MPEP 500

Question 1

Chapter 500 Receipt and Handling of Mail and Papers

Answer 1

`

Question 2

501 Filing Papers With USPTO

37 CFR 1.1 Addresses for non-trademark correspondence with the USPTO

37 CFR 1.4 Nature of correspondence and signature requirements

37 CFR 2.190 Addresses for trademark correspondence with the USPTO

Answer 2

`
- S signature: with a first single forward slash mark before, and a
second single forward slash mark after

• USPTO has 3 separate general mailing addresses:
  – Patent related address:
  Commissioner for Patents
  P.O. Box 1450
  Alexandria, Virginia 22313-1450
• applicants are encouraged to submit correspondence by EFS-Web.
  – Trademark related address:
  Commissioner for Trademarks
  P.O. Box 1451
  Alexandria, VA 22313-1451

– other correspondence
Director of the USPTO
P.O. Box 1450
Alexandria, VA 22313-1450

Question 3

502 Depositing Correspondence

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

37 CFR 1.6 Receipt of correspondence

Answer 3

• CFR 1.5
• • correspondence must have application number assigned, otherwise will be returned to the sender.
• • the returned correspondence may be resubmitted within 2-week of the mail date on the cover letter to keep the original receipt date of the correspondence. The 2-week period will not be extended. Otherwise the receipt date will be the resubmission date.
• All applications may be sent to USPTO by mail, or by hand-carry.
• NEW applications CAN NOT be faxed, and NOT entitled to the benefit of a Certificate of Transmission.
• • CPA can be faxed, but not entitled to the benefit of a Certificate of Transmission.
• preferred info included in application filing: 1. application #; 2. Art Unit #; 3. Filing date; 4. Name of examiner; 5. Title of invention; 6. Confirmation #
• Post Allowance correspondence:
• • should be addressed “Mail Stop Issue Fee”.
• • should be filed prior to the date of issue fee payment.

Question 4

502.01 Correspondence Transmitted by

Facsimile

Answer 4

Date of receipt Example, page 12

• Faxed accepted:
  – CPA, amendments, declarations, petitions, information disclosure
  statements (IDS), terminal disclaimers, notices of appeal and appeal briefs, RCEs.
  – * a CPA by fax MUST include authorization to charge the basic filing fee to a deposit account.
• Fax prohibited: 37 CFR 1.6(d)(1)-(7)
• • correspondence requiring an original signature (CFR 1.4(e))
• • certified docs (CFR 1.7(f))
• • CFR 1.8(a)(2)(i), correspondence can not rev benefits of the cert of transmission;
• • color drawings
• • A request for reexamination or a request for supplemental examination
• • Correspondence to be filed in an application subject to a secrecy order
• • In contested cases and trials before the Patent Trial and Appeal Board

Question 5

502.02 Correspondence Signature

Requirements

Answer 5

• handwriting signature
• S signature
• Ratification requires the person
  ratifying to state he/she personally signed the previously submitted document as well as, if needed, the submission of a compliant format of the signature.
  – In lieu of ratification, the Office may require a resubmission of a properly signed duplicate document.
• Confirmation includes submitting a
  duplicate document, which is compliantly signed.
• Evidence of authenticity may include
  evidence establishing a chain of custody of a document from the person signing the document to the person filing the document.

Question 6

502.03 Communications via Email

Answer 6

• a written authorization by applicant is needed for the USPTO to respond via email to any internet correspondence containing info subject to confidentiality requirement.
• • the written authorization may be submitted via EFS, mail, or fax, can not by email.
• USPTO are NOT permitted to initiate email communication with applicants unless there is a written authorization of record in the patent application.
• a paper copy of the Internet email or instant messaging contents MUST be made and placed in the patent application file.
• MUST be thru USPTO tools.

Question 7

502.04 Duplicate Copies of Correspondence

Answer 7

• the Office may discard duplicate copies of

correspondence filed in an application or patent file when it is NOT required.

Question 8

502.05 Correspondence Transmitted by

EFS-Web

Answer 8

Patent Electronic System comprises:
- EFS-Web : for electronic filing of patent correspondence
- PAIR : for electronically viewing patent applications and
proceedings

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

• plant patent app NOT permitted to file using EFS
• Initial submissions for patent term extension
• Certified documents
• Correspondence to be filed in an application subject to a secrecy order
• Documents filed in contested cases and trials before the Patent Trial and Appeal Board (PTAB)
• Submissions that are not associated with a patent
• Notices of appeal to a court
• Correspondence filed in connection with a disciplinary proceeding

-Both unregistered and registered users may submit the filing fees using the online fee payment in EFS-Web at the time of filing
-> Only registered users may submit payment of fees in a previously filed application
» can use a credit/debit card, USPTO deposit account, or electronic fund transfer; or may also provide authorizations to charge fees to a deposit account. BUT, submit cc/debit card payment form by fax or priority mail, not by EFS.
> Failure to pay the fees on the filing date of the application will result in a surcharge.
> The filing date of an application via EFS is based on the dates indicated on the Electronic Acknowledgement Receipt.