The Certificate of Transmission procedure for both facsimile transmissions and transmissions via EFS-Web, however, also applies to papers transmitted to the Office from a foreign country provided that the correspondence being transmitted is not prohibited from being transmitted by facsimile or via EFS-Web and is not otherwise precluded from receiving the benefits under 37 CFR 1.8.
It should be noted, however, that the Office will continue its normal practice of stamping the date of receipt ("Office Date" Stamp; see MPEP § 505) on all papers received through the mail, by facsimile or via EFS-Web except those filed under 37 CFR 1.10 (See MPEP § 513). The receipt date stamped on all papers will also be the date which is entered on Office records and from which any subsequent periods are calculated. For example, 37 CFR 41.37 gives an appellant 2 months from the receipt date of the notice of appeal to file an appeal brief. If the last day to reply to a final Office action was November 10, 2014, and applicant deposited a Notice of Appeal with fee in the U.S. mail on November 10, 2014, and so certified, that appeal is timely even if it was not received in the U.S. Patent and Trademark Office until November 12, 2014. Since the date of receipt of the notice of appeal will be used to calculate the time at which the brief is due, the brief was due on January 12, 2015. This is 2 months after the date of receipt of the notice of appeal.
37 CFR 1.8(a)(2)(i)(A) specifically refers to a request for a continued prosecution application (CPA) filed under 37 CFR 1.53(d) (available only for design applications) as a correspondence filed for the purposes of obtaining an application filing date and the procedures and benefit set forth in 37 CFR 1.8(a)(1) are not applicable to a request for a CPA. The date on a certificate of mailing or transmission (37 CFR 1.8(a) ) of a CPA is not controlling or even relevant. A CPA filed by facsimile transmission or via EFS-Web will not be accorded a filing date as of the date on the certificate of transmission unless Office records indicate, or applicant otherwise establishes pursuant to 37 CFR 1.6(f), receipt in the Office of the complete CPA on the date on the certificate of transmission and that date is not a Saturday, Sunday, or federal holiday within the District of Columbia (for EFS-Web transmission, that date can be a Saturday, Sunday, or federal holiday within the District of Columbia).
· (A) The certification requires a signature. Specifically, if the certification appears on a paper that requires a signature, two signatures are required, one for the paper and one for the certification. Although not specifically required by 37 CFR 1.8, it is preferred that the certificate be signed by the applicant or registered practitioner.
· (B) When possible, the certification should appear on a portion of the paper being submitted. However, if there is insufficient space to make the certification on the same paper, the certification should be on a separate sheet securely attached to the paper.
· (C) When the certification is presented on a separate sheet, that sheet must (1) be signed and (2) fully identify and be securely attached to the paper it accompanies. The required identification should include the application number and filing date of the application as well as the type of paper being filed, e.g., reply to rejection or refusal, Notice of Appeal, etc. An unsigned certification will not be considered acceptable.
· Moreover, without the proper identifying data, a certification presented on a separate sheet will not be considered acceptable if there is any question or doubt concerning the connection between the sheet and the paper filed.
· For submissions by the U.S. Postal Service or facsimile transmissions, if the sheet should become detached from the paper and thereafter not associated with the appropriate file, evidence that this sheet was received in the Office can be supported by submitting a copy of a postcard receipt specifically identifying this sheet and the paper and by submitting a copy of the sheet as originally mailed. Attention is directed to MPEP § 503 relative to the use of postcards as receipts. For submissions via EFS-Web, evidence that this sheet was received in the Office can be supported by submitting a copy of an electronic acknowledgement receipt specifically identifying this sheet and the paper and by submitting a copy of the sheet as originally submitted. See MPEP §§ 502.05 and 503.
· (D) In situations wherein the correspondence includes papers for more than one application (e.g., a single envelope containing separate papers responding to Office actions in different applications) or papers for various parts of the Office (e.g., a patent issue fee transmittal form PTOL-85B and an assignment), each paper must have its own certification as a part thereof or attached thereto.
· Although Part B of Form PTOL-85, Notice of Allowance and Fee(s) Due, may contain a Certificate of Mailing thereon, a separate Certificate of Mailing is required for all papers included with this form, including replacement drawings. Checks submitted with the papers do not require certification.
· (E) In situations wherein the correspondence includes several papers directed to the same area of the Office for the same application (for example, a proposed reply under 37 CFR 1.116 and a Notice of Appeal), each paper should have its own certification as a part thereof or attached thereto.
· (F) For the purposes of 37 CFR 1.8(a)(1)(i)(A), first class mail is interpreted as including Priority Mail Express® and "Priority Mail" deposited with the U.S. Postal Service.
Alternatively, the correspondence may be submitted with a cover or transmittal letter that itemizes and properly identifies the papers and on which is placed the certificate under 37 CFR 1.8.
Some practitioners place the certification language on the first page of a paper with an inked stamp. Such a practice is encouraged because the certification is not only readily visible but also forms an integral part of the paper.
The Mail Center of the Office of Patent Application Processing (OPAP) will continue to date stamp the actual date of receipt of all papers received by mail in the Office. No attempt will be made to retain the envelopes in which the papers are received or to indicate on the papers the postal cancellation date (postmark).
However, the benefits of 37 CFR 1.8 or 37 CFR 1.10 apply only to documents delivered to the Office by the U.S. Postal Service. A number of instances have been uncovered where individuals are certifying that documents were deposited with the U.S. Postal Service when, in fact, the documents were hand-carried or delivered to the Office via commercial couriers, e.g., "Federal Express," "DHL," "Purolator," "Air Borne," or "UPS." In those instances where documents include a Certificate of Mailing under 37 CFR 1.8 or Priority Mail Express® mailing label (commonly used to comply with 37 CFR 1.10 ) but were delivered to the Office by other than the U.S. Postal Service, (OPAP) personnel are placing a notice indicating that fact on the correspondence involved to alert Office personnel that the benefits of 37 CFR 1.8 or 37 CFR 1.10 do not apply.
When papers are received in a specific location of the Office (e.g., Pre-Grant Publication Division, Office of Data Management, Office of Petitions - see MPEP §§ 502 and 502.01), the date of receipt in the Office is stamped on the papers in accordance with 37 CFR 1.6(a).
The date indicated on the Certificate of Mailing or of Transmission will be used by the Office only to determine if the paper was deposited in the United States Postal Service, transmitted by facsimile or transmitted via EFS-Web within the period for reply. If the paper was actually received in the Office within the period for reply, there is no need to refer to the Certificate. Note however, that 37 CFR 1.6(a)(3) provides that "[c]orrespondence transmitted by facsimile to the Patent and Trademark Office will be stamped with the date on which the complete transmission is received in the Patent and Trademark Office unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the date stamped will be the next succeeding day which is not a Saturday, Sunday, or Federal holiday within the District of Columbia." Note further that 37 CFR 1.6(a)(4) provides that "[c]orrespondence submitted to the Office by way of the Office electronic filing system will be accorded a receipt date, which is the date the correspondence is received at the correspondence address for the Office set forth in § 1.1 when it was officially submitted." This date can be a Saturday, Sunday, or federal holiday within the District of Columbia.
If, however, the paper was received in the U.S. Patent and Trademark Office after the end of the period for reply, the paper should be inspected to determine if a Certificate of Mailing or of Transmission has been included. Where no such Certificate is found, the paper is untimely since applicant did not reply within the period for reply. This may result in abandonment of the application or other loss of rights.
In those instances where a Certificate of Mailing or of Transmission does appear in the paper or a cover letter thereto, a check should be made to determine whether the indicated date of deposit or transmission is within the period for reply. If the date indicated in the Certificate is after the end of the period for reply, the paper is untimely and no notation of the date need be made. Where the date indicated on the Certificate is within the period for reply, the paper should be considered to be timely filed. A notation should be made adjacent to the Office stamp indicating the date of receipt ("Office Date" Stamp) which notes the date stated on the Certificate. This notation should be "C of Mail" , "C of Fax" >or "C of EFS-Web" followed by the date. A paper with a certificate dated November 10, 1997, would be noted next to the "Office Date" Stamp "(C of Mail. 11/10/97)."
If the period set for taking an action in the U.S. Patent and Trademark Office ends on a Saturday, Sunday, or federal holiday within the District of Columbia (37 CFR 1.7 ), the action will be considered to be timely if deposited in the United States mail, transmitted by facsimile or transmitted by EFS-Web and certified under 37 CFR 1.8(a) on the next succeeding day which is not a Saturday, Sunday, or a federal holiday.
It should be noted that the filing of a paper for the purpose of obtaining a continuation or division application under 37 CFR 1.53(d) (available only for design applications) is excluded from the Certificate practice under 37 CFR 1.8(a)(2)(i)(A) since it is considered to be the filing of a national patent application.
Pursuant to 35 U.S.C. 119(e)(3), the period of pendency of a provisional application is extended to the next succeeding business day 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. See also 37 CFR 1.7(b).
No benefit will be given to a Certificate of Mailing or Certificate of Facsimile Transmission relative to the filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date. A national patent application specification and drawing or other correspondence for the purpose of obtaining a filing date may be filed via EFS-Web. New patent applications filed in accordance with 37 CFR 1.10 will be stamped by the Office with the date of deposit as Priority Mail Express® with the United States Postal Service. For example, if a new patent application is deposited as Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date. 37 CFR 1.6(a)(2).
All Certificates of Mailing or Transmission filed in applications should be placed in the image file wrappers.
Office personnel receiving a hand-delivered paper from other than U.S. Postal Service personnel should inspect the paper to ensure that the benefits of 37 CFR 1.8 or Priority Mail Express® benefits under 37 CFR 1.10 are not accorded in error. If the paper contains a certificate of mailing under 37 CFR 1.8 or Priority Mail Express® mailing label (commonly used to comply with 37 CFR 1.10 ), the words "HAND DELIVERED" should be written adjacent to the date stamp.
Applicant should be notified in the next Office action when a paper containing a Certificate of Mailing has been denied the benefits under 37 CFR 1.8 or a paper containing an Priority Mail Express® mailing label (commonly used to comply with 37 CFR 1.10 ) is denied benefits under 37 CFR 1.10 by including, for example, form paragraph 5.04.
The [1] filed [2] is not entitled to the benefits of 37 CFR 1.[3] since it was not deposited with the U. S. Postal Service for delivery to the U.S. Patent and Trademark Office. Therefore, the date of receipt in the U.S. Patent and Trademark Office has been used to determine the timeliness of the paper.
1. This form paragraph is to be used in those situations where correspondence contains a Certificate of Mailing under 37 CFR 1.8 or requests the benefit of Priority Mail Express® under 37 CFR 1.10, but the correspondence was not actually deposited with the U. S. Postal Service.
2. In bracket 3, insert --8-- or --10--, as appropriate.
Misuse of a Certificate of Mailing under 37 CFR 1.8 or improperly claiming the benefit of 37 CFR 1.10 which appears to be more than a one-time, inadvertent error should be brought to the attention of the Office of Enrollment and Discipline.
Paragraphs (b) and (c) of 37 CFR 1.8 concern the situation where a paper containing a Certificate was timely deposited in the U.S. Postal Service, transmitted by facsimile or transmitted via EFS-Web, but never received by the U.S. Patent and Trademark Office. In the TCs, all submissions under these paragraphs should be forwarded to the Office of Petitions to be considered.
37 CFR 1.8(b) permits a party to notify the Office of a previous mailing through the U.S. Postal Service, or transmission by facsimile or EFS-Web, of correspondence when a reasonable amount of time has elapsed from the time of mailing or transmission of the correspondence. In the event that correspondence may be considered timely filed because it was mailed or transmitted in accordance with 37 CFR 1.8(a), but was not received in the Office after a reasonable amount of time has elapsed, (e.g., more than one month from the time the correspondence was mailed), applicant is not required to wait until the end of the maximum extendable period for reply set in a prior Office action (for the Office to hold the application abandoned) before informing the Office of the previously submitted correspondence. Applicant may notify the Office of the previous mailing or transmission and supply a duplicate copy of the previously mailed or transmitted correspondence and a statement attesting on a personal knowledge basis or to the satisfaction of the Director to the previous timely mailing or transmission. If the person signing the statement did not sign the certificate of mailing or the certificate of transmission, then the person signing the statement should explain how they have firsthand knowledge of the previous timely mailing or transmission. Such a statement should be filed promptly after the person becomes aware that the Office has not received the correspondence.
Before notifying the Office of a previously submitted correspondence that appears not to have been received by the Office, applicants are encouraged to check the private Patent Application Information Retrieval (PAIR) System to see if the correspondence has been entered into the application file.
Effective July 28, 2013, the United States Postal Service (USPS) changed the name of "Express Mail" to Priority Mail Express®. All characteristics of the Priority Mail Express® service are the same as those of the former "Express Mail" service (although the mailing labels differ).
· (a) The Director may by rule prescribe that any paper or fee required to be filed in the Patent and Trademark Office will be considered filed in the Office on the date on which it was deposited with the United States Postal Service or would have been deposited with the United States Postal Service but for postal service interruptions or emergencies designated by the Director.
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· (a) Date of receipt and Priority Mail Express® date of deposit. Correspondence received in the Patent and Trademark Office is stamped with the date of receipt except as follows:
· (1) The Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday, or Federal holiday within the District of Columbia. Except for correspondence transmitted by facsimile under paragraph (a)(3) of this section, or filed electronically under paragraph (a)(4) of this section, no correspondence is received in the Office on Saturdays, Sundays, or Federal holidays within the District of Columbia.
· (2) Correspondence filed in accordance with § 1.10 will be stamped with the date of deposit as Priority Mail Express® with the United States Postal Service.
· (3) Correspondence transmitted by facsimile to the Patent and Trademark Office will be stamped with the date on which the complete transmission is received in the Patent and Trademark Office unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the date stamped will be the next succeeding day which is not a Saturday, Sunday, or Federal holiday within the District of Columbia.
· (4) Correspondence may be submitted using the Office electronic filing system only in accordance with the Office electronic filing system requirements. Correspondence submitted to the Office by way of the Office electronic filing system will be accorded a receipt date, which is the date the correspondence is received at the correspondence address for the Office set forth in § 1.1 when it was officially submitted.
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· (a)
· (1) Any correspondence received by the U.S. Patent and Trademark Office (USPTO) that was delivered by the Priority Mail Express® Post Office to Addressee service of the United States Postal Service (USPS) will be considered filed with the USPTO on the date of deposit with the USPS.
· (2) The date of deposit with USPS is shown by the "date accepted" on the Priority Mail Express® label or other official USPS notation. If the USPS deposit date cannot be determined, the correspondence will be accorded the USPTO receipt date as the filing date. See § 1.6(a).
· (b) Correspondence should be deposited directly with an employee of the USPS to ensure that the person depositing the correspondence receives a legible copy of the Priority Mail Express® mailing label with the "date accepted" clearly marked. Persons dealing indirectly with the employees of the USPS (such as by deposit in a Priority Mail Express® drop box) do so at the risk of not receiving a copy of the Priority Mail Express® mailing label with the desired "date accepted" clearly marked. The paper(s) or fee(s) that constitute the correspondence should also include the Priority Mail Express® mailing label number thereon. See paragraphs (c), (d) and (e) of this section.
· (c) Any person filing correspondence under this section that was received by the Office and delivered by the Priority Mail Express® Post Office to Addressee service of the USPS, who can show that there is a discrepancy between the filing date accorded by the Office to the correspondence and the date of deposit as shown by the "date accepted" on the Priority Mail Express® mailing label or other official USPS notation, may petition the Director to accord the correspondence a filing date as of the "date accepted" on the Priority Mail Express® mailing label or other official USPS notation, provided that:
· (1) The petition is filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date other than the USPS deposit date;
· (2) The number of the Priority Mail Express® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by Priority Mail Express®; and
· (3) The petition includes a true copy of the Priority Mail Express® mailing label showing the "date accepted," and of any other official notation by the USPS relied upon to show the date of deposit.
· (d) Any person filing correspondence under this section that was received by the Office and delivered by the Priority Mail Express® Post Office to Addressee service of the USPS, who can show that the "date accepted" on the Priority Mail Express® mailing label or other official notation entered by the USPS was incorrectly entered or omitted by the USPS, may petition the Director to accord the correspondence a filing date as of the date the correspondence is shown to have been deposited with the USPS, provided that:
· (1) The petition is filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date based upon an incorrect entry by the USPS;
· (2) The number of the Priority Mail Express® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by Priority Mail Express®; and
· (3) The petition includes a showing which establishes, to the satisfaction of the Director, that the requested filing date was the date the correspondence was deposited in the Priority Mail Express® Post Office to Addressee service prior to the last scheduled pickup for that day. Any showing pursuant to this paragraph must be corroborated by evidence from the USPS or that came into being after deposit and within one business day of the deposit of the correspondence in the Priority Mail Express® Post Office to Addressee service of the USPS.
· (e) Any person mailing correspondence addressed as set out in § 1.1(a) to the Office with sufficient postage utilizing the Priority Mail Express® Post Office to Addressee service of the USPS but not received by the Office, may petition the Director to consider such correspondence filed in the Office on the USPS deposit date, provided that:
· (1) The petition is filed promptly after the person becomes aware that the Office has no evidence of receipt of the correspondence;
· (2) The number of the Priority Mail Express® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by Priority Mail Express®;
· (3) The petition includes a copy of the originally deposited paper(s) or fee(s) that constitute the correspondence showing the number of the Priority Mail Express® mailing label thereon, a copy of any returned postcard receipt, a copy of the Priority Mail Express® mailing label showing the "date accepted," a copy of any other official notation by the USPS relied upon to show the date of deposit, and, if the requested filing date is a date other than the "date accepted" on the Priority Mail Express® mailing label or other official notation entered by the USPS, a showing pursuant to paragraph (d)(3) of this section that the requested filing date was the date the correspondence was deposited in the Priority Mail Express® Post Office to Addressee service prior to the last scheduled pickup for that day; and
· (4) The petition includes a statement which establishes, to the satisfaction of the Director, the original deposit of the correspondence and that the copies of the correspondence, the copy of the Priority Mail Express® mailing label, the copy of any returned postcard receipt, and any official notation entered by the USPS are true copies of the originally mailed correspondence, original Priority Mail Express® mailing label, returned postcard receipt, and official notation entered by the USPS.
· (f) The Office may require additional evidence to determine if the correspondence was deposited as Priority Mail Express® with the USPS on the date in question.
· (g) Any person who mails correspondence addressed as set out in § 1.1(a) to the Office with sufficient postage utilizing the Priority Mail Express® Post Office to Addressee service of the USPS, but has the correspondence returned by the USPS due to an interruption or emergency in Priority Mail Express® service, may petition the Director to consider such correspondence as filed on a particular date in the Office, provided that:
· (1) The petition is filed promptly after the person becomes aware of the return of the correspondence;
· (2) The number of the Priority Mail Express® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by Priority Mail Express®;
· (3) The petition includes the original correspondence or a copy of the original correspondence showing the number of the Priority Mail Express® mailing label thereon and a copy of the Priority Mail Express® mailing label showing the "date accepted"; and
· (4) The petition includes a statement which establishes, to the satisfaction of the Director, the original deposit of the correspondence and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally deposited with the USPS on the requested filing date. The Office may require additional evidence to determine if the correspondence was returned by the USPS due to an interruption or emergency in Priority Mail Express® service.
· (h) Any person who attempts to mail correspondence addressed as set out in § 1.1(a) to the Office with sufficient postage utilizing the Priority Mail Express® Post Office to Addressee service of the USPS, but has the correspondence refused by an employee of the USPS due to an interruption or emergency in Priority Mail Express® service, may petition the Director to consider such correspondence as filed on a particular date in the Office, provided that:
· (1) The petition is filed promptly after the person becomes aware of the refusal of the correspondence;
· (2) The number of the Priority Mail Express® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the attempted mailing by Priority Mail Express®;
· (3) The petition includes the original correspondence or a copy of the original correspondence showing the number of the Priority Mail Express® mailing label thereon; and
· (4) The petition includes a statement by the person who originally attempted to deposit the correspondence with the USPS which establishes, to the satisfaction of the Director, the original attempt to deposit the correspondence and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally attempted to be deposited with the USPS on the requested filing date. The Office may require additional evidence to determine if the correspondence was refused by an employee of the USPS due to an interruption or emergency in Priority Mail Express® service.
· (i) Any person attempting to file correspondence under this sect ion that was unable to be deposited with the USPS due to an interruption or emergency in Priority Mail Express® service which has been so designated by the Director, may petition the Director to consider such correspondence as filed on a particular date in the Office, provided that:
· (1) The petition is filed in a manner designated by the Director promptly after the person becomes aware of the designated interruption or emergency in Priority Mail Express® service;
· (2) The petition includes the original correspondence or a copy of the original correspondence; and
· (3) The petition includes a statement which establishes, to the satisfaction of the Director, that the correspondence would have been deposited with the USPS but for the designated interruption or emergency in Priority Mail Express® service, and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally attempted to be deposited with the USPS on the requested filing date.
The statutory authority for the granting of a filing date based on the date of deposit for correspondence sent by Priority Mail Express® and received by the Office is found in section 21(a) of Title 35 of the United States Code.
The specific rule for obtaining a filing date as of the date of deposit in Priority Mail Express® (rather than the date of receipt at the Office) is 37 CFR 1.10.
35 U.S.C. 21(a) is limited to correspondence deposited with the United States Postal Service (USPS). The procedure in 37 CFR 1.10 is limited to correspondence deposited in the Priority Mail Express® Post Office to Addressee service of the USPS. There are no similar provisions and no similar benefit can be obtained for correspondence deposited in International Express Mail.
Effective July 28, 2013, the USPS changed the name of Express Mail®. In addition, the USPS updated the Priority Mail Express® mailing label. The mailing label now has a ‘‘date accepted’’ field rather than a ‘‘date-in’’ field, which was previously used on the Express Mail® label.
37 CFR 1.6(a)(2) provides that correspondence deposited as Priority Mail Express® in accordance with 37 CFR 1.10 will be stamped, and, therefore, considered as filed on the date of its deposit, regardless of whether that date is a Saturday, Sunday or federal holiday within the District of Columbia. 37 CFR 1.10 provides a procedure for assigning the date on which any paper or fee is deposited as Priority Mail Express® with the USPS as the filing date of the paper or fee in the U.S. Patent and Trademark Office (Office). The date of deposit with the USPS is shown by the "date accepted" on the Priority Mail Express® mailing label or other official USPS notation. This holds true for any day that the correspondence may be accepted as Priority Mail Express® by the USPS, even when the paper or fee is deposited and accepted on a Saturday, Sunday or federal holiday within the District of Columbia. For example, if a person files a patent application by Priority Mail Express® with the USPS on a Saturday in compliance with 37 CFR 1.10, he or she will receive the benefit of the Saturday date, even though the Office is closed on Saturdays and, therefore, the person could not have filed the application by depositing it directly at the Office on that Saturday. See 37 CFR 1.6(a)(1). In those cases where the procedure of 37 CFR 1.10(a) has not been properly followed, e.g., the "date accepted" is illegible, the filing date of the correspondence will be the date of actual receipt in the Office. An applicant may file a petition under the conditions specified in 37 CFR 1.10(c), (d) or (e) (discussed below) presenting whatever arguments and evidence that the paper or fee is entitled to a filing date other than the filing date accorded by the Office.
The procedure in 37 CFR 1.10(a) requires the use of the Priority Mail Express® Post Office to Addressee service of the USPS. This service provides for the use of a mailing label on which the USPS clearly indicates the date on which it was deposited. Correspondence sent by the Priority Mail Express® Post Office to Addressee service is considered filed in the Office on the "date accepted" entered by the USPS. The "date accepted" on the Priority Mail Express® mailing label must be completed by the USPS, not by the applicant. For correspondence filed in accordance with 37 CFR 1.10, Office personnel will routinely look to the Priority Mail Express® mailing label, and stamp the "date accepted" or other official USPS notation as the filing date of the correspondence. Accordingly, if the USPS enters the deposit date as its "date accepted," the correspondence will receive the deposit date as its filing date. If the USPS deposit date cannot be determined, the correspondence will be accorded the date of receipt in the Office as the filing date. An applicant may file a petition under the conditions specified in 37 CFR 1.10(c), (d), (e), (g), (h), or (i) (discussed below) presenting whatever arguments and evidence that the paper or fee is entitled to a filing date other than the filing date accorded by the Office.
37 CFR 1.10(b) further provides that correspondence should be deposited directly with an employee of the USPS to ensure that the person depositing the correspondence receives a legible copy of the Priority Mail Express® mailing label with the "date accepted" clearly marked, and that persons dealing indirectly with the employees of the USPS (such as by depositing correspondence in a Priority Mail Express® drop box) do so at the risk of not receiving a copy of the Priority Mail Express® mailing label with the desired "date accepted" clearly marked. On petition, the failure to obtain a Priority Mail Express® receipt with the "date accepted" clearly marked may be considered an omission that could have been avoided by the exercise of due care, as discussed below. While the Office strongly urges direct deposit of Priority Mail Express® correspondence in order to obtain a legible copy of the Priority Mail Express® mailing label, parties are not precluded from using Priority Mail Express® drop boxes, but do so at their own risk.
A paper or fee placed in a Priority Mail Express® box receptacle after the box has been cleared for the last time on a given day will be considered to be deposited as of the date of receipt ("date accepted") indicated on the Priority Mail Express® mailing label by the Postal Service Priority Mail Express® acceptance clerk. 37 CFR 1.10(d) permits the Office to correct a USPS "date-in" error when the correspondence is deposited in an Priority Mail Express® drop box prior to last scheduled pick up of the day, that is, the time clearly marked on the Priority Mail Express® drop box indicating when the box will be cleared for the last time on the date of deposit. 37 CFR 1.10(d) sets forth the procedures to be followed to be entitled to such a correction.
Parties who do use drop boxes can protect themselves from uncertainty due to illegible mailing labels by routinely maintaining a log of Priority Mail Express® deposits in which notations are entered by the person who deposited the correspondence as Priority Mail Express® within one business day after deposit with the USPS. Such evidence could be useful to later support a petition filed under 37 CFR 1.10(c), (d), (e), or (g). Evidence that came into being after deposit and within one day after the deposit of the correspondence as Priority Mail Express® may be in the form of a log book which contains information such as the Priority Mail Express® number; the application number, attorney docket number or other such file identification number; the place, date and time of deposit; the time of the last scheduled pick-up for that date and place of deposit; the depositor’s initials or signature; and the date and time of entry in the log.
While 37 CFR 1.10(b) does not require placement of the Priority Mail Express® mailing label number on the correspondence prior to mailing, it is advisable to do so. If the number of the mailing label did not appear on the correspondence as originally filed, relief will not be granted on petition under 37 CFR 1.10(c), (d), (e), (g), or (h), even if the party who filed the correspondence satisfies the other requirements of 37 CFR 1.10(c), 1.10(d), 1.10(e), 1.10(g), or 1.10(h). To be effective, the number must be placed on each separate paper and each fee transmittal either directly on the document or by a separate paper firmly and securely attached thereto. In situations wherein the correspondence includes several papers directed to the same application (for example, the specification, drawings, and declaration for a new application), the correspondence may be submitted with a cover or transmittal letter which should itemize the papers. It is not necessary that the number be placed on each page of a particular paper or fee transmittal. Merely placing the number in one prominent location on each separate paper or fee transmittal (or cover sheet or transmittal letter which should itemize the separate papers and fees) will be sufficient.
Since the filing of correspondence under 37 CFR 1.10 without the number of the Priority Mail Express® mailing label thereon is an oversight that can be avoided by the exercise of reasonable care, requests for waiver of this requirement will not be granted on petition. A party’s inadvertent failure to comply with the requirements of a rule is not deemed to be an extraordinary situation that would warrant waiver of a rule under 37 CFR 1.183, 2.146(a)(5) or 2.148. See Honigsbaum v. Lehman, 903 F. Supp. 8, 37 USPQ2d 1799 (D.D.C. 1995) (Commissioner did not abuse his discretion in refusing to waive requirements of 37 CFR 1.10(c) in order to grant filing date to patent application, where applicant failed to produce "Express Mail" customer receipt or any other evidence that application was actually deposited with USPS as "Express Mail."), aff’d without opinion, 95 F.3d 1166 (Fed. Cir. 1996); Gustafson v. Strange, 227 USPQ 174 (Comm’r Pat. 1985) (counsel’s unawareness of 37 CFR 1.8 not extraordinary situation warranting waiver of a rule); In re Chicago Historical Antique Automobile Museum, Inc., 197 USPQ 289 (Comm’r Pat. 1978) (since certificate of mailing procedure under 37 CFR 1.8 was available to petitioner, lateness due to mail delay not deemed to be extraordinary situation).
37 CFR 1.10(c) through 1.10(e) and 1.10(g) set forth procedures for petitioning the Director to accord a filing date as of the date of deposit as Priority Mail Express® (Priority Mail Express). Briefly, 37 CFR 1.10(c) applies where there is a discrepancy between the filing date accorded by the Office and the "date accepted" entered by the USPS on the Priority Mail Express® mailing label or other official USPS notation; 37 CFR 1.10(d) applies where the "date accepted" is incorrectly entered by the USPS; 37 CFR 1.10(e) applies where correspondence deposited with the USPS as Priority Mail Express® is not received by the Office; and 37 CFR 1.10(g) applies where correspondence deposited with the USPS as "Express Mail" was returned by the USPS due to an interruption or emergency in Priority Mail Express® service.
37 CFR 1.10(h) and 1.10(i) set forth procedures for petitioning the Director when correspondence was attempted to be deposited as Priority Mail Express®. 37 CFR 1.10(h) applies where correspondence was refused by an employee of the USPS due to an interruption or emergency in Priority Mail Express® service; and 37 CFR 1.10(i) applies where correspondence was unable to be deposited with the USPS due to an interruption or emergency in Priority Mail Express® service which has been so designated by the Director.
37 CFR 1.10(c) sets forth procedures for filing a petition to the Director for a filing date as of the date of deposit with the USPS, where there is a discrepancy between the filing date initially accorded by the Office and the "date accepted" entered by the USPS or other official USPS notation. Such a petition should:
· (A) be filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date other than the USPS deposit date;
· (B) include a showing that the number of the Priority Mail Express® mailing label was placed on each piece of correspondence prior to the original mailing; and
· (C) include a true copy of the Priority Mail Express® mailing label showing the "date accepted" or other official notation by the USPS.
37 CFR 1.10(d) sets forth procedures for filing a petition to the Director to accord a filing date as of the actual date of deposit with the USPS, where the "date accepted" or other official notation is incorrectly entered by the USPS. Such a petition should:
· (A) be filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date based upon an incorrect entry by the USPS;
· (B) include a showing that the number of the Priority Mail Express® mailing label was placed on each piece of correspondence prior to the original mailing; and
· (C) include a showing that the correspondence was deposited as Priority Mail Express® prior to the last scheduled pickup on the requested filing date.
The showing under 37 CFR 1.10(d) must be corroborated by (1) evidence from the USPS, or (2) evidence that came into being after deposit and within one business day of the deposit of the correspondence as Priority Mail Express®. Evidence from the USPS may be the Priority Mail Express® Corporate Account Mailing Statement. Evidence that came into being within one day after the deposit of the correspondence as Priority Mail Express® may be in the form of a log book which contains information such as the Priority Mail Express® number; the application number, attorney docket number or other such file identification number; the place, date and time of deposit; the time of the last scheduled pick-up for that date and place of deposit; the depositor’s initials or signature; and the date and time of entry in the log.
The reason the Office considers correspondence to have been filed as of the date of deposit as Priority Mail Express® is that this date has been verified by a disinterested USPS employee, through the insertion of a "date accepted," or other official USPS notation, on the Priority Mail Express® mailing label. Due to the questionable reliability of evidence from a party other than the USPS that did not come into being contemporaneously with the deposit of the correspondence with the USPS, 37 CFR 1.10(d) specifically requires that any petition under 37 CFR 1.10(d) be corroborated either by evidence from the USPS, or by evidence that came into being after deposit and within one business day after the deposit of the correspondence as Priority Mail Express®.
A petition alleging that the USPS erred in entering the "date accepted" will be denied if it is supported only by evidence (other than from the USPS) which was:
· (A) created prior to the deposit of the correspondence as Priority Mail Express® with the USPS (e.g., an application transmittal cover letter, or a client letter prepared prior to the deposit of the correspondence); or
· (B) created more than one business day after the deposit of the correspondence as Priority Mail Express® (e.g., an affidavit or declaration prepared more than one business day after the correspondence was deposited with the USPS as Priority Mail Express®).
On the other hand, a notation in a log book, entered after deposit by the person who deposited the correspondence as Priority Mail Express® within one business day of such deposit, setting forth the items indicated above, would be deemed on petition to be an adequate showing of the date of deposit under 37 CFR 1.10(d)(3).
37 CFR 1.10(d)(3) further provides that a party must show that correspondence was deposited as Priority Mail Express® before the last scheduled pickup on the requested filing date in order to obtain a filing date as of that date.
