[Federal Register Volume 74, Number 206 (Tuesday, October 27, 2009)]
[Notices]
[Pages 55200-55211]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E9-25785]
[[Page 55200]]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2008-0045]
Legal Framework for Electronic Filing System--Web (EFS-Web)
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Notice.
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SUMMARY: This Legal Framework provides guidance on the background
statutes, regulations and policies that support the Electronic Filing
System--Web (EFS-Web) project. The document is provided as a reference
for applicants, parties in reexamination proceedings, attorneys, and
agents, as well as their employees using the system.
FOR FURTHER INFORMATION CONTACT: Joni Y. Chang, Senior Legal Advisor,
Office of Patent Legal Administration, Office of the Deputy
Commissioner for Patent Examination Policy; directly by phone at 571-
272-7720, or by mail addressed to: Mail Stop Comments--Patents,
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
Inquiries regarding EFS-Web and other USPTO information technology
(IT) systems may be directed to the Patent Electronic Business Center
(Patent EBC), by telephone: 1-866-217-9197 (toll-free) and 571-272-
4100, or by e-mail: [email protected].
Inquiries regarding IT policy for U.S. national patent applications
may be directed to Mark Polutta (571-272-7709), Senior Legal Advisor,
Office of Patent Legal Administration.
Inquiries regarding IT policy for international patent applications
may be directed to Tamara Graysay (571-272-6728), Special Program
Examiner, Office of Patent Cooperation Treaty (PCT) Legal
Administration.
SUPPLEMENTARY INFORMATION: This notice substantively contains the same
information as the EFS-Web Legal Framework posted on the USPTO Web site
(September 2008), with certain exceptions. The following is a brief
summary of the major differences:
1. The sections have been reorganized so that sections on similar
topics are combined or grouped together, and clarifications and
definitions of terms related to electronic filings have been added;
2. Section A (former sections II, III and V) has been revised to
provide updated general information on EFS-Web;
3. Section B (former sections IV, VI, XII, XX, and XXXI) has been
revised to provide a list of applications and documents that are
permitted to be filed via EFS-Web, information on how applications
filed via EFS-Web are counted for the application size fee purposes,
and fee payments are permitted to be filed via EFS-Web;
4. Section D (part of former sections IV and XXIX) has been revised
to provide information on proper usages of EFS-Web;
5. Section E (including subsection E1 and E2, former sections VII,
X, and XXVIII) has been revised to permit a Public Key Infrastructure
(PKI) certificate holder to designate a single employee of the holder's
organization, or a single employee of a contractor, who may use the
holder's certificate under the holder's direction and control;
6. Section H (former section XXII) has been revised to permit color
and grayscale drawings and photographs to be submitted via EFS-Web in
provisional and nonprovisional utility patent applications including
reissue applications and national stage applications;
7. Subsection I5 is added to provide that complex work units (such
as chemical structure drawings, mathematical formulae, three-
dimensional protein crystalline structure data and table data) may be
submitted as text files via EFS-Web under the Complex Work Units Pilot
Program; and
8. Section J (former sections IX, XVII, XVIII and XIX) has been
revised to permit PCT-EASY.zip compressed files to be submitted via
EFS-Web when users are filing international applications with the
United States Receiving Office, and to provide that tables related to a
sequence listing in an international application must be submitted in a
PDF file rather than in a text file.
Table of Contents
A. General Information on EFS-Web (Former Sections II, III and V)
B. Legal and Document Policies (Former Sections IV and VI)
B1. Types of Patent Applications and Documents Permitted To Be
Filed via EFS-Web (Former Section XX)
B2. Types of Patent Applications and Documents Not Permitted To
Be Filed via EFS-Web (Former Section XXXI)
B3. What is the official record of documents submitted via EFS-
Web? (Former Section XII)
B4. How are applications filed via EFS-Web counted for
application size fee purposes?
B5. Can fee payments be submitted via EFS-Web?
C. Electronic Acknowledgement Receipt and Date of Receipt (Former
Section VIII)
C1. What is the date of receipt of a follow-on document received
by the USPTO through EFS-Web? (Former Section XXV)
C2. What is the date of receipt of an application submitted via
EFS-Web? (Former Section XXIII)
C3. Can users file documents during non-business hours via EFS-
Web? (Former Section XXVI)
C4. What if the applicant electronically files an application
via EFS-Web, and on that same day, realizes that the applicant has
inadvertently omitted a document from the application? (Former
Section XXIV)
C5. Are there any legal consequences of the USPTO's accepting
electronic patent applications on Saturday and Sunday? (Former
Section XXVII)
D. Proper Usage of EFS-Web (Former Section IV)
D1. Filing Documents as PDF Files via EFS-Web
D2. Entering Information on EFS-Web Screens
D3. Under what conditions will the USPTO allow refunds for fees
paid via EFS-Web? (Former Section XXIX)
E. Security and Authentication (Former Section X)
E1. PKI Subscriber Agreement (Former Section VII)
E2. Under what authority does an authorized assistant of the
digital certificate holder submit signed documents? (Former Section
XXVIII)
F. Signature Policy (Former Section XXX)
G. May pre-grant (eighteen-month) publication requests be submitted
via EFS-Web? (Former Section XXI)
H. May photographs and color drawings be submitted via EFS-Web?
(Former Section XXII)
I. Text Files and File Limits
I1. May biotechnology sequence listings, large tables, or
computer program listing appendices be submitted as text files via
EFS-Web? (Former Section XIII)
I2. How are text files counted for application size fee
purposes? (Former Section XIV)
I3. What is the size limit for text files? (Former Section XV)
I4. What is the limit on the number of electronic files that may
be included in a single EFS-Web submission? (Former Section XVI)
I5. May Complex Work Units be submitted electronically via EFS-
Web?
J. International Applications and Documents for International
Applications
J1. May international applications filed under the PCT with the
United States Receiving Office be electronically submitted via EFS-
Web? (Former Section XVII)
J2. Entry in the U.S. national stage under 35 U.S.C. 371 (Former
Section IX)
J3. May EFS-Web be used to file international applications
containing a nucleotide or amino acid sequence listing and/or tables
related thereto in the United States Receiving Office? (Former
Section XVIII)
J4. Follow-on Submissions for International Applications (Former
Section XIX)
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J5. Policy of Annex F of the PCT Administrative Instructions
(Former Section XI)
A. General Information on EFS-Web
EFS-Web is the USPTO's system for electronic filing of patent
correspondence. EFS-Web is accessible via the Internet on the USPTO Web
site. The system utilizes standard Web-based screens and prompts to
enable users to submit patent documents in Portable Document Format
(PDF) directly to the USPTO. Users may electronically submit most
patent applications, reexamination requests, and other patent-related
documents securely using EFS-Web. Users may also use EFS-Web to submit
payments of most patent fees including patent application filing fees.
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. 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 that the USPTO
has received the user's submission. The users, generally within two
hours, will receive an Electronic Acknowledgement Receipt of a
successful submission received by the USPTO. 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 Manual of Patent Examining Procedure (MPEP) Sec.
503. Most documents submitted via EFS-Web will be viewable via the
Patent Application Information Retrieval (PAIR) system within an hour
after the USPTO receives the documents if the users have associated
their applications with their customer numbers. Therefore, users will
be able to immediately check the contents of their applications for
completeness and accuracy of their electronic submissions.
A user may become a registered user by obtaining a PKI digital
certificate. See section E of this notice for more information on PKI
digital certificates. A registered user may file most patent
applications and follow-on documents in a patent application, but a
non-registered user is not permitted to file most follow-on documents
in a patent application. See section B of this notice for more
information.
EFS-Web is a PDF-based filing system. Accordingly, all EFS-Web
submissions are required to be in PDF format unless otherwise indicated
in this notice. EFS-Web permits submission of: (1) The American
Standard Code of Information Interchange (ASCII) text files (.TXT) to
submit bio-sequence listings, computer program listings, mega tables,
and Complex Work Units; and (2) PCT-EASY.zip compressed files to submit
the Request form generated by PCT-EASY in international applications
with the United States Receiving Office. See sections I and J of this
notice for more information on ASCII text files and electronic filing
of international applications, respectively. In addition, the USPTO
provides users with PDF EFS-Web fillable forms, such as the Provisional
Application for Patent Cover Sheet, the Information Disclosure
Statement, the Application Data Sheet, Petition to Make Special Under
Accelerated Examination Program, Petition to Accept Unintentionally
Delayed Payment of Maintenance Fee in an Expired Patent, Request for
Continued Examination (RCE) Transmittal, and Petition to Make Special
Based on Age. When users submit information using an EFS-Web fillable
form, 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 Web site,
or user-created forms, and submit the completed forms via EFS-Web. The
information entered on these forms, however, will not be automatically
loaded into the USPTO databases.
The USPTO Web site provides additional information on EFS-Web and
PAIR, such as instructions, guidelines, frequently asked questions, and
tutorials (http://www.uspto.gov/ebc/efs_help.html). Users may contact
the Patent Electronic Business Center (Patent EBC) for assistance with
EFS-Web and PAIR as well as for requesting PKI digital certificates and
customer numbers.
B. Legal and Document Policies
To the extent that any USPTO regulation is inconsistent with the
procedures for EFS-Web, the regulation will be interpreted in a manner
to support EFS-Web. This notice sets forth the USPTO's policies
concerning documents submitted electronically using EFS-Web, including
patent applications and requests for reexamination, as well as follow-
on documents in patent applications and reexamination proceedings.
B1. Types of Patent Applications and Documents Permitted to be
Filed via EFS-Web: EFS-Web permits registered users (who have a PKI
digital certificate) and non-registered users to file the following
patent applications, requests for reexamination, and documents:
1. Provisional patent applications under 35 U.S.C. 111(b);
2. Nonprovisional utility patent applications under 35 U.S.C.
111(a) (including reissue utility patent applications);
3. Nonprovisonal design patent applications under 35 U.S.C. 171
(including reissue design patent applications);
4. International applications under PCT Article 11, designating the
United States, for filing in the United States Receiving Office;
5. National stage applications under 35 U.S.C. 371;
6. Requests for ex parte reexamination under 35 U.S.C. 302 for
utility or design patents;
7. Requests for inter partes reexamination under 35 U.S.C. 311 for
utility or design patents;
8. Petitions to make special based on age under 37 CFR 1.102(c);
and
9. Petitions to accept an unintentionally delayed payment of
maintenance fee under 37 CFR 1.378(c), and payments of maintenance fees
when submitted with the petition.
10. Petition to make special under accelerated examination program
(must be filed with a nonprovisional utility patent application under
35 U.S.C. 111(a)).
Follow-on documents: Registered users are permitted to file follow-
on documents in the patent applications and reexamination proceedings
listed above via EFS-Web. Follow-on documents are documents filed after
the initial submission of the application or request for reexamination,
which include, but are not limited to, the following: amendments,
information disclosure statements (IDS), replies to Office actions and
notices, evidence, petitions, and other documents filed after the
filing of a patent application or request for reexamination. In
addition, registered users may file copies of the patent application
(e.g., a copy of the amended specification including the claims, and
drawings, for the purposes of publication of the application) for 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 37 CFR 1.221(a). See section G for
more information on filing these publication requests via EFS-Web.
Follow-on documents also include any documents submitted on the same
day as the application, but after the initial submission. In
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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 35 U.S.C. 156 in a patent file via EFS-
Web.
Non-registered users are not permitted to file follow-on documents
via EFS-Web, except those listed in items 8-10 above. Non-registered
users may file follow-on documents by mail (with a certificate of
mailing in accordance with 37 CFR 1.8), Express Mail from USPS in
accordance with 37 CFR 1.10, or hand delivery.
B2. 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 under 35 U.S.C. 161 and documents
associated with plant patent applications.
2. Requests for Reexamination under 35 U.S.C. 302 and 311 for plant
patents and documents associated with reexamination proceedings for
plant patents.
3. Third party submissions under 37 CFR 1.99.
4. Protests under 37 CFR 1.291.
5. Public use papers under 37 CFR 1.292.
6. Color drawings and color photographs for international
applications that have not entered the national stage.
7. Initial submissions for patent term extension under 35 U.S.C.
156.
8. Correspondence concerning registration practice as specified in
37 CFR 1.4(e). See also 37 CFR 1.6(d)(1).
9. Certified documents as specified in 37 CFR 1.4(f). See also 37
CFR 1.6(d)(2). An example of such a submission is a certified copy of a
foreign patent application filed pursuant to 35 U.S.C. 119 or a
certified copy of an international application filed pursuant to 35
U.S.C. 365.
10. Correspondence to be filed in a patent application subject to a
secrecy order under 37 CFR 5.1 through 5.5. See also 37 CFR 1.6(d)(6).
11. Documents filed in contested cases before the Board of Patent
Appeals and Interferences (BPAI), except as the BPAI may expressly
authorize. See also 37 CFR 1.6(d)(9).
12. Documents filed in contested cases before the BPAI, which are
governed by 37 CFR 41.106(f). See also 37 CFR 1.6(d)(3) and
1.8(a)(2)(i)(C).
13. Correspondence filed in connection with a disciplinary
proceeding under 37 CFR parts 10 and 11. See also 37 CFR 1.6(d)(3).
14. Maintenance fees submitted under 37 CFR 1.366 that are not
submitted with a petition under 37 CFR 1.378(c) (see item 9 in section
B1 of this notice). Patent owners may be paid electronically using the
Office of Finance On-Line Shopping Page at https://ramps.uspto.gov/eram/. See MPEP Sec. 2510 for information regarding the proper methods
for submitting maintenance fees.
15. Assignment documents under 35 U.S.C. 261, which may be
electronically filed using the Electronic Patent Assignment System
(EPAS) or the Electronic Trademark Assignment System (ETAS).
Information regarding EPAS is available at: http://epas.uspto.gov.
Information regarding ETAS is available at: http://etas.uspto.gov.
16. Submissions that are not associated with a patent application
or reexamination proceeding.
If any of the documents listed above is submitted via EFS-Web, the
document 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 on the
document.
B3. What is the official record of documents submitted via EFS-Web?
When the USPTO successfully receives 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 Image File Wrapper (IFW) as part
of the official record, except for color and grayscale drawings which
are stored in the Supplemental Complex Repository for Examiners (SCORE)
as part of the official record. In addition, certain submissions may be
filed as ASCII text files (e.g., sequence listings or computer program
listings), which are stored in SCORE as part of the official record.
Accordingly, the official record for the patent application and
reexamination proceeding comprises:
(1) ASCII text documents as well as color and grayscale drawings in
PDF format as stored in SCORE; and
(2) TIFF images of all other original documents as stored in IFW as
well as 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
screens.
See also Legal Framework for the Use of the Electronic Filing
System, 1286 Off. Gaz. Pat. Office 113, 114 (Sept. 14, 2004). The
original documents submitted via EFS-Web (e.g., applications and
reexamination proceeding documents) are stored exactly as filed in an
independent location. See section I of this notice for more information
on ASCII text documents and section H on color and grayscale drawings.
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 section G
for more information on publication requests.
B4. How are applications filed via EFS-Web counted for application
size fee purposes? For patent applications filed under 35 U.S.C. 111
(including provisional applications, utility and design nonprovisional
applications, and reissue applications), the paper size equivalent of
the specification (including claims) and drawings of an application
submitted via EFS-Web will be considered to be seventy-five percent
(75%) of the number of sheets of paper present in the specification
(including claims) and drawings of the application when entered into
IFW after being rendered by EFS-Web for purposes of determining the
application size fee required by 37 CFR 1.16(s). See 37 CFR 1.52(f)(2)
and MPEP Sec. 607. The paper size equivalency under 37 CFR 1.52(f)(2)
for EFS-Web filings does not apply to national stage submissions. See
MPEP Sec. 1893.01(c).
Any sequence listing in compliance with 37 CFR 1.821(c) or (e), and
any computer program listing in compliance with 37 CFR 1.96, submitted
via EFS-Web will be excluded when determining the application size fee
required by 37 CFR 1.16(s) if the listing is submitted in ASCII text as
part of an associated file of the application. See 37 CFR 1.52(f)(2)
and sections I2 and J3 of this notice. Sequence listing or computer
program listings submitted as PDF files would not be excluded.
B5. Can fee payments be submitted via EFS-Web? Yes, non-registered
and registered users may submit the filing fees (e.g., the basic filing
fee, search and examination fee, and excess claims fee) using the
online fee payment in EFS-Web at the time of filing a patent
application or request for reexamination. Only registered users may
submit payment of fees in a previously filed application or
reexamination proceeding. EFS-Web permits users to electronically
submit the payment of fees with a credit card, USPTO deposit account,
or electronic fund transfer. Users may also provide authorizations to
charge fees to a deposit account with the documents
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being submitted electronically via EFS-Web (e.g., a fee transmittal
letter or form). However, users should not submit a credit 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 card information may become part of the record of an application
file that is open to public inspection.
When the online fee payment in EFS-Web is unavailable, a deposit
account authorization transmittal (e.g., PTO/SB/17) may be included
with the documents being submitted via EFS-Web. A credit card
authorization transmittal (e.g., PTO-2038) may also be submitted by
facsimile transmission to the USPTO Central Facsimile (571) 273-8300,
or sent via Express Mail 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 national stage 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. If 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 on the filing
date of application. 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 under 37 CFR 1.378(c) for auto-processing by EFS-Web;
and
(2) Pre-grant publication submissions under 37 CFR 1.211 to 1.221
that require a fee.
C. 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 section 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 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 * * * Reexamination 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) or 37 CFR 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, 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.
C1. What is the date of receipt of a follow-on document received by
the USPTO through EFS-Web? Follow-on documents filed in a patent
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 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 (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).
C2. What is the date of receipt of an application submitted via
EFS-Web? 35 U.S.C. 111(a)(4) states in part (emphasis added):
The filing date of an application shall be the date on which the
specification and any required drawing are received in the Patent
and Trademark Office.
Thus, the filing date of an application is the date of receipt of
the application in the USPTO. Further, the USPTO is located in the
Eastern Standard Time zone. Accordingly, the date of filing of an
application officially submitted through EFS-Web will be the date in
the Eastern Standard 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 Standard Time date
that the documents are fully, successfully, and officially received at
the USPTO, after
[[Page 55204]]
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). This applies by
analogy to reexamination proceedings.
To be very specific, the EFS-Web system records as the date of
receipt of documents the local date in Eastern Standard Time 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 1 p.m. Pacific Time in California on May 1, that
application would be officially received by the USPTO at 1 a.m. Eastern
Standard Time on May 2. Accordingly, the application would receive a
filing date of May 2. However, the applicant could alternatively file
the application using Express Mail 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.
C3. Can users file documents during non-business hours 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.
If a transmission is attempted during a down time, 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 Express Mail 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, and
reexamination requests, 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 and reexamination requests (37 CFR
1.8(a)(2)(i)(A) and (D)). 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.
C4. What if the applicant electronically files an application via
EFS-Web, and on that same day, realizes that the applicant has
inadvertently omitted a document from the application? One advantage of
filing a patent application via EFS-Web is that applicant (who is a
registered user) may view the submission in PAIR and file a document
directly into the application 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 another new
application in other certain situations.
The following examples describe implications raised when applicant
inadvertently omits an item when filing an application 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 thus 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 be considered late and thus
a surcharge for filing the filing fees will not be required.
3. Nonpublication request--Since 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 fee under 37 CFR 1.17(h) in
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 the 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)(2). 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. Please note that the application will not be entitled to a
filing date until applicant files at least one claim in the
application.
6. Part of the specification--Applicant may file the 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 another new 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 declaration of
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) on or after December 8, 2004, and the applicant
files a petition for express abandonment in accordance with 37 CFR
1.138(d).
C5. Are there any legal consequences of the USPTO's accepting
electronic patent applications on Saturday and Sunday? 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
[[Page 55205]]
may be taken, or fee paid, on the next succeeding secular or
business day.
Further, 35 U.S.C. 119((e)(3)) states:
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, regardless of the mode or form
of filing.
However, Article 4 of the Paris Convention addresses the priority
period and in Article 4(c)(3) it 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.
Further, as stated above, the USPTO is capable of accepting electronic
patent application filings every day of the week, including weekends
and holidays, through EFS-Web. Thus, applicants 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 when filing international applications with the United
States Receiving Office. Specifically, the ability to file applications
electronically on weekends and holidays in the USPTO may result in loss
of priority rights in foreign jurisdictions designated in international
applications filed with the United States Receiving Office, if
applicants elect, in accordance with 35 U.S.C. 21(b) or 119(e)(3), to
file an international application on the next succeeding business day
in the event that the twelve-month Paris Convention priority period set
out in Article 4(C)(1) falls on a Saturday, Sunday, or Federal Holiday.
In such circumstances, other patent offices may deny the priority claim
on the basis that the international application was not timely filed if
their national law strictly incorporates the provision of Paris
Convention Article 4(c)(3) and considers the USPTO to be open for the
filing of applications on weekends and holidays. For this reason,
applicants may prefer not to rely upon the ``next business day''
provisions of 35 U.S.C. 21(b) and 119(e)(3) when filing international
applications with the USPTO, and instead file the international
application before the Paris Convention twelve-month priority period
has expired.
D. Proper Usage of EFS-Web
Users should follow the instructions and guidelines for EFS-Web
provided on the USPTO Web site. 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 (Eastern Time). Use of EFS-Web
in a manner significantly in violation of the instructions and
guidelines for EFS-Web provided on the USPTO Web site and in this
notice may result in non-entry of the submission or failure to accord a
filing date in 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 18
U.S.C. 1030 imposes a duty on users not to intentionally cause damage
to a federal government system.
D1. 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. See section I4 of this notice 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 uses the
PDF comments or annotations to enter the information on a form, 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 Web site at http://www.uspto.gov/ebc/portal/tools.htm) 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.
D2. Entering information on EFS-Web Screens: EFS-Web collects
information from on-screen entries made by the user through the EFS-Web
graphical user interface (GUI) data collection screens. Through these
data collection screens, 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 screens to
automatically: (1) Assign the application number, create the
application, and process the application, if a new patent 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. Therefore, providing
incorrect information regarding the submission could lead to: (1) An
incorrect type of application file being created; (2) a delay in
processing the document; (3) filing a document 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.
1. 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 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. Therefore, it is important
[[Page 55206]]
for the user to enter the correct application number on the EFS-Web
screen when filing the follow-on document.
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.
2. Filing a new patent application: When a user is submitting a new
patent application via EFS-Web, the user is required to select the
application type (e.g., design, utility, provisional or nonprovisonal)
being filed on the EFS-Web screen. 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 radio button 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 screen,
and review the Electronic Acknowledgement Receipt and the application
file using PAIR after the submission is completed.
3. Document indexing: When a user submits a patent application or a
follow-on document in a patent 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. 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 expires; (b) if the
user selects the ``Pre-Grant Publication'' radio button 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 Web
site at http://www.uspto.gov/ebc/portal/infodocuments.htm. It is
important for users to select the correct document description, and
check the application file via PAIR after the submission is completed.
D3. Under what conditions will the USPTO allow refunds for fees
paid via EFS-Web? 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. The users should contact the Patent EBC if there are any
issues associated with their submissions.
E. Security and Authentication
The USPTO requires PKI certificates to meet federal government
computer system authentication guidelines as defined by the National
Institute of Standards and Technology (NIST) and the Office of
Management and Budget (OMB). The required evaluation of EFS-Web and
PAIR determined that level three authentication was needed; this is met
by the USPTO's PKI.
Only a PKI certificate holder (or the designated employee under the
certificate holder's direction and control) can submit follow-on
documents. This preserves confidentiality, and is consistent with power
of attorney and correspondence regulations. In order to obtain a PKI
certificate, the user must be a registered practitioner (i.e., an
attorney or agent) or an inventor, and complete the appropriate
paperwork (e.g., review the PKI subscriber agreement and complete the
certificate action form, available on the USPTO Web site). Once the
user has a PKI certificate, the user can authenticate himself or
herself to the USPTO through the EFS-Web sign-on. This will generate a
secure, encrypted connection with the USPTO.
For users that do not have, or do not wish to use, a PKI
certificate to authenticate to the USPTO, they may still submit new
application filings only via a non-authenticated workflow. The user
would go to the EFS-Web page and choose to submit without a PKI
certificate as a non-registered user, which would generate a Transport
Layer Security (TLS) connection for the session, thus allowing secure
data transmission to the USPTO. Non-registered users have the same
level of protection for filing as a registered user, but are limited to
submission of initial filings. This practice minimizes the risk of
improperly-filed third party submissions and other documents. Non-
registered users may file follow-on documents by mail (with a
certificate of mailing in accordance with 37 CFR 1.8), Express Mail
from USPS in accordance with 37 CFR 1.10, or hand delivery.
Note: Users are advised that the USPTO may revoke a user's
digital PKI certificate if the user makes an improper submission
through EFS-Web. See section B and paragraph 4 of the ``United
States Patent and Trademark Office Public Key Infrastructure
Subscriber Agreement'' located at [http://www.uspto.gov/ebc/documents/subscribersagreement.pdf].
E1. PKI Subscriber Agreement: A PKI certificate holder may
designate a single employee of the holder's organization, or a single
employee of a contractor, who may use the holder's USPTO certificate
under the holder's direction and control in compliance with the PKI
subscriber agreement. Accordingly, a practitioner who is a PKI
certificate holder, or the designated employee acting under the
direction and control of the practitioner, may file documents signed by
either the practitioner or another practitioner via EFS-Web, in
compliance with the PKI subscriber agreement. Filing of a document that
is unauthorized to be filed via EFS-Web (e.g., a third party submission
under 37
[[Page 55207]]
CFR 1.99 or a protest under 37 CFR 1.291) is inconsistent with the
subscriber agreement and the rules and policies of the USPTO. Thus, the
certificate holder, and designated employee acting under the direction
and control of the certificate holder, must make sure that document
being submitted is authorized to be filed via EFS-Web, regardless of
whether the document is signed by the practitioner exercising the
direction and control or by another practitioner.
EFS-Web also permits a legal assistant or paralegal to submit an
application or a request for reexamination previously reviewed by a
registered practitioner without the registered practitioner being
present. See section E2 for more information.
E2. Under what authority does an authorized assistant of the
digital certificate holder submit signed documents? A PKI digital
certificate holder is permitted to designate a single employee of the
holder's organization, or a single employee of a contractor, under the
PKI subscriber agreement and certificate action form. The designated
employee under the direction and control of the digital certificate
holder may use the certificate holder's certificate to submit documents
through EFS-Web in compliance with the PKI subscriber agreement and the
rules and policies of the USPTO.
The documents submitted through EFS-Web must be signed in
accordance with 37 CFR 1.4, 1.33(b), and 11.18. If the designated
employee is an assistant who is not an authorized party to sign the
documents, the designated employee is not responsible for the contents
of the documents submitted. Instead, the person who signs the documents
(e.g., the inventor or a registered practitioner who is representing
the inventor) is responsible for the contents. For example, the
documents may be electronically signed or ink signed by the applicant
or attorney of record. The assistant 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 certificate holder. (Ink signed documents can be electronically
scanned and then e-filed.) The assistant may also view and retrieve
documents from Private PAIR under the direction and control of the
certificate holder in compliance with the PKI subscriber agreement.
In the submission process, the assistant who is using the holder's
certificates to submit the documents through EFS-Web is required to
specify certain ``locator information'' so the documents can be
associated with the proper application file in the IFW system. That
locator information may include the application's title, first named
inventor, docket number, application number, confirmation number,
correspondence address and filing date, all if available. The type of
application (e.g., 35 U.S.C. 111(a), national stage application under
35 U.S.C. 371, international application) and information necessary for
the payment of fees are not considered to be locator information. The
``locator information'' is entered on submission to assure that the
documents are placed in the proper file, and do not constitute a signed
submission of bibliographic data on behalf of the applicant or
reexamination party. Errors made in the ``locator information'' may be
corrected by the USPTO on its own initiative, or by the applicant or
reexamination party, similar to the way they are corrected in paper
processing.
It also should be noted that the assistant 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.
F. Signature Policy
Signatures, other than handwritten signatures meeting the standard
of 37 CFR 1.4(d)(1), included in image attachments submitted via EFS-
Web are governed by the S-signature requirements of 37 CFR 1.4(d)(2)
(See also Changes To Support Implementation of the United States Patent
and Trademark Office 21st Century Strategic Plan, 69 FR 56481, 56486
(Sept. 21, 2004), 1287 Off. Gaz. Pat. Office 67 (Oct. 12, 2004).
If the signer is submitting an application through EFS-Web as PDF
files, he or she should 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. Any follow-on documents, such as an amendment filed in an
application, must also be signed in accordance with 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) or (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 accompany the application must be
signed.
A legible electronic image of a handwritten signature inserted, or
copied and pasted by the person signing the correspondence into an
application document may be considered to be an acceptable signature.
The legible image of the handwritten signature of the person signing
the correspondence must be inserted by the person. Additionally, the
signature must be surrounded by a first single forward slash mark
before the electronic image and a second single forward slash mark
after the electronic image. That is, the legible electronic image of a
handwritten signature must be enclosed between two single forward
slashes and the signer's name is indicated below or adjacent the
signature as per 37 CFR 1.4(d)(2). The slashes may be inserted into the
document prior to the insertion of the signature.
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) (or former 37 CFR 10.18(b)). See 37
CFR 1.4(d)(4).
G. May pre-grant (eighteen-month) publication requests be submitted via
EFS-Web?
Yes, EFS-Web enables 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 form-fillable application data
sheet (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'' radio button 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, early publication, voluntary publication, or republication
without also selecting the ``Pre-Grant Publication'' radio button on
the EFS-Web data collection screen.
H. May photographs and color drawings be submitted via EFS-Web?
The USPTO prefers black and white line drawings as prescribed in 37
CFR 1.84(a)(1) when applicants are required to submit drawings in
patent applications. As stated in 37 CFR 1.84(a)(2) and (b),
photographs and color drawings are not ordinarily
[[Page 55208]]
permitted in utility and design patent applications, but the USPTO will
accept photographs and color drawings in utility or design 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 are required to
comply with PCT Rule 11.13, which does not permit color drawings.
Furthermore, there is no provision for photographs. 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.
The USPTO may object to the drawings and photographs, and require
corrections or deletions if they do not comply with 37 CFR 1.84 or PCT
Rule 11.13. Additionally, since color drawings are not permitted in
international applications, color drawings and color photographs filed
in a national stage application 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 patent applications and proceedings listed in section B1 of
this notice. 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 35 U.S.C.
111(a), including reissue utility patent applications; and
4. U.S. national stage applications under 35 U.S.C. 371; and
5. Reexamination proceedings for utility or design patents.
Only black and white photographs may be submitted via EFS-Web in
international applications.
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 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, grayscale drawings, photographs,
color drawings, and other drawings that are not black and white line
drawings in design patent applications, including reissue design patent
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: (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) national stage applications under 35 U.S.C. 371;
and (iv) reexamination proceedings for utility 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.
b. Black and white photographs, and grayscale drawings, in
international applications. These drawings will be stored in SCORE, and
a black and white copy will be stored in IFW along with a SCORE
placeholder sheet.
Other Requirements: For color drawings, a petition filed under 37
CFR 1.84(a)(2) explaining why the color drawings are necessary is
required. See MPEP Sec. 608.02. The requirement for three (3) sets of
color drawings under 37 CFR 1.84(a)(2)(ii) is not applicable to color
drawings submitted via EFS-Web. Therefore, 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 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.
I. Text Files and File Limits
I1. May biotechnology sequence listings, large tables, or computer
program listing appendices be submitted as text files via EFS-Web? Yes,
all of these types of documents may be submitted as ASCII text files
with a ``.txt'' extension (e.g., ``seqlist.txt'') for national
applications (other than international applications) and reexamination
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 via EFS-Web is discussed in section J of this notice.
Users may submit the following document types, as 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, wherein a table
page is a page printed on paper in conformance with 37 CFR 1.52(b) and
1.58(c).
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 has a
file name with a ``.txt'' extension. Further, the specification must
contain an incorporation-by-reference of the material in the ASCII
[[Page 55209]]
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) for compact
discs.
It is recommended that a sequence listing be submitted in an ASCII
text file via EFS-Web rather than in a PDF file. If the sequence
listing text file submitted via EFS-Web complies with the requirements
of 37 CFR 1.824(a)(2)-(6) and (b) (i.e., is a compliant sequence
listing ASCII text file), 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 the use of 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 with the application via EFS-Web. Checker software that may be
used to check a sequence listing for compliance with the requirements
of 37 CFR 1.824 is available on the USPTO web site at http://www.uspto.gov/web/offices/pac/checker/.
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, 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.
Submission of the sequence listing in a PDF file is not recommended
because applicant would still be required to provide the CRF 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 because as
stated above, 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 in PDF format is treated as the paper copy required by
37 CFR 1.821(c). If applicant submits a sequence listing in a PDF file
and a copy of the sequence listing in an ASCII text file, 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.
I2. How are text files 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) and 1.821(c) or (e), 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) or 1.492(j) 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) or
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.
I3. What is the size limit for text 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 on compact disc in
accordance with 37 CFR 1.52(e) on the same day by using Express Mail
from the USPS in accordance with 37 CFR 1.10, or hand delivery, in
order to secure the same filing date for all parts of the application.
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. If
the sequence listing is filed on a compact disc, the sequence listing
must be a single document, but the document may be split using software
designed to divide a file, that is too large to fit on a single compact
disc, into multiple concatenated files. If the user breaks up a
sequence listing so that it may be submitted on multiple compact discs,
the compact discs must be labeled to indicate their order (e.g., ``1 of
X'', ``2 of X'').
For 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 Express Mail 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 in 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'').
I4. What is the limit on the number of electronic files that may be
included in a single EFS-Web submission? Sixty (60) electronic files is
the file number limit per submission, as EFS-Web is not currently
capable of accepting more than 60 electronic files in any one
submission. Accordingly, if an application file is comprised of 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 per submission, 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.
[[Page 55210]]
I5. May Complex Work Units be submitted electronically via EFS-Web?
Yes, under the Complex Work Unit Pilot Program, complex work units
(such as chemical structure drawings, mathematical formulae, three-
dimensional protein crystalline structure data and table data) may be
submitted as ASCII text files via EFS-Web for national applications
(other than international applications) and reexamination proceedings.
Complex work units cannot be submitted as ASCII text files in
international applications. More information is available on the USPTO
Web site at http://www.uspto.gov/web/patents/cwupilot.html.
J. International Applications and Documents for International
Applications
J1. May international applications filed under the PCT with the
United States Receiving Office be electronically submitted via EFS-Web?
Yes, EFS-Web enables users to electronically file international
applications under the PCT with the United States Receiving Office.
Applicants are advised that EFS-Web may be used to file either: (1)
International applications in fully electronic form; or (2) follow-on
papers to previously filed international applications, regardless of
the manner in which the international application was initially filed.
The required page size for international applications filed via EFS-Web
in PDF format is A4 (29.7 cm x 21 cm). See PCT Rule 11.5.
EFS-Web permits users to submit PCT-EASY.zip files created by PCT-
SAFE when operated in the PCT-EASY mode. A PCT-EASY.zip file will
contain the Request and fee calculation sheet in PDF format. All other
documents or application parts (e.g., description, claims, drawings and
abstract) MUST be separately prepared and attached as PDF documents,
except for sequence listings. See section J3 of this notice for more
information on sequence listings. PCT-SAFE permits users to create and
electronically sign using an S-signature the PCT Request Form and the
Declaration of Inventorship for the purposes of filing via EFS-Web with
the United States Receiving Office. PCT-SAFE when operated in the PCT-
EASY mode creates a validated PCT Request which will entitle the
applicant to a reduction of the international filing fee. If applicant
chooses not to use PCT-SAFE to create the Request and fee calculation
sheet, the applicant may use Form PCT/RO/101 (or equivalent) for the
Request and attach it as a PDF document. More information regarding
filing international applications is available on the USTPO Web site
(http://www.uspto.gov/ebc/portal/efs/dct_pct_file_new_tutorial.pdf).
The term ``international application'' as used in this notice
refers to an international application filed under the PCT where papers
have not been submitted to enter the national stage under 35 U.S.C.
371. The term ``national stage'' as used in this notice refers to an
international application where papers have been submitted to enter the
national stage under 35 U.S.C. 371.
J2. Entry in the U.S. national stage under 35 U.S.C. 371: It is
recommended that applicants continue to use the Transmittal Letter to
the United States Designated/Elected Office (DO/EO/US) Concerning a
Submission Under 35 U.S.C. 371 (Form PTO-1390) when electronically
filing documents for entry into the U.S. national stage under 35 U.S.C.
371. The PTO-1390 Form includes useful information that is not
otherwise collected by EFS-Web at this time.
If a timely submission to enter the national stage of an
international application is compliant with the conditions of 35 U.S.C.
371 and other applicable requirements, Form PCT/DO/EO/903 indicating
acceptance of the application as a national stage submission under 35
U.S.C. 371 will be issued in addition to the Filing Receipt. For more
information on fees associated with international applications entering
the national stage under 35 U.S.C. 371, see MPEP Sec. 1893.01(c).
J3. May EFS-Web be used to file international applications
containing a nucleotide or amino acid sequence listing and/or tables
related thereto in the United States Receiving Office?
a. Sequence Listing: Under PCT Rule 5.2(a), the sequence listing
part must always be presented as a separate part of the description.
When filing an international application using EFS-Web, the sequence
listing part of the description should preferably be submitted as a
single ASCII text file with a ``.txt'' extension (e.g.,
``seqlist.txt''). If the sequence listing part is submitted as an ASCII
text file, applicant need not submit any additional copies. The ASCII
text file will serve both as the sequence listing part of the
description under PCT Rule 5.2 and the electronic form under PCT Rule
13ter.1(a). Furthermore, the required statement in paragraph 4(v) of
Annex C that ``the information recorded in the electronic form
furnished under Rule 13ter is identical to the sequence listing as
contained in the international application'' is not required. The
sequence listing in an ASCII text file will not be taken into account
when calculating the application page count, i.e., no excess page fees
will be required for the sequence listing in the text file.
Submission of the sequence listing part in a PDF file is not
recommended because applicant would still be required to supply a copy
of the sequence listing in an ASCII text file in accordance with AI
Annex C, ]40. When a sequence listing is filed in both a PDF file and
an ASCII text file, the PDF copy of the sequence listing will be
considered to form part of the application and the ASCII text file will
be used for search purposes and will be transmitted to the
International Bureau with the record copy. The pages of the PDF file
that contain the sequence listing will be taken into account when
calculating the application page count, i.e., excess page fees may be
required for the PDF file.
b. Tables Related to a Sequence Listing: Tables related to a
sequence listing must be an integral part of the description of the
international application, and must not be included in the sequence
listing part. Such table will be taken into account when calculating
the application page count, and excess page fees may be required. When
applicant submits tables related to a sequence listing in an
international application via EFS-Web, the tables must be in a PDF
file. If applicant submits tables related to a sequence listing in a
text file, such tables will not be accepted as part of the
international application. For more information, see Sequence Listings
and Tables Related Thereto in International Applications Filed in the
United States Receiving Office, 1344 Off. Gaz. Pat. Office 50 (July 7,
2009).
c. File Size and Quantity Limits: One hundred (100) megabytes is
the size limit for sequence listing text files. Sequence listing text
files must not be partitioned into multiple files for filing via EFS-
Web as the EFS-Web electronic filing system is not currently capable of
handling such submissions. For all other file types EFS-Web is
currently not capable of accepting files that are larger than 25
megabytes. Additionally, a single EFS-Web submission may include no
more than 60 electronic files. 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. If applicant chooses to
divide a file into multiple parts using the multi-doc feature, each
part is counted as one file. The need to submit unusually large
sequence listings and/or numerous electronic files may prevent
applicant from making a complete international application filing in a
single EFS-Web
[[Page 55211]]
submission. Applicant may use EFS-Web to file part of the international
application and to obtain the international application number and the
confirmation number, and then file the remainder of the international
application on the same day as one or more follow-on submissions using
EFS-Web, in order to secure the same filing date for all parts of the
international application. However, applicant is not permitted to file
part of the international application electronically via EFS-Web, and
then file the remainder of the international application on paper to
secure a filing date of all parts of the international application.
In the situation where applicant needs to file a sequence listing
that is over one hundred megabytes, applicant may use EFS-Web to file
the international application without the sequence listing to obtain
the international application number and the confirmation number, and
then file the sequence listing on compact discs on the same day by
using Express Mail from the USPS in accordance with 37 CFR 1.10, or
hand delivery, in order to secure the same filing date for all parts of
the international application. However, USPS Express Mail and hand-
carried submissions may not contain PDF files and must fully comply
with the guidelines for filing a sequence listing on electronic media
as set forth in MPEP Sec. 1823.02, except that only one copy of the
sequence listing is required, and applicant need not make any reference
to AI Part 8 or AI Sec. 801. The sequence listing must be a single
document, but the document may be split using software designed to
divide a file, that is too large to fit on a single compact disc, into
multiple concatenated files. If the user breaks up a sequence listing
into multiple concatenated files so that it may be submitted on
multiple compact discs, the compact discs must be labeled to indicate
their order (e.g., ``1 of X'', ``2 of X'').
d. Fee Determination for International Applications Containing a
Sequence Listing: The calculation of the international filing fee for
an international application, including a sequence listing, filed via
EFS-Web is determined based on the type of sequence listing file. A
sequence listing filed in an ASCII text file will not be included in
the page count of the international application. A sequence listing
filed in a PDF file will be included in the page count of the
international application. Therefore, the page count for an EFS-Web
filed application containing both a PDF and text format sequence
listing will be determined by the number of pages of the PDF sequence
listing.
J4. Follow-on Submissions for International Applications: As noted
above, a sequence listing in an ASCII text file, as well as additional
PDF files, may be submitted in one or more follow-on submissions, via
EFS-Web. Such follow-on submissions will form part of the international
application if filed on the same date on which the international
application was filed. Note that follow-on submissions of PDF files
(including, but not limited to, PDF sequence listings) may change the
number of pages in the international application and therefore may
affect the international filing fee.
EFS-Web may also be used to submit a sequence listing in an ASCII
text file after the international filing date in response to a
requirement under 37 CFR 1.821(h) and PCT Rule 13ter. Such sequence
listing will not form part of the international application as set
forth in PCT Rule 13ter.1(e).
J5. Policy of Annex F of the PCT Administrative Instructions: EFS-
Web employs a Web-based approach to document submission which is
different from the Annex F ``wrapped, bundled and signed package''
approach. Thus EFS-Web does not meet Annex F requirements. See Annex F
of the PCT Administrative Instructions located at [http://www.wipo.int/pct/en/texts/].
Dated: October 21, 2009.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. E9-25785 Filed 10-26-09; 8:45 am]
BILLING CODE 3510-16-P