and abstract) and accompanying items must be separately prepared as PDF files and attached to the EFS-Web submission.
See subsection M.5., below, for more information on sequence listings.
More information regarding filing international applications (PCT) is available on the USPTO website (www.uspto.gov/patents/process/file/efs/ guidance/indexing-pct-new-appl.pdf ).
Drawings submitted in international applications (PCT) are required to comply with PCT Rule 11.13, which does not permit color drawings. Furthermore, there is no provision for photographs within the PCT Regulations. Nevertheless, black and white photographs will be accepted where it is impossible to represent in a drawing what is to be shown (e.g., crystalline structures). Color photographs are not permitted in international applications (PCT). See also subsection K.1, above.
The United States Receiving Office may invite the applicant to correct any defects in the drawings or photographs if they do not comply with PCT Rule 11.13.
Since color drawings and color photographs are not permitted in international applications (PCT)), color drawings and color photographs filed in a national stage application will be treated as an amendment and will not be entered if they introduce new matter. See 37 CFR 1.121(d) and (f) and subsection K.1., above, regarding a petition to accept color drawings.
The basic national fee is required in order for an international application (PCT) 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 using the USPTO payment page.
If the payment system is unavailable, EFS-Web will not permit users to make payment using the interactive payment interface. The applicant may pay the basic national fee by either (a) including a written authorization to charge the fee to a deposit account together with the national stage submission under 35 U.S.C. 371, (b) hand-delivering the fee payment, or (c) 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. However, applicants may not submit the basic national fee via facsimile transmission. See 37 CFR 1.6(d)(3) and 1.8(a)(2)(i)(F).
For more information on fees associated with national stage submissions under 35 U.S.C. 371, see MPEP § 1893.01(c).
New National Stage Submission: For any new national stage submissions under 35 U.S.C. 371 filed via EFS-Web, 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 new national stage submission. EFS-Web users should confirm that the correct international application (PCT) number is entered on the EFS-Web screen to insure that the correct international application (PCT) is initialized as a national stage application. If the PALM system finds a previous national stage submission has been made, the user will be given a warning message and an opportunity to verify, and correct if necessary, the referenced international application (PCT) number. If the PALM system is unavailable, EFS Web cannot complete the PALM verification, and thus EFS-Web will not permit a new national stage submission under 35 U.S.C. 371 to be filed. Therefore, if PALM is unavailable, applicants may send a new national stage submission by hand delivery, or by Priority Mail Express® from the USPS in accordance with 37 CFR 1.10, to timely submit documents and fee(s) for national stage entry. Applicants may not file either a copy of the international application or the basic national fee necessary to enter the national stage as specified in 37 CFR 1.495(b) via facsimile transmission. See 37 CFR 1.6(d)(3) and 1.8(a)(2)(i)(F).
It is recommended that applicants continue to use the Transmittal Letter to the United States Designated/Elected Office (DO/EO/US) Concerning a Submission Under 35 U.S.C. 371 (Form PTO-1390) when electronically filing documents for entry into the U.S. national stage under 35 U.S.C. 371. The PTO-1390 Form includes useful information that is not otherwise collected by EFS-Web at this time. EFS-Web users should confirm that the correct international application (PCT) number is entered on the EFS-Web screen to help insure that the correct international application (PCT) is initialized as a national stage submission. A petition under 37 CFR 1.182 with the appropriate fee under 37 CFR 1.17(f) may be required to correct inconsistencies in the international application (PCT) number indicated in the submission to enter the national stage under 35 U.S.C. 371
An application data sheet is recommended for new national stage submissions.
If a timely submission to enter the national stage of an international application (PCT) is compliant with the conditions of 35 U.S.C. 371 and other applicable requirements, Form PCT/DO/EO/903 indicating acceptance of the application as a national stage submission under 35 U.S.C. 371 will be issued in addition to the filing receipt.
Under PCT Rule 5.2(a), the sequence listing must always be presented as a separate part of the description. When filing an international application (PCT) using EFS-Web, the sequence listing part of the description may be submitted either as a single ASCII text file with a ".txt" extension (e.g., "seqlist.txt") or as a PDF file. Note that 100 megabytes is the size limit for submitting a sequence listing text file via EFS-Web. If the sequence listing is submitted as an ASCII text file, applicant need not and should not submit any additional copies. The single ASCII text file is preferred because the ASCII text file will serve both as the sequence listing part of the description under PCT Rule 5.2 and the electronic form under PCT Rule 13ter.1(a) in the absence of a PDF sequence listing file. The check list of the PCT Request provided via EFS-Web together with the international application (PCT) must indicate that the sequence listing forms part of the international application. Furthermore, the statement as set forth in paragraph 4(v) of Annex C (Administrative Instructions under the PCT, AI Annex C), that "the information recorded in electronic form furnished under Rule 13ter is identical to the sequence listing as contained in the international application," is not required. Also the sequence listing in an ASCII text file will not be taken into account when calculating the application sheet count, i.e., no excess sheet fee will be required for the sequence listing text file.
Submission of the sequence listing part of the description in a PDF file is not recommended because the applicant would also be required to supply a copy of the sequence listing in an ASCII text file to the appropriate authority for purposes of international search and/or international preliminary examination in accordance with paragraph 40 of AI Annex C. When a sequence listing is filed via EFS-Web in a new international application (PCT) in both a PDF file and an ASCII text file, but the Request form Box No. IX does not indicate which one forms part of the international application, the PDF copy of the sequence listing will be considered to form part of the application and the ASCII text file will be considered an accompanying item for search purposes under PCT Rule 13ter.1(a) only. The pages of the PDF file that contain the sequence listing will be taken into account when calculating the application sheet count, i.e., excess sheet fees may be required for the PDF file.
One hundred (100) megabytes is the size limit for sequence listing text files submitted via EFS-Web. Sequence listing text files must not be partitioned into multiple files for filing via EFS-Web as the EFS-Web electronic filing system is not currently capable of handling such submissions. For all other file types EFS-Web is currently not capable of accepting files that are larger than 25 megabytes. Additionally, a single EFS-Web submission may include no more than 60 electronic files. Note that, regarding the limit of 60 files, an applicant may upload and validate in sets of up to 20 files each, with a limit of three sets of 20. If applicant chooses to divide a file into multiple parts using the multi-doc feature, each part is counted as one file. The need to submit unusually large sequence listings and/or numerous electronic files may prevent applicant from making a complete international application (PCT) filing in a single EFS-Web submission. Registered EFS-Web users may file part of the international application (PCT) to obtain the international application (PCT) number and the confirmation number, and then file the remainder of the international application (PCT) on the same day as one or more follow-on submissions using EFS-Web, in order to secure the same filing date for all parts of the international application (PCT).
In the situation where applicant needs to file a sequence listing that is over one hundred (100) megabytes, applicant may use EFS-Web to file the international application (PCT) without the sequence listing to obtain the international application (PCT) number and the confirmation number, and then file the sequence listing on compact discs on the same day by using Priority Mail Express® from the USPS in accordance with 37 CFR 1.10, or by hand delivery, in order to secure the same filing date for all parts of the international application (PCT). However, Priority Mail Express® from the USPS and hand delivered submissions must not contain PDF files and must fully comply with the guidelines for filing a sequence listing on electronic media as set forth in MPEP § 2422.03(a), subsection IV. The check list of the PCT Request provided via EFS-Web together with the international application (PCT) should indicate that the sequence listing part of the description will be filed separately on physical data carrier(s), on the same day and in the form of an Annex C/ST.25 text file. The sequence listing must be in a single ASCII plain text file. Where a sequence listing ASCII plain text file does not fit on a single compact disc software may be may used to prepare multiple concatentated file parts for submission on multiple compact discs. If the sequence listing is submitted on multiple compact discs, the compact discs must be labeled to indicate their order (e.g., "1 of X", "2 of X"). This allows the multiple parts to automatically join and form the single ASCII plain text file when the properly labeled multiple compact discs are subsequently processed by the USPTO.
The calculation of the international filing fee for an international application (PCT), including a sequence listing, filed via EFS-Web is determined based on the type of sequence listing file. A sequence listing filed in an ASCII text file will not be included in the sheet count of the international application (PCT). A sequence listing filed in a PDF file will be included in the sheet count of the international application (PCT). Therefore, the sheet count for an EFS-Web filed international application (PCT) containing both a PDF file and a text file sequence listing will be calculated to include the number of sheets of the PDF sequence listing.
There is no provision for computer program listings in ASCII text file in international applications (PCT).
Tables related to a sequence listing must be an integral part of the description of the international application (PCT), and must not be included in the sequence listing part or the drawing part. Such tables will be taken into account when calculating the application sheet count, and excess sheet fees may be required. When applicant submits tables related to a sequence listing in an international application (PCT) via EFS-Web, the tables must be in a PDF file. If applicant submits tables related to a sequence listing in a text file, such tables will not be accepted as part of the international application (PCT). For more information, see Sequence Listings and Tables Related Thereto in International Applications Filed in the United States Receiving Office, 1344 Off. Gaz. Pat. Office 50 (July 7, 2009).
As previously noted, a sequence listing in an ASCII text file, as well as additional PDF files, may be submitted in one or more follow-on submissions via EFS-Web. Such follow-on submissions will form part of the international application (PCT) if filed on the same date on which the international application (PCT) was filed. Note that follow-on submissions of PDF files (including, but not limited to, PDF sequence listings) may change the number of pages in the international application (PCT) and therefore may affect the international filing fee.
EFS-Web may also be used to submit a sequence listing in an ASCII text file after the international filing date in response to a requirement made by the United States International Searching Authority or United States International Preliminary Examining Authority under 37 CFR 1.821(h) and PCT Rule 13ter. Such sequence listing will not form part of the PCT international application as set forth in PCT Rule 13ter.1(e).
EFS-Web employs a Web-based approach to document submission which is different from the AI Annex F "wrapped, bundled and signed package" approach. Thus EFS-Web does not meet the AI Annex F requirements. See Annex F of the PCT Administrative Instructions located at www.wipo.int/pct/en/texts/.
The term "international design application" as used in this framework refers to an application for international registration of an industrial design filed under the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs ("Hague Agreement"). The term "Rule" as used in this subsection refers to the "Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement" (as in force on January 1, 2019).
EFS-Web enables registered and unregistered users to electronically file new international design applications through the USPTO as an office of indirect filing. To submit an international design application through EFS-Web, users must select "International Design Application (Hague) for filing through the USPTO as an office of indirect filing" after selecting "New application/proceeding" on the main EFS-Web screen. The following documents should be included in new international design application submissions:
Applicants filing international design applications through the USPTO are required to present the international design application on the official form established by the International Bureau (i.e., Form DM/1, entitled "Application for International Registration") or on any form having the same form and content as the official form. Form DM/1 is available on the website of the International Bureau at www.wipo.int/hague/en/forms/. The DM/1 form includes boxes for providing information concerning the applicant, applicant’s entitlement to file an international design application, the creator, product identification, designations of Contracting Parties, priority claim, description, and other relevant information.
Users should use the document description "App for Intl Registration (DM/1 or equiv)" for a DM/1 form (or equivalent) submitted via EFS-Web. For new international design application submissions, EFS-Web will check for the presence of the document description for the DM/1 form when upload and validation functions are performed and, if not present, will alert the user that the DM/1 form is not indicated as being attached. EFS-Web will not block submission of a new international design application based on the missing document description. If the DM/1 form document description is present, EFS-Web will prompt the user to verify that the DM/1 form indicates applicant’s entitlement to file the international design application through the USPTO as an office of indirect filing. The USPTO will not transmit an international design application to the International Bureau if applicant’s entitlement to file the application through the USPTO is not indicated in the submission.
Reproductions of industrial designs are required in international design applications and may be submitted as drawings, photographs, or a combination thereof, and may be in black and white or in color. See Rule 9 and Part Four of the Administrative Instructions for the Application of the Hague Agreement. Reproductions may be submitted through EFS-Web as PDF or JPEG files as set forth in the next paragraphs. Technical requirements regarding image files, such as resolution, minimum and maximum image size, border width, etc., are also set forth on the website of the International Bureau at www.wipo.int/hague/en/how_to/ file/prepare.html.
Reproductions may be submitted as single page PDF or JPEG files by attaching the file(s) using the "Attach Reproductions" section of the "Attach Documents" screen. Alternatively, applicants may attach reproductions as PDFs (including multi-page PDFs) using the "Attach Documents other than Reproductions" section of the "Attach Documents" screen. Attaching compliant reproductions via the "Attach Reproductions" section, rather than the "Attach Documents other than Reproductions" section, may help to avoid incurring additional per page publication fees that might otherwise be required by the International Bureau. Each image file attached through the "Attach Reproductions" section should contain only one view of the design. The "Attach Reproductions" section will prompt the user to assign a design and view number to each file attached under this section.
In accordance with the technical requirements set forth by the International Bureau, EFS-Web will not permit submission of any PDF or JPEG file via the "Attach Reproductions" section that exceeds a file size of two megabytes. For JPEG submissions, EFS-Web will provide warnings where requirements pertaining to image resolution and minimum and maximum dimensions have not been satisfied; EFS-Web does not check color mode or border size for JPEG images. For PDF submissions via the "Attach Reproductions" section, EFS-Web will not permit submission of any PDF file that is more than one page. In addition, EFS-Web does not check color mode, border size, resolution, or maximum or minimum dimensions of the reproduction (other than certain minimum and maximum page size dimensions) for PDF images. It is the responsibility of applicants to ensure that reproductions satisfy all applicable requirements.
Users attaching reproductions under either the "Attach Reproductions" section or the "Attach Documents other than Reproductions" section should use the document description "drawings – only black and white line drawings" or "drawing – other than black and white line drawings", as appropriate. EFS-Web will provide a warning to users about the possibility of incurring additional per page publication fees where reproductions are attached via the "Attach Documents other than Reproductions" section. EFS-Web will also provide a warning to users where a new international design application does not contain an indication that at least one reproduction is attached.
An international design application may be accompanied by annexes submitted for the purpose of complying with certain national law requirements that may be applicable to a designated Contracting Party, for example, the requirement for an inventor’s oath or declaration where the United States is designated. Annex forms specific to particular Contracting Parties are available on the website of the International Bureau at www.wipo.int/ hague/en/forms/. Annexes should be attached to the EFS-Web submission using the document description "Annex(es) to the DM/1 or equivalent".
More information regarding filing international design applications is available on the USPTO website at www.uspto.gov/patents-application- process/applying-online/efs-web-guidance-and-resources.
