Communications via Internet Electronic Mail (email)

The Office published a Patent Internet Usage Policy to :

(A) establish a policy for use of the Internet by the Patent Examining

Corps and other organizations within the USPTO,

(B) address use of the Internet to conduct interview-like

communications and other forms of formal and informal communications,

(C) publish guidelines for locating, retrieving, citing, and properly

documenting scientific and technical information sources on the Internet,

(D) inform the public how the USPTO intends to use the Internet, and

(E) establish a flexible Internet policy framework which can be

modified, enhanced, and corrected as the USPTO, the public, and customers learn to

use, and subsequently integrate, new and emerging Internet technology into

existing business infrastructures and everyday activities to improve the patent

application, examining, and granting functions.

See

Internet Usage Policy,

64 FR 33056 (June 21,

1999). The Articles of the Patent Internet Usage Policy pertinent to communications via

electronic mail are summarized below. See

MPEP § 904.02(c)

for information

pertinent to Internet searching, and

MPEP § 707.05(e)

for information

pertaining to the citation of electronic documents. See also

MPEP § 713.04

for

recordation of email interviews.

I.

CONFIDENTIALITY OF PROPRIETARY INFORMATION (ARTICLE 4)

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 email, communications via email may be

used.

Backup, archiving, and recovery of information sent or received via

the Internet is the responsibility of individual users

n 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 email, communications via email 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.

II.

COMMUNICATIONS VIA THE INTERNET AND AUTHORIZATION (ARTICLE 5)

Communications via email are at the discretion of the applicant. All

Internet communications between USPTO employees and applicants must be made using

USPTO tools.

Without a written authorization by applicant in place, the USPTO will

not respond via email 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 and response will be placed in the appropriate

patent application by the examiner. Except for correspondence that only sets up an

interview time, all correspondence between the Office and the applicant including

applicant's representative must be placed in the appropriate patent application. If

an email contains any information beyond scheduling an interview, such as an

interview agenda, it must be placed in the application. The written authorization may

be submitted via the USPTO patent electronic filing system, mail, or fax. It cannot

be submitted by email

between the Office and the applicant including

applicant's representative must be placed in the appropriate patent application. If

an email contains any information beyond scheduling an interview, such as an

interview agenda, it must be placed in the application. The written authorization may

be submitted via the USPTO patent electronic filing system, mail, or fax. It cannot

be submitted by email.

For those applications where applicant wishes to

communicate with the examiner via Internet communications, e.g., email or video

conferencing tools, 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 the undersigned and practitioners in

accordance with

37 CFR 1.33

and

37 CFR 1.34

concerning any

subject matter of this application by video conferencing, instant messaging, or

electronic mail. I understand that a copy of these communications will be made of

record in the application file.”

A written authorization for electronic communication

may not be filed through an email communication. In limited circumstances the

applicant may make an oral authorization for Internet communication. See

MPEP §

713.01

, subsection II.

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

any practitioner of record or acting in a representative capacity in accordance with

37 CFR

1.33

and

37 CFR 1.34

concerning any

subject matter of this application via video conferencing, instant messaging, or

electronic mail is hereby withdrawn.”

To facilitate processing of the internet communication

authorization or withdrawal of authorization, the Office strongly encourages use of

Form PTO/SB/439, available at

www.uspto.gov/PatentForms

representative capacity in accordance with

37 CFR

1.33

and

37 CFR 1.34

concerning any

subject matter of this application via video conferencing, instant messaging, or

electronic mail is hereby withdrawn.”

To facilitate processing of the internet communication

authorization or withdrawal of authorization, the Office strongly encourages use of

Form PTO/SB/439, available at

www.uspto.gov/PatentForms

. The form may be filed via the USPTO

patent electronic filing system using the document description Internet

Communications Authorized or Internet Communications Authorization Withdrawn to

facilitate processing. The internet authorization must be submitted on a separate

paper to be entitled to acceptance in accordance with

37 CFR 1.4(c)

.

The separate paper will facilitate processing and avoid confusion.

A reply to an Office action or a paper requiring a signature may NOT

be communicated by applicant to the USPTO via email even if written authorization is

on record. In order to ensure security and authorization for replies to Office

actions and papers that require a signature, such replies and papers must be filed

electronically using the USPTO patent electronic filing system (see

MPEP §

502.05

) or in paper. Where a written authorization is given

by the applicant, communications via email, other than replies to Office Actions

under

35 U.S.C.

132

or papers that require a signature, may be used. In such

case, a printed copy of the email communications MUST be entered into One Patent

Service Gateway (via Patent Data Portal) and entered in the patent application file

(Doc Code is EMAIL). If a reply to an Office action is improperly submitted by

applicant via email, the email submission will not be accepted as an adequate reply

to avoid abandonment under

35 U.S.C. 133

and

37 CFR

1.135

. A copy of the email submission will be placed in the

appropriate patent application file with an indication that the reply is NOT ENTERED

entered in the patent application file

(Doc Code is EMAIL). If a reply to an Office action is improperly submitted by

applicant via email, the email submission will not be accepted as an adequate reply

to avoid abandonment under

35 U.S.C. 133

and

37 CFR

1.135

. A copy of the email submission 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 email unless there is a written authorization of record in the patent

application by the applicant.

If applicant has authorized Internet communications,

USPTO employees may respond to email and initiate communications with applicants via

email.

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 email unless written authorization is

given by the applicant or patentee.

III.

AUTHENTICATION OF SENDER BY A PATENT ORGANIZATION RECIPIENT (ARTICLE 6)

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.

Email 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

ct their Internet activities in

compliance with established procedures.

Email 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.

Similar to the policy set forth in

MPEP 100

for handling

telephone calls, when responding to an email, no information should be disclosed

until the identity of the requester can be adequately verified. Examiners should

verify the identity of the person by checking Patent Data Portal or the application

file, such as checking the email address previously provided in Patent Data Portal or

the application.

IV.

USE OF ELECTRONIC MAIL SERVICES (ARTICLE 7)

Once email 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 email

correspondence by telephone, fax, or other appropriate means.

V.

INTERVIEWS (ARTICLE 8)

Email and instant messaging 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 email. In such cases, a paper copy of the Internet email or

instant messaging 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.

USPTO video conferencing tools may be used to conduct

examiner interviews in both published and unpublished applications under the Patent

Internet Usage Policy. Authorization by the practitioner is required and must be

obtained prior to sending a meeting invite using an official USPTO communication link

or tools

eral Records Act, in the same manner as an Examiner Interview

Summary Form is entered.

USPTO video conferencing tools may be used to conduct

examiner interviews in both published and unpublished applications under the Patent

Internet Usage Policy. Authorization by the practitioner is required and must be

obtained prior to sending a meeting invite using an official USPTO communication link

or tools. Authorization is required to confirm that the practitioner is able to

conduct a video conferencing interview and to confirm the email address to which the

invitation must be sent. The practitioner’s participation in the interview is

considered consent to the use of the video conferencing tool for the interview.

All Internet communications between USPTO employees and

applicants must be made using USPTO tools. Video conferencing communications must be

hosted by USPTO personnel. All interviews done by video conference must originate

from USPTO links provided by the examiner. Links provided by the applicant from

non-USPTO video conferencing tools are not acceptable to use for an interview. No

personal phones, email, PDAs, etc. may be used by USPTO employees for Official

communications.

VI.

POLICY GUIDANCE AND CLARIFICATIONS (ARTICLE 13)

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

Patents who oversees the Office of Petitions or assigned staff in the Office of

Petitions, the Office of Patent Legal Administration, and the MPEP Staff Office.