By Christopher P. Singer --
In a rule change that is sure please patent practitioners
living in Hawaii, the U.S. Patent and Trademark Office
(USPTO) announced several amendments to Title 37 of the Code of Federal Regulations (C.F.R.) relating to
EFS-Web correspondence. In particular, the following sections of 37 C.F.R. have been amended: §§
1.4 (signature requirement; form usage/modification), 1.6 (U.S. national stage
correspondence; filings; follow-on communications), 1.8 (certificate of
transmission by EFS-Web, local time of filer controls timeliness of response),
and 1.33 (e-mail acknowledgement of correspondence between the USPTO and
correspondence address). To review the
Federal Register notice regarding these rules changes consult this link.
The most significant change is introduced by new sections
1.8(a)(1)(i)(C) and 1.6(a)(4), which effectively allow a practitioner to use
EFS-Web Certifications like Certificates of Mailing under 37 C.F.R. §
1.8. Thus, correspondence as described
in § 1.8 and the EFS-Web "Legal Framework" can be submitted with the
proper certification statement and will be considered timely filed as long as such correspondence is "transmitted prior to expiration of the set period of time by
being: transmitted via the Office electronic filing system in accordance with §1.6(a)(4)" (37 C.F.R. §
1.8(a)(1)(i)(C)). Accordingly, the filer
needs to include a certificate for each piece of correspondence stating the
date of transmission. NOTE: The
"receipt date" stamp will still reflect the date and time of the
submission at the USPTO. Therefore, for
example, applications having critical bar dates should be submitted by EFS with
respect to the time and date at the USPTO, not the practitioner's particular
local time, or by Express Mail under 37 C.F.R. § 1.10.
For information regarding and clarification of this procedure, the USPTO encourages practitioners to review the "Legal Framework" for EFS-Web at
this link.
The USPTO advises that filers should be generally cautious
regarding e-filings. For example, when
using EFS-Web to file correspondence with the Office, the filer should make
sure to receive (and save) the USPTO-generated E-filing acknowledgement. Should the filer be unsure about the whether
the filing was received by the USPTO, he or she should review the application on
Private PAIR to confirm the filing, and retrieve a copy of the e-filing
acknowledgement. Additionally, if a
practitioner attempts a transmission when the electronic filing system is
inactive (repair, maintenance, etc.), alternative methods of filing should be
used (e.g., Facsimile, Express Mail-Post Office to Addressee, First Class
Mail).
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