The U.S. Patent and Trademark Office (Office) has three separate general mailing addresses. The addresses are as follows:

The Office has separate mailing addresses for certain correspondence:

• (A) Certain court-related correspondence (e.g., summons and complaint) being delivered to the Office via the U.S. Postal Service (USPS) must be addressed:

General Counsel

United States Patent and Trademark Office

P.O. Box 1450

Alexandria, VA 22313-1450

• (B) Correspondence directed to the Office of Enrollment and Discipline (OED) Director relating to disciplinary proceedings pending before a Hearing Officer or the Director must be addressed:

Mail Stop 8

Office of the Solicitor

United States Patent and Trademark Office

P.O. Box 1450

Alexandria, Virginia 22313-1450

• (C) Maintenance fee payments not electronically submitted over the Internet and correspondence related to maintenance fees may be addressed to:

Director of the United States Patent and Trademark Office

Attn: Maintenance Fees

2051 Jamieson Ave., Ste. 300

Alexandria, VA 22314

• (D) A payment to replenish a deposit account may be addressed to:

Director of the United States Patent and Trademark Office

Attn: Deposit Accounts

2051 Jamieson Ave., Ste. 300

Alexandria, VA 22314

Persons filing correspondence with the Office should check the rules of practice, the Official Gazette, or the Office’s Internet Web site (http://www.uspto.gov)  to determine the appropriate mailing address for such correspondence.

Patent-related papers may be hand-carried to the Office. If the correspondence is hand-carried to the Office, with limited exceptions (see subsection I.A., above) it must be delivered to:

Customer Service Window

Randolph Building

401 Dulany Street

Alexandria, VA 22314

See MPEP § 502.

Trademark-related papers may be filed at the "walk-up" window located in the Trademark Assistance Center, Madison East, Concourse Level, Room C55, 600 Dulany Street, Alexandria, VA 22314.

As provided in 37 CFR 1.4(c), matters that are to be considered by different branches or sections of the USPTO must be contained in separate papers. The following form paragraph may be used to notify the applicant of this requirement when the applicant has filed a single paper containing distinct subjects, inquiries, or orders.

Those who correspond with the USPTO are strongly encouraged not to include correspondence which will have to be directed to different areas (e.g., Patents and Trademarks) of the Office in a single envelope. Including multiple papers in a single envelope increases the likelihood that one or more of the papers will be delayed before reaching the appropriate area. Placing the papers in separately addressed envelopes will reduce the number of actions being performed by the USPTO unnecessarily or inappropriately.

Pursuant to 37 CFR 1.1, correspondence intended for the USPTO must be mailed to P.O. Box 1450, Alexandria, VA 22313-1450, except as otherwise provided. Except for certain mail addressed incorrectly to the Office of the General Counsel (see 37 CFR 1.1 (a)(3)(v)), there will be no penalty for addressing a document to the wrong area within the Office, as long as one of the approved addresses is used. Use of the specific addresses listed within 37 CFR 1.1  is strongly encouraged because it will facilitate the process both for the Office and the filer. Accordingly, a new application incorrectly addressed to the Director will be treated the same as if the application was addressed to the specific Commissioner.

All mailed communications are received by the Incoming-Mail Section of the Office of Patent Application Processing (OPAP), which opens and distributes all official mail.

Special mail stops have been established to allow the forwarding of particular types of mail to appropriate areas of the Office as quickly as possible. A list of these mail stops is published weekly in the Official Gazette. Only the specified type of document for a particular mail stop should be placed in an envelope addressed to that mail stop.

If any documents other than the specified type identified for each department are addressed to that department, they will be significantly delayed in reaching the appropriate area for which they were intended.

All post allowance correspondence, except for petitions under 37 CFR 1.313 (c), should be addressed "Mail Stop Issue Fee." Any petition filed under 37 CFR 1.313 (c) to withdraw an application from issue after payment of the issue fee should be clearly marked "Petition under 37 CFR 1.313 (c)" and be either hand-carried to the Office of Petitions or submitted by facsimile to the Office of Petitions at (571) 273-0025. All other types of petitions, if transmitted by facsimile transmission to the Office, must be directed to the central facsimile number ((571) 273-8300).

Any paper filed after receiving the Issue notification should include the indicated patent number.

Since an allowed application may be issued as a patent within about four weeks of payment of the issue fee, all post allowance correspondence should be filed prior to the date of issue fee payment to ensure the papers reach the appropriate USPTO official for consideration before the date the application issues as a patent. See MPEP § 2732 for a discussion of the patent term adjustment impact of submitting amendments or other papers after a notice of allowance has been mailed.

If the above suggestions are adopted, the processing of both new and allowed applications could proceed more efficiently and promptly through the U.S. Patent and Trademark Office.

No official paper which relates to a pending application may be personally delivered to a TC except papers that are directed to an application subject to a secrecy order pursuant to 35 U.S.C. 181, or are national security classified and that are directed to Licensing and Review. Effective December 1, 2003, all official patent application related correspondence for organizations reporting to the Commissioner for Patents (e.g., TCs, the Office of Data Management, and the Office of Petitions) that is hand-carried (or delivered by other delivery services) must be delivered to the Customer Service Window, with a few exceptions.

There are two types of "Express Mail" delivery offered by the U.S. Postal Service — "Post Office to Addressee" and "Post Office to Post Office." The only type of service which can be used for "Express Mail" directed to the U.S. Patent and Trademark Office is the "Post Office to Addressee" service of the U.S. Postal Service. 37 CFR 1.10. This service provides for the use of a mailing label which clearly indicates the date on which a particular paper or fee was deposited.

The addresses that should be used for "Express Mail" sent to the U.S. Patent and Trademark Office are set forth in 37 CFR 1.1  (see MPEP § 501).

"Post Office to Post Office" Express Mail does not provide for delivery but instead is retained at the postal facility of the addressee for pickup. The Postal Service does not notify the addressee that this type of Express Mail has been received and is awaiting pickup. If not picked up, this mail is held for 15 days and then returned to the sender.

Therefore, since the U.S. Patent and Trademark Office does not have resources for picking up any mail, including Express Mail, the "Post Office to Post Office" Express Mail will not reach the U.S. Patent and Trademark Office.

See MPEP § 513 for the use of the Express Mail Mailing procedure of 37 CFR 1.10.

• (A) A document that is required by statute to be certified;
• (B) A national patent application specification and drawing (provisional or nonprovisional) or other correspondence for the purpose of obtaining an application filing date, other than a continued prosecution application filed under 37 CFR 1.53(d);
• (C) Color drawings submitted under 37 CFR 1.81, 1.83 -1.85, 1.152, 1.165, 1.173, or 1.437;
• (D) Correspondence in an interference which an Administrative Patent Judge orders to be filed by hand or "Express Mail";
• (E) Agreements between parties to an interference under 35 U.S.C. 135(c);
• (F) Correspondence in contested cases before the Board of Patent Appeals and Interferences, unless expressly authorized by the Board;
• (G) Correspondence to be filed in a patent application subject to a secrecy order under 37 CFR 5.1 -5.5 and directly related to the secrecy order content of the application;
• (H) An international application for patent;
• (I) A copy of the international application and the basic national fee necessary to enter the national stage, as specified in 37 CFR 1.495(b);
• (J) A request for reexamination under 37 CFR 1.510  or 37 CFR 1.913.

Applicants are reminded that the facsimile process may reduce the quality of the drawings, and the Office will generally print the drawings as received.

See MPEP § 1834.01 for a discussion concerning facsimile transmissions in PCT applications.

A person’s handwritten signature may be an original, or a copy thereof. The word original, as used herein, is defined as correspondence which is personally signed in permanent dark ink or its equivalent by the person whose signature appears thereon. Dark ink or equivalent permits traditional ink and newer non-liquid gel type ink technologies. Since incoming correspondence is electronically stored and scanned as a black and white image, a dark color is required so that the scanned image is legible. Where copies of correspondence are acceptable, photocopies or facsimile transmissions may be filed. For example, a photocopy or facsimile transmission of an original of an amendment, declaration (e.g., under 37 CFR 1.63  or 1.67 ), petition, issue fee transmittal form, authorization to charge a deposit account or a credit card, may be submitted in a patent application. Where copies are permitted, second and further generation copies (i.e., copy of a copy) are acceptable. For example, a client may fax a paper to an attorney and the attorney may then fax the paper to the Office, provided the paper is eligible to be faxed (see MPEP § 502.01). The original, if not submitted to the Office, should be retained as evidence of proper execution in the event that questions arise as to the authenticity of the signature reproduced on the photocopy or facsimile-transmitted correspondence. If a question of authenticity arises, the Office may require submission of the original.

37 CFR 1.4 (d)(1) covers all handwritten signatures, except for the handwritten signatures on the types of correspondence covered by 37 CFR 1.4 (e). The requirement in 37 CFR 1.4 (d)(1) of permanent dark ink or its equivalent relates to whether a handwritten signature is compliant and is not limiting on the type of handwritten signature that is covered by 37 CFR 1.4 (d)(1). Thus, 37 CFR 1.4 (d)(1) would cover handwritten signatures in red ink or in pencil; although, under 37 CFR 1.4 (d)(1) neither would be acceptable since red ink is not dark, and pencil is not permanent. A scanned image of a document that contains a handwritten signature filed via the Office’s electronic filing system is permitted as a copy under 37 CFR 1.4 (d)(1)(ii). A signature applied by an electric or mechanical typewriter directly to paper is not a handwritten signature, which is applied by hand. Accordingly, if a typewriter applied signature is used, it must meet the requirements of 37 CFR 1.4 (d)(2). Adding forward slashes to a handwritten (or hand-printed) ink signature that is personally applied will not cause the signature to be treated under 37 CFR 1.4 (d)(2). Such a signature will be treated under 37 CFR 1.4 (d)(1) or (e) with the slashes ignored. The end product from a manually applied hand stamp or from a signature replication or transfer means (such as by pen or by screen) appears to be a handwritten signature, but is not actually handwritten, and would be treated under 37 CFR 1.4 (d)(2). An electronic reproduction of a handwritten signature, e.g., scanned, that is electronically applied to a document is not a personally signed original document under 37 CFR 1.4 (d)(1)(i) and reproductions of such correspondence cannot be copies under 37 CFR 1.4 (d)(1)(ii).

The second type of signature is an S-signature. See 37 CFR 1.4 (d)(2). An S-signature is a signature inserted between forward slash marks, but not a handwritten signature as defined by 37 CFR 1.4 (d)(1) or (e). An S-signature includes any signature made by electronic or mechanical means, and any other mode of making or applying a signature not covered by either a handwritten signature of 37 CFR 1.4 (d)(1) or (e). The S-signature can be used with correspondence filed in the Office in paper, by facsimile transmission as provided in 37 CFR 1.6 (d), or via the Office electronic filing system as an attachment as provided in 37 CFR 1.6 (a)(4), for a patent application, a patent, or a reexamination proceeding. 37 CFR 1.4 (d) does not authorize filing correspondence by e-mail.

An S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and punctuation (i.e., commas, periods, apostrophes, or hyphens). "Letters" include English and non- English alphabet letters, and text characters (e.g., Kanji). Non-text, graphic characters (e.g., a smiley face created in the True Type Wing Dings font) are not permitted. "Arabic numerals" are the numerals 0, 1, 2, 3, 4, 5, 6, 7, 8, and 9, which are the standard numerals used in the United States. To accommodate as many varieties of names as possible, a signer may select any combination of letters, Arabic numerals, or both, for his or her S-signature under 37 CFR 1.4 (d)(2)(i). The person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature (e.g., /Dr. James T. Jones, Jr./). Additional forward slashes are not permitted as part of the S-signature. The presentation of just letters and Arabic numerals as an S-signature without the S-signature being placed between two forward slashes will be treated as an unsigned document.

Commas, periods, apostrophes, and hyphens are often found in names and will therefore be found in many S-signatures. These punctuation marks and appropriate spaces may be used with letters and Arabic numerals in an S-signature. A sample S-signature including punctuation marks and spaces, between two forward slashes, is: /John P. Doe/. Punctuation marks, per se, are not punctuation and are not permitted without proper association with letters and Arabic numerals. An S-signature of only punctuation marks would be improper (e.g., /- - -/). In addition, punctuation marks, such as question marks (e.g., /???/), are often utilized to represent an intent not to sign a document and may be interpreted to be a non-bona fide attempt at a signature, in addition to being improper.

Script fonts are not permitted for any portion of a document except the S-signature. See 37 CFR 1.52 (b)(2)(ii). Presentation of a typed name in a script font without the typed name being placed between the required slashes does not present the proper indicia manifesting an intent to sign and will be treated as an unsigned document.

37 CFR 1.4 (d)(2)(i) also defines who can insert an S-signature into a document. 37 CFR 1.4 (d)(2)(i) requires that a person, which includes a practitioner, must insert his or her own signature using letters and/or Arabic numerals, with appropriate commas, periods, apostrophes, or hyphens as punctuation and spaces. The "must insert his or her own signature" requirement is met by the signer directly typing his or her own signature using a keyboard. The requirement does not permit one person (e.g., a secretary) to type in the signature of a second person (e.g., a practitioner) even if the second person directs the first person to do so. A person physically unable to use a keyboard, however, may, while simultaneously reviewing the document for signature, direct another person to press the appropriate keys to form the S-signature.

For consistency purposes, and to avoid raising a doubt as to who has signed, the same S-signature should be utilized each time, with variations of the signature being avoided. The signer should review any indicia of identity of the signer in the body of the document, including any printed or typed name and registration number, to ensure that the indicia of identity in the body of the document is consistent with how the document is S-signed. Knowingly adopting an S-signature of another is not permitted.

While an S-signature need not be the name of the signer of the document, the Office strongly suggests that each signer use an S-signature that has his or her full name. The Office expects that where persons do not sign with their name it will be because they are using an S-signature that is the usual S-signature for that person, which is his or her own signature, and not something that is employed to obfuscate or misidentify the signer. Titles may be used with the signer’s S-signature and must be placed between the slash marks (e.g., /Dr. John Doe/), or with the printed or typed version of the name.

37 CFR 1.4 (d)(2)(ii) requires that a practitioner (37 CFR 1.32 (a)(1)) signing pursuant to 37 CFR 1.33 (b)(1) or (b)(2) must place his or her registration number, either as part of, or adjacent, his or her S-signature. A number character (#) may only be used in an S-signature if it is prior to a practitioner’s registration number that is part of the S-signature. When a practitioner is signing as an assignee, or as an applicant (inventor) pursuant to 37 CFR 1.33 (b)(3) or (b)(4), a registration number is not required and should not be supplied to avoid confusion as to which basis the practitioner is signing, e.g., as a practitioner or as the assignee.

The signer’s name must be (A) presented in printed or typed form preferably immediately below or adjacent the S-signature, and (B) reasonably specific enough so that the identity of the signer can be readily recognized. See 37 CFR 1.4 (d)(2)(iii)(A). The printed or typed name requirement is intended to describe any manner of applying the signer’s name to the document, including by a typewriter or machine printer. It could include a printer (mechanical, electrical, optical, etc.) associated with a computer or a facsimile machine but would not include manual or hand printing. See 37 CFR 1.52 (a)(1)(iv). The printed or typed name may be inserted before or after the S-signature is applied, and it does not have to be inserted by the S-signer. A printed or typed name appearing in the letterhead or body of a document is not acceptable as the presentation of the name of the S-signer.

37 CFR 1.4 (d)(4)(i) establishes that the presentation to the Office (whether by signing, filing, submitting, or later advocating) of any paper by a party, whether a practitioner or non- practitioner, constitutes a certification under 37 CFR 11.18 (b) of this chapter.

37 CFR 1.4 (d)(4)(ii)(A) establishes certifications as to the signature of another for a person submitting a document signed by another under 37 CFR 1.4 (d)(2) . Thus, the submitting person is obligated to have a reasonable basis to believe that the person whose signature is present on the document actually inserted the signature on the document. Such reasonable basis does not require an actual knowledge but does require some reason to believe the signature is appropriate. For example, where a practitioner e-mails a 37 CFR 1.63  declaration to an inventor for signature by the inventor and receives an executed declaration by the inventor in return from the inventor, reasonable basis would exist. Where an assignee was involved in the transmission of the declaration form and/or the executed declaration, an additional showing of chain of custody (e.g., e-mail chain with attached documents from the inventor to the assignee to the practitioner filing the declaration) involving the assignee would be required. Additionally, evidence of authenticity should be retained. This may involve retaining the e-mails sent to the inventor and any cover letter or e-mail (with the signed document as an attachment) back to the practitioner from the inventor in the example relating to execution of a 37 CFR 1.63  declaration.

37 CFR 1.4 (d)(4)(ii)(B) establishes that a person inserting a signature under 37 CFR 1.4 (d)(2) in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature. This is meant to prohibit a first person from requesting a second person to insert the first person’s signature in a document. While the certification is directed at the person inserting another S- signature, the person requesting the inappropriate insertion may also be subject to sanctions.

37 CFR 1.4 (d)(4)(ii)(C) establishes that violations of the certifications as to the signature of another or a person’s own signature, set forth in 37 CFR 1.4 (d)(4)(ii)(A) and (B), may result in the imposition of sanctions under 37 CFR 11.18  (c) and (d).

Pursuant to 37 CFR 1.4 (h), the Office may additionally inquire in regard to a signature so as to identify the signer and clarify the record where the identity of the signer is unclear. An example of when ratification or confirmation of a signature may be required is when there are variations in a signature or whenever a name in an S-signature is not exactly the same as the name indicated as an inventor, or a practitioner of record. Hence, whatever signature is adopted by a signer, that signature should be consistently used on all documents. Also addressed is the treatment of variations in a signature or where a printed or typed name accompanies the S-signature but the identity of the signer is unclear. In such cases, the Office may require ratification or confirmation of a signature. Ratification requires the person ratifying to state he/she personally signed the previously submitted document as well as, if needed, the submission of a compliant format of the signature. Confirmation includes submitting a duplicate document, which is compliantly signed if the previous signature was noncompliant (as opposed to unclear).

In lieu of ratification, the Office may require a resubmission of a properly signed duplicate document. Resubmission of a document may be required, for example, where ratification alone is inappropriate, such as where the image of the signature is of such poor quality (e.g., illegible font) that the Office is unable to store or reproduce the document with the signature image.

Ratification or confirmation alone does not provide a means for changing the name of a signer. For example, when an inventor changes her/his name and the inventor desires to change her/his name in the application, such change must be accompanied by a petition under 37 CFR 1.182 and, preferably, an Application Data Sheet (ADS). See MPEP § 605.04(c).

In addition, the Office may require evidence of authenticity where the Office has reasonable doubt as to the authenticity (veracity) of the signature. Evidence of authenticity may include evidence establishing a chain of custody of a document from the person signing the document to the person filing the document. Proper evidence of a chain of custody will aid in avoiding the impact of repudiation of a signature.

Where there has been a bona fide attempt to follow the rule, but where there is some doubt as to the identity of the signer of a signed document, the Office may require ratification of the signature. Note, ratification would only be an effective remedy if the signer was a proper party to have executed the document to be ratified. For example, a practitioner of record may ratify his or her signature on an amendment, but not the signature of a secretary who is not a practitioner or inventor in the application. A registered practitioner may, however, ratify the amendment made by another registered practitioner but may not ratify a document required to be signed by an inventor, such as a 37 CFR 1.63  declaration. Similarly, an inadvertent typographical error or simple misspelling of a name will be treated as a bona fide attempt to follow the rule, which would require ratification only where there is some doubt as to the identity of the signer rather than be treated as an unsigned paper requiring resubmission. Where there is an obvious typographical error so that the Office does not have some doubt as to the identity of the signer (and therefore notification to applicant is not needed), further action by applicant would not be required and, where appropriate, the obvious error will be noted in the record.

The inadvertent failure to follow the format and content of an S-signature will be treated as a bona fide attempt at a signature but the paper will be considered as being unsigned correspondence. Examples of correspondence that will be treated as unsigned are (A) the S-signature is not enclosed in forward slashes, (B) the S-signature is composed of non-text graphic characters (e.g., a smiley face) and not letters and numerals, and (C) the S-signature is not a name and there is no other accompanying name adjacent or below the S-signature so that the identity of the signer cannot be readily recognized.

If the signer, after being required to ratify or resubmit a document with a compliant signature, repeats the same S-signature in reply without appropriate correction, the reply will not be considered to be a bona fide attempt to reply, and no additional time period will be given to submit a properly signed document.

When a document that is required by statute to be certified must be filed (such as a certified copy of a foreign patent application pursuant to 35 U.S.C. 119  or a certified copy of an international application pursuant to 35 U.S.C. 365 ) a copy of the certification, including a photocopy or facsimile transmission, will not be acceptable. The requirement for an original certification does not apply to certifications such as required under 37 CFR 1.8  since these certifications are not required by statute.

If security and confidentiality cannot be attained for a specific use, transaction, or activity, then that specific use, transaction, or activity shall NOT be undertaken/conducted.

All use of the Internet by Patent Organization employees, contractors, and consultants shall be conducted in a manner that ensures compliance with confidentiality requirements in statutes, including 35 U.S.C. 122, and regulations. Where a written authorization is given by the applicant for the USPTO to communicate with the applicant via Internet e-mail, communications via Internet e-mail may be used.

Backup, archiving, and recovery of information sent or received via the Internet is the responsibility of individual users. The OCIO does not, and will not, as a normal practice, provide backup and recovery services for information produced, retrieved, stored, or transmitted to/from the Internet.

Communications via Internet e-mail are at the discretion of the applicant.

Without a written authorization by applicant in place, the USPTO will not respond via Internet e-mail to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122. A paper copy of such correspondence will be placed in the appropriate patent application.

The following is a sample authorization form which may be used by applicant:

"Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with me concerning any subject matter of this application by electronic mail. I understand that a copy of these communications will be made of record in the application file."

A written authorization may be withdrawn by filing a signed paper clearly identifying the original authorization. The following is a sample form which may be used by applicant to withdraw the authorization:

"The authorization given on______, to the USPTO to communicate with me via the Internet is hereby withdrawn. I understand that the withdrawal is effective when approved rather than when received."

Where a written authorization is given by the applicant, communications via Internet e-mail, other than those under 35 U.S.C. 132  or which otherwise require a signature, may be used. In such case, a printed copy of the Internet e-mail communications MUST be given a paper number, entered into the Patent Application Locating and Monitoring System (PALM) and entered in the patent application file. A reply to an Office action may NOT be communicated by applicant to the USPTO via Internet e-mail. If such a reply is submitted by applicant via Internet e-mail, a copy will be placed in the appropriate patent application file with an indication that the reply is NOT ENTERED.

USPTO employees are NOT permitted to initiate communications with applicants via Internet e-mail unless there is a written authorization of record in the patent application by the applicant.

All reissue applications are open to public inspection under 37 CFR 1.11 (a) and all papers relating to a reexamination proceeding which have been entered of record in the patent or reexamination file are open to public inspection under 37 CFR 1.11 (d). USPTO employees are NOT permitted to initiate communications with applicant in a reissue application or a patentee of a reexamination proceeding via Internet e-mail unless written authorization is given by the applicant or patentee.

The misrepresentation of a sender’s identity (i.e., spoofing) is a known risk when using electronic communications. Therefore, Patent Organization users have an obligation to be aware of this risk and conduct their Internet activities in compliance with established procedures.

Internet e-mail must be initiated by a registered practitioner, or an applicant in a pro se application, and sufficient information must be provided to show representative capacity in compliance with 37 CFR 1.34. Examples of such information include the attorney registration number, attorney docket number, and patent application number.

Once e-mail correspondence has been received from the applicant, as set forth in Patent Internet Usage Policy Article 4, such correspondence must be responded to appropriately. The Patent Examiner may respond to an applicant’s e-mail correspondence by telephone, fax, or other appropriate means.

Internet e-mail shall NOT be used to conduct an exchange of communications similar to those exchanged during telephone or personal interviews unless a written authorization has been given under Patent Internet Usage Policy Article 5 to use Internet e-mail. In such cases, a paper copy of the Internet e-mail contents MUST be made and placed in the patent application file, as required by the Federal Records Act, in the same manner as an Examiner Interview Summary Form is entered.

Within the Patent Organization, any questions regarding Internet usage policy should be directed to the user’s immediate supervisor. Non-USPTO personnel should direct their questions to the Office of the Deputy Commissioner for Patent Examination Policy.

EFS-Web is the United States Patent and Trademark Office’s (USPTO’s) system for electronic filing of patent correspondence.  EFS-Web is accessible via the Internet on the USPTO Web site.  The system utilizes standard Web-based screens and prompts to enable users to submit patent documents in Portable Document Format (PDF) directly to the USPTO.  Users may electronically submit most patent applications, reexamination requests, and other patent-related documents securely using EFS-Web.  Users may also use EFS-Web to submit payments of most patent fees including patent application filing fees.  Users need not provide a duplicate copy of any document filed through EFS-Web unless the USPTO specifically requires the filing of a duplicate in a particular situation.  Users may review and check their electronic submissions including their attached PDF files before submitting the documents to the USPTO.  After submitting the documents via EFS-Web, the system will display a page that states that the USPTO has received the user’s submission.  The users, generally within two hours, will receive an Electronic Acknowledgement Receipt of a successful submission received by the USPTO.  The processing of fees may delay the issuance of the Electronic Acknowledgement Receipt. The Electronic Acknowledgement Receipt is the electronic equivalent of a postcard receipt. See MPEP § 503.  Most documents submitted via EFS-Web will be viewable via the Patent Application Information Retrieval (PAIR) system within an hour after the USPTO receives the documents if the users have associated their applications with their customer numbers.  Therefore, users will be able to immediately check the contents of their applications for completeness and accuracy of their electronic submissions.

A user may become a registered user by obtaining a PKI digital certificate.  A registered user may file most patent applications and follow-on documents in a patent application, but a non-registered user is not permitted to file most follow-on documents in a patent application. 

EFS-Web is a PDF-based filing system.  Accordingly, all EFS-Web submissions are required to be in PDF format unless otherwise indicated in this notice.  EFS-Web permits submission of:  (A) the American Standard Code of Information Interchange (ASCII) text files (.TXT) to submit bio-sequence listings, computer program listings, mega tables, and Complex Work Units; and (B) PCT-EASY.zip compressed files to submit the Request form generated by PCT-SAFE (operated in PCT-EASY mode) in international applications with the United States Receiving Office.  See subsections IX. and X. below for more information on ASCII text files and electronic filing of international applications, respectively.  In addition, the USPTO provides users with PDF EFS-Web fillable forms, such as the Provisional Application for Patent Cover Sheet, the Information Disclosure Statement, the Application Data Sheet, Petition to Make Special Under Accelerated Examination Program, Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent, Request for Continued Examination (RCE) Transmittal, and Petition to Make Special Based on Age.  When users submit information using an EFS-Web fillable form, the information will directly load into the USPTO databases which will increase accuracy and facilitate faster processing.  Users may use other USPTO-created PDF fillable forms available on the USPTO Web site, or user-created forms, and submit the completed forms via EFS-Web.  The information entered on these forms, however, will not be automatically loaded into the USPTO databases.

To the extent that any USPTO regulation is inconsistent with the procedures for EFS-Web, the regulation will be interpreted in a manner to support EFS-Web. USPTO’s policies concerning documents submitted electronically using EFS-Web, including patent applications and requests for reexamination, as well as follow-on documents in patent applications and reexamination proceedings are set forth below.

Registered users are permitted to file follow-on documents in the patent applications and reexamination proceedings listed above via EFS-Web.  Follow-on documents are documents filed after the initial submission of the application or request for reexamination, which include, but are not limited to, the following:  amendments, information disclosure statements (IDS), replies to Office actions and notices, evidence, petitions, and other documents filed after the filing of a patent application or request for reexamination.  In addition, registered users may file copies of the patent application (e.g., a copy of the amended specification including the claims, and drawings, for the purposes of publication of the application) for the following pre-grant (eighteen-month) publication requests via EFS-Web:  amended publication under 37 CFR 1.215(c), redacted publication under 37 CFR 1.217, early publication under 37 CFR 1.219, and voluntary publication or republication under 37 CFR 1.221(a).  See subsection VII below for more information on filing these publication requests via EFS-Web.  Follow-on documents also include any documents submitted on the same day as the application, but after the initial submission.  In reexamination proceedings, both the reexamination requester and the patent owner may file documents via EFS-Web, if they are registered users.  Registered users may also file a second or subsequent submission for patent term extension under 35 U.S.C. 156  in a patent file via EFS-Web.

Non-registered users are not permitted to file follow-on documents via EFS-Web, except those listed in items 8-10 above.  Non-registered users may file follow-on documents by mail (with a certificate of mailing in accordance with 37 CFR 1.8 ), Express Mail from USPS in accordance with 37 CFR 1.10, or hand delivery.

The Electronic Acknowledgement Receipt establishes the date of receipt by the USPTO of documents submitted via EFS-Web.  The electronic documents are itemized in the Electronic Acknowledgement Receipt, which will contain a full listing of the documents submitted to the USPTO as described by the user during the submission process, including the count of pages and/or byte sizes for each document.  Thus, the Electronic Acknowledgement Receipt is the electronic equivalent of the postcard receipt described in MPEP § 503.

The official application filing date will be noted on the Filing Receipt (37 CFR 1.54 ) after the submitted application parts are reviewed for compliance with 35 U.S.C. 111  (or for compliance with 35 U.S.C. 371  for entry into the U.S. national stage of an international application).  The filing date is based on the dates indicated on the Electronic Acknowledgement Receipt assuming that, after review, the documents submitted are found to be entitled to an application filing date.  Likewise the official reexamination filing date will be noted on the "Notice of … Reexamination Request Filing Date," after Central Reexamination Unit (CRU) review for filing date compliance, and is based on the dates indicated on the Electronic Acknowledgement Receipt.

If the official version of any document received by EFS-Web is lost, damaged or rendered unreadable and if it cannot be recovered from the stored files received by electronic submission, then the user will be promptly notified.  Such events are expected to be rare.  In that situation, the user may have to resubmit any lost document and petition for the original filing date.  The user would be required to present: (1) the Electronic Acknowledgement Receipt; (2) a copy of the missing files as submitted; and (3) a signed petition accompanied by a statement stating that the attached files are the same as those originally submitted and mentioned in the Electronic Acknowledgement Receipt for that application number (e.g., a petition under 37 CFR 1.53 (e) or 37 CFR 1.182  with the appropriate petition fee under 37 CFR 1.17 (f)).

The Electronic Acknowledgement Receipt and statement will serve as prima facie evidence that the resubmitted documents are the same as those submitted on the date of receipt, except when the document description used by the user does not match the document.  For example, if an applicant originally filed a specification and a set of claims and used the correct document descriptions for a specification and a set of claims, then the Electronic Acknowledgement Receipt will serve as prima facie evidence that the applicant filed the specification and set of claims on the original filing date.  However, if the applicant actually filed two sets of claims, the Electronic Acknowledgement Receipt will not serve as prima facie evidence that the applicant filed a specification and a set of claims (even though the applicant used the document descriptions for a specification and a set of claims).  Note the Electronic Acknowledgement Receipt only indicates that the USPTO received what was actually sent, as opposed to what may have been intended to be transmitted.  Users should exercise the same care in preparing and preserving a copy of a submission in electronic form as in paper.

Users should follow the instructions and guidelines for EFS-Web provided on the USPTO Web site.  Before clicking the SUBMIT button, the user should check whether the correct documents have been attached to the submission, and whether the information related to the submission has been entered correctly.  Once the user clicks the SUBMIT button on the Confirm and Submit screen, the submission will be electronically sent to the USPTO.  A submission is officially filed at the USPTO when the documents are received by the USPTO (Eastern Time).  Use of EFS-Web in a manner significantly in violation of the instructions and guidelines for EFS-Web provided on the USPTO Web site may result in non-entry of the submission or failure to accord a filing date in the event the USPTO does not fully, successfully, and officially receive all of the elements necessary to obtain a filing date for an intended submission.  Furthermore, electronic files submitted via EFS-Web must be free of executables, worms, viruses, or any other type of potentially malicious content.  Please note that 18 U.S.C. 1030 imposes a duty on users not to intentionally cause damage to a federal government system.

The USPTO requires PKI certificates to meet federal government computer system authentication guidelines as defined by the National Institute of Standards and Technology (NIST) and the Office of Management and Budget (OMB).  The required evaluation of EFS-Web and PAIR determined that level three authentication was needed; this is met by the USPTO’s PKI.

Only a PKI certificate holder (or the designated employee under the certificate holder’s direction and control) can submit follow-on documents.  This preserves confidentiality, and is consistent with power of attorney and correspondence regulations.  In order to obtain a PKI certificate, the user must be a registered practitioner (i.e., an attorney or agent) or an inventor, and complete the appropriate paperwork (e.g., review the PKI subscriber agreement and complete the certificate action form, available on the USPTO Web site).  Once the user has a PKI certificate, the user can authenticate himself or herself to the USPTO through the EFS-Web sign-on.  This will generate a secure, encrypted connection with the USPTO.

For users that do not have, or do not wish to use, a PKI certificate to authenticate to the USPTO, they may still submit new application filings only via a non-authenticated workflow.  The user would go to the EFS-Web page and choose to submit without a PKI certificate as a non-registered user, which would generate a Transport Layer Security (TLS) connection for the session, thus allowing secure data transmission to the USPTO.  Non-registered users have the same level of protection for filing as a registered user, but are limited to submission of initial filings.  This practice minimizes the risk of improperly-filed third party submissions and other documents.  Non-registered users may file follow-on documents by mail (with a certificate of mailing in accordance with 37 CFR 1.8 ), Express Mail from USPS in accordance with 37 CFR 1.10, or hand delivery.

Note:  Users are advised that the USPTO may revoke a user’s digital PKI certificate if the user makes an improper submission through EFS-Web. 

Signatures, other than handwritten signatures meeting the standard of 37 CFR 1.4(d)(1), included in image attachments submitted via EFS-Web are governed by the S-signature requirements of 37 CFR 1.4(d)(2).

If the signer is submitting an application through EFS-Web as PDF files, he or she should apply either a handwritten signature in compliance with 37 CFR 1.4(d)(1)  or an S-signature in compliance with 37 CFR 1.4(d)(2)  before scanning the document or converting it to a PDF file.  Any follow-on documents, such as an amendment filed in an application, must also be signed in accordance with 37 CFR 1.33(b).  Even though a new patent application is entitled to a filing date if it complies with all the statutory requirements set forth in 35 U.S.C. 111 (a) or (b), it is noted that when filing a new application by EFS-Web, a signed transmittal form or a signed application data sheet (ADS) is recommended for identification purposes, and any nonpublication request and certification that accompany the application must be signed.

A legible electronic image of a handwritten signature inserted, or copied and pasted by the person signing the correspondence into an application document may be considered to be an acceptable signature.  The legible image of the handwritten signature of the person signing the correspondence must be inserted by the person.  Additionally, the signature must be surrounded by a first single forward slash mark before the electronic image and a second single forward slash mark after the electronic image.  That is, the legible electronic image of a handwritten signature must be enclosed between two single forward slashes and the signer’s name is indicated below or adjacent the signature as per 37 CFR 1.4(d)(2).  The slashes may be inserted into the document prior to the insertion of the signature.

The presentation to the USPTO (whether by signing, filing, submitting, or later advocating) of any document constitutes a certification under 37 CFR 11.18(b).  See 37 CFR 1.4(d)(4).

EFS-Web enables users to electronically submit pre-grant publication requests for amended publication, redacted publication, early publication, voluntary publication, or republication under 37 CFR 1.215, 1.217, 1.219, and 1.221 (a) via EFS-Web.  When filing pre-grant publication requests via EFS-Web, the form-fillable application data sheet (PTO/SB/14) is required to be used for fulfilling the bibliographic data requirements.  An electronic submission for voluntary publication, amended publication, republication (37 CFR 1.221(a) ) or redacted publication must be submitted as a "Pre-Grant Publication" by selecting the "Pre-Grant Publication" radio button on the EFS-Web data collection screen.  It is not sufficient for a user to submit a document via EFS-Web requesting amended publication, redacted publication, early publication, voluntary publication, or republication without also selecting the "Pre-Grant Publication" radio button on the EFS-Web data collection screen.

The USPTO prefers black and white line drawings as prescribed in 37 CFR 1.84(a)(1)  when applicants are required to submit drawings in patent applications.  As stated in 37 CFR 1.84(a)(2)  and (b), photographs and color drawings are not ordinarily permitted in utility and design patent applications, but the USPTO will accept photographs and color drawings in utility or design 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 are required to comply with PCT Rule 11.13, which does not permit color drawings.   Furthermore, there is no provision for photographs.  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.

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.  Additionally, since color drawings are not permitted in international applications, color drawings and color photographs filed in a national stage application will be treated as an amendment and will be objected to if they introduce new matter.

EFS-Web enables users to electronically file international applications under the PCT with the United States Receiving Office.  Applicants are advised that EFS-Web may be used to file either: (1) international applications in fully electronic form; or (2) follow-on papers to previously filed international applications, regardless of the manner in which the international application was initially filed. The required page size for international applications filed via EFS-Web in PDF format is A4 (29.7 cm x 21 cm).  See PCT Rule 11.5.

EFS-Web permits users to submit PCT-EASY.zip files created by PCT-SAFE when operated in the PCT-EASY mode.  A PCT-EASY.zip file will contain the Request and fee calculation sheet in PDF format.  All other documents or application parts (e.g., description, claims, drawings and abstract) MUST be separately prepared and attached as PDF documents, except for sequence listings.  See subsection X.B. below for more information on sequence listings.  PCT-SAFE permits users to create and electronically sign using an S-signature the PCT Request Form and the Declaration of Inventorship for the purposes of filing via EFS-Web with the United States Receiving Office.  PCT-SAFE when operated in the PCT-EASY mode creates a validated PCT Request which will entitle the applicant to a reduction of the international filing fee.  If applicant chooses not to use PCT-SAFE to create the Request and fee calculation sheet, the applicant may use Form PCT/RO/101 (or equivalent) for the Request and attach it as a PDF document.  More information regarding filing international applications is available on the USPTO Web site (http://www.uspto.gov/ebc/portal /efs/dct_pct_file_new_tutorial.pdf) .

The term "international application" as used herein refers to an international application filed under the PCT where papers have not been submitted to enter the national stage under 35 U.S.C. 371.  The term "national stage" as used in this notice refers to an international application where papers have been submitted to enter the national stage under 35 U.S.C. 371.

If a receipt for any item (e.g., paper or fee) filed in the USPTO is desired, it may be obtained by enclosing with the paper a self-addressed postcard specifically identifying the item. To ensure the receipt of return receipt postcards, users must either: (A) purchase already stamped postcards from the United States Postal Service (USPS) or affix postage stamps to their postcards; or (B) if a postage meter is used, ensure that the meter postmark does not show the date. Any return receipt postcard containing a dated meter postmark may not be delivered by the USPS to the address provided on the postcard. Users are reminded that they are solely responsible for placing the proper postage on self-addressed postcards that are submitted to the USPTO for the purpose of obtaining a receipt for correspondence being filed in the USPTO. Users should check with the USPS regarding postage and what size cards are acceptable to the USPS. Any return receipt postcard that does not contain sufficient postage or is not acceptable may not be delivered by the USPS to the address provided on the postcard, and, if returned to the USPTO, may be discarded.

The USPTO will stamp the receipt date on the postcard and place it in the outgoing mail. A postcard receipt which itemizes and properly identifies the items which are being filed serves as prima facie evidence of receipt in the USPTO of all the items listed thereon on the date stamped thereon by the USPTO.

The identifying data on the postcard should be so complete as to clearly identify the item for which a receipt is requested. For example, the postcard should identify the applicant’s name, application number (if known), confirmation number (if known), filing date, interference number, title of the invention, etc. The postcard should also identify the type of paper being filed, e.g., new application, affidavit, amendment, notice of appeal, appeal brief, drawings, fees, motions, supplemental oath or declaration, petition, etc., and the number of pages being submitted. If a new application is being filed, all parts of the application being submitted should be separately listed on the postcard, e.g., the number of pages of specification (including written description, claims and abstract), number of claims, number of sheets of drawings, number of pages of oath/declaration, number of pages of cover sheet (provisional application).

The postcard receipt will not serve as prima facie evidence of receipt of any item which is not adequately itemized on the postcard. For example, merely listing on the postcard "a complete application" or "patent application" will not serve as a proper receipt for each of the required components of an application (e.g., specification (including claims), drawings (if necessary), oath or declaration and the application filing fee) or missing portions (e.g., pages, sheets of drawings) of an application if one of the components or portion of a component is found to be missing by the USPTO. Each separate component should be specifically and properly itemized on the postcard. Furthermore, merely incorporating by reference in the postcard receipt, the items listed in a transmittal letter will not serve as prima facie evidence of receipt of those items.

The person receiving the item(s) in the USPTO will check the listing on the postcard against the item(s) being filed to be sure they are properly identified and that all the items listed on the postcard are presently being submitted to the USPTO. If any of the items listed on the postcard are not being submitted to the USPTO, those items will be crossed off and the postcard initialed by the person receiving the items.

Upon return of a postcard receipt from the USPTO, the postcard receipt should be promptly reviewed by the person who filed the items to ensure that every item specifically denoted on the postcard was received by the USPTO. If the postcard receipt has been annotated to indicate that a particular item denoted on the postcard was not received by the USPTO, the postcard receipt will not serve as prima facie evidence of receipt of that item in the USPTO.

For acknowledgement receipt that is automatically and electronically sent to the person filing correspondence via the USPTO electronic filing system (EFS-Web), see MPEP § 502.05.

If the nonprovisional application papers filed under 37 CFR 1.53(b)  do not include at least a specification containing a description and at least one claim and a drawing, if necessary under 35 U.S.C. 113  (first sentence), or if the submitted application papers are too informal to be given a filing date, the case is held in the Office of Patent Application Processing (OPAP) as an incomplete application and the applicant is informed of the shortcomings of the papers. No filing date is granted until the incompleteness is corrected.

A Notice of Incomplete Application is prepared and mailed by OPAP when nonprovisional application papers filed under 37 CFR 1.53(b)  are deemed incomplete under 35 U.S.C. 111(a).

Such incompleteness may consist of the omission of any one of the following parts of an application. The component parts of a nonprovisional application filed under 37 CFR 1.53(b)  necessary to obtain a filing date are:

See 37 CFR 1.53(b).

Even though an application purports to include the component parts necessary to obtain a filing date, the application will still be held to be incomplete and a filing date will be refused if the component parts fail to satisfy the requirements set forth above.

For example, if the documents purporting to be a specification are so obviously informal and incoherent that they clearly do not constitute a specification as required by 35 U.S.C. 112  and 37 CFR 1.71, the application is not acceptable for examination and it will not be accorded a filing date until corrections are made. The filing date of the application will be the date the corrections are made.

Filing dates are accorded to nonprovisional applications filed under 37 CFR 1.53(b)  submitted without the names of all the inventors, the required fees (basic filing fee, and search and examination fees (for applications filed on or after December 8, 2004)) and/or the oath or declaration. In such cases, a notice is mailed by OPAP requiring the appropriate fees and the oath or declaration (which must include the names of all the inventors) be filed, accompanied by a surcharge (37 CFR 1.16(f) ). For applications filed on or after December 8, 2004 but prior to July 1, 2005, which have been accorded a filing date under 37 CFR 1.53 (b), if the search and/or examination fees are paid on a date later than the filing date of the application, the surcharge under 37 CFR 1.16 (f) is not required. For applications filed on or after July 1, 2005, which have been accorded a filing date under 37 CFR 1.53 (b), if any of the basic filing fee, the search fee, or the examination fee are paid on a date later than the filing date of the application, the surcharge under 37 CFR 1.16 (f) is required. In addition to the basic filing fee, the search fee, and the examination fee, 37 CFR 1.16 (s) sets forth the application size fee for any application (including any reissue applications) filed under 35 U.S.C. 111  on or after December 8, 2004 the specification and drawings of which, excluding a sequence listing or computer program listing filed in an electronic medium (see 37 CFR 1.52 (f)), exceed 100 sheets of paper. The application size fee does not apply to any applications filed before December 8, 2004. The application size fee applies for each additional 50 sheets or fraction thereof over 100 sheets of paper. Any sequence listing in an electronic medium in compliance with 37 CFR 1.52 (e) and 37 CFR 1.821 (c) or (e), and any computer program listing filed in an electronic medium 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). The application size fee required by 37 CFR 1.16 (s) must be paid prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment (37 CFR 1.53 (f)(3)). See MPEP § 607 for additional information regarding fees. In addition to the basic filing fee, the search fee, the examination fee, and the application size fee required under 37 CFR 1.16, the prescribed filing fee (37 CFR 1.51(b)(4) ) may include additional fees for filing more than 3 independent claims (37 CFR 1.16(h) ), for filing a total of more than 20 claims (37 CFR 1.16(i) ), or for filing a multiple dependent claim (37 CFR 1.16(j) ). In those cases where the basic filing fee, the search fee, the examination fee, and the application size fee are paid, but additional fees are required, under 37 CFR 1.16, a notice is mailed by OPAP or the Technology Center (TC), requiring that the balance of the prescribed fee be paid.

Occasionally, nonprovisional applications filed under 37 CFR 1.53(b)  which have already been signed by the inventors contain informal claims that the attorney or agent feels should not be present in the application upon filing. However, since alteration after execution by the inventor and before filing is prohibited, such applications must be filed by the attorney or agent in the form in which they were executed by the inventors. A nonprovisional application filed under 37 CFR 1.53(b)  may be filed with a preliminary amendment which is limited to the cancellation of claims. Any preliminary amendment, regardless of when it is filed, must be in compliance with 37 CFR 1.121, e.g., it must include a complete listing of all of the claims. Therefore, the Office strongly recommends that applicants file their applications with a specification containing only the desired set of claims, rather than filing the application with a preliminary amendment canceling claims. If such a preliminary amendment canceling claims is filed, it will diminish the number of claims to be considered for calculation of the filing fee. Any other changes to the application should be the subject of a separate amendment which may be entered after the filing fee has been calculated and the filing date granted. If a preliminary amendment which cancels claims does not accompany the application at the time the application is filed, the notification of insufficient fee will inform the inventor, attorney, or agent of the possibility of correcting the insufficient payment by either (1) paying the additional required fee amount, or (2) filing an amendment which cancels claims so that the remaining claims are covered by the fee submitted upon filing. However, no refund will be made once the fee for claims is properly paid, even though claims are later canceled, unless a petition for express abandonment under 37 CFR 1.138 (d) is granted. See MPEP § 711.01.

In the past, OPAP has reviewed the claimed subject matter of newly filed nonprovisional applications to determine whether a filing date should be granted. Such applications included those drawn to perpetual motion devices and methods of doing business and applications for reissue signed by assignees or filed more than 2 years after the grant of the patent which appear to contain broadened reissue claims.

Under the current practice, a filing date is normally granted in such cases if the nonprovisional application filed under 37 CFR 1.53(b)  is otherwise sufficient and then forwarded to the examiner for consideration and decision during the regular course of examination.

If the provisional application papers do not include at least a specification containing a description and a drawing, if necessary under 35 U.S.C. 113  (first sentence) or if the submitted application papers are too informal to be given a filing date, the case is held in OPAP as an incomplete application and the applicant is informed of the shortcomings of the papers. No filing date is granted until the incompleteness is corrected.

Such incompleteness may consist of the omission of any one of the following parts of an application. The component parts of a provisional application necessary to obtain a filing date are:

Even though an application purports to include the component parts necessary to obtain a filing date, the application will still be held to be incomplete and a filing date will be refused if the component parts fail to satisfy the requirements set forth above. For example, if the documents purporting to be a specification are so obviously informal and incoherent that they would clearly not constitute a specification as required by 35 U.S.C. 112, first paragraph, and 37 CFR 1.71, the application would not be acceptable and would not be accorded a filing date until corrections are made. The filing date of the application would be the date the corrections were made. A provisional application will not be examined. However, a provisional application which does not include a cover sheet (37 CFR 1.51(c)(1)),  which may be an application data sheet (37 CFR 1.76 ) or a cover letter, identifying the application as a provisional application, will be treated as a nonprovisional application filed under 37 CFR 1.53(b). See 37 CFR 1.53(c) (1).

NOTE: No amendment, other than to make the provisional application comply with the patent statute and all applicable regulations, may be made to the provisional application after the filing date of the provisional application. See 37 CFR 1.53(c).

An application is informal if it is typed on both sides of the paper, or is not permanent, legible, or reproducible. If such informalities are timely corrected, the application is given the filing date on which the original informal papers were filed.

OPAP accords a filing date, as of the date indicated by the "Office Date" stamp (see MPEP § 505), to application papers which include a specification containing a description and at least one claim (nonprovisional applications filed under 37 CFR 1.53(b) ), and a drawing, if necessary under 35 U.S.C. 113  (first sentence) but are informal because they do not comply with the rules or notices. In such applications, OPAP prepares a Notice of Informal Application indicating the informality and places it in the file wrapper. The TC mails the letter to applicant. Failure to correct the informality within the specified time results in abandonment of the application.

The letter of transmittal accompanying the filing of continuing applications should include such additional information as the identification by application number of a provisional or parent application, its status, and location (if known) in the U.S. Patent and Trademark Office. The supplying of this information will simplify the processing of these applications.

Effective June 5, 2000, 37 CFR 1.23  was amended to permit payment of any patent process fee, trademark process fee, or information product fee by credit card, subject to actual collection of the fee. The Office currently accepts charges to the following credit cards: AMERICAN EXPRESS®, DISCOVER®, MASTER CARD®, and VISA®.

Credit Card Payment Form (PTO-2038) should be used when paying a patent process or trademark process fee (or the fee for an information product) by credit card. Form PTO-2038 may be downloaded at http://www.uspto.gov/web/forms/2038.pdf. The Office will not include the Credit Card Payment Form (PTO-2038) among the records open to public inspection in the file of a patent, trademark registration, or other proceeding. The Office does not require customers to use this form when paying a patent process or trademark process fee by credit card. If a customer provides a credit card charge authorization in another form or document (e.g., a communication relating to the patent or trademark), the credit card information may become part of the record of an Office file that is open to public inspection. Thus, failure to use the Credit Card Payment Form (PTO-2038) when submitting a credit card payment may result in your credit card information becoming part of the record of an Office file that is open to public inspection.

Credit card payments by facsimile are permitted, except in situations in which facsimile submission of correspondence is not permitted in 37 CFR 1.6(d).

35 U.S.C. 42(d)  and 37 CFR 1.26  (which concern refund of patent and trademark fees) also apply to requests for refund of fees paid by credit card. Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged. See 37 CFR 1.26(a).

See MPEP § 607.02 for returnability of fees.

Any payment of a patent process or trademark process fee by credit card must be in writing (see 37 CFR 1.2 ), preferably on the Credit Card Payment Form (PTO-2038). If a Credit Card Payment Form or other document authorizing the Office to charge a patent process or trademark process fee to a credit card does not contain the information necessary to charge the fee to the credit card, the customer must submit a revised Credit Card Payment Form or document containing the necessary information. Office employees will not accept oral (telephonic) instructions to complete the Credit Card Payment Form or otherwise charge a patent process or trademark process fee (as opposed to information product or service fees) to a credit card.

Beginning on January 28, 2006, credit card payment submissions made on the USPTO Web site at www.uspto.gov must include the 3-digit or 4-digit security code associated with the credit card in addition to the credit card number. The security code will not be required when the paper Credit Card Payment Form (PTO-2038) or other written authorization is submitted.

The security code is part of an authentication procedure established by credit card companies to further efforts towards reducing fraudulent or unauthorized credit card use for Internet payment transactions. The security code must be entered at the time of the Internet payment transaction to verify that the physical card is in the cardholder’s possession. The security code appears on all major credit cards and is not part of the credit card number itself. Each credit card company has its own name for the security code (such as CVV, CVV2, CVC2 or CID), but it functions the same for all major card types.

On DISCOVER®, MASTERCARD®, and VISA® credit cards, the security codes is a 3-digit code that is printed on the back of the card, often following the credit card number digits. For AMERICAN EXPRESS® credit cards, the security code is a 4-digit code that is printed on the front of the cards. If you cannot read the security code, you will have to contact the financial institution that issued your credit card. Effective January 28, 2006, the USPTO Internet credit card payment screen will include a mandatory field to enter the security code along with helpful information to locate the security code on the credit card.

37 CFR 1.25(b)  states that:

A general authorization to charge all fees, or only certain fees, set forth in §§ 1.16 to 1.18 to a deposit account containing sufficient funds may be filed in an individual application, either for the entire pendency of the application or with respect to a particular paper filed.

As provided in 37 CFR 1.311(b), an authorization to charge the issue fee (37 CFR 1.18 ) to a deposit account may be filed in an individual application only after the mailing of the notice of allowance. 37 CFR 1.25(b)  also makes clear that a general authorization made prior to the mailing of a notice of allowance does not apply to issue fees under 37 CFR 1.18. 

In addition, a general authorization does not apply to document supply fees under 37 CFR 1.19, such as those required for certified copies, to post issuance fees under 37 CFR 1.20, such as those required for maintenance fees, or to miscellaneous fees and charges under 37 CFR 1.21, such as assignment recording fees.

Many applications contain broad language authorizing any additional fees which might have been due to be charged to a deposit account. The U.S. Patent and Trademark Office will interpret such broad authorizations to include authorization to charge to a deposit account fees set forth in 37 CFR 1.16, and 1.17. Fees under 37 CFR 1.19, 1.20, and 1.21 will not be charged as a result of a general authorization under 37 CFR 1.25  except to cover the processing fee under 37 CFR 1.21 (m) in the event a check or credit card payment is refused or charged back by a financial institution. Effective November 7, 2000, fees under 37 CFR 1.18  will not be charged as a result of a preauthorization of issue fee payment.

An authorization to charge fees relating only to a specific paper, could read "The Director is hereby authorized to charge any fees under 37 CFR 1.16  and 1.17 which may be required by this paper to Deposit Account No.———." Such an authorization would cover situations in which a check to cover a filing and/or a processing fee under 37 CFR 1.16  and 1.17 was omitted or was for an amount less than the amount required. An authorization covering any omission or deficiency in a check or credit card payment applies to the processing fee under 37 CFR 1.21 (m) in the event a check or credit card payment is refused or charged back by a financial institution, regardless of whether such deposit account authorization is limited to other fees (e.g., fees under 37 CFR 1.16  and 1.17 ). If a check or credit card payment for the issue fee is refused or charged back by a financial institution, the application may be held abandoned for failure to pay the issue fee within the statutory period for reply. See MPEP § 1306.

It is extremely important that the authorization be clear and unambiguous. If applicants file authorizations which are ambiguous and deviate from the usual forms of authorizations, the Office may not interpret the authorizations in the manner applicants intend and may return the fees. As a result, applicants could be subject to further expenses, petitions, etc. in order to have a particular fee charged to a deposit account (which was not charged as intended) or to resubmit a fee(s) due to an ambiguous authorization.

The Office will treat a deposit account authorization to charge "the filing fee" as an authorization to charge the following applicable fees under 37 CFR 1.16: basic filing fee; search fee; examination fee; any excess claims fees; and any application size fee. The Office will treat a deposit account authorization to charge "the basic filing fee" as an authorization to charge the following applicable fees under 37 CFR 1.16: basic filing fee; search fee; and examination fee. Any deposit account authorization to charge the filing fee but not the search fee or examination fee must specifically limit the authorization by reference to one or more paragraphs (a)-(e) of 37 CFR 1.16.

37 CFR 1.25(b)  further provides that an authorization to charge fees under 37 CFR 1.16  (which relates to national application filing fees) in an application filed under 35 U.S.C. 371  will be treated as an authorization to charge fees under 37 CFR 1.492  (which relates to national stage fees). Papers filed for the purpose of entering the national stage under 35 U.S.C. 371  and 37 CFR 1.495  that include an authorization to charge fees under 37 CFR 1.16  are treated by the Office as an authorization to charge fees under 37 CFR 1.492  since: (1) timely payment of the appropriate national fee under 37 CFR 1.492  is necessary to avoid abandonment of the application as to the United States; and (2) the basic filing fee under 37 CFR 1.16  is not applicable to such papers or applications.

37 CFR 1.25 (c) specifies how a deposit account holder may submit a payment to the Office to replenish the deposit account. A payment to replenish a deposit account may be submitted by:

• (A) making the payment by electronic funds transfer through the Federal Reserve Fedwire System. Deposit account holders who use the Federal Reserve Fedwire System must provide the following information to their bank or financial institution: (1) Name of the Bank, which is Treas NYC (Treasury New York City); (2) Bank Routing Code, which is 021030004; (3) United States Patent and Trademark Office account number with the Department of Treasury, which is 13100001; and (4) the deposit account holder’s company name and deposit account number. The deposit account holder should inform his or her bank or financial institution to use due care to ensure that all pertinent account numbers are listed on the transaction because the failure to include the proper deposit account number will delay the processing of the replenishment;
• (B) electronic funds transfer over the Office’s Internet Web site (www.uspto.gov); or
• (C) mailing the payment to: Director of the United States Patent and Trademark Office, Attn: Deposit Accounts, 2051 Jamieson Avenue, Suite 300, Alexandria, VA 22314.

In the event a payment to replenish a deposit account is refused (e.g., for insufficient funds or due to a stop payment order), the fee under 37 CFR 1.21 (m) for processing the payment refusal will be charged to the deposit account. Further information on deposit account replenishment may be obtained from the Office’s Internet Web site or by contacting the Deposit Account Division at (571) 272-6500.

For refunds to a deposit account, see MPEP § 607.02.

37 CFR 1.27(a)(1)  defines a person as any inventor or other individual (e.g., an individual to whom an inventor has transferred some rights in the invention), who has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention. An inventor or other individual who has transferred some rights, or is under an obligation to transfer some rights in the invention to one or more parties, can also qualify for small entity status if all the parties who have had rights in the invention transferred to them also qualify for small entity status either as a person, small business concern, or nonprofit organization.

In order to be eligible for reduced patent fees as a "small business concern" under 37 CFR 1.27(a)(2), a business concern must meet the standards set forth in 13 CFR 121.801 through 121.805. Questions relating to standards for a small business concern may be directed to:

Small Business Administration

Office of Size Standards

409 Third Street, S.W.

Washington, DC 20416

(202)205-6618

E-mail: sizestandards@sba.gov

37 CFR 1.27(a) (3) defines a nonprofit organization by utilizing and interpreting the definition contained in 35 U.S.C. 201(i). The term "university or other institution of higher education" as used in 37 CFR 1.27(a)(3)(ii)(A)  means an educational institution which

• (A) admits as regular students only persons having a certificate of graduation from a school providing secondary education, or the recognized equivalent of such a certificate,
• (B) is legally authorized within the jurisdiction in which it operates to provide a program of education beyond secondary education,
• (C) provides an educational program for which it awards a bachelor’s degree or provides not less than a 2-year program which is acceptable for full credit toward such a degree,
• (D) is a public or other nonprofit institution, and
• (E) is accredited by a nationally recognized accrediting agency or association, or if not so accredited, is an institution that has been granted preaccreditation status by such agency or association that has been recognized by the Secretary for the granting of preaccreditation status, and the Secretary has determined that there is satisfactory assurance that the institution will meet the accreditation standards of such an agency or association within a reasonable time.

The definition of "university or other institution of higher education" as set forth herein essentially follows the definition of "institution of higher education" contained in 20 U.S.C. 1000. Institutions which are strictly research facilities, manufacturing facilities, service organizations, etc., are not intended to be included within the term "other institution of higher education" even though such institutions may perform an educational function or publish the results of their work.

Nonprofit organizations also include organizations of the type described in section 501(c)(3) of the Internal Revenue Code of 1986 (26 U.S.C. 501(c)(3)) and which are exempt from taxation under 26 U.S.C. 501(a). Organizations described in 26 U.S.C. 501(c)(3) include corporations, and any community chest, fund, or foundation, organized and operated exclusively for religious, charitable, scientific, testing for public safety, literary, or educational purposes, or to foster national or international amateur sports competition (but only if no part of its activities involve the provision of athletic facilities or equipment), or for the prevention of cruelty to children or animals, no part of the net earnings of which inures to the benefit of any private shareholder or individual, no substantial part of the activities of which is carrying on propaganda, or otherwise attempting to influence legislation (limited exceptions may apply under 26 U.S.C. 501(h)) and which does not participate in, or intervene in (including the publishing or distributing of statements), any political campaign on behalf of (or in opposition to) any candidate for public office.

Small entities may claim reduced fees regardless of the country in which they are located. There is no restriction requiring that the person, small business concern, or nonprofit organization be located in the United States. The same definitions apply to all applicants equally in accordance with the Paris Convention for the Protection of Industrial Property.

The "rights in the invention" under 37 CFR 1.27(a)(1), (a)(2)(i), and (a)(3)(i)  are the rights in the United States. Rights in the invention include the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States. Therefore, for example, status as a small entity is lost by an inventor who has transferred or has an obligation to transfer a shop right to an employer who could not qualify as a small entity.

Individual inventors (37 CFR 1.27(a)(1) ), small business concerns (37 CFR 1.27(a)(2) ), and nonprofit organizations (37 CFR 1.27(a)(3) ) can make an assignment, grant, conveyance, or license of partial rights in the invention to another individual(s), small business concern, or nonprofit organization who could qualify as a person (37 CFR 1.27(a)(1) ), small business concern, or nonprofit organization. Under the circumstances described, the individual inventor, small business concern, or nonprofit organization could still qualify for small entity status. However, if the individual inventor, small business concern, or nonprofit organization assigned, granted, conveyed, or licensed, or came under an obligation to assign, grant, convey, or license, any rights to the invention to any individual, small business concern, or nonprofit organization which would not qualify as a small entity (37 CFR 1.27(a) ), then the inventor, small business concern, or nonprofit organization would no longer qualify for small entity status.

With regard to transfer of rights in the invention, the rights in question are those in the United States to be covered by an application or patent. Transfer of rights to a Japanese patent, for example, would not affect small entity status if no rights in the United States to a corresponding patent were likewise transferred.

The payment of reduced fees under 35 U.S.C. 41  is limited to those situations in which all of the rights in the invention are owned by small entities, i.e., persons, small business concerns, or nonprofit organizations. To do otherwise would be clearly contrary to the intended purpose of the legislation which contains no indication that fees are to be reduced in circumstances where rights are owned by non-small entities. For example, a non-small entity is not permitted to transfer patent rights to a small business concern which would pay the reduced fees and grant a license to the entity.

If rights transferred to a non-small entity are later returned to a small entity so that all rights are held by small entities, reduced fees may be claimed.

The term "license" in the definitions includes nonexclusive as well as exclusive licenses and royalty free as well as royalty generating licenses. Implied licenses to use and resell patented articles purchased from a small entity, however, will not preclude the proper claiming of small entity status. Likewise, an order by an applicant to a firm to build a prototype machine or product for the applicant’s own use is not considered to constitute a license for purposes of the definitions. A grant of a non-exclusive license to a non-small entity will disqualify applicant from claiming small entity status. See Ulead Systems, Inc. v. Lex Computer & Management Corp., 351 F.3d 1139, 1142, 69 USPQ2d 1097, 1099 (Fed. Cir. 2003).

A security interest does not involve an obligation to transfer rights in the invention for the purposes of 37 CFR 1.27 (a)(1) through (a)(3) unless the security interest is defaulted upon. See 37 CFR 1.27 (a)(5). For example, an applicant or patentee may take out a loan from a large entity banking institution and the loan may be secured with rights in a patent application or patent of the applicant or patentee, respectively. The granting of such a security interest to the banking institution is not a currently enforceable obligation to assign, grant, convey, or license any rights in the invention to the banking institution. Only if the loan is defaulted upon will the security interest permit a transfer of rights in the application or patent to the banking institution. Thus, where the banking institution is a large entity, the applicant or patentee would not be prohibited from claiming small entity status merely because the banking institution has been granted a security interest, but if the loan is defaulted upon, there would be a loss of entitlement to small entity status. Pursuant to 37 CFR 1.27 (g), notification of the loss of entitlement due to default on the terms of the security interest would need to be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which small entity status is no longer appropriate. See MPEP § 509.03, subsection VII. Removal of Status.

Also, although the Federal government agencies do not qualify as nonprofit organizations for paying reduced fees under the rules, a license to a Federal agency resulting from a funding agreement with the agency pursuant to 35 U.S.C. 202(c) (4) will not preclude the proper claiming of small entity status. Furthermore, a license to the Government resulting from a rights determination under Executive Order 10096 does not constitute a license so as to prohibit claiming small entity status by a person under 37 CFR 1.27(a)(1).

Public Law 96-517 added a new chapter 18 of Title 35 of the United States Code entitled "Patent Rights in Inventions Made With Federal Assistance." Under the provisions of the statute, each funding agreement between a Federal agency and an individual, small business firm, or nonprofit organization must provide, inter alia, that ". . . the Federal agency shall have a nonexclusive, nontransferable, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States any subject invention . . ." See 35 U.S.C. 202(c) (4). The Federal agencies do not qualify as nonprofit organizations for paying reduced patent fees under the rules. Applying this construction to the licensing of an invention to a Federal agency by a person, small business concern, or nonprofit organization pursuant to a funding agreement under 35 U.S.C. 202(c) (4) would preclude their qualifying for paying reduced fees. This, however, would frustrate the intent of Public Law 97-247 and Public Law 96-517 when taken together.

Government organizations as such, whether domestic or foreign, cannot qualify as nonprofit organizations as defined in 37 CFR 1.27(a)(3). Thus, for example, a government research facility or other government-owned corporation could not qualify. 37 CFR 1.27(a)(3)  was based upon 35 U.S.C. 201(i), as established by Public Law 96-517. The limitation to "an organization of the type described in section 501(c)(3) of the Internal Revenue Code of 1986 (26 U.S.C. 501(c)(3)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a))" would by its nature exclude the U.S. government and its agencies and facilities, including research facilities and government corporations. State and foreign governments and governmental agencies and facilities would be similarly excluded. 37 CFR 1.27(a)(3)  is not intended to include within the definition of a nonprofit organization government organizations of any kind located in any country. A university or other institution of higher education located in any country would qualify, however, as a "nonprofit organization" under 37 CFR 1.27(a)(3)  even though it has some government affiliation since such institutions are specifically included.

A wholly owned subsidiary of a nonprofit organization or of a university is considered a part of the nonprofit organization or university and is not precluded from qualifying for small entity status.

Small entity status may be established by the submission of a simple written assertion of entitlement to small entity status. The assertion must be signed, clearly identifiable, and convey the concept of entitlement to small entity status. 37 CFR 1.27(c)(1). The written assertion is not required to be presented in any particular form. Written assertions of small entity status or references to small entity fees will be liberally interpreted to represent the required assertion. The written assertion can be made in any paper filed in or with the application and need be no more than a simple sentence or a box checked on an application transmittal letter.

Practitioners may continue to use former USPTO forms or similar forms if they believe such small entity forms serve an educational purpose for their clients.

The parties who can assert entitlement to small entity status by writing include all parties permitted by 37 CFR 1.33(b)  to file a paper in an application, including a registered practitioner. 37 CFR 1.27(c)(2)(i). Additionally, one of the individuals identified as an inventor, or a partial assignee, can also sign the written assertion. 37 CFR 1.27(c)(2)(ii)  and (iii). By way of example, in the case of three pro se inventors for a particular application, one of the three inventors upon filing the application can submit a written assertion of entitlement to small entity status and thereby establish small entity status for the application, (but see paragraph VI. below). Where rights are divided between a person, small business concern, and nonprofit organization, or any combination thereof, only one party is required to assert small entity status. For example, where one of two inventors has assigned his or her rights in the invention, it is sufficient if either of the two inventors or the assignee asserts entitlement to small entity status.

Any inventor is permitted to submit a written assertion of small entity status, including individuals identified as inventors but who are not officially named of record as an executed oath or declaration under 37 CFR 1.63  has not yet been submitted. See 37 CFR 1.41(a)(1). Where an application is filed without an executed oath or declaration pursuant to 37 CFR 1.53(f), the Office will accept the written assertion of an individual who has merely been identified as an inventor on filing of the application (e.g., application transmittal letter) as opposed to having to be named as an inventor by the filing of an executed oath or declaration under 37 CFR 1.63  (37 CFR 1.41(a)(1) ).  37 CFR 1.4(d)(4)  and 37 CFR 11.18(b)  are seen as sufficient basis to permit any individual to provide a written assertion so long as the individual identifies himself or herself as an inventor. An actual inventor who has not been identified as an inventor (e.g., by way of application transmittal letter) or named as an inventor (i.e., executed 37 CFR 1.63  oath or declaration) in the file record may not file a written assertion as to small entity entitlement.

Where an oath or declaration under 37 CFR 1.63  is later filed, any original written assertion as to small entity status (which has been previously appropriately submitted to the Office) will remain unless changed by an appropriate party under 37 CFR 1.27(g)(2). Where a later-filed oath or declaration under 37 CFR 1.63  sets forth an inventive entity that does not include the person who initially was identified as an inventor and who asserted small entity status, small entity status will also remain.

An assignee asserting small entity status is not required to submit a 37 CFR 3.73(b)  certification whether the assignee is a partial assignee or an assignee of the entire right, title, and interest, (but see paragraph III. below).

A distinction exists as to who can file a written assertion of entitlement to small entity status once the written assertion is signed. 37 CFR 1.27(c)(2)(ii)  and 37 CFR 1.33(b)  permit one of several inventors to file as well as to sign a written assertion. The same is not true for a partial assignee. 37 CFR 1.27(c)(2)(iii). While a partial assignee may sign a written assertion, the written assertion must be filed by an appropriate party under 37 CFR 1.33(b).

The payment of an exact small entity basic filing (37 CFR 1.16(a), (b), (c), (d), or (e)) or basic national fee (37 CFR 1.492 (a)) is also considered to be a sufficient assertion of entitlement to small entity status. 37 CFR 1.27(c)(3). An applicant filing a patent application and paying an exact small entity basic filing or basic national fee automatically establishes small entity status for the application even without any other assertion of small entity status. This is so even if an applicant inadvertently selects the wrong type of small entity basic filing or basic national fee for the application being filed (e.g., the exact small entity basic filing fee for a design application is selected but the application is a utility application). If small entity status was not established when the basic filing or basic national fee was paid, such as by payment of a non-small entity basic filing or basic national fee, a later claim to small entity status requires a written assertion under 37 CFR 1.27(c)(1). Payment of a small entity fee other than a small entity basic filing or basic national fee (e.g., extension of time fee, or issue fee) without inclusion of a written assertion is not sufficient.

Even though applicants can assert small entity status only by payment of an exact small entity basic filing or basic national fee, the Office encourages applicants to also file a written assertion of small entity status as well as to pay the exact amount of the small entity basic filing or basic national fee. The Office’s application transmittal forms include a check box that can be used to submit a written assertion of small entity status. A written assertion will provide small entity status should applicant fail to pay the exact small entity basic filing or basic national fee. The provision providing for small entity status by payment of an exact small entity basic filing or basic national fee is intended to act as a safety net to avoid possible financial loss to inventors or small businesses that qualify for small entity status.

Even though small entity status is accorded where the wrong type of small entity basic filing fee or basic national fee is selected but the exact amount of the fee is paid, applicant still needs to pay the correct small entity amount for the basic filing or basic national fee where selection of the wrong type of fee results in a deficiency. While an accompanying general authorization to charge any additional fees suffices to pay the balance due of the proper small entity basic filing or basic national fee, specific authorizations to charge fees under 37 CFR 1.17  or extension of time fees do not suffice to pay any balance due of the proper small entity basic filing or basic national fee because they do not actually authorize payment of small entity amounts. If payment is attempted of the proper type of basic filing or basic national fee (applicant correctly identifies the type of fee for the type of application being filed), but the amount of the fee paid is not the exact small entity fee required (an incorrect fee amount is supplied) and a written assertion of small entity status is not present, small entity status will not be accorded. The Office will mail a notice of insufficient basic filing or basic national fee with a surcharge due if an authorization to charge the basic filing or basic national fee is not present. The Office does not consider a basic filing or basic national fee submitted in an amount above the correct fee amount, but below the non-small entity fee amount, as a request to establish small entity status unless an additional written assertion is also present. The submission of a basic filing or basic national fee below the correct fee amount also does not serve to establish small entity status.

Where an application is originally filed by a party, who is in fact a small entity, with an authorization to charge fees (including basic filing or national fees) and there is no indication (assertion) of entitlement to small entity status present, that authorization is not sufficient to establish small entity status unless the authorization is specifically directed to small entity basic filing or basic national fees. The general authorization to charge fees will continue to be acted upon immediately and the full (not small entity) basic filing or basic national fees will be charged. Applicant will have three months under 37 CFR 1.28  to request a refund by asserting entitlement to small entity status. This is so even if the application is a continuing application where small entity status had been established in the prior application.

Where small entity status is sought by way of payment of the basic filing or basic national fee, any party (including a third party), may submit payment, such as by check, and small entity status will be accorded.

While small entity status is not difficult to obtain, it should be clearly understood that applicants need to do a complete and thorough investigation of all facts and circumstances before making a determination of actual entitlement to small entity status. 37 CFR 1.27(f). Where entitlement to small entity status is uncertain, it should not be claimed.

The assertion of small entity status (even by mere payment of the exact small entity basic filing fee) is not appropriate until such an investigation has been completed. For example, where there are three pro se inventors, before one of the inventors pays the small entity basic filing or basic national fee to establish small entity status, the single inventor asserting entitlement to small entity status should check with the other two inventors to determine whether small entity status is appropriate.

If small entity status is desired on the basis that the entity is a small business concern, the investigation should include a review of whether the business is a small business concern as defined by section 3 of the Small Business Act (Public Law 85-536 as amended by Public Law 106-50). Review of whether the business concern meets the size standards set forth in 13 CFR 121.801 through 121.805 to be eligible for reduced patent fees is also appropriate. Additionally, if the business has assigned, granted, conveyed or licensed (or is under an obligation to do so) any rights in the invention to others directly or indirectly, the same review for each other entity would also be appropriate.

Furthermore, once status as a small entity has been established in an application, a new determination of entitlement to small entity status is needed (1) when the issue fee is due and (2) when any maintenance fee is due. It should be appreciated that the costs incurred in appropriately conducting the initial and subsequent investigations may outweigh the benefit of claiming small entity status. For some applicants it may be desirable to file as a non-small entity (by not filing a written assertion of small entity status and by submitting non-small entity fees) rather than undertaking the appropriate investigations which may be both difficult and time-consuming and which may be cost effective only where several applications are involved.

The intent of 37 CFR 1.27  is that the person making the assertion of entitlement to small entity status is the person in a position to know the facts about whether or not status as a small entity can be properly established. That person, thus, has a duty to investigate the circumstances surrounding entitlement to small entity status to the fullest extent. It is important to note that small entity status must not be claimed unless the person or persons can unequivocally make the required self-certification.

The U.S. Patent and Trademark Office does not give advisory opinions as to whether or not a specific individual or organization qualifies as a small entity. In establishing reduced fees for persons, small business concerns, and nonprofit organizations, the Congressional consideration of the legislation which became Public Law 97-247 indicated an intent that the U.S. Patent and Trademark Office rely exclusively on a self-certification that a patent applicant qualifies as an independent inventor (now person), small business concern, or nonprofit organization. In addition, it was also stated during Congressional consideration of the legislation that no additional resources would be required to administer the system whereby fees would be reduced for small entities.

In view of the intent expressed during Congressional consideration of the legislation, it would be inappropriate for the U.S. Patent and Trademark Office to give advisory opinions as to entitlement to small entity status. Accordingly, any individual seeking to establish status as a small entity for purposes of paying the fee in an application or patent must file the assertion required by 37 CFR 1.27  and in so doing is self-certifying entitlement to small entity status.

Consistent with 37 CFR 1.4(d)(4), the payment of a small entity basic filing or national fee constitutes a certification under 37 CFR 11.18(b)  . Thus, a simple payment of the small entity basic filing or basic national fee, without a specific written assertion, activates the provisions of  37 CFR 1.4(d)(4)  and, by that, invokes the self-certification requirement set forth in 37 CFR 11.18(b)  , regardless of whether the party is a practitioner or non-practitioner.

Once small entity status is established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due. 37 CFR 1.27(g)(1). 37 CFR 1.27(g)(2)  requires that notification of any change in status resulting in loss of entitlement to small entity status be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity is no longer appropriate. 37 CFR 1.27(g)(2)  also requires that the notification of loss of entitlement to small entity status be in the form of a specific written assertion to that extent, rather than only payment of a non-small entity fee. For example, when paying the issue fee in an application that has previously been accorded small entity status and the required new determination of continued entitlement to small entity status reveals that status has been lost, applicant should not just simply pay the non-small entity issue fee or cross out the recitation of small entity status on Part B of the Notice of Allowance and Fee(s) Due (PTOL-85), but should (A) check the appropriate box on Part B of the PTOL-85 form to indicate that there has been a change in entity status and applicant is no longer claiming small entity status, and (B) pay the fee amount for a non-small entity.

For correcting errors in small entity status, see paragraph X below.

37 CFR 1.27(h)  indicates that any attempt to fraudulently establish status as a small entity or pay fees as a small entity will be considered as a fraud practiced or attempted on the Office. Applicants should not rely on any oral advice inadvertently given by an Office employee as to entitlement to small entity status. In addition, improperly and with intent to deceive establishing status as a small entity or paying fees as a small entity will be considered as a fraud practiced or attempted on the Office. Normally, the Office will not question a claim to status as a small entity.

37 CFR 1.28(a)  provides a three-month time period for requesting a refund of a portion of a non-small entity fee based on later establishment of small entity status. The start date of the three-month refund period of 37 CFR 1.28(a)  is the date the full fee has been paid. See 37 CFR 1.28(b)(1). Payment by authorization to charge a deposit account is treated for refund purposes the same as payments by other means (e.g., check or credit card authorizations), with each being treated as paid (for refund purposes) on the date of receipt in the Office as defined by 37 CFR 1.6. Thus, the date of receipt of an authorization to charge fees starts the three-month period for refunds under 37 CFR 1.28(a), not the date of debit of the fee to a deposit account. If a payment is mailed with a Certificate of Mailing under 37 CFR 1.8, the three month period for requesting a refund will start on the actual date of receipt of the payment in the Office, and not the Certificate of Mailing date. If a payment is filed by Express Mail under 37 CFR 1.10, the date of deposit with the United States Postal Service (shown by the "date-in" on the Express Mail mailing label or other official USPS notation) is the date of receipt of the payment by the Office under 37 CFR 1.10(a)  and the three month period for requesting a refund starts on the date shown by the "date-in" on the Express Mail mailing label rather than the date when the payment actually reaches the Office.

Request for refunds, along with the assertions under 37 CFR 1.27(c), should be addressed to Mail Stop 16, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.

37 CFR 1.28(c)  provides that if small entity status is established in good faith and the small entity fees are paid in good faith, and it is later discovered that such status as a small entity was established in error or through error the Office was not notified of a change of status, the error will be excused upon compliance with the separate submission and itemization requirements of 37 CFR 1.28(c)(1)  and (c)(2), and the deficiency payment requirement of 37 CFR 1.28(c)(2). The deficiency amount owed under 37 CFR 1.28(c)  is calculated using the date on which the deficiency was paid in full. See 37 CFR 1.28(b)(2).

37 CFR 1.28(c)(1)  requires that a deficiency paper be limited to one application or patent file. Where, for example, the same set of facts has caused errors in payment in more than one application and/or patent file, a separate paper must be submitted in each file for which an error is to be excused.

37 CFR 1.28(c)(2)  requires that for each fee that was erroneously paid as a small entity, the deficiencies owed must be paid, and the payment of the deficiencies must be itemized. The deficiency owed for each previous fee erroneously paid as a small entity is the difference between the current fee amount (for other than a small entity) on the date the deficiency is paid in full and the amount of the previous erroneous (small entity) fee payment. Where there has been a fee decrease, the deficiency owed is equal to the amount (previously) paid in error, not the difference between the amount (previously) paid in error and the new lower non-small entity fee. 37 CFR 1.28(c)(2)(ii)  requires the following itemizations: (A) the particular fee involved (e.g., basic filing fee, extension of time fee); (B) the small entity fee amount actually paid and when (for example, distinguishing between two one-month extension of time fees erroneously paid on two different dates); (C) the actual deficiency owed for each fee previously paid in error; and (D) the total deficiency owed (i.e., the sum of the individual deficiencies owed).

Under 37 CFR 1.28(c)(3), the failure to comply with the requirements of 37 CFR 1.28(c)(1)  and (c)(2)  permits the Office at its option to either charge a processing fee (37 CFR 1.17(i) ) to process the paper or require compliance within a one-month non-extendable time period to avoid return of the paper.

Any paper submitted under 37 CFR 1.28(c)  is treated as a notification of loss of small entity status under 37 CFR 1.27(g)(2). See 37 CFR 1.28(d).

A maintenance fee improperly paid as a small entity where small entity status has been established but is no longer appropriate will be treated as a matter under 37 CFR 1.28(c)  and will not be considered to involve expiration of the patent under 37 CFR 1.378. On the other hand, payment of a maintenance fee in the small entity amount where small entity status has not been established would result in the expiration of the patent under 37 CFR 1.378  unless the full maintenance fee due or a written assertion of small entity status is timely filed.

37 CFR 1.9(h)  provides that the definition of "Federal holiday within the District of Columbia" includes an official closing of the Office. When the entire USPTO is officially closed for business for an entire day, for reasons due to adverse weather or other causes, the Office will consider each such day a "Federal holiday within the District of Columbia" under 35 U.S.C. 21. Any action or fee due on such a day may be taken, or fee paid, on the next succeeding business day the Office is open. In addition, 37 CFR 1.6(a) (1) provides "[t]he 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" to clarify that any day that is a Saturday, Sunday or Federal holiday within the District of Columbia is a day that the USPTO is not open for the filing of applications within the meaning of Article 4(C)(3) of the Paris Convention. Note further that in accordance with 37 CFR 1.6(a) (2), even when the 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, correspondence deposited as Express Mail with the United States Postal Service in accordance with 37 CFR 1.10  will be considered filed on the date of its deposit, regardless of whether that date is a Saturday, Sunday or Federal holiday within the District of Columbia (under 35 U.S.C. 21(b)  or 37 CFR 1.7 ).

When the USPTO is open for business during any part of a business day between 8:30 a.m. and 5:00 p.m., papers are due on that day even though the Office may be officially closed for some period of time during the business day because of an unscheduled event. The procedures of 37 CFR 1.10  may be used for filing applications.

Information regarding whether or not the Office is officially closed on any particular day may be obtained by calling 1-800-PTO(786)-9199 or (571) 272-1000.

Effective November 29, 1999, Public Law 106-113 amended 35 U.S.C. 119 (e)(3) to extend the period of pendency of a provisional application 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. 35 U.S.C. 119 (e)(3) as amended by Public Law 106-113 applies to any provisional applications filed on or after June 8, 1995 but has no effect on any patent which is the subject of litigation in an action commenced before November 29, 1999. See also 37 CFR 1.7(b).

New patent applications filed in accordance with 37 CFR 1.10  will be stamped by the Office with the date of deposit as "Express Mail" with the United States Postal Service. For example, if a new patent application is deposited in "Express Mail" 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).

The USPTO has established procedures and regulations for using the facilities of the Patent Search Room. The procedures for the Search Room include the requirement that users obtain and show, prior to entering the Search Room facilities, a User Pass. This pass can be obtained from the Office of Security next door to the Public Search Facility located on the first floor of the Madison East Building, 600 Dulany Street, Alexandria, VA 22314. User Passes will be issued to persons not under prohibition from using the search facilities who sign an application form and acknowledge receipt of a copy of the noted regulations. User Passes are nontransferable and are valid until reissue or revocation for cause. Office employees must show their building pass in order to enter the Patent Search Room. An On-line Service Card is required for access to all Public Search Facilities and on-line systems. On-line Service Cards are obtained at the Public Search Facility Receptionist Desk on a user’s first visit.

Persons exiting the Search Room will automatically pass electronic sensing equipment designed to detect any marked documents or materials being removed from the Search Room. The sensing equipment is capable of detecting marked documents and materials in briefcases and parcels and under clothing. The equipment does not use X-ray or other high energy radiation and is, therefore, completely safe and harmless to persons, photographic film, magnetic tape, and electronic or mechanical devices such as wrist watches.

Whenever a marked document is transported past the sensing equipment, U.S. Patent and Trademark Office officials and the security guards will be alerted to the removal of the document. Persons triggering the alarm will be asked to cooperate in identifying the source for the alarm. Failure to cooperate when the alarm is triggered could result in detention of the person, seizure of any briefcase or the like, or other legal measures deemed necessary and appropriate in the specific case.

The regulations for the Search Room are reprinted in a regulation brochure. It is available in the Search Room. In order to maintain an environment conducive to search, the regulations will be strictly enforced.

Although these procedures and regulations may cause some inconvenience, it is hoped that with understanding and cooperation they will result in improvement in search facilities which will benefit all participants in the U.S. patent system.

Persons violating the regulations may be denied the use of the facilities in the Patent Search Room, and may further be subjected to prosecution under the Criminal Code. Additionally, the name of any person violating these regulations who is registered to practice before the Office may be forwarded to the Office of Enrollment and Discipline for appropriate action under 37 CFR Part 10 and Part 11.

Regulations appearing below were established for those authorized members of the public using the facilities of the TCs.

• (A) TC facilities are defined as those areas in Carlyle (Alexandria, VA) where the TCs are located.
• (B) The use of the TC facilities is strictly limited to the regular business hours of the USPTO, between the hours of 8:45 a.m. and 4:45 p.m. on regular business days.
• (C) Authorized Officials, under these regulations, include Supervisory Patent Examiners and TC Directors.
• (D) Under applicable statutes and regulations, including 40 U.S.C. 486(c); 41 CFR Subpart 101-20.3; and appropriate Sections of Department Organization Orders 30-3A and 30-3B of the Department of Commerce, the regulations appearing below are established for those members of the public using the TC Facilities.
  • (1) All persons using these facilities are subject to the Regulations Governing Conduct on Federal Property, as specified in 41 CFR Subpart 101-20.3.
  • (2) All posted Official Notices are to be complied with.
  • (3) A valid User Pass must be prominently displayed when in the TC Facilities. User Passes are nontransferable and must be surrendered upon request to authorized officials.
  • (4) All persons holding User Passes must register with the TC Receptionist, unless otherwise directed, in each TC.
  • (5) No records, or other documents of the USPTO shall be removed from the TC Facilities except by express written authorization by an authorized official in the TC where the material resides.
  • (6) Smoking is not permitted except in designated areas.
  • (7) No food or beverages in any form are to be consumed except in designated areas.
  • (8) Loud talking, use of radios, and any other form of activity which may disturb other members of the public or Office personnel are forbidden.
  • (9) Children brought into the TC Facilities must not be allowed to disturb others.
  • (10) The presence or use of equipment such as dictation equipment, reproducing machines, typewriters, and photographic equipment is prohibited without prior permission from an authorized official in the TC where the use is intended and then is permitted where its use does not conflict with regulation (8) above.
  • (11) All packages, briefcases, or other personal effects brought into the TC Facilities are subject to search by authorized officials upon request and must be removed when leaving the TC Facilities.
  • (12) All verbal requests for compliance with these regulations or other posted USPTO Notices pertaining to activity in the TC Facilities, when made by authorized officials, must be promptly complied with.
  
• (E) Persons violating these regulations may be denied the use of the facilities in the TC and Patent Search Room, and may further be subject to prosecution under the Criminal Code. Additionally, the name of any person violating these regulations who is registered to practice before the USPTO may be forwarded to the Office of Enrollment and Discipline for appropriate action under 37 CFR Part 10 and Part 11.

If any individual is observed in violation of any of the regulations, immediate compliance should be courteously requested. If a verbal request is not complied with, a note should be made of the individual’s name and User’s Pass number, if possible (the User’s Pass is required to be prominently displayed) and a report of the incident should be made to the Supervisory Patent Examiner, Supervisory Applications Examiner, or other appropriate supervisor who will take further action.

In addition, if any individual in TC Facilities appears to be a stranger and is not wearing a User’s Pass, some identification, such as a Building or User’s Pass, should be requested. If the individual refuses, notify a supervisor. Consequently, all Office employees are expected to carry their Building Pass with them at all times.

Supervisors, when aware of violations of the posted regulations, should prepare a memorandum detailing the facts of the incident and forward this memorandum to the Deputy Commissioner for Patents via their TC Director. Supervisory Patent Examiners and TC Directors are authorized to demand surrender of User Passes on-the-spot. If the Supervisory Patent Examiner exercises this function, the TC Director should be immediately notified, followed up by a memorandum as previously set forth.

• (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, assignee, 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.

  
• (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 "Express Mail" 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.

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 considered and the sufficiency thereof determined by the TC Director. The statement required by 37 CFR 1.8(b) (3) is no longer required to be verified.

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 December 2, 1996, 37 CFR 1.6(a) (2) provides that correspondence deposited as "Express Mail" 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 "Express Mail" 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-in" on the "Express Mail" mailing label or other official USPS notation. This holds true for any day that the correspondence may be accepted as "Express Mail" 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 "Express Mail" 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-in" 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 "Express Mail 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 "Express Mail Post Office to Addressee" service is considered filed in the Office on the "date-in" entered by the USPS. The "date-in" on the "Express Mail" 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 "Express Mail" mailing label, and stamp the "date-in" or other official USPS notation as the filing date of the correspondence. Accordingly, if the USPS enters the deposit date as its "date-in," 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 "Express Mail" mailing label with the "date-in" clearly marked, and that persons dealing indirectly with the employees of the USPS (such as by depositing correspondence in an "Express Mail" drop box) do so at the risk of not receiving a copy of the "Express Mail" mailing label with the desired "date-in" clearly marked. On petition, the failure to obtain an "Express Mail" receipt with the "date-in" 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 "Express Mail" correspondence in order to obtain a legible copy of the "Express Mail" mailing label, parties are not precluded from using "Express Mail" drop boxes, but do so at their own risk.

A paper or fee placed in an "Express Mail" 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-in") indicated on the "Express Mail" mailing label by the Postal Service "Express Mail" acceptance clerk. 37 CFR 1.10(d)  permits the Office to correct a USPS "date-in" error when the correspondence is deposited in an "Express Mail" drop box prior to last scheduled pick up of the day, that is, the time clearly marked on the "Express Mail" 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 "Express Mail" deposits in which notations are entered by the person who deposited the correspondence as "Express Mail" 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 "Express Mail" may be in the form of a log book which contains information such as the "Express Mail" 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.

Effective December 2, 1996, 37 CFR 1.10(b)  no longer requires a certificate of mailing by "Express Mail" or that the "Express Mail" mailing label number be placed on the correspondence prior to mailing. Correspondence deposited with the USPS on or after December 2, 1996, and which is actually received by the Office will not be denied a filing date as of the "date-in" appearing on the "Express Mail" mailing label because the number of the "Express Mail" mailing label was not placed on the correspondence prior to the original mailing. However, 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 "Express Mail" 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, nor is such an inadvertent omission considered "unavoidable," within the meaning of 15 U.S.C. 1062(b), 35 U.S.C. 133, 37 CFR 1.137(a)  or 37 CFR 2.66(a). 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); Nitto Chemical Industry. Co., Ltd. v. Comer, 39 USPQ2d 1778, 1782 (D.D.C. 1994) (Commissioner’s refusal to waive requirements of 37 CFR 1.10  in order to grant priority filing date to patent application not arbitrary and capricious, because failure to comply with the requirements of 37 CFR 1.10  is an "avoidable" oversight that could have been prevented by the exercise of ordinary care or diligence, and thus not an extraordinary situation under 37 CFR 1.183.); Vincent v. Mossinghoff, 230 USPQ 621 (D.D.C. 1985) (misunderstanding of 37 CFR 1.8  not unavoidable delay in responding to Office Action); 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 "Express Mail." Briefly, 37 CFR 1.10(c)  applies where there is a discrepancy between the filing date accorded by the Office and the "date-in" entered by the USPS on the "Express Mail" mailing label or other official USPS notation; 37 CFR 1.10(d)  applies where the "date-in" is incorrectly entered by the USPS; 37 CFR 1.10(e)  applies where correspondence deposited with the USPS as "Express Mail" 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 "Express Mail" 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 "Express Mail." 37 CFR 1.10 (h) applies where correspondence was refused by an employee of the USPS due to an interruption or emergency in "Express Mail" 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 "Express Mail" 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-in" 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 "Express Mail" mailing label was placed on each piece of correspondence prior to the original mailing; and
• (C) include a true copy of the "Express Mail" mailing label showing the "date-in" 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-in" 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 "Express Mail" 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 "Express Mail" 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 "Express Mail." Evidence from the USPS may be the "Express Mail" Corporate Account Mailing Statement. Evidence that came into being within one day after the deposit of the correspondence as "Express Mail" may be in the form of a log book which contains information such as the "Express Mail" 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 "Express Mail" is that this date has been verified by a disinterested USPS employee, through the insertion of a "date-in," or other official USPS notation, on the "Express Mail" 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 "Express Mail."

A petition alleging that the USPS erred in entering the "date-in" 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 "Express Mail" 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 "Express Mail" (e.g., an affidavit or declaration prepared more than one business day after the correspondence was deposited with the USPS as "Express Mail").

On the other hand, a notation in a log book, entered after deposit by the person who deposited the correspondence as "Express Mail" 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 "Express Mail" before the last scheduled pickup on the requested filing date in order to obtain a filing date as of that date.

37 CFR 1.10(e)  sets forth procedures for filing a petition to the Director to accord a filing date as of the date of deposit with the USPS, where correspondence deposited as "Express Mail" is never received by the Office. Such a petition should:

• (A) be filed promptly after the person becomes aware that the Office has no evidence of receipt of the correspondence;
• (B) include a showing that the number of the "Express Mail" mailing label was placed on each piece of correspondence prior to the original mailing;
• (C) include a true copy of the originally deposited correspondence showing the number of the "Express Mail" mailing label thereon, a copy of any returned postcard receipt, a copy of the "Express Mail" mailing label showing the "date-in" or other official notation entered by the USPS; and
• (D) include a statement, signed by the person who deposited the documents as "Express Mail" with the USPS, setting forth the date and time of deposit, and declaring that the copies of the correspondence, "Express Mail" mailing label, and returned postcard receipt accompanying the petition are true copies of the correspondence, mailing label and returned postcard receipt originally mailed or received.

37 CFR 1.10(e)  provides for the filing of a petition to accord correspondence a filing date as of the date of deposit with the USPS as "Express Mail" only where the correspondence was mailed with sufficient postage and addressed as set out in 37 CFR 1.1(a). There is no corresponding provision that correspondence be properly addressed and mailed with sufficient postage in 37 CFR 1.10(a), (c) and (d), because these sections apply only to correspondence that is actually received by the Office. Correspondence mailed by "Express Mail" that is actually received by the Office will not be denied a filing date as of the date of deposit as "Express Mail" simply because the correspondence was not mailed with sufficient postage or not addressed as set out in 37 CFR 1.1(a). 37 CFR 1.10(e) (3) provides that if the requested filing date is a date other than the "date-in" on the "Express Mail" mailing label, the petition should include a showing under 37 CFR 1.10(d) (3), as discussed above, that the correspondence was deposited as "Express Mail" before the last scheduled pickup on the requested filing date in order to obtain a filing date as of that date. 37 CFR 1.10(e)  applies only in those situations in which the correspondence at issue was lost in toto (i.e., the entire correspondence was not delivered to the Office). Where there is a dispute as to the contents of correspondence submitted to the Office (e.g., an applicant asserts that three sheets of drawings were submitted under 37 CFR 1.10  with an application, but the Office records indicate receipt of only two sheets of drawings with the application), an applicant may not rely upon the provisions of 37 CFR 1.10(e)  to establish what document(s) and/or fee(s) were filed in the Office with such correspondence. Rather, where the records of the Office (e.g., the file of the application) contain any document(s) or fee(s) corresponding to the contents of the correspondence at issue, the Office will rely upon its official record of the contents of such correspondence in absence of convincing evidence (e.g., a postcard receipt under MPEP § 503 containing specific itemization of the document(s) or fee(s) purported to have been filed with the correspondence at issue) that the Office received and misplaced any document(s) or fee(s) that is not among the official records of the Office.

37 CFR 1.10(f)  provides that the Office may require additional evidence to determine whether the correspondence was deposited as "Express Mail" with the USPS on the date in question.

37 CFR 1.10 (g) provides that any person who mails correspondence addressed as set out in 37 CFR 1.1 (a) to the Office with sufficient postage utilizing the "Express Mail Post Office to Addressee" service of the USPS, but has the correspondence returned by the USPS due to an interruption or emergency in "Express Mail" service, may petition the Director to consider the correspondence as filed on a particular date in the Office. Such a petition must:

• (A) be filed promptly after the person becomes aware of the return of the correspondence;
• (B) include a showing that the number of the "Express Mail" mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by "Express Mail;"
• (C) include the original correspondence or a copy of the original correspondence showing the number of the "Express Mail" mailing label thereon and a copy of the "Express Mail" mailing label showing the "date-in;" and
• (D) include a statement which establishes, to the satisfaction of the Director, the original deposit of the correspondence and that the correspondence or the 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 "Express Mail" service. For example, the Office may require a letter from the USPS confirming that the return was due to an interruption or emergency in the "Express Mail" service.

This procedure does not apply where the USPS returned the "Express Mail" for a reason other than an interruption or emergency in "Express Mail" service such as the address was incomplete or the correspondence included insufficient payment for the "Express Mail" service.

37 CFR 1.10 (h) provides that any person who attempts to mail correspondence addressed as set out in 37 CFR 1.1 (a) to the Office with sufficient postage utilizing the "Express Mail 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 "Express Mail" service, may petition the Director to consider the correspondence as filed on a particular date in the Office. Such a petition must:

• (A) be filed promptly after the person becomes aware of the refusal of the correspondence;
• (B) include a showing that the number of the "Express Mail" mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the attempted mailing by "Express Mail;"
• (C) include the original correspondence or a copy of the original correspondence showing the number of the "Express Mail" mailing label thereon; and
• (D) include 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 "Express Mail" service. For example, the Office may require a letter from the USPS confirming that the refusal was due to an interruption or emergency in the "Express Mail" service.

This procedure does not apply where the USPS refused the "Express Mail" for a reason other than an interruption or emergency in "Express Mail" service such as the address was incomplete or the correspondence included insufficient payment for the "Express Mail" service. In addition, this procedure does not apply because an "Express Mail" drop box is unavailable or a Post Office facility is closed.

37 CFR 1.10 (i) provides that any person attempting to file correspondence by "Express Mail" that was unable to be deposited with the USPS due to an interruption or emergency in "Express Mail" 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. Such a petition must:

• (A) be filed in a manner designated by the Director promptly after the person becomes aware of the designated interruption or emergency in "Express Mail" service;
• (B) include the original correspondence or a copy of the original correspondence; and
• (C) include 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 "Express Mail" 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.

This procedure applies only when the Director designates an interruption or emergency in "Express Mail" service. In the notice designating the interruption or emergency the Director will provide guidance on the manner in which petitions under 37 CFR 1.10 (i) should be filed. The notice will be placed on the USPTO Web site at www.uspto.gov and published in the Official Gazette.