Changes to USPTO Electronic Filing Rules

        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).