Depositing Correspondence

37 CFR 1.5  Identification of patent, patent application, or patent-related

proceeding.

(a) No correspondence relating to an application should be filed prior

to receipt of the assigned application number (i.e., U.S. application number,

international application number, or international registration number as

appropriate). When correspondence directed to the Patent and Trademark Office

concerns a previously filed application for a patent, it must identify on the top

page in a conspicuous location, the application number (consisting of the series

code and the serial number; e.g., 07/123,456), or the serial number and filing

date assigned to that application by the Patent and Trademark Office, or the

international application number of the international application, or the

international registration number of an international design application. Any

correspondence not containing such identification will be returned to the sender

where a return address is available. The returned correspondence will be

accompanied with a cover letter which will indicate to the sender that if the

returned correspondence is resubmitted to the Patent and Trademark Office within

two weeks of the mail date on the cover letter, the original date of receipt of

the correspondence will be considered by the Patent and Trademark Office as the

date of receipt of the correspondence. Applicants may use either the Certificate

of Mailing or Transmission procedure under

§ 1.8

or the Priority Mail

Express

®

procedure under

§ 1.10

for

resubmissions of returned correspondence if they desire to have the benefit of the

date of deposit in the United States Postal Service. If the returned

correspondence is not resubmitted within the two-week period, the date of receipt

of the resubmission will be considered to be the date of receipt of the

correspondence. The two-week period to resubmit the returned correspondence will

not be extended

submissions of returned correspondence if they desire to have the benefit of the

date of deposit in the United States Postal Service. If the returned

correspondence is not resubmitted within the two-week period, the date of receipt

of the resubmission will be considered to be the date of receipt of the

correspondence. The two-week period to resubmit the returned correspondence will

not be extended. In addition to the application number, all correspondence

directed to the Patent and Trademark Office concerning applications for patent

should also state the name of the first listed inventor, the title of the

invention, the date of filing the same, and if known, the group art unit or other

unit within the Patent and Trademark Office responsible for considering the

correspondence and the name of the examiner or other person to which it has been

assigned.

(b) When the letter concerns a patent other than for purposes of

paying a maintenance fee, it should state the number and date of issue of the

patent, the name of the patentee, and the title of the invention. For letters

concerning payment of a maintenance fee in a patent, see the provisions of

§

1.366(c)

.

(c) Correspondence relating to a trial proceeding before the Patent

Trial and Appeal Board (part 42 of this title) are governed by

§

42.6

of this title.

(d) A letter relating to a reexamination or supplemental examination

proceeding should identify it as such by the number of the patent undergoing

reexamination or supplemental examination, the request control number assigned to

such proceeding, and, if known, the group art unit and name of the examiner to

which it been assigned.

(e) [Reserved]

(f) When a paper concerns a provisional application, it should

identify the application as such and include the application number.

37 CFR 1.6  Receipt of correspondence.

mber of the patent undergoing

reexamination or supplemental examination, the request control number assigned to

such proceeding, and, if known, the group art unit and name of the examiner to

which it been assigned.

(e) [Reserved]

(f) When a paper concerns a provisional application, it should

identify the application as such and include the application number.

37 CFR 1.6  Receipt of correspondence.

(a)

Date of receipt and Priority Mail Express

®

date of deposit.

Correspondence received in the Patent and Trademark

Office is stamped with the date of receipt except as follows:

(1) The Patent and Trademark Office is not open for the filing

of correspondence on any day that is a Saturday, Sunday, or Federal holiday

within the District of Columbia. Except for correspondence transmitted by

facsimile under paragraph (a)(3) of this section, or filed electronically

under paragraph (a)(4) of this section, no correspondence is received in the

Office on Saturdays, Sundays, or Federal holidays within the District of

Columbia.

(2) Correspondence filed in accordance with

§ 1.10

will be stamped with the date of deposit as Priority Mail

Express

®

with the United States Postal

Service.

(3) Correspondence transmitted by facsimile to the Patent and

Trademark Office will be stamped with the date on which the complete

transmission is received in the Patent and Trademark Office unless that date

is a Saturday, Sunday, or Federal holiday within the District of Columbia,

in which case the date stamped will be the next succeeding day which is not

a Saturday, Sunday, or Federal holiday within the District of Columbia.

by facsimile to the Patent and

Trademark Office will be stamped with the date on which the complete

transmission is received in the Patent and Trademark Office unless that date

is a Saturday, Sunday, or Federal holiday within the District of Columbia,

in which case the date stamped will be the next succeeding day which is not

a Saturday, Sunday, or Federal holiday within the District of Columbia.

(4) Correspondence may be submitted using the USPTO patent

electronic filing system only in accordance with the USPTO patent electronic

filing system requirements. Correspondence officially submitted to the

Office by way of the USPTO patent electronic filing system will be accorded

a receipt date, which is the date in Eastern Time when the correspondence is

received in the Office, regardless of whether that date is a Saturday,

Sunday, or Federal holiday within the District of Columbia.

(b) [Reserved]

(c)

Correspondence delivered by hand.

In addition to being mailed,

correspondence may be delivered by hand during hours the Office is open to receive

correspondence.

(d)

Facsimile transmission.

Except in the cases enumerated below,

correspondence, including authorizations to charge a deposit account, may be

transmitted by facsimile. The receipt date accorded to the correspondence will be

the date on which the complete transmission is received in the United States

Patent and Trademark Office, unless that date is a Saturday, Sunday, or Federal

holiday within the District of Columbia. See paragraph (a)(3) of this section. To

facilitate proper processing, each transmission session should be limited to

correspondence to be filed in a single application or other proceeding before the

United States Patent and Trademark Office

sion is received in the United States

Patent and Trademark Office, unless that date is a Saturday, Sunday, or Federal

holiday within the District of Columbia. See paragraph (a)(3) of this section. To

facilitate proper processing, each transmission session should be limited to

correspondence to be filed in a single application or other proceeding before the

United States Patent and Trademark Office. The application number of a patent

application, the control number of a reexamination or supplemental examination

proceeding, the interference number of an interference proceeding, the trial

number of a trial proceeding before the Board, or the patent number of a patent

should be entered as a part of the sender's identification on a facsimile cover

sheet. Facsimile transmissions are not permitted and, if submitted, will not be

accorded a date of receipt in the following situations:

(1) [Reserved];

(2) Certified documents as specified in

§ 1.4(f)

;

(3) Correspondence that cannot receive the benefit of the

certificate of mailing or transmission as specified in

§ 1.8(a)(2)(i)(A) through

(D),(F), (I), and (K)

, and

§ 1.8(a)(2)(iii)(A)

, except that a continued

prosecution application under

§ 1.53(d)

may be

transmitted to the Office by facsimile;

(4) Color drawings submitted under

§§

1.81

,

1.83

through

1.85

,

1.152

,

1.165

,

1.173

,

1.437

, or

1.1026

;

(5) A request for reexamination under

§ 1.510

or

§ 1.913

, or a request

for supplemental examination under

§

1.610

;

(6) Correspondence to be filed in an application subject to a

secrecy order under

§§ 5.1

through

5.5

of this chapter and directly related to the

secrecy order content of the application;

(7) In contested cases and trials before the Patent Trial and

Appeal Board, except as the Board may expressly authorize.

(e) [Reserved]

1.510

or

§ 1.913

, or a request

for supplemental examination under

§

1.610

;

(6) Correspondence to be filed in an application subject to a

secrecy order under

§§ 5.1

through

5.5

of this chapter and directly related to the

secrecy order content of the application;

(7) In contested cases and trials before the Patent Trial and

Appeal Board, except as the Board may expressly authorize.

(e) [Reserved]

(f)

Facsimile transmission of a patent application under

§ 1.53(d)

.

In the event that the Office has no

evidence of receipt of an application under

§ 1.53(d)

(a continued

prosecution application) transmitted to the Office by facsimile transmission, the

party who transmitted the application under

§ 1.53(d)

may petition the

Director to accord the application under

§ 1.53(d)

a filing date as of

the date the application under

§ 1.53(d)

is shown to have

been transmitted to and received in the Office,

(1) Provided that the party who transmitted such application

under

§

1.53(d)

:

(i) Informs the Office of the previous transmission of the

application under

§ 1.53(d)

promptly

after becoming aware that the Office has no evidence of receipt of the

application under

§ 1.53(d)

;

(ii) Supplies an additional copy of the previously

transmitted application under

§ 1.53(d)

; and

(iii) Includes a statement which attests on a personal

knowledge basis or to the satisfaction of the Director to the previous

transmission of the application under

§ 1.53(d)

and is accompanied by a copy of the

sending unit’s report confirming transmission of the application under

§

1.53(d)

or evidence that came into being after

the complete transmission and within one business day of the complete

transmission of the application under

§ 1.53(d)

.

(2) The Office may require additional evidence to determine if

the application under

§ 1.53(d)

was

transmitted to and received in the Office on the date in question.

ng unit’s report confirming transmission of the application under

§

1.53(d)

or evidence that came into being after

the complete transmission and within one business day of the complete

transmission of the application under

§ 1.53(d)

.

(2) The Office may require additional evidence to determine if

the application under

§ 1.53(d)

was

transmitted to and received in the Office on the date in question.

(g)

Submission of the national stage correspondence required by

§

1.495

via the USPTO patent electronic filing

system.

In the event that the Office has no evidence of receipt of

the national stage correspondence required by

§ 1.495

, which was submitted

to the Office by the USPTO patent electronic filing system, the party who

submitted the correspondence may petition the Director to accord the national

stage correspondence a receipt date as of the date the correspondence is shown to

have been officially submitted to the Office.

(1) The petition of this paragraph (g) requires that the party

who submitted such national stage correspondence:

(i) Informs the Office of the previous submission of the

correspondence promptly after becoming aware that the Office has no

evidence of receipt of the correspondence under

§

1.495

;

(ii) Supplies an additional copy of the previously

submitted correspondence;

(iii) Includes a statement that attests on a personal

knowledge basis, or to the satisfaction of the Director, that the

correspondence was previously officially submitted; and

(iv) Supplies a copy of an acknowledgment receipt generated

by the USPTO patent electronic filing system, or equivalent evidence,

confirming the submission to support the statement of paragraph

usly

submitted correspondence;

(iii) Includes a statement that attests on a personal

knowledge basis, or to the satisfaction of the Director, that the

correspondence was previously officially submitted; and

(iv) Supplies a copy of an acknowledgment receipt generated

by the USPTO patent electronic filing system, or equivalent evidence,

confirming the submission to support the statement of paragraph

(g)(1)(iii) of this section.

(2) The Office may require additional evidence to determine if

the national stage correspondence was submitted to the Office on the date in

question.

All applications (provisional and nonprovisional) may be sent to the U.S.

Patent and Trademark Office by mail using the United States Postal Service (see

MPEP §

501

), or they may be hand-carried to the Customer Service Window

in Alexandria, Virginia. However, applicants should consider filing new patent applications

(as well as patent-related correspondence) via the USPTO patent electronic filing system

whenever permitted. See the USPTO Online Filing webpage for additional information on the

USPTO patent electronic filing system (

www.uspto.gov/patents/apply

).

See also

MPEP §

502.05

. New applications

cannot

be transmitted by

facsimile and are

not

entitled to the benefit of a Certificate of Transmission

under

37 CFR

1.8

. A request for a continued prosecution application (CPA) filed

under

37 CFR

1.53(d)

(available only for design applications) may be transmitted

to the Office by facsimile (

37 CFR 1.6(d)(3)

); however, it is not

entitled to the benefit of a Certificate of Transmission (see

37 CFR

1.8(a)(2)(i)(A)

). See

37 CFR 1.6(d)

and

MPEP § 502.01

.

See 37 CFR 2.190 and

MPEP § 501

for addresses pertaining to

trademark correspondence.

All correspondence related to a national patent application already filed

with the U.S. Patent and Trademark Office must include the identification of the

application number or the serial number and the filing date assigned to the application by

the Office

1.8(a)(2)(i)(A)

). See

37 CFR 1.6(d)

and

MPEP § 502.01

.

See 37 CFR 2.190 and

MPEP § 501

for addresses pertaining to

trademark correspondence.

All correspondence related to a national patent application already filed

with the U.S. Patent and Trademark Office must include the identification of the

application number or the serial number and the filing date assigned to the application by

the Office. Any correspondence not containing the proper identification set forth in

37 CFR

1.5(a)

will be returned to the sender by the Office of Patent

Application Processing (OPAP). Each paper should be inspected to assure that the papers

being returned contain an “Office Date” stamp indicating the date of receipt. If there is a

minor obvious error in the identification of the application such that the Office readily

recognizes both the existence of the error and the appropriate correction, the error can be

corrected by the Office. The Office often experiences difficulty in matching incoming

papers with the application file to which they pertain because insufficient or erroneous

information is given. This applies especially to amendments, powers of attorney, changes of

address, status letters, petitions for extension of time, and other petitions.

It would be of great assistance to the Office if

all

incoming papers pertaining to a filed application carried the following items:

(A) Application number (checked for accuracy, including series code and

serial no.).

(B) Art Unit number (copied from most recent Office communication).

(C) Filing date.

(D) Name of the examiner who prepared the most recent Office action.

(E) Title of invention.

(F) Confirmation number (see

MPEP §

503

).

Applicants may be reminded of this by including form paragraph 5.01.