Chapter 500 of the MPEP deals with the receipt and handling of mail and papers when received by the USPTO. This can included from applicants as well as from third parties. Additionally, this chapter discusses what forms of communication are allowed and under what circumstances. For example, when can facsimile be used to file documents? or when is it okay to use a certificate of mailing? There are usually a few questions on the patent bar exam regarding these procedures so care should be taken when reviewing the material. Make special note of the proper use of facsimile and the filing date afforded certificate of mailings and where they can be mailed from.
Regarding the addressing of a correspondence, there are no penalties for addressing the mail to the wrong area of the USPTO except if they are to the general solicitor. Hand delivery is allowed for all correspondence except if they relate to pending litigation. Express mail can be used to send documents to the USPTO. If using the United States Postal Service the “Post Office to Addressee” service is used. If done correctly, the date of filing is the date of deposit with the USPS. Facsimile (or fax) can be used in certain communications with the USPTO. The date of filing is the date that the transmission is completed with the USPTO. If a fax is not received by the USPTO it can still receive the date that it was sent if the sender has proof of the facsimile transmission and a statement that the fax was sent. In generally, facsimile transmission are only accepted after the application has been filed (usually not allowed to use fax for documents which are needed for an applications filing date). The following are usually allowed to be sent through facsimile transmission: Continued Prosecution Applications, amendments, declarations, petitions, issue fee and authorization to charge USPTO deposit accounts. In general they are not allowed for: documents that need to be certified, documents required to obtain a filing date, drawings, judge orders, interference agreements, interference correspondence, international applications, copy of the application and fee to enter the national stage and a request for reexamination. Communication channels via the internet are also possible such as emailing. The allowable circumstances usually include all situations except those which require a signature or a reply to a office action. Written authorization is required for USPTO employees to communicate through the internet in reissue and reexamination proceedings.
Regarding the signature requirements of the USPTO, original signatures are generally not required. The major circumstances where signatures are required are: registration related documents for practicing before the USPTO, enrollment and disciplinary investigations and disciplinary proceedings.
Date of Receipt of Correspondence
For express mail, the papers receive a date stamp on the date they are deposited with the USPS. This requires proper procedure for mailing and the sender must use “Express Mail Post Office to Addressee”.
Facsimile is date stamped on the date the transmission is completed (in Eastern Standard Time).
Certificate of mailing or transmissions are used to obtain a transmittal date upon mailing. In instances where the papers are mailed before the deadline but not received until after, if the date on the certificate meets the deadline it is considered timely. The USPTO stamps the correspondence with the actual date it is received at the USPTO. This date stamp is used for all other purposes including calculations of new deadlines. A certificate of mailing cannot be used to obtain an application filing date. This includes for continued prosecution applications, interferences, agreements of interfering parties and international applications. A certification of mailing requires a signature and must be attached or part of a document being transmitted. If it is on a separate sheet it must clearly identify the paper it is with which includes the filing date and serial number. The sheet needs to be signed as well. Each separate document needs to have its own separate certificate.
In the case of lost mail or lost transmission, it will be considered timely if the applicant promptly notifies the USPTO that it was sent, supplies a copy of the original correspondence and certificate and provides a statement that proves personal knowledge of timeliness.
When an application is received a application number and filing receipt is obtained. The filing receipt that includes application number and filing date is returned on receipt of the papers by the USPTO. To obtain this the application needs to include the specification with claims and any necessary drawings. The receipt is only mailed after it is made certain that the minimum requirements are met. Provisional applications obtain the filing receipt when the specification and required drawings are received. In the case of a provisional application, a cover sheet identifying the application as provisional needs to be included to stop the USPTO from treating it as a non-provisional application.
Verification of Receipt
The applicant can request verification of receipt of the papers from the USPTO. However, this verification does not confirm completeness of the application or that a filing date is issued. A return receipt of other papers can be used and it needs to clearly identify the paper for which the return receipt is requested. A postcard can be included with the filing and should identify the applicant’s name (or ID number), title, nuber of pages of the specification, claims, drawings, oath or declaration (if it is included), provisional cover sheet if needed and the amount and manner of paying the required fees. The post card will be accorded a preliminary application number and filing date and sent back to the address which the submitter should self addressed.
How can a patent application be deposited at the USPTO? (37 CFR 1.5, 1.6)
This is usually done through Express Mail. The address to send the documents to is:
P.O. Box 1450
Alexandria, VA 22313-1450
Additionally, the Electronic Filing System (EFS) can also be used and is a popular choice. Hand delivery is also a choice and should be delivered to the customer window at the USPTO. The hand delivery cannot be directly to the technical center related to the patent application except in situations where the papers are under a secrecy order. As stated earlier, the application can not be submitted by facsimile.
What reference info is needed for filing papers related to a patent application?
Any correspondence sent related to an already filed patent application needs to include the application number or the serial number and filing date assigned by the USPTO which do not yet already have an application number.
Rules on mailing to the USPTO, and on when mail is “received”:
There are two major types of express mailing. They are Post Office to Addressee and Post Office to Post Office. The proper type to use for sending an application to the USPTO is Post Office to Addressee where the addressee is the USPTO. In express mailings the sender will complete the mailing label and the post office will then complete the “date in” section. The date in section is the part which is used by the USPTO for determining the actual filing date. This method allows the applicant to use the date the mail is actually shipped through the USPS and not the date it is received by the USPTO.
When is a fax actually considered as “received” by the USPTO?
A fax is considered received on the date the fax actually completes it’s transmission to the USPTO. The time used for recordation is the time of the USPTO, Eastern Standard Time, and not the time zone of the sender. When transmission is sent on a weekend or national holiday, the next business day is the actual date of receipt which will be recorded.
However, if the sender uses a certificate of transmission then the filing date is the date of the certificate of transmission.
When is is OK to fax and when is it NOT OK? (502.01; 37 CFR 1.6(d),(f)):
When are faxes are not permitted?
The following are circumstances where a document is not allowed to be sent to the USPTO via facsimile: documents which require certification, national patent applications and drawings (provisional and non-provisional), any correspondence for a filing date (except CPA), color drawings (unless submitted with an issue fee), correspondence in an interference proceeding (if judge requests hand delivery or express mail), agreements from parties in an interference, correspondence on matters related to a case before the Board of Patent Appeals (can be authorized by the board), correspondence for applications under secrecy order (must be directly related to the content under the secrecy order), international patent applications, copy of application and fee to move to national stage and requests for reexaminations.
What about email? (502.3)
Any communication through the internet is at the discretion of the applicant. With out authorization by the applicant the USPTO can not respond to any inquiries via email pertaining to information subject to the confidentiality requirements.
Interviews can be done through email if there is express authorization. Otherwise they usually take place in person or on the phone.
MPEP 502.02 – What is needed for a signature on documents? (37 CFR 1.4(d))
Any handwritten signatures need to be completed in permanent dark ink. There are also S-Signatures which are electronic or mechanical signatures and are inserted between forward-slash marks. They can be used in patent reexamination proceedings, regular patent applications, TIFF files, fax or regular papers. They can not be used to authorize email communications. These signatures need to be accompanied with the practitioner’s registration number. Finally, when filing through the Electronic Filing System, EFS Character Coded Signatures are used.
MPEP 503 & 505 – Filing Receipts:
Main filing receipt:
The application must have the minimum requirements to be afforded a filing date. This includes a description, at least one claim and any necessary drawings. If these are met, a filing receipt will be sent. This includes the application number, filing date, confirmation number, suggested class and technology center. In some circumstances this will also contain continuing data, national stage data, foreign priority data, foreign filing license data, small entity status data and the anticipated date of publication. The applicant should check the filing receipt for inaccuracies once it is received. If there are inaccuracies then one should notify the USPTO and request a correction.
Except for application filings the USPTO generally does not give a receipt for filing regular papers. However, for any kind of filing the filing party can place a stamped, self-addressed postcard which identifies each item in the filing. In this case the USPTO will stamp the postcard and return the postcard back to the filing party. By using this postcard method one can receive a much faster confirmation that the USPTO received the filings. It can also be used in the future as proof if the USPTO looses any of the filings. In the case that it is used as evidence in the case of lost papers it is pertinent that all of the items filed were identified during the submission of the filings. This can act as prima facie evidence of initial receipt of filings at the USPTO. It should be noted that this method is unofficial.
Official Date Stamps: (37 CFR 1.6)
When a filing is submitted to the USPTO they will stamp a date of receipt on them known as the office date stamp. When deadlines fall on weekend or federal holiday the action will be considered timely if the receipt is the next business day.
For a non-provisional App what is needed to get a filing date:
The filing date is the most important date in the life of a patent. Care should be taken to ensure this is the earliest as possible with a quality patent application.
In order to get a filing date for an patent application there must be a description of the invention, at least one claim and any necessary drawings for the invention. If all of the inventors are not listed and signed on the oath at the time of the filing and if the filing fee is not paid the the office of initial patent examination sends a notice of missing parts to complete the additional filings required to start prosecution of the patent application. This surcharge for filing additional items after the initial filing can be found in 37 C.F.R. § 1.16(f). This surcharge is applied when a filing, search or examination fee are paid after the filing date.
A petition can be filed if the applicant believes that all of the required papers were filed for a filing date but the USPTO has provided notice otherwise. This petition needs to be accompanied with a fee, but the fee can be refunded if the applicant wins in the petition.
Drawings in non-provisional applications generally have to be publishable to meet the 18 months publication rule. If a drawing is not good enough for publication the Office of Initial Patent Examination notifies the applicant that acceptable drawings are required to be filed. This is usually within 2 months of the filing of the application.
For a provisional application what is needed to get a filing date:
For a provisional application a description of the invention along with drawings are necessary to obtain a filing date. There is no need to file claims in a provisional patent application. A cover sheet identifying the application as a provisional should also be included. If the filing is incomplete the applicant is notified to complete the submission and a filing date will be accorded once the required documents are obtained at the USPTO. Remember the provisional application should be descriptive enough that a later filed non-provisional application can claim benefit to the application as it is fully disclosed in the provisional and does not add any new matter.
What if the USPTO looses your files after submitting?
The USPTO will send notice to the applicant that the files have been lost with a 3 month response period and an automatic 3 month extension if necessary under 37 C.F.R. § 1.136(a). As a reply to this notice the applicant can provide a copy of all the correspondences between the USPTO along with a listing of all the correspondences (includes application filing and prosecution) along with a statement validating the completion and accuracy of the copies agains those of record. Additionally the applicant can inform the USPTO if they are aware of any missing documents not included in the copy. Alternatively, an applicant can hand deliver all of the correspondence between themselves and the USPTO with a statement that all the items are complete and accurate with a statement of awareness of any missing documents not included. In the case of the applicant not possessing copies of the correspondences they can respond with a statement that they do not have any of the copies. If no response is received from the USPTO after sending the notice and the time period and extension have run out the application will be considered abandoned. If this circumstance pertains to a granted patent, the expiration of the time periods will not result in the loss of granted status for the patent.
Payment of Fees
One can use cash, check, money orders, credit cards and deposit accounts. For credit cards there is a special payment form which is not included with normal records of filing. This form is used to keep the credit card information from being open to the public in the patents file jacket. If this form is not used then the credit card information will be open to the public for inspection along with the rest of the application. Deposit accounts (37 C.F.R. § 1.25) have two main types. The first type requires a minimum deposit of $1000 and can be used to pay any fee. The second type requires a minimum deposit of $300 and is used only for ordering copies of patents. If these accounts fall below their minimum requirements the USPTO sends out notice with instructions to refill along with demand for a $10 service fee.
Papers submitted to the USPTO can grant access to charge a account for a required fee. The paper should specify the account number to use. Additionally, a general authorization to charge all fees incurred during prosecution (only those under 37 C.F.R. § 1.16-1.18 and not under 37 C.F.R. § 1.19-1.21) from a specific account can also be submitted. This general authorization is usually included in the cover letter of the patent application. Finally, for the paying of the issue fee, authorization to charge a deposit account can only be made after the mailing of the notice of allowance. Be careful about accidentally abandoning an application if you forget about this last rule. Authorization to charge these deposit accounts must be clear and unambiguous in their communication.
Refunds are only allowed for fees paid by mistake or excess of the required amount at the time of the payment. This is provided electronically.
Small Entity Status – 50% reduction of fees
The small entity status provision applies to independent inventors, small businesses with less than 500 employees and nonprofit organizations. This 50% reduction in fees applies to filing fees, extension of time fees, revival fees, appeal fees, issue fees, statutory disclaimer fees and maintenance fees. However, they do not apply to petition and processing fees, document supply fees, certificate of correction fees, request for reexamination fees, international application fees and other miscellaneous fees under 37 C.F.R. § 1.21.
To claim small entity status and obtain its benefits one must file a statement which contains a statement of qualification as a small entity, statement regarding transferred rights and an English language translation if necessary. This submission should also be accompanied with a signature for authenticity. Small entity status needs to be claims for each patent application filed by the inventor which includes continuation applications. If the statement if filed within 3 months of payment of a full fee refunds can be giving to the payee.
America Invents Act – Micro EntitiesSection 11 of the America invents act creates a new class of applicants called micro-entities which receive a 75% discount on all fees that small entities receive a discount on. Requirements to meet micro-entity status are:
- The applicant must qualify as a small entity.
- The applicant cannot be named as an inventor on more than four previously filed US non-provisional patent applications.
- The applicant cannot have a gross income exceeding three times the median household income based on the previous year in which the application is being filed.
- The applicant is not under an obligation to sign, grant or convey a license or the ownership interest to an entity which has a gross income three times the median household income.