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USPTO MPEP › Chapter 0500 - Receipt and Handling of Mail and Papers › MPEP § 502.05

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Text

[Editor Note: The following section is a

substantial reproduction of the Legal Framework for Patent Electronic System

published in October of 2019. The legacy system EFS-Web was retired November 15,

2023, and replaced by Patent Center (the USPTO patent electronic filing system).

Users are advised to review the Legal Framework for Patent Electronic System website

www.uspto.gov/PatentLegalFramework

for updated versions.

Information related to Patent Center may be found at

www.uspto.gov/PatentCenter

]

LEGAL FRAMEWORK FOR PATENT ELECTRONIC SYSTEM

The October 2019 version of the Legal Framework for

Patent Electronic System is posted on the USPTO website at

www.uspto.gov/PatentLegalFramework

General Information on the Patent Electronic System

The Patent Electronic System currently comprises

EFS-Web, which is the USPTO’s web-based system for electronic filing of patent

correspondence; and PAIR, which is the USPTO’s web-based means for electronically

viewing the status of, and documents filed in or associated with, patent

applications and proceedings. The Patent Electronic System is accessible via the

USPTO website.

Users may use the Patent Electronic System to

access and file documents securely in a variety of applications and proceedings,

including patent applications, applications for international registration of

industrial designs, reexamination requests and proceedings, and supplemental

examination requests and proceedings. The term “users” includes anyone who

accesses the EFS-Web system, including inventors, third parties (who may submit

some papers such as third party submissions via a dedicated interface),

practitioners, and sponsored support staff. For purposes of readability, the term

“application” is used in this document to represent any and all of the possible

types of applications and proceedings, except where specifically noted otherwise.

Users also may use EFS-Web to submit payments of most patent fees including patent

application filing fees

ird party submissions via a dedicated interface),

practitioners, and sponsored support staff. For purposes of readability, the term

“application” is used in this document to represent any and all of the possible

types of applications and proceedings, except where specifically noted otherwise.

Users also may use EFS-Web to submit payments of most patent fees including patent

application filing fees.

In particular, users may use the web-based

interfaces of EFS-Web to submit documents in Portable Document Format (PDF)

directly to the USPTO. All EFS-Web submissions are required to be in PDF unless

otherwise indicated in this framework. EFS-Web permits submission of the following

non-PDF formats: (1) the American Standard Code of Information Interchange (ASCII)

plain text files (.TXT) to submit nucleotide and/or amino acid sequence listings,

computer program listings, mega tables, and Complex Work Units; (2) zip compressed

files to submit the request form generated by PCT-SAFE or ePCT in international

applications filed under the Patent Cooperation Treaty (PCT) with the United

States Receiving Office; and (3) JPEG reproductions in international design

applications. See sections L, M, and N, respectively, of this Legal Framework for

further information. (Note: All references to ASCII text in this document, whether

specified or not, refers to ASCII plain text only.) 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.

The USPTO provides users with PDF EFS-Web-fillable

forms, such as the Provisional Application for Patent Cover Sheet, the Information

Disclosure Statement (IDS), the Application Data Sheet (ADS), the Petition to Make

Special Under Accelerated Examination Program, and the Request for Continued

Examination (RCE) Transmittal

O specifically

requires the filing of a duplicate in a particular situation.

The USPTO provides users with PDF EFS-Web-fillable

forms, such as the Provisional Application for Patent Cover Sheet, the Information

Disclosure Statement (IDS), the Application Data Sheet (ADS), the Petition to Make

Special Under Accelerated Examination Program, and the Request for Continued

Examination (RCE) Transmittal. When users submit information for an ADS or an IDS

using an EFS-Web-fillable form (not a scanned image (PDF) of a document), 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 website, or user-created forms in PDF, and

submit the completed forms via EFS-Web. The information entered on

non-EFS-Web-fillable forms, however, will not be automatically loaded into the

USPTO databases.

Users also may use EFS-Web to submit web-based

documents, such as ePetitions, Requests for Withdrawal as Attorney or Agent of

Record, and eTerminal Disclaimers. Such documents can be filled out completely

online through web-based interfaces without the need for any fillable PDF form.

These ePetitions, requests, and eTerminal Disclaimers are auto-processed and

granted or approved immediately upon submission if the ePetition, request, or

eTerminal Disclaimer meets all of the requirements. An ePetition, request, or

eTerminal Disclaimer document is generated by EFS-Web based on the information

entered into EFS-Web. The ePetition, request, or eTerminal Disclaimer, and a

decision granting the ePetition or request, or an approval letter approving of the

eTerminal Disclaimer, will be loaded into the electronic application file (i.e.,

the Image File Wrapper (IFW)), if the ePetition or request is granted, or if the

eTerminal Disclaimer is approved. If the ePetition, request, or eTerminal

Disclaimer does not meet all of the requirements, it will not be loaded into the

electronic application file (i.e., IFW)

est, or an approval letter approving of the

eTerminal Disclaimer, will be loaded into the electronic application file (i.e.,

the Image File Wrapper (IFW)), if the ePetition or request is granted, or if the

eTerminal Disclaimer is approved. If the ePetition, request, or eTerminal

Disclaimer does not meet all of the requirements, it will not be loaded into the

electronic application file (i.e., IFW).

Users also may use EFS-Web to submit other

documents, such as application data sheets, as web-based documents that can be

filled out completely online through web-based interfaces without the need for any

fillable PDF form. Documents submitted in this manner will be automatically loaded

into the USPTO databases.

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 the USPTO has received the user’s submission and that provides

an application number. Users of EFS-Web will receive an Electronic Acknowledgement

Receipt (which can be printed or saved) of a successful submission received by the

USPTO on their device, usually within a few minutes. A copy of the receipt is

entered into the application file and may be obtained using PAIR. 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 by the registered user via Private PAIR

within an hour after the USPTO receives the documents, if the user has associated

the application with the user’s customer number. Therefore, users will immediately

be able to check the contents of their applications for completeness and accuracy

of their electronic submissions. Users may also choose to have an email sent to an

email address with limited information such as the application number

within an hour after the USPTO receives the documents, if the user has associated

the application with the user’s customer number. Therefore, users will immediately

be able to check the contents of their applications for completeness and accuracy

of their electronic submissions. Users may also choose to have an email sent to an

email address with limited information such as the application number.

A user may become a registered user by first

obtaining a USPTO.gov account and undergoing a required authentication process,

detailed further in section E of this framework. All users - whether registered or

not - can file most patent applications via EFS-Web. Registered users can also

file follow-on documents in a patent application. However, an unregistered user

can only file limited types of follow-on documents in a patent application (e.g.,

petitions to make special based on age and petitions to accept an unintentionally

delayed payment of a maintenance fee). See section B of this framework for more

information.

The USPTO website provides additional information

on EFS-Web and PAIR, such as instructions, guidelines, frequently asked questions,

and tutorials. Users may contact the Patent Electronic Business Center (Patent

EBC) for assistance with EFS-Web and PAIR as well as for information for

registration for two-step authentication and customer numbers.

Legal and Document Policies

This Legal Framework sets forth the USPTO’s policies

concerning documents submitted electronically using EFS-Web, including patent

applications, applications for international registration of industrial designs,

reexamination requests and proceedings, and supplemental examination requests and

proceedings, as well as follow-on documents for such applications, requests, and

proceedings. Applicable regulations will be interpreted consistent with this

framework for any document submitted electronically using EFS-Web.

Types of Patent Applications and Documents Permitted to be Filed via

EFS-Web.

ial designs,

reexamination requests and proceedings, and supplemental examination requests and

proceedings, as well as follow-on documents for such applications, requests, and

proceedings. Applicable regulations will be interpreted consistent with this

framework for any document submitted electronically using EFS-Web.

Types of Patent Applications and Documents Permitted to be Filed via

EFS-Web.

(a)

Filings Permitted by Registered and Unregistered Users

EFS-Web permits registered users (see section

E) and unregistered users to file the following applications, requests for

reexamination, and documents:

(1) Provisional patent applications filed

under

35 U.S.C.

111(b)

(2) Nonprovisional utility patent

applications filed under

35 U.S.C. 111(a)

which can include other papers such as Track One requests or

accelerated examination requests on initial filing.

(3) Nonprovisional design patent

applications filed under

35 U.S.C. 111(a)

(see

35 U.S.C. 171

(4) International applications filed under

the PCT in the United States Receiving Office (see

35 U.S.C.

361

(5) Submissions to enter the national stage

under

35 U.S.C. 371

(6) International design applications filed

under the Geneva Act of the Hague Agreement Concerning the

International Registration of Industrial Designs (see

35 U.S.C.

382

(7) Requests for

ex parte

reexamination under

35 U.S.C. 302

for

utility or design patents, as a new submission (i.e., not in the

patent file).

(8) Requests for supplemental examination

under

35 U.S.C. 257

for

utility, design, or plant patents, as a new submission (i.e., not in

the patent file).

(9) Third-Party Preissuance Submissions under

35 U.S.C. 122(e)

and

37 CFR 1.290

for

utility, design, or plant patent applications using a dedicated

EFS-Web interface, where the information is not directly placed into

the patent file. See section I.

8) Requests for supplemental examination

under

35 U.S.C. 257

for

utility, design, or plant patents, as a new submission (i.e., not in

the patent file).

(9) Third-Party Preissuance Submissions under

35 U.S.C. 122(e)

and

37 CFR 1.290

for

utility, design, or plant patent applications using a dedicated

EFS-Web interface, where the information is not directly placed into

the patent file. See section I.

(10) Citation of prior art and written

statements in patent files under

37 CFR 1.501

for

utility applications using a dedicated EFS-Web interface where the

information is not directly placed into the patent file. See section

(11) Petitions to make special based on age

under

37 CFR

1.102(c)

(12) Petitions to accept an unintentionally

delayed payment of a maintenance fee under

37 CFR

1.378

, and payments of maintenance fees when

submitted with the petition.

(13) Reissue utility patent applications and

reissue design patent applications.

(b)

Filing of Documents after the Initial Submission of the

Application

Registered users have the capability to file

follow-on documents, via EFS-Web. No user, whether registered or

unregistered, is permitted to file documents in applications, reexamination

proceedings or supplemental examination proceedings in which they are not

authorized. Authorization to act comes from being a practitioner of record

or acting in a representative capacity pursuant to

37 CFR

1.32

and

1.34

respectively. Note

however, that one is not permitted to file papers in an application or

proceeding if they are not a practitioner of record or acting in a

representative capacity (

37 CFR 1.34

), including

third parties, or parties who represent less than all inventors or less than

all applicants, unless specifically authorized under this framework (see

section E).

Follow-on documents are any documents filed

after the initial submission of the application, request for reexamination,

or request for supplemental examination

er of record or acting in a

representative capacity (

37 CFR 1.34

), including

third parties, or parties who represent less than all inventors or less than

all applicants, unless specifically authorized under this framework (see

section E).

Follow-on documents are any documents filed

after the initial submission of the application, request for reexamination,

or request for supplemental examination. Follow-on documents include, but

are not limited to, the following: amendments, information disclosure

statements (IDS), replies to Office actions and notices, evidence,

petitions, and terminal disclaimers. Follow-on documents also include any

documents submitted on the same day as the application, but after the

initial submission. In addition, registered users may file a copy of a

patent application (e.g., a copy of the amended specification including the

claims, and drawings) for the purposes of publication of the application

when filed with any of 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

CFR 1.221(a)

. See section G for more information on

filing these publication requests via EFS-Web. 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

U.S.C. 156

in a patent file via EFS-Web.

Unregistered users cannot file documents after

the initial submission via EFS-Web, except for ePetitions to make special

based on age and ePetitions to accept an unintentionally delayed payment of

a maintenance fee. Unregistered users may file follow-on documents by mail

(with a certificate of mailing in accordance with

37 CFR

1.8

), Priority Mail

Express

from the USPS in accordance with

37 CFR

1.10

, or hand-delivery

ot file documents after

the initial submission via EFS-Web, except for ePetitions to make special

based on age and ePetitions to accept an unintentionally delayed payment of

a maintenance fee. Unregistered users may file follow-on documents by mail

(with a certificate of mailing in accordance with

37 CFR

1.8

), Priority Mail

Express

from the USPS in accordance with

37 CFR

1.10

, or hand-delivery.

Amendments and other papers filed in an

application must be signed. Any follow-on document must be signed in

accordance with

37 CFR 1.33(b)

and 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), the serial number and filing date assigned to that application

by the Office, the international application number of the international

application (PCT), or the international registration number of the

international design registration. See

37 CFR 1.4

1.5

, and

1.33(b)

Types of Patent Applications and Documents Not Permitted to be Filed via

EFS-Web

The following is a list of submission types that

are not permitted to be filed using EFS-Web:

(1) Plant patent applications (see

U.S.C. 161

) filed under

35 U.S.C.

111(a)

and follow-on documents associated with

plant patent applications, other than third party preissuance submissions

under

37 CFR 1.290

, which

may be submitted via a dedicated EFS-Web interface wherein the

information is not directly placed into the application file.

(2) Requests for Reexamination under

U.S.C. 302

for plant patents and documents

associated with reexamination proceedings for plant patents.

w-on documents associated with

plant patent applications, other than third party preissuance submissions

under

37 CFR 1.290

, which

may be submitted via a dedicated EFS-Web interface wherein the

information is not directly placed into the application file.

(2) Requests for Reexamination under

U.S.C. 302

for plant patents and documents

associated with reexamination proceedings for plant patents.

(3) Third party inquiries, petitions or papers,

unless specifically authorized by this Legal Framework and filed in the

manner required by the EFS-Web interface. See B1 discussed previously.

For example, a third party may file a citation of prior art and written

statements in patent files under

37 CFR 1.501

or a

Third Party Preissuance Submission under

37 CFR

1.290

via a dedicated EFS-Web interface; however,

the filer must select the appropriate option identifying the type of

submission or the submission will be improper. Third party filing of

papers directly into an application, patent, or reexamination is not

permitted under the regulations or this Legal Framework. The Office

considers inappropriate any third-party inquiry or submission in an

application that is not provided for in

37 CFR

1.290

. Some examples of third party papers that may

not be filed by EFS-Web or in paper include inquiries into the timing of

future actions on an application, disputes over inventorship in an

application, requests to change inventorship, correspondence address, a

power of attorney, and

37 CFR 3.73

statements.

Note further that EFS-Web may not be used

by third parties to file papers that have no right to entry in an

application or proceeding under USPTO rules and procedures. For example,

a third party is prohibited from filing a demand that the Office withdraw

an application from issue under

37 CFR 1.313

on the

basis of unpatentability of a claim, and may not attempt to use the

Patent Electronic System to evade this prohibition.

(4) Initial submissions for patent term

extension under

35 U.S.C. 156

try in an

application or proceeding under USPTO rules and procedures. For example,

a third party is prohibited from filing a demand that the Office withdraw

an application from issue under

37 CFR 1.313

on the

basis of unpatentability of a claim, and may not attempt to use the

Patent Electronic System to evade this prohibition.

(4) Initial submissions for patent term

extension under

35 U.S.C. 156

(5) Correspondence concerning registration to

practice as specified in

37 CFR 1.4(e)

(6) Certified documents as specified in

CFR 1.4(f)

. See also

37 CFR

1.6(d)(2)

(7) Certified copies of priority documents. An

example of such a submission is a certified copy of a foreign patent

application filed pursuant to

35 U.S.C. 119

and

37 CFR 1.55

or a certified copy of an

international application filed pursuant to

35 U.S.C.

365

and

37 CFR 1.55

(8) Correspondence to be filed in an

application subject to a secrecy order under

37 CFR

5.1

through

37 CFR 5.5

. See also

CFR 1.6(d)(6)

(9) Documents filed in contested cases and

trials before the Patent Trial and Appeal Board (PTAB), except as the

PTAB may expressly authorize. See also

37 CFR

1.6(d)(7)

(10) Documents filed in contested cases and

trials before the PTAB which are governed by 37 CFR part 41, subpart D

and part 42, respectively. For example, petitions for

inter

partes

review, post grant review, covered business method

patent review, and derivation proceedings cannot be filed via EFS-Web,

but instead are filed electronically via the USPTO Patent Trial and

Appeal Board End to End System at

https://ptab.uspto.gov/#/login

. See also

CFR 1.6(d)(3)

and

1.8(a)(2)(i)(B) and

(C)

(11) Correspondence filed in connection with a

disciplinary proceeding under 37 CFR part 11. See also

37 CFR

1.6(d)(3)

and

37 CFR

1.8(a)(2)(iii)(A)

ew, and derivation proceedings cannot be filed via EFS-Web,

but instead are filed electronically via the USPTO Patent Trial and

Appeal Board End to End System at

https://ptab.uspto.gov/#/login

. See also

CFR 1.6(d)(3)

and

1.8(a)(2)(i)(B) and

(C)

(11) Correspondence filed in connection with a

disciplinary proceeding under 37 CFR part 11. See also

37 CFR

1.6(d)(3)

and

37 CFR

1.8(a)(2)(iii)(A)

(12) Maintenance fees submitted under

CFR 1.366

that are not submitted with a petition

under

37 CFR 1.378

(see item 12 in subsection B.1

above). Patent owners may pay electronically using the Patent Maintenance

Fees Storefront at

https://fees.uspto.gov/MaintenanceFees

. See

MPEP §

2510

for information regarding the proper

methods for submitting maintenance fees.

(13) Assignment documents under

U.S.C. 261

, which may be electronically filed using

the Electronic Patent Assignment System (EPAS). Information regarding

EPAS is available at:

https://epas.uspto.gov

(14) Submissions that are not associated with a

patent, patent application, international design application,

reexamination proceeding, or supplemental examination proceeding.

(15) Notices of appeal to a court, district

court complaints, or other complaints or lawsuits involving the USPTO.

See

MPEP §

1216

for instructions on how to properly serve

and/or file such documents seeking judicial review of a decision by the

PTAB.

If a document or submission listed previously is

submitted via EFS-Web, the document or submission will not be accorded a date

of receipt and it will not be considered officially filed in the USPTO.

Furthermore, no benefit will be given to a certificate of transmission under

37 CFR

1.8

for the document or submission.

Types of Papers That May Be Filed and Processed Electronically

Registered users may use EFS-Web to submit

web-based documents such as ePetitions, Requests for Withdrawal as Attorney or

Agent of Record, and eTerminal Disclaimers

not be considered officially filed in the USPTO.

Furthermore, no benefit will be given to a certificate of transmission under

37 CFR

1.8

for the document or submission.

Types of Papers That May Be Filed and Processed Electronically

Registered users may use EFS-Web to submit

web-based documents such as ePetitions, Requests for Withdrawal as Attorney or

Agent of Record, and eTerminal Disclaimers. These ePetitions, requests, and

eTerminal Disclaimers are auto-processed and granted or approved immediately

upon submission if the ePetition, request, or eTerminal Disclaimer meets all of

the requirements. See the ePetition Resource Page at

www.uspto.gov/ patents-application-process/applying-online/epetition-

resource-page

for a list of ePetitions.

Registered users may sign into EFS-Web and

provide information in web-based interfaces. An ePetition, request, or

eTerminal Disclaimer document (PDF) is generated by EFS-Web based on the

information entered into EFS-Web. This document may be reviewed prior to

submission to ensure accuracy. This document and a decision granting the

ePetition or request, or an approval letter approving of the eTerminal

Disclaimer, will be loaded into the electronic application file (i.e., IFW), if

the ePetition or request is granted, or if the eTerminal Disclaimer is

approved. If the ePetition, request, or eTerminal Disclaimer does not meet all

of the formal requirements, it will not be accepted for submission and loaded

into the electronic application file (i.e., IFW).

EFS-Web permits registered users (see subsection

E, below) to file the following auto-processed ePetitions, requests, and

eTerminal Disclaimers:

1. Request for withdrawal as attorney or

agent;

2. Petition to withdraw an application from

issue under

37 CFR 1.313

, with

some restrictions;

3. Petition for revival of an application

under

37 CFR 1.137

, with some restrictions;

4. eTerminal Disclaimers for nonprovisional

utility applications under

37 CFR 1.321(b) and

e the following auto-processed ePetitions, requests, and

eTerminal Disclaimers:

1. Request for withdrawal as attorney or

agent;

2. Petition to withdraw an application from

issue under

37 CFR 1.313

, with

some restrictions;

3. Petition for revival of an application

under

37 CFR 1.137

, with some restrictions;

4. eTerminal Disclaimers for nonprovisional

utility applications under

37 CFR 1.321(b) and

(c)

; and

5. Petition to correct assignee after payment

of Issue Fee under

37 CFR 3.81(b)

EFS-Web permits registered and unregistered

users (see subsection E, below) to file the following auto-processed

ePetitions:

1. Petition to make special based on age

under

37 CFR 1.102

; and

2. Petition to accept unintentionally delayed

payment of the maintenance fee under

37 CFR 1.378(b)

The Official Record of Documents Submitted via EFS-Web

When the USPTO successfully receives PDF documents

filed in accordance with the EFS-Web requirements, the USPTO will convert the

PDF files submitted by users into Tagged Image File Format (TIFF) image files

and then store the TIFF image files in the IFW as part of the official record,

in addition to those drawings which are stored in the Supplemental Complex

Repository for Examiners (SCORE) as part of the official record (i.e., color

and grayscale drawings and drawings submitted in design applications). The

USPTO also will store JPEG drawing files successfully received in international

design applications in accordance with the EFS-Web requirements in SCORE as

part of the official record. In addition, certain submissions filed as ASCII

plain text files (e.g., sequence listings or computer program listings), are

stored in SCORE as part of the official record. Accordingly, the official

record for the patent application, international design application,

reexamination proceeding, or supplemental examination proceeding comprises:

(1) ASCII text documents and drawings stored in

SCORE as previously set forth;

(2) TIFF images of all other original documents

as stored in IFW;

s or computer program listings), are

stored in SCORE as part of the official record. Accordingly, the official

record for the patent application, international design application,

reexamination proceeding, or supplemental examination proceeding comprises:

(1) ASCII text documents and drawings stored in

SCORE as previously set forth;

(2) TIFF images of all other original documents

as stored in IFW;

(3) The Electronic Acknowledgement Receipt and

the Electronic Patent Application Fee Transmittal, both of which contain

information entered via the EFS-Web graphical user interface (GUI) data

collection interfaces; and

(4) TIFF images stored in IFW in international

design applications generated from XML data received from the

International Bureau.

The original documents submitted via EFS-Web

(e.g., applications and reexamination and supplemental examination proceeding

documents) are stored exactly as filed in an independent location. See

subsection L. below for more information on ASCII text documents and

subsections K. and M.2. below for information on color and grayscale drawings

and subsection N below for information on international design applications.

Submissions for pre-grant (eighteen-month) publication are forwarded to the

Pre-Grant Publication Division and are not stored in IFW or SCORE as part of

the official record of the patent application. See subsection G. below for more

information on publication requests.

Treatment of Internally Inconsistent Information Submitted via

EFS-Web

When filing a new application via EFS-Web,

EFS-Web requires the input of certain application data. This includes the type

of application being filed (e.g., nonprovisional application under

U.S.C. 111(a)

, U.S. national stage application under

35 U.S.C.

371

, international application (PCT) or international

design application), the title of the application (unless the application is an

international design application), the name of an inventor or applicant, and a

correspondence address

data. This includes the type

of application being filed (e.g., nonprovisional application under

U.S.C. 111(a)

, U.S. national stage application under

35 U.S.C.

371

, international application (PCT) or international

design application), the title of the application (unless the application is an

international design application), the name of an inventor or applicant, and a

correspondence address. In addition, other application data, such as a docket

number, may be provided.

Routing of the submission to the appropriate area

of the Office for processing is based on the application type indicated in

EFS-Web, and such indication will be treated as an instruction to treat the

submission as the selected application type. Where the submission includes

conflicting indications as to the type of application being filed, and there is

no provision under the U.S. rules to resolve such conflict (see, e.g.,

37 CFR

1.495(g)

), the submission may be treated in accordance

with the indication provided in EFS-Web, and a petition under

37 CFR

1.182

with the appropriate fee under

37 CFR

1.17(f)

may be required to correct the error. In the case

of other conflicting information in the submission, the conflict will be

resolved in accordance with the applicable regulations. For example,

inventorship will be determined in accordance with the provisions of

37 CFR

1.41

. Where no correspondence information is included in

the submission, or the correspondence information was not made in accordance

with the applicable regulations, the Office may use the application data

furnished through EFS-Web for purposes of correspondence until corrected by the

applicant. For example, the Office may use the correspondence address

associated with a customer number entered through EFS-Web rather than an

address furnished in an unsigned paper in the new application submission.

n was not made in accordance

with the applicable regulations, the Office may use the application data

furnished through EFS-Web for purposes of correspondence until corrected by the

applicant. For example, the Office may use the correspondence address

associated with a customer number entered through EFS-Web rather than an

address furnished in an unsigned paper in the new application submission.

Determination of the Paper Size Equivalent for Applications Filed via

EFS-Web for Application Size Fee Purposes

See

37 CFR 1.52(f)(2)

and

MPEP §

607

for the paper size equivalency for application

size fee purposes. The paper size equivalency under

37 CFR

1.52(f)(2)

for EFS-Web filings does not apply to the

application size fee under

37 CFR 1.492(j)

for

national stage submissions under

35 U.S.C. 371

. See

MPEP §

1893.01(c)

Submission of Fee Payments via EFS-Web

Both unregistered and registered users may submit

the filing fees (e.g., the basic filing fee, search fee, examination fee, and

excess claims fee) using the online fee payment in EFS-Web at the time of

filing a patent application, request for reexamination, or request for

supplemental examination, and may submit fees for third party preissuance

submissions under

37 CFR 1.290

. Only

registered users may submit payment of fees in a previously filed application,

reexamination proceeding, or supplemental examination proceeding. EFS-Web

permits users to electronically submit the payment of fees with a credit/debit

card, USPTO deposit account, or electronic fund transfer. Users may also

provide authorizations to charge fees to a deposit account with the documents

being submitted electronically via EFS-Web (e.g., a fee transmittal letter or

form PTO/SB/17)

reexamination proceeding, or supplemental examination proceeding. EFS-Web

permits users to electronically submit the payment of fees with a credit/debit

card, USPTO deposit account, or electronic fund transfer. Users may also

provide authorizations to charge fees to a deposit account with the documents

being submitted electronically via EFS-Web (e.g., a fee transmittal letter or

form PTO/SB/17). However, users should not submit a credit/debit card charge

authorization including the Credit Card Payment Form (PTO-2038) electronically

via EFS-Web, because the electronic submission automatically will be loaded

into the application file in IFW, and the credit/debit card information may

become part of the record of an application file that is open to public

inspection.

A credit/debit card charge authorization

transmittal (e.g., PTO-2038) may be submitted by facsimile transmission to the

USPTO Central Facsimile (571) 273-8300, or sent via Priority Mail

Express

from the United States Postal Service

(USPS) in accordance with

37 CFR 1.10

. Applicants

must include the application number from the Electronic Acknowledgement Receipt

to ensure that the fees are paid in the correct application. Facsimile

submission of the basic national fee for a national stage application under

35 U.S.C.

371

is not accepted. Failure to timely pay the basic

national fee prior to the expiration of 30 months from the priority date will

result in abandonment of the international application for purposes of the U.S.

national phase.

If an applicant wishes to submit the application

filing fees on the filing date of a patent application to avoid the surcharge,

the payment of the filing fees must be submitted and received by the USPTO

before midnight ET on the filing date of the application. The previous

paragraph discusses alternative methods that may be used instead of EFS-Web to

pay the fees. Failure to pay the fees on the filing date of the application

will result in a surcharge

fees on the filing date of a patent application to avoid the surcharge,

the payment of the filing fees must be submitted and received by the USPTO

before midnight ET on the filing date of the application. The previous

paragraph discusses alternative methods that may be used instead of EFS-Web to

pay the fees. Failure to pay the fees on the filing date of the application

will result in a surcharge.

When the online fee payment in EFS-Web is

unavailable, the following types of submissions cannot be filed via EFS-Web,

since online fee payment must accompany the submission:

(1) Petitions that require a fee for

auto-processing by EFS-Web;

(2) Pre-grant publication submissions under

37 CFR 1.211

1.221

that require a fee;

(3) Third-party preissuance submissions under

37 CFR 1.290

that

require a fee; and

(4) Web-based Issue Fee Payment (Web 85b).

Electronic Acknowledgement Receipt and Date of Receipt

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 of an application filed under

U.S.C. 111

via EFS-Web 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

d 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 of an application filed under

U.S.C. 111

via EFS-Web 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

Parte

Reexamination Request Filing Date” and the official

supplemental examination filing date will be noted on the “Notice of Supplemental

Examination 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)

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

t Receipt for that

application number (e.g., a petition under

37 CFR 1.53(e)

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, i.e., no specification was filed,

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.

The Date of Receipt of a Follow-on Document Received by the USPTO

Through EFS-Web

Follow-on documents filed in an application or

reexamination proceeding after the initial filing of the application or request

for reexamination will be accorded a receipt date, which is the date the

follow-on document is received at the USPTO. See

37 CFR

1.6(a)(4)

A follow-on document required to be filed in the

USPTO within a set period of time (e.g., a reply to an Office action) will also

be considered as being timely filed if the follow-on document is submitted in

compliance with the procedure set forth in

37 CFR 1.8(a)

examination will be accorded a receipt date, which is the date the

follow-on document is received at the USPTO. See

37 CFR

1.6(a)(4)

A follow-on document required to be filed in the

USPTO within a set period of time (e.g., a reply to an Office action) will also

be considered as being timely filed if the follow-on document is submitted in

compliance with the procedure set forth in

37 CFR 1.8(a)

(1) The follow-on document is submitted via

EFS-Web prior to expiration of the set period of time in accordance with

the requirements for EFS-Web; and

(2) The document includes a certificate of

transmission stating the date of transmission and signed by a person that

has reasonable basis to expect that the document would be transmitted on

or before the date of transmission. See

37 CFR 1.8(a)(1)(i)(C)

and

(a)(1)(ii)

However, the certificate of transmission practice

under

37 CFR

1.8

does not apply to the documents listed in

37 CFR

1.8(a)(2)

(e.g., a document filed for the purpose of

obtaining an application filing date).

The Date of Receipt of an Application Submitted via EFS-Web

The time and date of receipt of an application

filed via EFS-Web is the local time and date in USPTO headquarters in

Alexandria, Virginia. Accordingly, the date of receipt of an application

officially submitted through EFS-Web will be the date in the Eastern Time zone

when the USPTO received the submission. As such, the submission’s “date of

receipt,” as shown on the Electronic Acknowledgement Receipt, is the Eastern

Time zone date that the documents are fully, successfully, and officially

received at the USPTO, after the user clicks the SUBMIT button on the Confirm

and Submit screen. See

37 CFR 1.6(a)(4)

. This date

is controlling for filing date purposes of a newly filed application. There is

no “certificate of transmission” practice for new application filings

(

37 CFR

1.8

)

edgement Receipt, is the Eastern

Time zone date that the documents are fully, successfully, and officially

received at the USPTO, after the user clicks the SUBMIT button on the Confirm

and Submit screen. See

37 CFR 1.6(a)(4)

. This date

is controlling for filing date purposes of a newly filed application. There is

no “certificate of transmission” practice for new application filings

(

37 CFR

1.8

To be specific, the EFS-Web system records, as the

time and date of receipt of documents, the local time and date in Alexandria,

Virginia, on which the USPTO receives the documents, after the user clicks the

SUBMIT button on the Confirm and Submit screen for those documents.

For example, if an applicant in California

officially files a patent application with the USPTO through EFS-Web by clicking

on the SUBMIT button at 10 p.m. Pacific Daylight Time in California on May 1, that

application would be officially received by the USPTO at 1 a.m., local time (i.e.,

Eastern Daylight Time) on May 2. Accordingly, the application would receive a

filing date of May 2. However, the applicant could alternatively file the

application using Priority Mail Express

from the USPS

in accordance with

37 CFR 1.10

in which case the

applicant would have until midnight on May 1 in his or her local time zone to file

the application and obtain a filing date of May 1.

Hours of Operation for Filing via EFS-Web

Hours of operation of EFS-Web will be clearly

provided in the EFS-Web instructions when users log on to the system. The USPTO

will post information on any scheduled down time due to system maintenance in

advance. Users may file patent documents electronically during the hours of

operation of EFS-Web every day of the week, including weekends and holidays. If

the submission is successfully received (even on a Saturday, Sunday or Federal

holiday within the District of Columbia), the USPTO will assign that receipt

date to the submission

formation on any scheduled down time due to system maintenance in

advance. Users may file patent documents electronically during the hours of

operation of EFS-Web every day of the week, including weekends and holidays. If

the submission is successfully received (even on a Saturday, Sunday or Federal

holiday within the District of Columbia), the USPTO will assign that receipt

date to the submission.

If a transmission is attempted during a down

time, i.e., the electronic filing system is unavailable, the USPTO cannot

accept it and will, if possible, transmit back a notice that the USPTO is not

accepting submissions. No Electronic Acknowledgement Receipt will be sent.

Instead a notice will advise the user to use alternative filing methods, such

as Priority Mail Express

from the USPS in

accordance with

37 CFR 1.10

or hand

delivery of paper to the USPTO, to establish the filing date. Note that

applications filed under

37 CFR 1.53

, international

applications (PCT), international design applications, reexamination requests,

and requests for supplemental examination cannot be submitted by facsimile

transmission (

37 CFR 1.6(d)(3) and (5)

), and that certificate of

mailing procedures do not apply to new applications, copies of the

international application and the basic national fees necessary to enter the

national stage as specified in

37 CFR 1.495(b)

and

reexamination requests (

37 CFR 1.8(a)(2)(i)(A), (D), and

(F)

). Users are strongly advised to transmit their

electronic filings sufficiently early in the day to allow time for alternative

paper filing when transmission cannot be initiated or correctly completed.

Filing New Applications During an Unscheduled Outage of the Primary

Portal to EFS-Web

The USPTO will provide an EFS-Web Contingency

option to users to file new applications, national stage submissions under

35 U.S.C.

371

, requests for reexamination, requests for

supplemental examination, and certain petitions when the primary portal to

EFS-Web is unavailable during an unscheduled outage

leted.

Filing New Applications During an Unscheduled Outage of the Primary

Portal to EFS-Web

The USPTO will provide an EFS-Web Contingency

option to users to file new applications, national stage submissions under

35 U.S.C.

371

, requests for reexamination, requests for

supplemental examination, and certain petitions when the primary portal to

EFS-Web is unavailable during an unscheduled outage. The USPTO will post a

notification of any unscheduled outage of the primary portal to EFS-Web and

provide the link to EFS-Web Contingency on the EFS-Web Internet page

www.uspto.gov/patents-application-

process/applying-online/about-efs-web

. The EFS-Web

Contingency (

www.uspto.gov/patents-

application-process/applying-online/efs-web-contingency

) has

the same functionality as EFS-Web for unregistered users. It permits users to

sign on as unregistered EFS-Web users to file new applications, national stage

submissions under

35 U.S.C. 371

submitted

with the basic national fee necessary to enter the national stage, requests for

reexamination, requests for supplemental examination and certain petitions.

However, other follow-on documents and fee payments filed after the initial

submission of the application, reexamination request, or supplemental

examination request (e.g., amendments and replies to Office actions) cannot be

filed using EFS-Web Contingency Option.

If systems that EFS-Web Contingency depend on

are unavailable, submission types and features in EFS-Web Contingency may be

unavailable (e.g., payment processing and data processing). If the USPTO

payment system is unavailable, then online payment processing will be

unavailable for EFS-Web Contingency (e.g., online payment option is not

available for payment of the basic national fee with a national stage

submission under

35 U.S.C. 371

). If the

Patent Application Locating and Monitoring (PALM) database is unavailable, then

EFS-Web Contingency cannot access data for processing certain submission types

tem is unavailable, then online payment processing will be

unavailable for EFS-Web Contingency (e.g., online payment option is not

available for payment of the basic national fee with a national stage

submission under

35 U.S.C. 371

). If the

Patent Application Locating and Monitoring (PALM) database is unavailable, then

EFS-Web Contingency cannot access data for processing certain submission types.

The unavailability of the PALM system may affect filing types such as national

stage submissions under

35 U.S.C. 371

and

ePetitions.

(a)

Proper Submissions Under EFS-Web Contingency Option

Specifically, EFS-Web Contingency Option only

permits users to electronically file the following items:

(1) Provisional patent applications filed

under

35 U.S.C.

111(b)

;

(2) Nonprovisional utility patent

applications filed under

35 U.S.C. 111(a)

;

(3) Nonprovisional design patent applications

(see

35 U.S.C. 171

) filed under

35 U.S.C.

111(a)

;

(4) International applications filed under

the PCT in the United States Receiving Office (see

35 U.S.C.

361

);

(5) Submissions to enter the national stage

under

35 U.S.C. 371

;

(6) International design applications filed

under the Geneva Act of the Hague Agreement Concerning the

International Registration of Industrial Designs (see

35 U.S.C.

382

);

(7) Requests for

ex parte

reexamination under

35 U.S.C. 302

for

utility or design patents;

(8) Requests for supplemental examination

under

35 U.S.C. 257

for

utility, design, or plant patents;

(9) Petitions to make special based on age

under

37 CFR 1.102(c)

when filed as an ePetition (for more information see

www.uspto.gov/patents-application-process/

applying-online/epetition-resource-page

);

(10) Petitions to accept an unintentionally

delayed payment of maintenance fee under

37 CFR

1.378(b)

when filed as an ePetition, for the

automatic processing of the ePetition (for more information see

www.uspto.gov/patents-application-process/

applying-online/epetition-resource-page

);

n (for more information see

www.uspto.gov/patents-application-process/

applying-online/epetition-resource-page

);

(10) Petitions to accept an unintentionally

delayed payment of maintenance fee under

37 CFR

1.378(b)

when filed as an ePetition, for the

automatic processing of the ePetition (for more information see

www.uspto.gov/patents-application-process/

applying-online/epetition-resource-page

);

(11) Petition to make special under the

accelerated examination program (must be filed with a nonprovisional

utility patent application under

35 U.S.C.

111(a)

);

(12) Reissue utility patent applications and

reissue design patent applications;

(13) Third-Party Preissuance Submissions

under

35 U.S.C. 122(e)

and

37 CFR 1.290

for

utility, design, or plant patent applications using a dedicated

EFS-Web interface wherein the information is not directly placed into

the application. See subsection I, below; and

(14) Citation of prior art and written

statements in patent files under

37 CFR 1.501

for

utility applications using a dedicated EFS-Web interface, where the

information is not directly placed into the patent file. See

subsection I, below.

Documents filed via EFS-Web Contingency as

part of the submissions previously listed must meet the same file format

requirements established for EFS-Web, e.g., file size and PDF embedded-font

requirements. The same file validation performed in EFS-Web will be

performed in EFS-Web Contingency . Similar to EFS-Web, EFS-Web Contingency

will provide an Electronic Acknowledgement Receipt that establishes the date

of receipt by the USPTO of an application or document submitted via EFS-Web

Contingency. The applicant is not required to, and should not, resubmit the

application or document that was submitted via the EFS-Web Contingency

Option when the primary portal to EFS-Web is once again available. Any

resubmission of an application will result in filing a duplicate application

and, if applicant pays the filing fees again when submitting the duplicate

application, no refund will be provided

cy. The applicant is not required to, and should not, resubmit the

application or document that was submitted via the EFS-Web Contingency

Option when the primary portal to EFS-Web is once again available. Any

resubmission of an application will result in filing a duplicate application

and, if applicant pays the filing fees again when submitting the duplicate

application, no refund will be provided.

35 U.S.C. 42

Applications filed via EFS-Web Contingency are

protected with the same level of security as EFS-Web for unregistered users

by using Transport Layer Security (TLS) to encrypt transmission over the

Internet. Registered users who have uploaded documents to a Saved Submission

package in EFS-Web will not be able to access those Saved Submission

documents through EFS-Web Contingency. Applicants can submit online fee

payments by selecting fees on the fee calculation screen and completing

their payment at the time of submission (i.e., choose the “Yes! I want to

pay now” button rather than “No - I will pay later” button).

When the primary portal to EFS-Web is

unavailable during an unscheduled outage, applicants may also file new

applications, national stage submissions under

35 U.S.C.

371

submitted with the basic national fee necessary to

enter the national stage, reexamination requests, and requests for

supplemental examination by either hand-delivery to the USPTO, or Priority

Mail Express

from the United States Postal

Service (USPS) in accordance with

37 CFR 1.10

, to

establish the filing date or national stage submission date. New

applications, national stage submissions under

35 U.S.C.

371

submitted with the basic national fee necessary to

enter the national stage, reexamination requests, and requests for

supplemental examination cannot be submitted by facsimile transmission and

certificate of mailing procedures under

37 CFR 1.8

do not apply

to these items.

The EFS-Web Contingency Option does not permit

follow-on fee payments and follow-on documents other than those previously

listed

ubmitted with the basic national fee necessary to

enter the national stage, reexamination requests, and requests for

supplemental examination cannot be submitted by facsimile transmission and

certificate of mailing procedures under

37 CFR 1.8

do not apply

to these items.

The EFS-Web Contingency Option does not permit

follow-on fee payments and follow-on documents other than those previously

listed. Applicants may file the documents or fee payments by: (1) facsimile

transmission in accordance with

37 CFR 1.6(d)

and

1.8

, (2) first class mail with a certificate of

mailing in accordance with

37 CFR 1.8

, (3)

hand-delivery to the USPTO, or (4) Priority Mail

Express

from USPS in accordance with

37 CFR

1.10

. Documents that are required to establish the

filing date of an application (e.g., a missing drawing figure or page of the

specification) cannot be submitted by facsimile transmission, and

certificate of mailing procedures under

37 CFR 1.8

do not apply

to these documents.

(b)

Improperly Filed Follow-on Documents

As previously stated, EFS-Web Contingency and

(EFS-Web for unregistered users) permits users to sign on as unregistered

EFS-Web users to file new applications, national stage submissions under

U.S.C. 371

submitted with the basic national fee

necessary to enter the national stage, requests for reexamination, requests

for supplemental examination, and certain ePetitions. EFS-Web Contingency

(and EFS-Web for unregistered users) have limited functionality, and do not

permit users to file other follow-on documents and follow-on fee payments

after the initial submission of the application, reexamination request, or

supplemental examination request (e.g., amendments and replies to Office

actions). Note that it is improper for registered and unregistered users to

file follow-on documents as new applications. The USPTO provides answers to

frequently asked questions, and other helpful information on the USPTO

website

ollow-on fee payments

after the initial submission of the application, reexamination request, or

supplemental examination request (e.g., amendments and replies to Office

actions). Note that it is improper for registered and unregistered users to

file follow-on documents as new applications. The USPTO provides answers to

frequently asked questions, and other helpful information on the USPTO

website. Users are encouraged to check the USPTO website for more

information and contact the Patent Electronic Business Center for questions

related to the usage of USPTO Patent Electronic Systems. When an applicant

improperly files a follow-on document as a new application via EFS-Web

Contingency (or EFS-Web) and wishes the USPTO to move the follow-on document

to an existing intended application, a petition under

37 CFR

1.182

accompanied by the petition fee under

37 CFR 1.17(f)

will be

required in the intended application.

(c)

Additional Information Regarding National Stage Submissions

The basic national fee is required in order

for an international application to enter the national stage under

U.S.C. 371

. See

37 CFR

1.495

. Users are permitted to submit the basic

national fee with the national stage submission under

35 U.S.C.

371

via EFS-Web and EFS-Web Contingency using the

USPTO payment page. If the payment system is unavailable, neither EFS-Web

nor EFS-Web Contingency will permit users to make payment using the

interactive payment interfaces. Applicant may pay the necessary national

stage entry fees by including a written authorization to charge a deposit

account the desired fees together with the national stage submission under

U.S.C. 371

, or by sending the payment via Priority

Mail Express

from the USPS in accordance with

37 CFR

1.10

on the same date that the national stage

submission is electronically filed.

For any national stage submissions under

U.S.C

national

stage entry fees by including a written authorization to charge a deposit

account the desired fees together with the national stage submission under

U.S.C. 371

, or by sending the payment via Priority

Mail Express

from the USPS in accordance with

37 CFR

1.10

on the same date that the national stage

submission is electronically filed.

For any national stage submissions under

U.S.C. 371

filed via EFS-Web or EFS-Web Contingency,

the system automatically checks the PALM system to verify that no previous

national stage submission has been made for the particular international

application (PCT) referenced in the initial national stage submission. If

the PALM system is unavailable, neither EFS-Web nor EFS-Web Contingency can

complete the PALM verification, and thus EFS-Web and EFS-Web Contingency

will not permit any national stage submissions under

35 U.S.C.

371

to be filed. Therefore, if PALM is unavailable,

applicants may use hand-delivery or Priority Mail

Express

from the USPS in accordance with

37 CFR

1.10

to submit documents and fees for national stage

entry. However, applicants may not file national stage submissions under

U.S.C. 371

or the basic national fee necessary to

enter the national stage via facsimile transmission. See

37 CFR

1.6(d)(3)

and

1.8(a)(2)(i)(F)

See subsection M, below, for additional

information pertaining to the filing of international applications (PCT) and

entry into the national stage under

35 U.S.C. 371

Inadvertent Omission of Documents Filed in a New Application via

EFS-Web

One advantage of filing a patent application via

EFS-Web is that a registered user may view his or her submission in Private

PAIR and file a document directly into the application file on the same day as

the filing date of the application. In certain situations, applicant may

correct an error by filing a missing item(s) on the same day as the filing date

of the application. Applicant, however, may wish to file a new application in

other certain situations

that a registered user may view his or her submission in Private

PAIR and file a document directly into the application file on the same day as

the filing date of the application. In certain situations, applicant may

correct an error by filing a missing item(s) on the same day as the filing date

of the application. Applicant, however, may wish to file a new application in

other certain situations.

The following examples describe implications

raised when applicant inadvertently omits an item when filing an application

under

35 U.S.C. 111

electronically via EFS-Web:

(1)

Oath or Declaration

- Applicant may file an

executed oath or declaration on the same day as the filing date as the

application via EFS-Web. The oath or declaration will not be considered

late and a surcharge for filing a late oath or declaration will not be

required.

(2)

Filing Fees

- Applicant may file the filing fees

(e.g., the basic filing fee, search and examination fees, application

size fee, or excess claims fee) on the same day as the filing date of the

application via EFS-Web. The fees will

not

considered late and a surcharge for filing the filing fees will

not

be required.

(3)

Nonpublication request

- Because

37 CFR

1.213(a)(1)

requires any nonpublication request to

be filed

with the application

, applicant cannot simply file

the nonpublication request to correct the error. If applicant does not

wish to have the application publish, applicant must file: (a) a new

application with a nonpublication request; and (b) in the initial

application, a petition for express abandonment to avoid publication

under

37 CFR 1.138(c)

and the fee under

37 CFR 1.17(h)

sufficient time to permit the appropriate officials in the Pre-Grant

Publication Division to recognize the abandonment and remove the

application from the publication process.

applicant must file: (a) a new

application with a nonpublication request; and (b) in the initial

application, a petition for express abandonment to avoid publication

under

37 CFR 1.138(c)

and the fee under

37 CFR 1.17(h)

sufficient time to permit the appropriate officials in the Pre-Grant

Publication Division to recognize the abandonment and remove the

application from the publication process.

(4)

Drawings

- Applicant may file missing drawings as

a preliminary amendment on the same day as the filing date of the

application. The drawings will be considered as part of the original

disclosure of the application. See

37 CFR 1.115(a)(1)

If the application was filed with the “wrong drawings,” a preliminary

amendment could be filed on the same day as the filing date of the

application adding the correct drawings and deleting the “wrong

drawings.” An amendment adding new drawings and deleting the “wrong

drawings,” filed on a day after the filing date of the application may

raise new matter issues.

(5)

Claims

- Applicant may file claims as a

preliminary amendment on the same day that applicant filed the

application papers and such claims will be considered as part of the

original disclosure of the application.

(6)

Part of the specification

- Applicant may file any

missing portion of the written description as a preliminary amendment on

the filing date of the application. Such amendment will be considered as

part of the original disclosure.

If applicant files a second application to

correct an error in the first application, applicant will have filed two

applications. Applicant may continue to prosecute the first application that

has the error or abandon the first application by filing a petition for express

abandonment. Please note that any fees paid in the first application will not

be refunded or applied to the second application

If applicant files a second application to

correct an error in the first application, applicant will have filed two

applications. Applicant may continue to prosecute the first application that

has the error or abandon the first application by filing a petition for express

abandonment. Please note that any fees paid in the first application will not

be refunded or applied to the second application. Applicant may request refund

of the search fee and any excess claims fees (but not the basic filing fee,

examination fee, and application size fee) paid in the first application if the

application was filed under

35 U.S.C. 111(a)

, and the

applicant files a petition for express abandonment in accordance with

37 CFR

1.138(d)

Legal Consequences of the USPTO’s Accepting Electronic Patent

Applications on Saturday, Sunday, and Holidays

Applicants may file patent applications

electronically during the hours of operation of EFS-Web every day of the

week, including weekends and holidays. EFS-Web will provide applicants with

the opportunity to receive a filing date on any day of the week, including

Saturday, Sunday, and Federal holidays. In addition,

35 U.S.C.

21(b)

states:

When the day, or the last day, for taking any

action or paying any fee in the United States Patent and Trademark Office

falls on Saturday, Sunday, or a Federal holiday within the District of

Columbia, the action may be taken, or fee paid, on the next succeeding

secular or business day.

Further,

35 U.S.C. 119(e)(3)

states, in pertinent part:

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, the period of pendency of the

provisional application shall be extended to the next succeeding secular or

business day

en, or fee paid, on the next succeeding

secular or business day.

Further,

35 U.S.C. 119(e)(3)

states, in pertinent part:

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, the period of pendency of the

provisional application shall be extended to the next succeeding secular or

business day.

Thus, under United States law, applicants will

be permitted to take action on the next business day when the last day for

taking action falls on a weekend or Federal holiday within the District of

Columbia, regardless of the mode or form of filing.

However,

Article 4

of the Paris

Convention addresses the priority period

Article 4(C)(3)

states:

If the last day of the period is an official

holiday, or a day when the Office is not open for the filing of applications

in the country where protection is claimed, the period shall be extended

until the first following working day.

As previously stated, the USPTO is capable of

accepting electronic patent application filings every day of the week,

including weekends and holidays, through EFS-Web. Thus, applicants filing

international applications with the United States Receiving Office or

international design applications with the USPTO as an office of indirect

filing are cautioned to consider possible adverse consequences regarding the

determination in other countries of priority periods under

Article

4(C)(3)

of the Paris Convention. Specifically, the

ability to file applications electronically on weekends and holidays in the

USPTO could potentially result in loss of priority rights in foreign

jurisdictions designated in either international applications filed under

the PCT with the United States Receiving Office or international design

applications filed with the USPTO as an office of indirect filing if

applicants choose to avail themselves of

35 U.S.C. 21(b)

119(e)(3)

lectronically on weekends and holidays in the

USPTO could potentially result in loss of priority rights in foreign

jurisdictions designated in either international applications filed under

the PCT with the United States Receiving Office or international design

applications filed with the USPTO as an office of indirect filing if

applicants choose to avail themselves of

35 U.S.C. 21(b)

119(e)(3)

. In such circumstances, other patent

offices

may

deny the priority claim on the basis that

the international application or international design application was not

timely filed if their national law strictly incorporates the provision of

Paris Convention

Article 4(C)(3)

such that

it considers the USPTO to be open for the filing of applications on weekends

and holidays. For this reason, applicants should consider whether to rely

upon the “next business day” provisions of

35 U.S.C.

21(b)

and

119(e)(3)

when filing

international applications or international design applications with the

USPTO, and instead file the international application or international

design application before the Paris Convention priority period has

expired.

Proper Usage of EFS-Web

Users should follow the instructions and guidelines for EFS-Web

provided on the USPTO website. 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 (the local time

and date in Alexandria, VA, which is located in the Eastern Time zone)

mission, 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 (the local time

and date in Alexandria, VA, which is located in the Eastern Time zone). Use of

EFS-Web in a manner significantly in violation of the instructions and guidelines

for EFS-Web provided on the USPTO website and in this framework may result in

non-entry of the submission or failure to accord a filing date

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 under 18 U.S.C. 1030 users may not intentionally cause damage to federal

government computers.

Filing Documents as PDF Files via EFS-Web

EFS-Web accepts standard PDF documents up to 25 megabytes for

each file, and 60 electronic files per submission. For international design

applications, EFS-Web can accept more than 60 electronic files in a single

submission, subject to certain conditions. See subsection L.4. below for more

information. PDF files created from scanned documents and submitted via

EFS-Web must be created using a scanning resolution no lower than 300 dpi.

Lower resolution scans have significantly delayed processing and publication of

applications, e.g., resubmission has been required for documents failing to

comply with the legibility requirements. See

37 CFR

1.52(a)(1)(v)

and

ction L.4. below for more

information. PDF files created from scanned documents and submitted via

EFS-Web must be created using a scanning resolution no lower than 300 dpi.

Lower resolution scans have significantly delayed processing and publication of

applications, e.g., resubmission has been required for documents failing to

comply with the legibility requirements. See

37 CFR

1.52(a)(1)(v)

and

(a)(5)

regarding document

legibility requirements.

In addition, because the PDF format is so feature-rich, certain

PDF features are currently not supported by the USPTO systems. For example,

PDF documents with multiple layers must be flattened prior to submission to

ensure that the complete document is received by the USPTO and readable to the

examiner or other deciding officials. If a document contains layers that are

marked as “invisible,” the invisible layers will be lost when the document is

processed by the USPTO, and thus the official records in IFW will not contain

the information on the invisible layers. Furthermore, if a user enters

information on a form using the PDF comments or annotations features, only the

blank form without the PDF comments and annotations will be processed.

Therefore, the complete document will not be officially filed at the USPTO and

the user cannot rely on the Electronic Acknowledgement Receipt as evidence that

the completed form was filed at the USPTO. Users are encouraged to check the

contents of their submissions for completeness and accuracy via PAIR.

Users must follow the PDF Guidelines for EFS-Web and PDF

Creation for EFS-Web (available on the USPTO website) to create and submit PDF

files via EFS-Web to ensure that all of the information in the PDF files is

successfully received and processed by the USPTO.

Entering Information on EFS-Web Interfaces

EFS-Web collects information from on-screen entries made by the

user through the EFS-Web data collection interfaces

DF Guidelines for EFS-Web and PDF

Creation for EFS-Web (available on the USPTO website) to create and submit PDF

files via EFS-Web to ensure that all of the information in the PDF files is

successfully received and processed by the USPTO.

Entering Information on EFS-Web Interfaces

EFS-Web collects information from on-screen entries made by the

user through the EFS-Web data collection interfaces. Through these data

collection interfaces, the user provides the USPTO with information regarding

the electronic submission, such as the type of application being filed, the

application number of the application in which a follow-on document is being

submitted, or the type of document being submitted. The USPTO systems (e.g.,

EFS-Web, IFW, etc.) will use the information entered by the user on the EFS-Web

interfaces to automatically: (1) assign the application number, create the

application, and process the application, if a new application is being filed;

(2) upload the follow-on document into the application file specified by the

user; or (3) message the deciding official based on the document description

selected by the user. Providing incorrect information regarding the submission

could lead to, for example: (1) an incorrect type of application file being

created; (2) a delay in processing the document; (3) a document being filed in

an incorrect application; or (4) the deciding official not recognizing the

document in sufficient time to avoid publication, to withdraw the application

from issue, or to avoid the abandonment of the application.

rmation regarding the submission

could lead to, for example: (1) an incorrect type of application file being

created; (2) a delay in processing the document; (3) a document being filed in

an incorrect application; or (4) the deciding official not recognizing the

document in sufficient time to avoid publication, to withdraw the application

from issue, or to avoid the abandonment of the application.

(a)

Filing a New Application

When a user is submitting a new application via EFS-Web, the

user is required to select the application type (e.g., design, utility,

provisional or nonprovisional) being filed on the EFS-Web interface. Only

document descriptions and fee codes pertinent to the selected application

type will be available for the submission. The system will also

automatically generate the application number based on the user’s

selection. For example, if the user indicates that the submission is a

provisional application by selecting the EFS-Web option for a provisional

application, the application will be assigned a provisional application

number, provisional application fees will be collected or required, and the

application will be further processed as a provisional application.

Furthermore, the application will not be assigned to an examiner for

examination and will not be published because the submission is processed as

a provisional application. Therefore, it is important for the user to

select the correct application type on the EFS-Web interface, and to review

the Electronic Acknowledgement Receipt and the application file using PAIR

after the submission is completed.

rthermore, the application will not be assigned to an examiner for

examination and will not be published because the submission is processed as

a provisional application. Therefore, it is important for the user to

select the correct application type on the EFS-Web interface, and to review

the Electronic Acknowledgement Receipt and the application file using PAIR

after the submission is completed.

(b)

Follow-on Documents

When a user submits a follow-on document (e.g., a reply to

an Office action or notice) via EFS-Web, the user is required to enter the

correct application number, control number or proceeding number, and

confirmation number of the application in which the follow-on document is

being filed. Providing the incorrect application number and confirmation

number pair will result in filing the follow-on document in the wrong

application and the intended application could become unintentionally

abandoned for failure to reply to the Office action or notice, this also

applies to reexamination proceedings and supplemental examination

proceedings. Therefore, it is important for the user to enter the correct

application number and confirmation number on the EFS-Web screen when filing

the follow-on document. Furthermore, users cannot file a follow-on document

as a new application.

After the submission of the follow-on document is completed,

the user should log on to PAIR to review the application file and check

whether the follow-on document has been filed in the correct application.

Checking the application file via PAIR would also help the user to discover

other filing errors, such as filing a wrong document or omitting a portion

of the document.

Documents filed in the incorrect application

may require a petition to expunge under

37 CFR 1.59

with the

appropriate fee under

37 CFR 1.17(g)

filed in

the incorrect application or a petition to move the document under

37 CFR

1.182

with the appropriate fee under

37 CFR

1.17(f)

filed in the intended application.

r filing errors, such as filing a wrong document or omitting a portion

of the document.

Documents filed in the incorrect application

may require a petition to expunge under

37 CFR 1.59

with the

appropriate fee under

37 CFR 1.17(g)

filed in

the incorrect application or a petition to move the document under

37 CFR

1.182

with the appropriate fee under

37 CFR

1.17(f)

filed in the intended application.

(c)

Document Indexing

When a user submits an application or a follow-on document

in an application using EFS-Web, the user must select from the list of

document descriptions to specify the files being submitted via EFS-Web. For

instance, when the user is filing a patent application, the submission must

be separated into appropriate sections: specification, claims, abstract,

and drawing; and when the user is filing an amendment, the user must select

the appropriate type of amendment: amendment after non-final, amendment

after allowance, preliminary amendment, and amendment after final. Based on

the document description selected by the user, a document code is assigned

and a message regarding the document submitted to the USPTO will be

forwarded to the appropriate organization for processing, and to the

appropriate official for consideration. Furthermore, the IFW and PAIR

systems use the document code for identifying the document maintained in the

application file. Therefore, accurate document indexing is important to

facilitate efficient processing and proper consideration of the document by

the USPTO

ted to the USPTO will be

forwarded to the appropriate organization for processing, and to the

appropriate official for consideration. Furthermore, the IFW and PAIR

systems use the document code for identifying the document maintained in the

application file. Therefore, accurate document indexing is important to

facilitate efficient processing and proper consideration of the document by

the USPTO. For example: (a) if the user indicated an after-final amendment

as a non-final amendment, the processing of such amendment may be delayed

and the examiner may not have sufficient time to consider the amendment

before the time period for reply expires; (b) if the user selects the

“Pre-Grant Publication” option on the EFS-Web data collection screen for

submitting a substitute specification filed in response to a non-final

Office action, the submission will be forwarded to the publication branch

rather than processed into IFW and forwarded to the examiner for

consideration; and (c) if the user selects “drawings - only black and white

line drawings" for submitting color drawings in a utility application rather

than “drawing - other than black and white line drawings", the color

drawings would not be processed as color drawings, and would be maintained

as black and white drawings in IFW.

More information on document indexing is available on the

USPTO website. It is important for users to select the correct document

description, and check the application file via PAIR after the submission is

completed.

Refunds for Fees Paid via EFS-Web Due to System Malfunction

The USPTO will grant refunds to users when,

due to a malfunction with the EFS-Web system, the EFS-Web system has misled

a user into paying a fee in error. If it cannot be determined that a

malfunction occurred, but rather it seems to be a user error, no refund will

be given. Users should contact the Patent EBC if there are any issues

associated with their submissions.

b Due to System Malfunction

The USPTO will grant refunds to users when,

due to a malfunction with the EFS-Web system, the EFS-Web system has misled

a user into paying a fee in error. If it cannot be determined that a

malfunction occurred, but rather it seems to be a user error, no refund will

be given. Users should contact the Patent EBC if there are any issues

associated with their submissions.

Security and Authentication

As the USPTO transitions its Patent Electronic

System from EFS-Web and PAIR to Patent Center, changes have been made to the

protocols for accessing EFS-Web and PAIR. PKI certificates are no longer being

used, and have been replaced with a new authentication and log-in method for

EFS-Web and PAIR to comply with the latest Federal Information Security Management

Act (FISMA) requirements. The new authentication and log-in method is a two-step

authentication paradigm requiring each individual registered user of EFS-Web or

PAIR to have a unique USPTO.gov account. Users of Financial Manager may already

have a USPTO.gov account.

A two-step authentication paradigm also will be

implemented in the forthcoming Patent Center. The two-step authentication paradigm

will be in effect during the interim period prior to full implementation of Patent

Center.

Thus, the PKI authentication access system has been phased out and

replaced by an authentication system in which each user must obtain his or her own

credentials. A practitioner must be a registered user to sponsor support staff.

Support staff for practitioners must obtain their own credentials and be sponsored

by the practitioner who directs and controls the non-practitioner’s work.

Credentials may only be used by the person to whom they are registered and

assigned. Sharing of credentials is no longer permitted

user must obtain his or her own

credentials. A practitioner must be a registered user to sponsor support staff.

Support staff for practitioners must obtain their own credentials and be sponsored

by the practitioner who directs and controls the non-practitioner’s work.

Credentials may only be used by the person to whom they are registered and

assigned. Sharing of credentials is no longer permitted. More information on the

new system may be found at the website for the Patent Electronic Business Center,

located at https://www.uspto.gov/learning-and-resources/

support-centers/patent-electronic-business-center and “Authentication Change for

EFS-Web and PAIR,” located at https://www.uspto.gov/

patent/authentication-changes-efs-web-and-pair.

PKI Certificates Have Been

Discontinued

PKI certificates were usable through July 2,

2019. The information contained in the previous version of this section and in

the PKI Subscriber Agreement remained applicable until that date.

Since January 18, 2019, under the new Patent

Electronic System Verification process, to become a registered user, an

individual creates a USPTO.gov account and completes the Patent Electronic

System Electronic System Verification Form PTO-2042a, available on the USPTO

website.

Persons Who May Access the Patent

Electronic System

Inventors, applicants, and patent practitioners;

i.e., patent attorneys and agents registered to practice before the USPTO, may

obtain credentials to access the Patent Electronic System. No other person may

access the Patent Electronic System unless they are sponsored by a patent

practitioner. A patent practitioner may sponsor other individuals to access the

Patent Electronic System so as to access information and file documents on

behalf of that patent practitioner. Such sponsorship is limited to those

individuals acting under the direction and control of that practitioner. The

sponsoring practitioner will be responsible for the actions of each sponsored

individual

patent

practitioner. A patent practitioner may sponsor other individuals to access the

Patent Electronic System so as to access information and file documents on

behalf of that patent practitioner. Such sponsorship is limited to those

individuals acting under the direction and control of that practitioner. The

sponsoring practitioner will be responsible for the actions of each sponsored

individual. Sponsorship is further limited to those individuals performing the

role of support staff to the practitioner through an employment agreement,

including contractual agreements.

Support staff individuals who are going to be

sponsored by one or more patent practitioners will need to create an individual

USPTO.gov account. A sponsored support staff individual acting under the

direction and control of a patent practitioner may file documents signed by the

practitioner via EFS-Web, in compliance with the Patent Electronic System

Subscriber Agreement.

When a sponsoring relationship no longer exists

(e.g., the practitioner or the sponsored support staff individual are no longer

at the same firm) the sponsoring practitioner should remove the

sponsorship.

Authorization to File Documents,

Access Information, and Pay Fees Through the Patent Electronic

System

Registered users are permitted to access and file via EFS-WEb

follow-on documents in applications in which they are acting on behalf of the

applicant, and in reexamination and supplemental examination proceedings in

which they are acting on behalf of the owner. Note that pursuant to

37 CFR

1.31

juristic entity applicants must be represented by a

patent practitioner.

Documents submitted through EFS-Web must be signed

in accordance with 37 CFR 1.4, 1.33(b), and 11.18. Registered users who are

joint inventors, or who represent less than all inventors or less than all

applicants, may access their applications, but may not file documents lacking

the signatures of all applicants unless specifically authorized under this

framework

presented by a

patent practitioner.

Documents submitted through EFS-Web must be signed

in accordance with 37 CFR 1.4, 1.33(b), and 11.18. Registered users who are

joint inventors, or who represent less than all inventors or less than all

applicants, may access their applications, but may not file documents lacking

the signatures of all applicants unless specifically authorized under this

framework. A sponsored support staff individual may file documents that are

properly signed by the practitioner who directs and controls that individual’s

work. Such a sponsored support staff individual, who is not an authorized party

to sign the documents, is not responsible for the contents of the documents

submitted. For all submissions through EFS-Web, the person who signs the

documents (e.g., the applicant or a patent practitioner who is representing the

applicant) is responsible for the contents. For example, the documents may be

electronically signed or ink signed by the applicant or patent practitioner of

record in accordance with 37 CFR 1.4(d). The sponsored support staff individual

who serves the ministerial function of pickup and delivery of documents may

submit the signed documents electronically via EFS-Web under the direction and

control of the patent practitioner. (Ink signed documents can be electronically

scanned and then e-filed.) This sponsored support staff individual may also

view and retrieve documents from Private PAIR under the direction and control

of that practitioner.

It also should be noted that the sponsored

support staff individual could pay the fees associated with the submission in

the EFS-Web process. This is comparable to the paper practice in which law

firms designate individuals to pay fees.

Filing Documents Without a

Patent Electronic System Account as an Unregistered User

Users that do not have, or do not wish to use, a Patent Electronic

System Account to authenticate to the USPTO, may submit new application filings

via a non-authenticated workflow as an unregistered user

S-Web process. This is comparable to the paper practice in which law

firms designate individuals to pay fees.

Filing Documents Without a

Patent Electronic System Account as an Unregistered User

Users that do not have, or do not wish to use, a Patent Electronic

System Account to authenticate to the USPTO, may submit new application filings

via a non-authenticated workflow as an unregistered user. The user would go to the

EFS-Web page and choose to submit without a Patent Electronic System Account as an

unregistered user, which would generate a TLS connection for the session, thus

allowing secure data transmission to the USPTO. Unregistered users have the same

level of protection for filing as a registered user, but are limited to submission

of initial filings (except as noted in section B1). This practice minimizes the

risk of improperly-filed third party submissions and other documents.

Unregistered users may file follow-on documents by mail (with a certificate of

mailing in accordance with

37 CFR 1.8

), by Priority Mail

Express

from the USPS in accordance with

37 CFR

1.10

, or by hand delivery.

Note: Users are advised that the USPTO may revoke a user’s Patent

Electronic System Account if the user makes an improper submission through

EFS-Web. See section B of this framework. See also section 5 of the “United States

Patent and Trademark Office Patent Electronic System Subscriber Agreement”

(available at http://www.uspto.gov/patents/ process/file/efs/guidance).

Patent Electronic System Subscriber Agreement

The Patent Electronic System subscriber agreement

(November 2018) explains that a holder of a Patent Electronic System account

must update changes in the information in their Patent Electronic System

Verification Form (Verification Form) within thirty (30) calendar days of the

change. Information may be updated by submitting a new Verification Form and

some information can be updated on the account holder’s USPTO.gov account

profile

ber agreement

(November 2018) explains that a holder of a Patent Electronic System account

must update changes in the information in their Patent Electronic System

Verification Form (Verification Form) within thirty (30) calendar days of the

change. Information may be updated by submitting a new Verification Form and

some information can be updated on the account holder’s USPTO.gov account

profile.

A Patent Electronic System account holder may

only use the account for applications for which the account holder is

authorized to access; unauthorized use, such as attempting or gaining access to

nonpublic information or inadvertently disclosed nonpublic information, may

lead to immediate revocation of the Patent Electronic System Account. A Patent

Electronic System account holder may only use the account for securing

communication with the USPTO, and may not encourage or permit others to use or

rely on their Patent Electronic System account log-in credentials.

A Patent Electronic System subscriber who is a practitioner may

grant sponsorship to a reasonable number of practitioner support individuals to

work on their behalf under their direction and control. A sponsoring

practitioner must take reasonable steps to ensure that the access of each

sponsored practitioner support individual is consistent with the tasks assigned

to that individual. Such reasonable steps include removing sponsorship where

appropriate, including where the individual leaves the practitioner’s

organization or the contractor’s organization or when the contractor is no

longer under contract to the practitioner or the practitioner’s

organization.

Each of the practitioner support individuals who

are sponsored must have their own USPTO.gov account and must not share accounts

among other support staff individuals

ship where

appropriate, including where the individual leaves the practitioner’s

organization or the contractor’s organization or when the contractor is no

longer under contract to the practitioner or the practitioner’s

organization.

Each of the practitioner support individuals who

are sponsored must have their own USPTO.gov account and must not share accounts

among other support staff individuals. Each sponsored practitioner support

staff individual must only be an employee of the practitioner or an employee of

practitioner’s organization, an individual under contract to the practitioner

or the practitioner’s organization, or an employee of a contractor under

contract to the practitioner or the practitioner’s organization.

A practitioner may only sponsor support staff

individuals and may not sponsor any other individuals or organizations

including a company, a group, a client, a practitioner (see 37 CFR 11.1), or an

invention promoter (see 37 CFR 4.2(a)), to become users of the Patent

Electronic System. A sponsoring practitioner is responsible for verifying the

identity of any person who is sponsored as stated in the Patent Electronic

System Access Document. A sponsoring practitioner may only sponsor a reasonable

number of practitioner support individuals to work under their direction for

whom he/she can maintain proper control.

A sponsoring practitioner must take reasonable

steps to ensure compliance by each sponsored practitioner support person with

the requirements set forth in the subscriber agreement, including the

restrictions on the software use in section 6 and the restrictions on the

export (including deemed export) of technology and software included in patent

applications in section 7. If a sponsored practitioner support person is not a

U.S. citizen, their access to the technology and software constitutes an

export.

A sponsored practitioner support person’s access

to the Patent Electronic System may not extend beyond those duties performed

under the direction and control of a sponsoring practitioner

export) of technology and software included in patent

applications in section 7. If a sponsored practitioner support person is not a

U.S. citizen, their access to the technology and software constitutes an

export.

A sponsored practitioner support person’s access

to the Patent Electronic System may not extend beyond those duties performed

under the direction and control of a sponsoring practitioner.

A sponsored practitioner support person may only

use their Patent Electronic System account to access, in an authorized support

capacity, customer numbers and application information associated with their

Patent Electronic System profile in accordance with the laws, regulations, and

policies of the USPTO including this Legal Framework. A sponsored practitioner

support person may only use or rely on their Patent Electronic System accounts

for communication with the USPTO in compliance with the laws, regulations, and

policies of the USPTO.

More information about the Patent Electronic

System subscriber agreement is available on the USPTO website.

A law firm should promptly remove any

practitioner who leaves the firm from the list of practitioners associated with

the law firm's Customer Number. A practitioner leaving a law firm can also

remove themselves from the law firm’s Customer Number.

Signatures

Signatures included in image attachments submitted via EFS-Web are

governed by the requirements of

37 CFR 1.4(d)

If the signer is submitting an application through EFS-Web as PDF

files, he or she may 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. Alternatively, correspondence submitted through EFS-Web may be signed

by a graphic representation of a handwritten signature as provided for in

37 CFR

1.4(d)(1)

or a graphic representation of an S-signature as

provided for

CFR 1.4(d)(2)

. See

37 CFR

1.4(d)(3)

ith

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. Alternatively, correspondence submitted through EFS-Web may be signed

by a graphic representation of a handwritten signature as provided for in

37 CFR

1.4(d)(1)

or a graphic representation of an S-signature as

provided for

CFR 1.4(d)(2)

. See

37 CFR

1.4(d)(3)

. Follow-on documents, such as responding to a

Notice to File Missing Parts of Nonprovisional Application or an amendment filed

in an application, must also be signed in accordance with applicable requirements.

See

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)

(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 accompanies the application must be

signed. The correspondence address must be set forth in either an application data

sheet or clearly set forth in another paper submitted with the application, which

must be signed. See

37 CFR 1.33(a)

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)

Submission of Pre-Grant (Eighteen-Month) Publication Requests via

EFS-Web

EFS-Web enables registered 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 appropriate form-fillable application data sheet

(PTO/AIA/14 or PTO/SB/14) is required to be used for fulfilling the bibliographic

data requirements

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 appropriate form-fillable application data sheet

(PTO/AIA/14 or 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” option 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, voluntary publication, or republication without

also selecting the “Pre-Grant Publication” option on the EFS-Web data collection

screen.

While the Office may publish certain amendments in

the pre-grant publication, to be entitled to have the patent application

publication be based upon a copy of the application (specification, drawings, and

the application data sheet and/or the inventor’s oath or declaration) as amended,

applicant must supply such a copy via EFS-Web as previously set forth. See

37 CFR

1.215(c)

Submission of Supplemental Examination Requests via EFS-Web

Patent owners may submit a request for supplemental

examination via EFS-Web

tion

publication be based upon a copy of the application (specification, drawings, and

the application data sheet and/or the inventor’s oath or declaration) as amended,

applicant must supply such a copy via EFS-Web as previously set forth. See

37 CFR

1.215(c)

Submission of Supplemental Examination Requests via EFS-Web

Patent owners may submit a request for supplemental

examination via EFS-Web. When filing a new request for supplemental examination,

the patent owner should select the filing option “New application/proceeding,” and

then select “Supplemental Examination.” Any paper(s) that are to be filed in an

existing supplemental examination proceeding, and any paper(s) that are to be

filed in a reexamination proceeding ordered as a result of a supplemental

examination proceeding, may be filed by: (1) selecting “Existing

application/patent/proceeding” (e.g., a proceeding that has already been assigned

a control number); (2) selecting “Documents/Fees for an existing

application/proceeding”; and (3) entering the assigned control number and

confirmation number for the proceeding.

Filing of Third Party Preissuance Submissions and Citation of Prior Art

and Written Statements in Patent Files Filed via EFS-Web

Registered and unregistered users may submit a

third-party preissuance submission for any non-provisional utility, design, or

plant application, including any continuing application. The application may be

pending or abandoned and need not be published. To submit a third-party

preissuance submission, the option “Third-Party Preissuance Submission under

CFR 1.290

” must be selected. To submit a Third-Party

Preissuance Submission, sign on to EFS-Web, and select the “Existing

application/patent”option. The Web screen will expand to display additional

options. Select the “Third-Party Preissuance Submission under

37 CFR

1.290

” option and enter the Application Number and

Confirmation Number. The Confirmation Number can be obtained by viewing the

application in the PAIR System

ed. To submit a Third-Party

Preissuance Submission, sign on to EFS-Web, and select the “Existing

application/patent”option. The Web screen will expand to display additional

options. Select the “Third-Party Preissuance Submission under

37 CFR

1.290

” option and enter the Application Number and

Confirmation Number. The Confirmation Number can be obtained by viewing the

application in the PAIR System. This places the submission in a segregated area

separate from the application file. After review by appropriate USPTO personnel,

the submission may be placed in the application file.

Registered and unregistered users may submit a prior

art and/or written statement submission for entry into a patent file under

37 CFR

1.501

. The patent must be enforceable for the submission to

be entered. A submission into a patent file under

37 CFR 1.501

cannot be filed via EFS-Web in design or plant patents. To submit a

37 CFR

1.501

submission, select “Prior Art Submission into Patent

File under

CFR 1.501

” and enter the Application Number and Patent

Number. This places the submission in a segregated area separate from the patent

file. After review by appropriate USPTO personnel, the submission may be placed in

the patent file.

Submission of Interim Copies of Foreign Priority Documents via

EFS-Web

Interim copies of foreign priority documents as

provided for in

37 CFR 1.55(j)

may be

submitted via EFS-Web in (i) applications filed under

35 U.S.C.

111(a)

, except for plant patent applications and design

applications, and (ii) national stage applications under

35 U.S.C.

371

. See

37 CFR 1.55

for details

regarding claims for foreign priority, including the timing for submitting interim

copies. See also

MPEP § 215

et seq.

The following are Frequently Asked Questions (FAQs)

regarding interim copies of foreign priority applications:

35 U.S.C.

111(a)

, except for plant patent applications and design

applications, and (ii) national stage applications under

35 U.S.C.

371

. See

37 CFR 1.55

for details

regarding claims for foreign priority, including the timing for submitting interim

copies. See also

MPEP § 215

et seq.

The following are Frequently Asked Questions (FAQs)

regarding interim copies of foreign priority applications:

1. If an applicant submits an interim copy of a

foreign priority application, will the applicant still need to provide a

certified copy of the foreign priority document? How will an interim copy

submission be reflected in the USPTO’s records?

Yes. If an applicant files an interim

copy of a foreign priority application, in compliance with

37 CFR 1.55(j)

the applicant must provide a certified copy of the foreign priority

document before patent grant in order to perfect the priority claim.

An interim copy of a foreign priority application will be entered into

the file wrapper of the application in which it was filed and labeled

as “Interim copy of Foreign Priority Document.”

2. Are there any special instructions for filing an

interim copy of the foreign priority application?

Yes. Main parts of the interim copy of

the foreign priority application, i.e., Abstract, Drawings,

Specification, Claims, and where applicable, Sequence Listing or

Computer Program Listings, along with the separate cover sheet

required by

37 CFR 1.55(j)

may be filed as a single PDF file via EFS-Web (or as a single paper

document). The PDF file will be stored in the Image File Wrapper of

the application, and applicants must select the document description

“Interim copy of Foreign Priority Application” to index this document

when filing online.

Application parts that were filed in a

foreign patent office only as plain text computer files (e.g., TXT

file), such as a Sequence Listing, lengthy Tables(s), or Computer

Program Listing appendix, may be filed as a TXT file via EFS-Web (or

on compact disc)

and applicants must select the document description

“Interim copy of Foreign Priority Application” to index this document

when filing online.

Application parts that were filed in a

foreign patent office only as plain text computer files (e.g., TXT

file), such as a Sequence Listing, lengthy Tables(s), or Computer

Program Listing appendix, may be filed as a TXT file via EFS-Web (or

on compact disc). When filing online via EFS-Web, applicants must

select the document description “Interim copy of Foreign Priority

(text file)” to index a plain text file part of the application.

Please note that EFS-Web will not perform preliminary validation on an

interim copy sequence listing text file, and a sequence listing in an

interim copy of a foreign priority document over 25 MB must be split

into multiple files under the 25 MB upload limit . If a TXT file is

filed on compact disc, the compact disc must be labeled as “Text File

of Interim Copy of Foreign Priority Application” along with (1) the

country code and application number of the foreign priority document,

(2) at least two pieces of identifying information for the application

(e.g., application number, docket number, title, etc.) in which the

interim copy of the foreign application was filed, and (3) if multiple

compact discs are submitted, a label indicating their order (e.g., “1

of X”).

The file name of each TXT file must

begin with the country code and application number of the foreign

priority application of which it is a part (any punctuation or space

in the application number must either be omitted or replaced with a

dash “-“ or underscore ”_” character); e.g.

“EP111838637_SequenceListing.txt” or “EP_11183863_7_Table 2”. Where an

original TXT file must be split into multiple parts, the file name for

each part should indicate the order; for example,

EP111838637_SeqList_part1of2.txt and EP111838637_SeqList_part2of2.txt.

ny punctuation or space

in the application number must either be omitted or replaced with a

dash “-“ or underscore ”_” character); e.g.

“EP111838637_SequenceListing.txt” or “EP_11183863_7_Table 2”. Where an

original TXT file must be split into multiple parts, the file name for

each part should indicate the order; for example,

EP111838637_SeqList_part1of2.txt and EP111838637_SeqList_part2of2.txt.

Submission of Photographs and Drawings via EFS-Web

When applicants are required to submit drawings in patent

applications, black and white line drawings as prescribed in

37 CFR

1.84(a)(1)

are required except as follows. Pursuant to

37 CFR

1.84(a)(2)

, color drawings are permitted in design

applications filed under 35 U.S.C. chapter 16. As stated in

37 CFR

1.84(a)(2)

color drawings are not ordinarily permitted in

utility patent applications, and as stated in

37 CFR 1.84(b)

, photographs

are not ordinarily permitted in utility or design patent applications, but the

USPTO will accept photographs in utility or design patent applications, or color

drawings in utility 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 (PCT) are

required to comply with

PCT Rule 11.13

, which does not

permit color drawings. Furthermore, there is no provision for photographs in

international applications. 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

ns (PCT) are

required to comply with

PCT Rule 11.13

, which does not

permit color drawings. Furthermore, there is no provision for photographs in

international applications. 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. Applicants should, where possible, adhere to

PCT Rule

11.13

and provide any necessary explanation of relevant

colors in the description, since black and white drawings may be required by some

offices in the national phase. Providing drawings and photographs in black and

white will also help avoid receiving an invitation from the United States

Receiving Office (RO/US) to comply with

PCT Rule 11.13

. Furthermore,

the RO/US converts color drawings/photographs into black and white TIFF images,

and such conversion may result in details being lost. Similarly, the International

Bureau will, for international publication purposes, convert color

drawings/photographs into black and white (not grayscale), which may result in

details being lost. Consequently, conversion from color to black and white could

impact the disclosure of the invention in the international application and affect

the processing of the international application in the international and national

phases.

Color drawings and photographs (in black and white

or in color) may be submitted in international design applications as provided

under section 401 of the Administrative Instructions for the Application of the

Hague Agreement. See subsection N for additional information concerning

international design 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

PCT Rule

11.13

. The USPTO will accept color drawings or photographs

in utility applications only after granting a petition explaining why the color

drawings or photographs are necessary (

37 CFR 1.84

)

ional information concerning

international design 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

PCT Rule

11.13

. The USPTO will accept color drawings or photographs

in utility applications only after granting a petition explaining why the color

drawings or photographs are necessary (

37 CFR 1.84

). Additionally,

because color drawings are not permitted in international applications (PCT),

color drawings and color photographs filed in a national stage application under

35 U.S.C.

371

will be treated as an amendment and will be objected to

if they introduce new matter.

Types of Photographs and Drawings Permitted to be Filed via

EFS-Web

Black and white line drawings may be submitted via EFS-Web in

the types of applications and proceedings listed in subsection B.1., above.

However, photographs, color drawings, grayscale drawings, and other drawings

that are not black and white line drawings may be submitted via EFS-Web in only

the following types of applications and proceedings:

(1) Nonprovisional design patent applications, including

reissue design patent applications;

(2) Provisional applications under

35 U.S.C.

111(b)

;

(3) Nonprovisional utility patent applications under

U.S.C. 111(a)

, including reissue utility patent

applications;

(4) U.S. national stage applications under

35 U.S.C.

371

;

(5) International design applications;

(6) Reexamination proceedings for utility or design patents;

n patent applications, including

reissue design patent applications;

(2) Provisional applications under

35 U.S.C.

111(b)

;

(3) Nonprovisional utility patent applications under

U.S.C. 111(a)

, including reissue utility patent

applications;

(4) U.S. national stage applications under

35 U.S.C.

371

;

(5) International design applications;

(6) Reexamination proceedings for utility or design patents;

(7) Supplemental examination proceedings under

35 U.S.C. 257

Only black and white photographs, and black and white line

drawings, may be submitted via EFS-Web in international applications (PCT).

Document Description for Photograph and Drawings

Users must select the correct document description when

submitting photographs and drawings via EFS-Web. Selecting an incorrect

document description may cause the photographs and drawings to be processed in

a quality that is not sufficient for examination and publication. Applicant

must select:

(1) “

Drawings

–

only black and white line

drawings

” (document code “DRW”) for the following:

(a) Black and white line drawings in:

(i) provisional applications under

35 U.S.C.

111(b)

;

(ii) nonprovisional

utility

patent

applications under

35 U.S.C.

111(a)

, including reissue utility

patent applications;

(iii) international applications (PCT) and national

stage applications under

35 U.S.C.

371

; and

(iv) reexamination proceedings for utility

patents.

These drawings will be converted into TIFF images

and stored in IFW.

(b) Black and white line drawings in

design

applications, including reissue design

patent applications, international design applications, and

reexamination proceedings for design patents. These drawings will

be stored in SCORE, and a black and white copy will be stored in

IFW along with a SCORE placeholder sheet.

(2) “

Drawings

–

other than black and white

line drawings

” (document code “DRW.NONBW”) for the

following:

(a) Photographs, color drawings, grayscale drawings,

and other drawings that are not black and white line drawings

in:

reexamination proceedings for design patents. These drawings will

be stored in SCORE, and a black and white copy will be stored in

IFW along with a SCORE placeholder sheet.

(2) “

Drawings

–

other than black and white

line drawings

” (document code “DRW.NONBW”) for the

following:

(a) Photographs, color drawings, grayscale drawings,

and other drawings that are not black and white line drawings

in:

(i) provisional applications under

35 U.S.C.

111(b)

;

(ii) nonprovisional utility and design patent

applications under

35 U.S.C.

111(a)

, including reissue utility and

design patent applications;

(iii) national stage applications under

35 U.S.C.

371

;

(iv) international design

applications;

(v) reexamination proceedings for utility patents

and design patents; and

(vi) supplemental examination

proceedings.

These drawings will be stored in the Supplemental

Complex Repository for Examiners (SCORE), and a black and white

copy will be stored in IFW along with a SCORE placeholder

sheet.

(b) Black and white photographs, and grayscale

drawings, in international applications (PCT). These drawings will

be stored in SCORE, and a black and white copy will be stored in

IFW along with a SCORE placeholder sheet.

Additional Requirements

For color drawings in utility patent applications, a petition

filed under

37 CFR 1.84(a)(2)

explaining why the color drawings are

necessary is required. See

MPEP § 608.02

. Pursuant to

37 CFR

1.84(a)(2)(ii)

, only one set of such color drawings is

necessary when filing via EFS-Web.

EFS-Web supports the use of black and white, color, or

grayscale images within the PDF document. However, grayscale or color images

filed as “drawings - other than black and white line drawings” in a utility

patent application will be electronically converted to black and white images

when stored into IFW. The quality of black and white images may be

degraded

necessary when filing via EFS-Web.

EFS-Web supports the use of black and white, color, or

grayscale images within the PDF document. However, grayscale or color images

filed as “drawings - other than black and white line drawings” in a utility

patent application will be electronically converted to black and white images

when stored into IFW. The quality of black and white images may be

degraded. To obtain sufficient quality so that all details in the images are

reproducible in black and white in the eighteen-month publication and the

printed patent, images should be scanned at a minimum resolution of 300 DPI.

Furthermore, PAIR is only capable of displaying portrait orientation. Users

should not submit landscape oriented drawings via EFS-Web because PAIR will

automatically convert the image to portrait, which may cause the images to be

distorted during viewing.

For international design applications, EFS-Web

supports the use of black and white, color, or grayscale images within a JPEG

document. To obtain sufficient image quality for purposes of WIPO publication

of the international application and any subsequent U.S. patent that may issue

thereon, image resolution should be between 250x250 DPI to 300x300 DPI. In

addition, the images should have at least a one pixel border, and preferably a

border of between 1-20 pixels. See subsection N for further information

concerning reproductions in international design applications.

Text Files, JPEG Files and File Limits

Biotechnology Sequence Listings, Large Tables, or Computer Program

Listing Appendices Submitted as Text Files via EFS-Web

All of these types of documents may be submitted as ASCII text

files with a “.txt” extension (e.g., “seqlist.txt”) for applications filed

under

35 U.S.C. 111

, national stage applications under

35 U.S.C.

371

, reexamination proceedings, and supplemental

examination proceedings. The compact disc practice of

37 CFR 1.52(e)

and

1.821

et seq.

remains as a filing option

mitted as Text Files via EFS-Web

All of these types of documents may be submitted as ASCII text

files with a “.txt” extension (e.g., “seqlist.txt”) for applications filed

under

35 U.S.C. 111

, national stage applications under

35 U.S.C.

371

, reexamination proceedings, and supplemental

examination proceedings. The compact disc practice of

37 CFR 1.52(e)

and

1.821

et seq.

remains as a filing option. The filing of

international applications (PCT) via EFS-Web is discussed in subsection M.,

below.

As discussed in

MPEP § 608.05

, users may

submit the following document types, (specified in

37 CFR

1.52(e)

), as ASCII text files via EFS-Web instead of on

compact disc, provided the specification contains a statement in a separate

paragraph that incorporates by reference the material in the ASCII text file

identifying the name of the ASCII text file, the date of creation, and the size

of the ASCII text file in bytes:

(1) A computer program listing (see

37 CFR

1.96

);

(2) A sequence listing (submitted under

37 CFR

1.821

); or

(3) Any individual table (see

37 CFR

1.58

), if the table is more than 50 pages in

length, or if the total number of pages of all of the tables in an

application exceeds 100 pages in length. A table page is a page printed

on paper in conformance with

37 CFR 1.52(b)

and

1.58(c)

If the “Sequence Listing” required by

37 CFR

1.821(c)

was submitted in ASCII text format in an

international application (PCT), indicated on the Request as part of the

international application, and published as part of the international

application for which national stage is entered under

35 U.S.C.

371

, then no further submission, amendment, or

incorporation by reference into the specification is required.

The requirements of

37 CFR 1.52(e)(3)-(6)

for

documents submitted on compact disc are not applicable to computer program

listings, sequence listings, and tables submitted as ASCII text files via

EFS-Web. However, each text file must be in compliance with ASCII and have a

file name with a “.txt” extension

ther submission, amendment, or

incorporation by reference into the specification is required.

The requirements of

37 CFR 1.52(e)(3)-(6)

for

documents submitted on compact disc are not applicable to computer program

listings, sequence listings, and tables submitted as ASCII text files via

EFS-Web. However, each text file must be in compliance with ASCII and have a

file name with a “.txt” extension. Further, the specification must contain an

incorporation-by-reference of the material in the ASCII text file in a separate

paragraph identifying the name of the ASCII text file, the date of creation,

and the size of the ASCII text file in bytes similar to the requirements of

37 CFR

1.52(e)(5)

and

1.77(b)(5)

for compact

discs. See

MPEP §

608.05

It is recommended that a sequence listing be submitted in an

ASCII text file via EFS-Web rather than in a PDF file. If a sequence listing

ASCII text file submitted via EFS-Web on the application filing date complies

with the requirements of

37 CFR 1.824(a)(2)-(6)

and

(b)

, and applicant has not filed a sequence listing in a

PDF file (or on paper) on the same day, the text file will serve as both the

paper copy required by

37 CFR 1.821(c)

and the

computer readable form (CRF) required by

37 CFR 1.821(e)

. Thus, the

following are

not

required and should not be submitted: (1) a

second copy of the sequence listing in a PDF file; (2) a statement under

37 CFR

1.821(f)

(indicating that the paper copy and CRF copy of

the sequence listing are identical); and (3) a request to use a compliant

computer readable “Sequence Listing” that is already on file for another

application pursuant to

37 CFR 1.821(e)

. If such a

request is filed, the USPTO will not carry out the request but will use the

sequence listing submitted in an ASCII text file on filing of the application

via EFS-Web

that the paper copy and CRF copy of

the sequence listing are identical); and (3) a request to use a compliant

computer readable “Sequence Listing” that is already on file for another

application pursuant to

37 CFR 1.821(e)

. If such a

request is filed, the USPTO will not carry out the request but will use the

sequence listing submitted in an ASCII text file on filing of the application

via EFS-Web. Checker software that the applicant may use prior to submission

to check a sequence listing for compliance with the requirements of

37 CFR

1.824

is available on the USPTO website at

www.uspto.gov/patents-getting-started/patent-basics/

types-patent-applications/utility-patent/checker-

version-446

. The User Notes on the Checker website should be

consulted for an explanation of errors that are not indicated, and content that

is not verified, by the Checker software.

See subsection M.5. below for more information

on the sequence listing in international applications (PCT) and national stage

applications under

35 U.S.C. 371

If a user submits a sequence listing (under

37 CFR 1.821(c) and

(e)

) as an ASCII text file via EFS-Web in response to a

requirement under

37 CFR 1.821(g) or (h)

, the

sequence listing text file must be accompanied by a statement that the

submission does not include any new matter which goes beyond the disclosure of

the application as filed. In addition, if a user submits an amendment to, or a

replacement of, a sequence listing (under

37 CFR 1.821(c)

and

(e)

) as an ASCII text file via EFS-Web in response to a

requirement under

37 CFR 1.821(g) or (h)

, the

sequence listing text file must be accompanied by a statement that the

submission does not include any new matter which goes beyond the disclosure of

the application as filed. In addition, if a user submits an amendment to, or a

replacement of, a sequence listing (under

37 CFR 1.821(c)

and

(e)

) as an ASCII text file via EFS-Web, the sequence

listing text file must be accompanied by: (1) a statement that the submission

does not include any new matter, and (2) a statement that indicates support for

the amendment in the application, as filed. See

37 CFR

1.825

. The specification must be amended to contain an

incorporation-by-reference statement of the sequence listing in both of these

instances.

Submission of the sequence listing in a PDF file on the

application filing date is not recommended. Applicant must still provide the

CRF text file required by

37 CFR 1.821(e)

, and the

sequence listing in the PDF file will not be excluded when determining the

application size fee. The USPTO prefers the submission of a sequence listing

in an ASCII text file via EFS-Web on the application filing date because as

previously stated, if applicant has not filed a second copy of the sequence

listing in a PDF file (or on paper) on the same day, the text file will serve

as both the paper copy required by

37 CFR 1.821(c)

and the CRF

required by

37 CFR 1.821(e)

. Any sequence listing submitted in PDF

format (or on paper) on the application filing date is treated as the paper

copy required by

37 CFR 1.821(c)

. If

applicant submits a sequence listing in both a PDF file and an ASCII text file

via EFS-Web on the application filing date, a statement that the sequence

listing content of the PDF copy and the ASCII text file copy are identical is

required

1(e)

. Any sequence listing submitted in PDF

format (or on paper) on the application filing date is treated as the paper

copy required by

37 CFR 1.821(c)

. If

applicant submits a sequence listing in both a PDF file and an ASCII text file

via EFS-Web on the application filing date, a statement that the sequence

listing content of the PDF copy and the ASCII text file copy are identical is

required. In situations where applicant files the sequence listing in PDF

format and requests the use of the CRF of another application under

37 CFR

1.821(e)

, applicant must submit a letter and request in

compliance with

37 CFR 1.821(e)

and a

statement that the PDF copy filed in the new application is identical to the

CRF filed in the other application.

How Text Files are Counted for Application Size Fee Purposes

Any sequence listing submitted as an ASCII text file via

EFS-Web that is otherwise in compliance with

37 CFR

1.52(e)

1.824(a)(2)-(6)

and

(b)

, and any computer program listing submitted as an

ASCII text file via EFS-Web that is otherwise 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)

as per

37 CFR 1.52(f)(1)

Regarding a table submitted as an ASCII text file via EFS-Web

that is part of the specification or drawings, each three kilobytes of content

submitted will be counted as a sheet of paper for purposes of determining the

application size fee required by

37 CFR 1.16(s)

1.492(j)

. Each table should be submitted as a separate

text file. Further, the file name for each table should indicate which table

is contained therein.

The size limit for text files and JPEG files

One hundred (100) megabytes is the size limit for sequence

listing text files submitted via EFS-Web

eet of paper for purposes of determining the

application size fee required by

37 CFR 1.16(s)

1.492(j)

. Each table should be submitted as a separate

text file. Further, the file name for each table should indicate which table

is contained therein.

The size limit for text files and JPEG files

One hundred (100) megabytes is the size limit for sequence

listing text files submitted via EFS-Web. If a user wishes to submit an

electronic copy of a sequence listing text file that exceeds 100 megabytes, it

is recommended that the user file the application without the sequence listing

using EFS-Web to obtain the application number and confirmation number, and

then file the sequence listing text file on compact disc in accordance with

37 CFR

1.52(e)

on the same day by using Priority Mail

Express

from the USPS in accordance with

37 CFR

1.10

, or by hand delivery, in order to secure the same

filing date for all parts of the application. Note: a submission of a sequence

listing in electronic form of 300 MB or more in size is subject to the fee set

forth in 37 CFR 1.21(o). Alternatively, a user may submit the application on

paper and include the electronic copy of the sequence listing text file on

compact disc in accordance with

37 CFR 1.52(e)

. Sequence

listing text files may not be partitioned into multiple files for filing via

EFS-Web as the EFS-Web system is not currently capable of handling such

submissions. The sequence listing must be in a single ASCII plain text file.

A sequence listing ASCII plain text file that does not fit on a single compact

disc may be split into multiple file parts for subsequent reassembly of the

single ASCII plain text file using software designed for that purpose. If the

sequence listing is submitted on multiple compact discs, the compact discs must

be labeled to indicate their order (e.g., “1 of X”, “2 of X”).

For nearly all other file types, 25 megabytes is

the size limit

e that does not fit on a single compact

disc may be split into multiple file parts for subsequent reassembly of the

single ASCII plain text file using software designed for that purpose. If the

sequence listing is submitted on multiple compact discs, the compact discs must

be labeled to indicate their order (e.g., “1 of X”, “2 of X”).

For nearly all other file types, 25 megabytes is

the size limit. If a user wishes to submit an electronic copy of a computer

program listing or table that is larger than 25 megabytes, it is recommended

that the electronic copy be submitted on compact disc via Priority Mail

Express

from the USPS in accordance with

37 CFR

1.10

on the date of the corresponding EFS-Web filing in

accordance with

37 CFR 1.52(e)

if the user

wishes the electronic copy to be considered to be part of the application as

filed. Alternatively, the user may submit the application on paper and include

the electronic copies on compact disc in accordance with

37 CFR

1.52(e)

. Another alternative would be for the user to

break up a computer program listing or table file that is larger than 25

megabytes into multiple files that are no larger than 25 megabytes each and

submit those smaller files via EFS-Web. If the user chooses to break up a

large computer program listing or table file so that it may be submitted

electronically, the file names must indicate their order ( e.g., “1 of X”, “2

of X”).

The exceptions to the 25-megabyte size limit are

JPEG image files submitted via EFS-Web in international design applications and

PDF image files submitted in international design applications using the

“Attach Reproductions” section of the “Attach Documents” EFS-Web screen. These

are limited to a file size of two megabytes. See subsection N, below for

additional information concerning international design applications.

-megabyte size limit are

JPEG image files submitted via EFS-Web in international design applications and

PDF image files submitted in international design applications using the

“Attach Reproductions” section of the “Attach Documents” EFS-Web screen. These

are limited to a file size of two megabytes. See subsection N, below for

additional information concerning international design applications.

The Limit on the Number of Electronic Files That May Be Included in a

Single EFS-Web Submission

The file number limit per submission is sixty (60) electronic

files, as EFS-Web is not currently capable of accepting more than 60 electronic

files in any one submission (subject to certain exceptions for international

design applications set forth in the next paragraph). Accordingly, if an

application file includes more than 60 electronic files, it is recommended that

the user submit 60 or fewer files in an initial filing via EFS-Web at which

time the application will be assigned an application number. Note that

regarding the 60 electronic file limit, an applicant may upload and validate in

sets of up to 20 files each, with a limit of three sets of 20 files. If

applicant chooses to divide a file into multiple parts using the multi-doc

feature, each part is counted as one file. Then the user may submit any

additional electronic files as follow-on documents later on the same day as the

initial filing. This will allow all of the electronic files making up the

application to receive the same filing date

les each, with a limit of three sets of 20 files. If

applicant chooses to divide a file into multiple parts using the multi-doc

feature, each part is counted as one file. Then the user may submit any

additional electronic files as follow-on documents later on the same day as the

initial filing. This will allow all of the electronic files making up the

application to receive the same filing date.

For international design applications, the limit

of 60 electronic files per submission excludes electronic files of

reproductions that are attached via the “Attach Reproductions” section of the

“Attach Documents” screen in EFS-Web (available for submissions through the

USPTO as an office of indirect filing prior to transmittal of the application

to the International Bureau) or are attached via the “Attach JPEG

Reproductions” section of the “Attach Documents” screen in EFS-Web (available

after transmittal of an international design application to the International

Bureau or, where the USPTO was not an office of indirect filing, after receipt

of the WIPO publication of an international design application designating the

United States). The “Attach Reproductions” section allows up to 5000 (up to 100

designs with 50 views per design) additional single-page PDF and JPEG image

files to be uploaded in one submission. The “Attach JPEG Reproductions” section

allows up to 50 additional JPEG image files to be uploaded in one submission.

See subsection N for further information concerning international design

applications.

Complex Work Units may be Submitted Electronically via EFS-Web

Under the Complex Work Unit Pilot Program,

complex work units (such as chemical structure drawings, mathematical formulae,

and three-dimensional protein crystalline structure data and table data) may be

submitted as ASCII text files via EFS-Web for applications filed under

U.S.C. 111

, national stage submissions under

35 U.S.C.

371

, reexamination proceedings, and supplemental

examination proceedings

the Complex Work Unit Pilot Program,

complex work units (such as chemical structure drawings, mathematical formulae,

and three-dimensional protein crystalline structure data and table data) may be

submitted as ASCII text files via EFS-Web for applications filed under

U.S.C. 111

, national stage submissions under

35 U.S.C.

371

, reexamination proceedings, and supplemental

examination proceedings. Complex work units cannot be submitted as ASCII text

files in international applications (PCT). More information is available on the

USPTO website at

www.uspto.gov/patent/initiatives/complex-

work-unit-pilot-program

New International Applications (PCT), New National Stage Submissions,

and Associated Documents

The term “international application (PCT)” as used in

this framework refers to an international application filed under the PCT. The

term “national stage submission” as used in this subsection of the framework

refers to an international application (PCT) designating the United States where a

submission has been made to enter the U.S. national stage under

35 U.S.C.

371

New International Applications (PCT) Filed Under the PCT With the United

States Receiving Office

EFS-Web enables users to electronically file

international applications (PCT) with the United States Receiving Office

(RO/US). The required page size for international applications (PCT) filed via

EFS-Web in PDF format is A4 (29.7 cm x 21 cm). See

PCT Rule

11.5

. See subsection M.7., below, for more information

about follow-on submissions during the international phase.

States Receiving Office

EFS-Web enables users to electronically file

international applications (PCT) with the United States Receiving Office

(RO/US). The required page size for international applications (PCT) filed via

EFS-Web in PDF format is A4 (29.7 cm x 21 cm). See

PCT Rule

11.5

. See subsection M.7., below, for more information

about follow-on submissions during the international phase.

(a)

The Request:

EFS-Web permits users to submit zip files created by

PCT-SAFE or ePCT. A zip file created using PCT-SAFE or ePCT will contain the

PCT Request and a fee calculation sheet in PDF format, which are converted

to TIFF images and loaded into the image file wrapper by the USPTO. PCT-SAFE

and ePCT users may create and electronically sign using an S-signature the

PCT Request, including the Declaration of Inventorship, for the purposes of

filing via EFS-Web with the United States Receiving Office. PCT-SAFE and

ePCT users may create a .zip file containing a validated PCT Request which

will entitle the applicant to a reduction of the international filing fee

when the PCT-SAFE or ePCT zip file is included in a new international

application (PCT) filed with the United States Receiving Office via EFS-Web.

See

Use of WIPO's ePCT System for Preparing the PCT Request for

Filing as Part of an International Application With the USPTO as

Receiving Office,

81 FR 27417 (May 6, 2016). Alternatively, if

the applicant chooses not to use PCT-SAFE or ePCT to create the PCT Request

and fee calculation sheet, the applicant may use Form PCT/RO/101 (or

equivalent) for the Request and attach the PDF file to the EFS-Web

submission.

's ePCT System for Preparing the PCT Request for

Filing as Part of an International Application With the USPTO as

Receiving Office,

81 FR 27417 (May 6, 2016). Alternatively, if

the applicant chooses not to use PCT-SAFE or ePCT to create the PCT Request

and fee calculation sheet, the applicant may use Form PCT/RO/101 (or

equivalent) for the Request and attach the PDF file to the EFS-Web

submission.

(b)