Correspondence Transmitted by Facsimile

37 CFR 1.6  Receipt of 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. 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 which 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)

,

§ 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;

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.

*****

The date of receipt accorded to any correspondence permitted to be sent

by facsimile transmission, including a continued prosecution application (CPA) filed

under

37 CFR

1.53(d)

, (available for design applications only) is the date the

complete transmission is received by an Office facsimile unit, unless the transmission

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

Correspondence for which transmission was completed on a Saturday, Sunday, or Federal

holiday within the District of Columbia, will be accorded a receipt date of the next

succeeding day which is not a Saturday, Sunday, or Federal holiday within the District

of Columbia. For example, a facsimile transmission to the Office from California

starting on a Friday at 8:45 p.m. Pacific time and taking 20 minutes, would be completed

at 9:05 p.m. Pacific time. The complete transmission would be received in the Office

around 12:05 a.m. Eastern time on Saturday. The receipt date accorded to the

correspondence is the date of the following business day, which in this case, would be

Monday (assuming that Monday was not a Federal holiday within the District of Columbia).

Note, however, that if the Certificate of Transmission is available (for documents not

proscribed by

37 CFR

1.8(a)(2)

), then the above facsimile may be considered timely

filed on Friday if it contains a Certificate of Transmission and is in compliance with

37 CFR

1.8(a)(1)(i)(B)

and

ich in this case, would be

Monday (assuming that Monday was not a Federal holiday within the District of Columbia).

Note, however, that if the Certificate of Transmission is available (for documents not

proscribed by

37 CFR

1.8(a)(2)

), then the above facsimile may be considered timely

filed on Friday if it contains a Certificate of Transmission and is in compliance with

37 CFR

1.8(a)(1)(i)(B)

and

(ii)

.

37 CFR

1.6(d)

specifies the types of correspondence which may be

transmitted by facsimile. These would include CPAs filed under

37 CFR 1.53(d)

(available for design applications only), amendments, declarations, petitions,

information disclosure statements (IDS), terminal disclaimers, notices of appeal and

appeal briefs, requests for continued examination (RCEs) under

37 CFR 1.114

,

assignment documents, issue fee transmittals and authorizations to charge deposit

accounts. The situations where transmissions by facsimile are prohibited are identified

in

37 CFR

1.6(d)(2)-(7)

. Prohibitions cover situations where originals are

required as specified in

37 CFR 1.4(f)

, and situations where

accepting a facsimile transmission would be unduly burdensome on the Office. As a

courtesy, the Office will attempt to notify senders whenever correspondence is sent to

the Office by facsimile transmission that falls within one of the prohibitions. Senders

are cautioned against submitting correspondence by facsimile transmission which is not

permitted under

37 CFR

1.6(d)

since such correspondence will not be accorded a receipt

date.

An applicant filing a CPA (available for a design application only) by

facsimile transmission must include an authorization to charge the basic filing fee to a

deposit account or to a credit card, or the application will be treated under

37 CFR

1.53(f)

as having been filed without the basic filing fee (as fees

cannot otherwise be transmitted by facsimile)

dence will not be accorded a receipt

date.

An applicant filing a CPA (available for a design application only) by

facsimile transmission must include an authorization to charge the basic filing fee to a

deposit account or to a credit card, or the application will be treated under

37 CFR

1.53(f)

as having been filed without the basic filing fee (as fees

cannot otherwise be transmitted by facsimile).

There is a special receipt procedure for filing a CPA by fax, whereby

the Office will fax back a receipt of the CPA filing if applicant submits the Office

receipt form along with the CPA filing.

37 CFR 1.6  Receipt of correspondence.

*****

(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)

.

sonal

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.

37 CFR

1.6(f)

provides for the situation in which the Office has no

evidence of receipt of a CPA transmitted to the Office by facsimile transmission.

37 CFR

1.6(f)

requires a petition be filed requesting that the CPA be

accorded a filing date as of the date the CPA is shown to have been transmitted to and

received in the Office. The showing must include,

inter alia,

a copy

of the sending unit’s report confirming transmission of the application or evidence that

came into being after the complete transmission of the application and within one

business day of the complete transmission of the application.

I.

CENTRALIZED FACSIMILE NUMBER FOR OFFICIAL PATENT APPLICATION RELATED

CORRESPONDENCE

A.

Central Number

All patent application related correspondence transmitted by

facsimile must be directed to the central facsimile number, with a few exceptions

below. The central facsimile number is (571) 273-8300. Replies to Office actions

including after-final amendments that are transmitted by facsimile must be

directed to the central facsimile number. Correspondence such as draft proposed

amendments for interviews may continue to be transmitted by facsimile to the

Technology Centers (TCs) and should be made of record as part of the interview

summary record. See

MPEP § 713.04

. Office personnel should not use their

personal facsimile numbers for official application related correspondence

csimile must be

directed to the central facsimile number. Correspondence such as draft proposed

amendments for interviews may continue to be transmitted by facsimile to the

Technology Centers (TCs) and should be made of record as part of the interview

summary record. See

MPEP § 713.04

. Office personnel should not use their

personal facsimile numbers for official application related correspondence. Office

personnel that inadvertently receive official application related correspondence

on a personal facsimile number must either route (do not forward) the

correspondence to the official central facsimile number or they may, with

applicant’s (or applicant’s representative) permission, make the facsimile

amendment part of an examiner’s amendment.

B.

Correspondence Which May Be Sent by Facsimile to Other Than the Central

Facsimile Number

For each Office location listed below, only the particular type of

correspondence indicated may be transmitted to the specific facsimile number at

that Office location. All other types of facsimile transmitted correspondence must

be sent to the central facsimile number ((571) 273-8300).

(1)

International Patent Legal

Administration.

Responses to Decisions on Petition may be

submitted by facsimile to (571) 273-0459.

Note: An international application for patent or a copy

of the international application and the basic national fee necessary to

enter national stage, as specified in

37 CFR 1.495(b)

, may

not

be submitted by facsimile. See

37

CFR 1.6(d)(3)

(referencing

37 CFR 1.8(a)(2)(i)(D)

and (F)

). Subsequent correspondence may be

transmitted by facsimile in an application before the U.S. Receiving

Office, the U.S. International Searching Authority, or the U.S.

International Preliminary Examining Authority, but it will

not

receive the benefit of any certificate of

transmission (or mailing). See

37 CFR

1.8(a)(2)(i)(E)

. Correspondence subsequent to

filing in an international application before the U.S. Receiving Office,

the U.S. International Searching Authority, or the U.S

the U.S. Receiving

Office, the U.S. International Searching Authority, or the U.S.

International Preliminary Examining Authority, but it will

not

receive the benefit of any certificate of

transmission (or mailing). See

37 CFR

1.8(a)(2)(i)(E)

. Correspondence subsequent to

filing in an international application before the U.S. Receiving Office,

the U.S. International Searching Authority, or the U.S. International

Preliminary Examining Authority may be submitted by facsimile to PCT

Operations via the USPTO central facsimile number ((571) 273-8300).

Correspondence filed during the national stage, subsequent to entry, is

handled in the same manner as a U.S. national application.

-- PCT Help Desk contact information:

Telephone number: (571) 272-4300.

Facsimile number: (571) 273-0419.

(2)

Office of Data Management.

Payment of

an issue fee and any required publication fee by authorization to charge a

deposit account or credit card, and drawings may be submitted to facsimile

number (571) 273-2885.

Note: Although submission of drawings by facsimile may

reduce the quality of the drawings, the Office will generally print the

drawings as received.

Office of Data Management telephone numbers to check on

receipt of payment: (571) 272-4200 or 1-888-786-0101.

(3)

Electronic Business Center (EBC).

Requests for Customer Number Data Change (PTO/SB/124), and Requests for a

Customer Number (PTO/SB/125) may be submitted via facsimile to (571)

273-0177.

Note: The EBC may also be reached by email at:

ebc@uspto.gov. EBC telephone number for customer service and assistance:

866-217-9197.

e numbers to check on

receipt of payment: (571) 272-4200 or 1-888-786-0101.

(3)

Electronic Business Center (EBC).

Requests for Customer Number Data Change (PTO/SB/124), and Requests for a

Customer Number (PTO/SB/125) may be submitted via facsimile to (571)

273-0177.

Note: The EBC may also be reached by email at:

ebc@uspto.gov. EBC telephone number for customer service and assistance:

866-217-9197.

(4)

Assignment Recordation Branch.

Assignments or other documents affecting title may be submitted via

facsimile to (571) 273-0140.

Note: Only documents with an identified patent

application or patent number, a single cover sheet to record a single

type of transaction, and the fee paid by an authorization to charge a

USPTO deposit account or credit card may be submitted via facsimile.

Customers may submit documents directly into the automated Patent and

Trademark Assignment System and receive the resulting recordation notice

at their facsimile machine. (Assignment documents submitted through the

Electronic Patent Assignment System also permit the recordation notice to

be faxed to customers.) Credit card payments to record assignment

documents are acceptable, and use of the Credit Card form (PTO-2038) is

required for the credit card information to be separated from the

assignment records.

Assignment Recordation Branch telephone number for

assistance: (571) 272-3350.

(5)

Central Reexamination Unit (CRU).

Ex

parte and Inter partes reexamination correspondence, except for the initial

request: (571) 273-9900 facsimile number.

Note: Correspondence related to reexamination

proceedings will be separately scanned in the CRU.

CRU telephone number for customer service and

inquiries: (571) 272-7705.

(6)

Patent Trial and Appeal Board.

Correspondence related to contested cases and trials permitted to be

transmitted by facsimile (only where expressly authorized, see 37 CFR

1.6(d)(7)): (571) 273-0042 facsimile number.

ile number.

Note: Correspondence related to reexamination

proceedings will be separately scanned in the CRU.

CRU telephone number for customer service and

inquiries: (571) 272-7705.

(6)

Patent Trial and Appeal Board.

Correspondence related to contested cases and trials permitted to be

transmitted by facsimile (only where expressly authorized, see 37 CFR

1.6(d)(7)): (571) 273-0042 facsimile number.

(7)

Office of the General Counsel.

Correspondence permitted to be transmitted by facsimile to the

Office of the General Counsel: (571) 273-0099 facsimile number.

(8)

Office of the Solicitor.

Correspondence permitted to be transmitted by facsimile to the Office of the

Solicitor: (571) 273-0373 facsimile number.

(9)

Licensing and Review.

Petitions for

a foreign filing license pursuant to 37 CFR 5.12(b), including a petition

for a foreign filing license where there is no corresponding U.S.

application (37 CFR 5.13): (571) 270-9959 (preferred) or (571) 273-0185

facsimile number.

Note: Correspondence to be filed in a patent application

subject to a secrecy order under

37 CFR 5.1

to

5.5

and directly related to the secrecy order

content of the application may

not

be transmitted

via facsimile. See

37 CFR 1.6(d)(6)

.

(10)

Office of Petitions.

Petitions to

withdraw from issue and petitions to defer issuance of patents: (571)

273-0025 facsimile number

Note: All other types of petitions must be directed to

the central facsimile number (571) 273-8300, with the exception of a

request for a retroactive filing license, which should be directed to

(571) 270-9959. Petitions sent to the central facsimile number should be

marked "Special Processing Submission."

(11)

Office of the Enrollment and Discipline.

Correspondence permitted to be transmitted to the Office of the

Enrollment and Discipline: (571) 273-0074 facsimile number.

number (571) 273-8300, with the exception of a

request for a retroactive filing license, which should be directed to

(571) 270-9959. Petitions sent to the central facsimile number should be

marked "Special Processing Submission."

(11)

Office of the Enrollment and Discipline.

Correspondence permitted to be transmitted to the Office of the

Enrollment and Discipline: (571) 273-0074 facsimile number.

(12)

Office of Finance.

Refund requests,

deposit account inquiries, and maintenance fee payments: (571) 273-6500

facsimile number. Office of Finance telephone number for customer service

and inquiries: (571) 272-6500.

(13)

Public Records Division.

Requests

for certified copies of Office records may be transmitted to: (571) 273-3250

facsimile number. The Public Records Division's Patent and Trademark Copy

Fulfillment Branch telephone number for customer service and inquiries:

(571) 272-3150.

II.

CORRESPONDENCE RELATIVE TO PATENTS AND PATENT APPLICATIONS WHERE FILING BY

FACSIMILE TRANSMISSION IS NOT PERMITTED

As set forth in

37 CFR 1.6(d)

, facsimile

transmissions are not permitted and, if submitted, will not be accorded a date of

receipt in the following situations:

(A) A document that is required by statute to be certified (see

37 CFR

1.4(f)

);

(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) An international application for patent;

(D) An international design application;

(E) 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)

;

(F) A third-party submission under

37 CFR

1.290

;

(G) Correspondence relating to registration to practice before the

Patent and Trademark Office in patent cases, enrollment and disciplinary

investigations, or disciplinary proceedings;

(H) Color drawings submitted under

37 CFR

1.81

,

1.83

-

1.85

,

1.152

,

1.165

ic national

fee necessary to enter the national stage, as specified in

37 CFR

1.495(b)

;

(F) A third-party submission under

37 CFR

1.290

;

(G) Correspondence relating to registration to practice before the

Patent and Trademark Office in patent cases, enrollment and disciplinary

investigations, or disciplinary proceedings;

(H) Color drawings submitted under

37 CFR

1.81

,

1.83

-

1.85

,

1.152

,

1.165

,

1.173

,

1.437

, or

1.1026

;

(I) A request for reexamination under

37 CFR

1.510

or

37 CFR 1.913

;

(J) A request for supplemental examination under

37 CFR 1.610

;

(K) 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; and

(L) Correspondence to be filed in a contested case or trial before

the Patent Trial and Appeal Board, except as the Board may expressly authorize.

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.