Chapter    500  Receipt and Handling of Mail and Papers
---SECTION---501 Papers Received by Office of Initial Patent Examination
37 CFR 1.1 Addresses for correspondence with the Patent and Trademark
Office.
(a) Except for Section  1.1(a)(3) (i) and (ii), all correspondence
intended for the Patent and Trademark Office must be addressed to either
"Commissioner of Patents and Trademarks, Washington, D.C. 20231" or to
specific areas within the Office as set out in paragraphs (a) (1), (2)
and (3)(iii) of this section. When appropriate, correspondence should
also be marked for the attention of a particular office or individual.
(1) Patent correspondence. All correspondence concerning patent matters
processed by organizations reporting to the Assistant Commissioner for
Patents should be addressed to "Assistant Commissioner for Patents,
Washington, D.C. 20231."
(2) 	Trademark correspondence. All correspondence concerning trademark
matters, except for trademark-related documents sent to the Assignment
Division for recordation and requests for certified and uncertified
copies of trademark application and registration documents, should be
addressed to "Assistant Commissioner for Trademarks, 2900 Crystal Drive,
Arlington, Virginia 22202-3513." This includes correspondence intended
for the Trademark Trial and Appeal Board.
(3) Office of Solicitor correspondence.
(i) Correspondence relating to pending litigation required by court rule
or order to be served on the Solicitor shall be hand-delivered to the
Office of the Solicitor or shall be mailed to: Office of the Solicitor,
P.O. Box 15667, Arlington, Virginia 22215; or such other address as may
be designated in writing in the litigation. See Section Section
1.302(c) and 2.145(b)(3) for filing a notice of appeal to the U.S. Court
of Appeals for the Federal Circuit.
(ii) Correspondence relating to disciplinary proceedings pending before
an Administrative Law Judge or the Commissioner shall be mailed to:
Office of the Solicitor, P.O. Box 16116, Arlington, Virginia 22215.
(iii) All other correspondence to the Office of the Solicitor shall be
addressed to: Box 8, Commissioner of Patents and Trademarks, Washington,
D.C. 20231.
(iv) Correspondence improperly addressed to a Post Office Box specified
in paragraphs (a)(3) (i) and (ii) of this section will not be filed
elsewhere in the Patent and Trademark Office, and may be returned.
(b) Letters and other communications relating to international
applications during the international stage and prior to the assignment
of a national serial number should be additionally marked "Box PCT."
(c) Requests for reexamination should be additionally marked "Box
Reexam."
(d) Payments of maintenance fees in patents and other communications
relating thereto should be additionally marked "Box M. Fee."
(e) Communications relating to interferences and applications or patents
involved in an interference should be additionally marked "BOX
INTERFERENCE."
(f) All applications for extension of patent term and any communications
relating thereto intended for the Patent and Trademark Office should be
additionally marked "Box Patent Ext."  When appropriate, the
communication should also be marked to the attention of a particular
individual, as where a decision has been rendered.
(g) [Reserved]
(h) In applications under section 1(b) of the Trademark Act, 15 U.S.C.
1051(b), all statements of use filed under section 1(d) of the Act, and
requests for extensions of time therefor, should be additionally marked
"Box ITU."
(i) The filing of all provisional applications and any communications
relating thereto should be additionally marked "Box Provisional Patent
Application."
NOTE. - Sections 1.1 to 1.26 are applicable to trademark cases as well
as to national and international patent cases except for provisions
specifically directed to patent cases. See Section  1.9 for definitions
of "national application" and "international application."
37 CFR 1.4 Nature of correspondence and signature requirements.
(a) Correspondence with the Patent and Trademark Office comprises:
(1) Correspondence relating to services and facilities of the Office,
such as general inquiries, requests for publications supplied by the
Office, orders for printed copies of patents or trademark registrations,
orders for copies of records, transmission of assignments for recording,
and the like, and
(2) Correspondence in and relating to a particular application or other
proceeding in the Office. See particularly the rules relating to the
filing, processing, or other proceedings of national applications in
Subpart B, Section Section  1.31 to 1.378; of international applications
in Subpart C, Section Section  1.401 to 1.499; of reexamination of
patents in Subpart D, Section Section  1.501 to 1.570; of interferences
in Subpart E; Section Section  1.601 to 1.690; of extension of patent
term in Subpart F, Section Section  1.710 to 1.785; and of trademark
applications Section Section  2.11 to 2.189.
(b) Since each application file should be complete in itself, a separate
copy of every paper to be filed in an application should be furnished
for each application to which the paper pertains, even though the
contents of the papers filed in two or more applications may be
identical.
(c) Since different matters may be considered by different branches or
sections of the Patent and Trademark Office, each distinct subject,
inquiry or order should be contained in a separate letter to avoid
confusion and delay in answering letters dealing with different
subjects.
(d)(1) Each piece of correspondence, except as provided in paragraphs
(e) and (f) of this section, filed in a patent or trademark application,
reexamination proceeding, patent or trademark interference proceeding,
patent file or trademark registration file, trademark opposition
proceeding, trademark cancellation proceeding, or trademark concurrent
use proceeding, which requires a person's signature, must either:
(i) Be an original, that is, have an original signature personally
signed in permanent ink by that person; or
(ii) Be a direct or indirect copy, such as a photocopy or facsimile
transmission (Section  1.6(d)), of an original.  In the event that a
copy of the original is filed, the original should be retained as
evidence of authenticity.  If a question of authenticity arises, the
Patent and Trademark Office may require submission of the original.
(2) The presentation to the Office (whether by signing, filing,
submitting, or later advocating) of any paper by a party, whether a
practitioner or non-practitioner, constitutes a certification under
Section  10.18(b) of this chapter.  Violations of Section  10.18(b)(2)
of this chapter by a party, whether a practitioner or non-practitioner,
may result in the imposition of sanctions under Section  10.18(c) of
this chapter. Any practitioner violating Section  10.18(b) may also be
subject to disciplinary action.  See Section Section  10.18(d) and
10.23(c)(15).
(e) Correspondence requiring person's signature and relating to
registration practice before the Patent and Trademark Office in patent
cases, enrollment and disciplinary investigations, or disciplinary
proceedings must be submitted with an original signature personally
signed in permanent ink by that person.
(f) When a document that is required by statute to be certified must be
filed, a copy, including a photocopy or facsimile transmission, of the
certification is not acceptable.
(g) An applicant who has not made of record a registered attorney or
agent may be required to state whether assistance was received in the
preparation or prosecution of the patent application, for which any
compensation or consideration was given or charged, and if so, to
disclose the name or names of the person or persons providing such
assistance. Assistance includes the preparation for the applicant of the
specification and amendments or other papers to be filed in the Patent
and Trademark Office, as well as other assistance in such matters, but
does not include merely making drawings by draftsmen or stenographic
services in typing papers.
In addition to the Office of the Solicitor, as specified in 37 CFR
1.1(a)(3), the Office will now have three separate addresses. The
addresses are as follows.
I. FOR PATENT APPLICATIONS AND PATENT- RELATED PAPERS
Correspondence in patent-related matters under the direction of the
Assistant Commissioner for Patents should be addressed to:
Assistant Commissioner for Patents
Washington, D.C.  20231
This change will affect correspondence such as: patent applications,
replies to notices of informality, requests for extension of time,
notices of appeal to the Board of Patent Appeals and Interferences (the
Board), briefs in support of an appeal to the Board, requests for oral
hearing before the Board, extensions of term of patent, requests for
publication of Statutory Invention Registration (SIR), requests for
reexamination, statutory disclaimers, certificates of correction,
petitions to the Assistant Commissioner for Patents, submission of
information disclosure statements, petitions to institute a public use
proceeding, petitions to revive abandoned patent applications, and other
correspondence related to patent applications and patents which is
processed by organizations reporting to the Assistant Commissioner for
Patents.
II. FOR TRADEMARK APPLICATIONS AND TRADEMARK-RELATED PAPERS
Correspondence in trademark-related matters under the direction of the
Assistant Commissioner for Trademarks should be addressed to:
Assistant Commissioner for Trademarks
2900 Crystal Drive
Arlington, VA 22202-3513
This change will affect all trademark applications and other
trademark-related mail, except for trademark documents sent to the
Assignment Division for recordation and requests for certified and
uncertified copies of trademark documents. See Change of Address for
Trademark Applications and Trademark Related Papers, 1163 O.G. 80 (June
28, 1994).
III. FOR ALL OTHER CORRESPONDENCE
Unless otherwise specified, correspondence that does not fall into one
of the categories designated above should be addressed to:
Commissioner of Patents and Trademarks
Washington, D.C.  20231
This change will affect such correspondence as: communications with the
Board of Patent Appeals and Interferences after jurisdiction of the
application has been transferred to the Board, patent services including
patent copy sales, assignments, library services, requests for lists of
patents and SIRs in a subclass, requests for the status of maintenance
fee payments, as well as patent practitioner enrollment matters
including admission to examination, registration to practice,
certificates of good standing, and financial service matters including
establishing a deposit account.
All correspondence with the PTO, except for communications relating to
pending litigation and certain disciplinary proceedings as specified in
37 CFR 1.1(a)(3), may continue to be filed directly at the Customer
Service Window located in Room 1B03 of Crystal Plaza 2, 2011 South Clark
Place, Arlington, VA.
Trademark-related papers may also be filed at the "walk-up" window
located on the third floor of the South Tower Building, 2900 Crystal
Drive, Arlington, VA. Hand delivery of trademark papers and fees
directly to the South Tower Building will expedite processing.
Those who correspond with the PTO are requested not to mix
correspondence which will have to be directed to different areas (e.g.,
Patents and Trademarks) of the Office in a single envelope. At the
present time, use of the wrong mailing address will not affect the
filing date assigned to any application or correspondence received in
the PTO, except as specified in 37 CFR 1.1(a)(3)(iv).
Except for certain mail addressed incorrectly to the Office of the
Solicitor, there will be no penalty for addressing a document to the
wrong area within the Office, as long as one of the approved addresses
is used. Use of the specific addresses listed within 37 CFR 1.1 is
strongly encouraged because it will facilitate the process both for the
Office and the filer. Accordingly, a new application incorrectly
addressed to the Commissioner will be treated the same as if the
application was addressed to the specific Assistant Commissioner.
All mailed communications are received by the Incoming-Mail Section of
the Office of Initial Patent Examination (OIPE), which opens and
distributes all official mail.
Special boxes have been established to allow the forwarding of
particular types of mail to appropriate areas of the Office as quickly
as possible. A list of these boxes is published weekly in the Official
Gazette. Only the specified type of document for a particular box should
be placed in an envelope addressed to that box.
If any documents other than the specified type identified for each
department are addressed to that department, they will be significantly
delayed in reaching the appropriate area for which they were intended.
---SECTION---502 Depositing Correspondence
37 CFR 1.5 Identification of application, patent or registration.
(a) No correspondence relating to an application should be filed prior
to receipt of the application number from the Patent and Trademark
Office. When a letter directed to the Patent and Trademark Office
concerns a previously filed application for a patent, it must identify
on the top page in a conspicuous location, the application number
(consisting of the series code and the serial number; e.g., 07/123,456),
or the serial number and filing date assigned to that application by the
Patent and Trademark Office, or the international application number of
the international application. Any correspondence not containing such
identification will be returned to the sender where a return address is
available.  The returned correspondence will be accompanied with a cover
letter which will indicate to the sender that if the returned
correspondence is resubmitted to the Patent and Trademark Office within
two weeks of the mailing date on the cover letter, the original date of
receipt of the correspondence will be considered by the Patent and
Trademark Office as the date of receipt of the correspondence.
Applicants may use either the Certificate of Mailing or Transmission
procedure under Section  1.8 or the Express Mail procedure under Section
1.10 for resubmissions of returned correspond ence if they desire to
have the benefit of the date of deposit in the United States Postal
Service. If the returned correspondence is not resubmitted within the
two-week period, the date of receipt of the resubmission will be
considered to be the date of receipt of the correspondence. The two-week
period to resubmit the returned correspondence will not be extended. In
addition to the application number, all letters directed to the Patent
and Trademark Office concerning applications for patents should also
state the name of the applicant, the title of the invention, the date of
filing the same, and, if known, the group art unit or other unit within
the Patent and Trademark Office responsible for considering the letter
and the name of the examiner or other person to which it has been
assigned.
(b) When the letter concerns a patent other than for purposes of paying
a maintenance fee, it should state the number and date of issue of the
patent, the name of the patentee, and the title of the invention. For
letters concerning payment of a maintenance fee in a patent, see the
provisions of Section  1.366(c).
(c) A letter relating to a trademark application should identify it as
such and by the name of the applicant and the serial number and filing
date of the application. A letter relating to a registered trademark
should identify it by the name of the registrant and by the number and
date of the certificate.
(d) A letter relating to a reexamination proceeding should identify it
as such by the number of the patent undergoing reexamination, the
reexamination request control number assigned to such proceeding, and,
if known, the group art unit and name of the examiner to which it has
been assigned.
(e) When a paper concerns an interference, it should state the names of
the parties and the number of the interference. The name of the
examiner-in-chief assigned to the interference (Section  1.610) and the
name of the party filing the paper should appear conspicuously on the
first page of the paper.
(f) When a paper concerns a provisional application, it should identify
the application as such and include the application number.
37 CFR 1.6 Receipt of correspondence.
(a) Date of receipt and Express Mail date of deposit. Correspondence
received in the Patent and Trademark Office is stamped with the date of
receipt except as follows  :
(1) The Patent and Trademark Office is not open for the filing of
correspondence on any day that is a Saturday, Sunday, or Federal holiday
within the District of Columbia. Except for correspondence transmitted
by facsimile as provided for in paragraph (a)(3) of this section, no
correspondence is received in the Patent and Trademark Office on
Saturdays, Sundays, or Federal holidays within the District of Columbia.
(2) Correspondence filed in accordance with Section  1.10 will be
stamped with the date of deposit as "Express Mail" with the United
States Postal Service.
(3) Correspondence transmitted by facsimile to the Patent and Trademark
Office will be stamped with the date on which the complete transmission
is received in the Patent and Trademark Office unless that date is a
Saturday, Sunday, or Federal holiday within the District of Columbia, in
which case the date stamped will be the next succeeding day which is not
a Saturday, Sunday, or Federal holiday within the District of Columbia.
(b) 	Patent and Trademark Office Post Office pouch. Mail placed in the
Patent and Trademark Office pouch up to midnight on any day, except
Saturdays, Sundays, and Federal holidays within the District of
Columbia, by the post office at Washington, D.C., serving the Patent and
Trademark Office, is considered as having been received in the Patent
and Trademark Office on the day it was so placed in the pouch by the
U.S. Postal Service.
(c) Correspondence delivered by hand. In addition to being mailed,
correspondence may be delivered by hand during hours the Office is open
to receive correspondence.
(d) Facsimile transmission. Except in the cases enumerated below,
correspondence, including authorizations to charge a deposit account,
may be transmitted by facsimile. The receipt date accorded to the
correspondence will be the date on which the complete transmission is
received in the Patent and Trademark Office, unless that date is a
Saturday, Sunday, or Federal holiday within the District of Columbia.
See Section  1.6(a)(3). To facilitate proper processing, each
transmission session should be limited to correspondence to be filed in
a single application or other proceeding before the Patent and Trademark
Office. The application number of a patent or trademark application, the
control number of a reexamination proceeding, the interference number of
an interference proceeding, the patent number of a patent, or the
registration number of a trademark should be entered as a part of the
sender's identification on a facsimile cover sheet. Facsimile
transmissions are not permitted and, if submitted, will not be accorded
a date of receipt in the following situations:
(1) Correspondence as specified in Section  1.4(e), requiring an
original signature;
(2) Certified documents as specified in Section  1.4(f);
(3) Correspondence which cannot receive the benefit of the certificate
of mailing or transmission as specified in Section  1.8(a)(2)(i)(A)
through (D) and (F), Section  1.8(a)(2)(ii)(A), and Section
1.8(a)(2)(iii)(A), except that a continued prosecution application under
Section  1.53(d) may be transmitted to the Office by facsimile;
(4) Drawings submitted under Section Section  1.81, 1.83 through 1.85,
1.152, 1.165, 1.174, 1.437, 2.51, 2.52, or 2.72;
(5) A request for reexamination under Section  1.510;
(6) Correspondence to be filed in a patent application subject to a
secrecy order under Section Section  5.1 through 5.5 of this chapter and
directly related to the secrecy order content of the application;
(7) Requests for cancellation or amendment of a registration under
section 7(e) of the Trademark Act, 15 U.S.C. 1057(e); and certificates
of registration surrendered for cancellation or amendment under section
7(e) of the Trademark Act, 15 U.S.C. 1057(e);
(8) Correspondence to be filed with the Trademark Trial and Appeal
Board, except the notice of ex parte appeal;
(9) Correspondence to be filed in an interference proceeding which
consists of a preliminary statement under Section  1.621; a transcript
of a deposition under Section  1.676 or of interrogatories,
cross-interrogatories, or recorded answers under Section  1.684(c); or
an evidentiary record and exhibits under Section  1.653.
(e) Interruptions in U.S. Postal Service.  If interruptions or
emergencies in the United States Postal Service which have been so
designated by the Commissioner occur, the Patent and Trademark Office
will consider as filed on a particular date in the Office any
correspondence which is:
(1) Promptly filed after the ending of the designated interruption or
emergency; and
(2) Accompanied by a statement indicating that such correspondence would
have been filed on that particular date if it were not for the
designated interruption or emergency in the United States Postal
Service.
(f) Facsimile transmission of a patent application under Section
1.53(d).  In the event that the Office has no evidence of receipt of an
application under Section  1.53(d) (a continued prosecution application)
transmitted to the Office by facsimile transmission, the party who
transmitted the application under Section  1.53(d) may petition the
Commissioner to accord the application under Section  1.53(d) a filing
date as of the date the application under Section  1.53(d) is shown to
have been transmitted to and received in the Office,
(1) Provided that the party who transmitted such application under
Section  1.53(d):
(i) Informs the Office of the previous transmission of the application
under Section  1.53(d) promptly after becoming aware that the Office has
no evidence of receipt of the application under Section  1.53(d);
(ii) Supplies an additional copy of the previously transmitted
application under Section  1.53(d); and
(iii) Includes a statement which attests on a personal knowledge basis
or to the satisfaction of the Commissioner to the previous transmission
of the application under Section  1.53(d) and is accompanied by a copy
of the sending unit's report confirming transmission of the application
under Section  1.53(d) or evidence that came into being after the
complete transmission and within one business day of the complete
transmission of the application under Section  1.53(d).
(2) The Office may require additional evidence to determine if the
application under Section  1.53(d) was transmitted to and received in
the Office on the date in question.
All applications (provisional and nonprovisional) may be sent to the
Patent and Trademark Office by mail (see MPEP Section  501), or they may
be deposited in the Office of Initial Patent Examination (OIPE). A
continued prosecution application (CPA) filed under 37 CFR 1.53(d),
amendments, and other papers may be sent to the Patent and Trademark
Office by mail (see MPEP Section  501), by facsimile (see MPEP Section
502.01) or deposited in OIPE.  Any correspondence sent to the Patent and
Trademark Office should include the sender's return address and ZIP code
designation.
All correspondence with the Office, except for communications relating
to pending litigation and certain disciplinary proceedings as specified
in 37 CFR 1.1(a)(3), may be filed directly at the Customer Service
Window at the following address, or delivered by private courier to:
Assistant Commissioner for Patents,
or Commissioner of Patents and Trademarks,
or Assistant Commissioner for Trademarks
USPTO Office of Initial Patent Examination
Crystal Plaza Building 2, Room 1B03
2011 South Clark Place
Arlington, VA 22202
Trademark-related papers may also be filed or delivered by private
courier to the "walk-up" window located on the third floor of the South
Tower Building, 2900 Crystal Drive, Arlington, VA. Hand delivery of
trademark papers and fees directly to the South Tower Building is
recommended, to expedite processing.
All correspondence related to a national patent application already
filed with the Patent and Trademark Office must include the
identification of the application number or the serial number and the
filing date assigned to the application by the Office. Any
correspondence not containing the proper identification set forth in 37
CFR 1.5(a) must be sent by the group with a signed note to the OIPE for
return to the sender.  Each paper should be inspected to assure that the
papers being returned contain either an "Office Date" stamp or a group
date stamp. A minor error in the identification of the application can
be corrected by the group provided the correct identification can be
quickly discovered. Examples of minor errors are transposed numbers,
typographical errors, and listing the parent application number. The
failure to give any application number is not a minor error.  The Office
often experiences difficulty in matching incoming papers with the
application file to which they pertain because insufficient or erroneous
information is given. This applies especially to amendments, powers of
attorney, changes of address, status letters, petitions for extension of
time, and other petitions.
Frequently, there are errors in the application number or in the group
art unit number, or the incoming paper uses the old group art unit
number where an application has been transferred and acted on by a
different examining group.
Where the group art unit number is entirely omitted, the routine
operations of the OIPE must be interrupted solely for the purpose of
determining the location of the application so that the communication
can be properly routed. Under these circumstances, the efficiency of the
OIPE is impaired and the incoming paper is delayed in reaching its
proper destination. Where such papers are not essential to compliance
with a statutory period or time limit for reply, they may be returned
for completion to identify the location of the files.
It would be of great assistance to the Office if all incoming papers
pertaining to a filed application carried the following items:
(A) Application number (checked for accuracy, including series code and
serial no.).
(B) Art Unit number (copied from most recent Office communication).
(C) Filing date.
(D) Name of the examiner who prepared the most recent Office action.
(E) Title of invention.
Applicants may be reminded of this provision by including Form Paragraph
5.01.
5.01 Proper Heading for Incoming Papers
It would be of great assistance to the Office if all incoming papers
pertaining to a filed application carried the following items:
1. Application number (checked for accuracy, including series code and
serial no.).
2. Art Unit number (copied from most recent Office communication).
3. Filing date.
4. Name of the examiner who prepared the most recent Office action.
5. Title of invention.
During pre-examination processing, drawings are temporarily separated
from the rest of the application papers. To facilitate the matching of
drawings with the application, it would be helpful if the applicant's
name, docket number, and the title of the invention were put on the back
of the drawings. This may be done by writing lightly on the drawings or
by using gummed labels.
When the Office receives formal or substitute drawings for patent
applications, a cover letter identifying the drawings by application
number should accompany them. The application number should be placed on
each sheet of drawings in accordance with 37 CFR 1.84(c).  It is
possible to associate the drawings with the application files when this
information is missing.
Identifying indicia should include the application number or the title
of the invention, inventor's name, docket number (if any), and the name
and telephone number of a person to call. This information should be
placed on the back of each sheet of drawings with a minimum distance of
1.5 cm (5/8-inch) down from the top of the sheet.
It is requested that the submission of additional or supplemental papers
on a newly filed application be deferred until an application number has
been received. It also would be appreciated if the filing of additional
papers relating to an allowed application were deferred until a Notice
of Allowance (PTOL-85) is received.
Patent and Trademark documents which have no particular time or sequence
requirements should be filed with materials submitted in reply to the
statutory or regulatory requirements. Examples are certified copies of
foreign documents to support priority in patent applications, changes of
power of attorney, or changes in mailing address following first action.
All letters relating to a reexamination proceeding should identify the
proceeding involved by patent number and reexamination request control
number.
ISSUE BATCH NUMBER
All papers filed by applicant in the Office after receiving the Notice
of Allowance and before the time the Issue Fee Receipt is received
should include the Issue Batch Number. The Issue Batch Number is printed
on the Notice of Allowance form under the heading "Batch No.". The Issue
Batch Number consists of a capital letter followed by two digits, for
example, "A03", "D18", "F42", "J79."  Use of the Issue Batch Numbers is
important since the allowed applications are filed by these numbers.
Any paper filed after receiving the Issue Fee Receipt should include the
indicated patent number rather than the Issue Batch Number. At this time
in the processing, the Issue Batch Number is no longer useful since the
application has been removed from the batch at the time the patent
number was assigned.
If the above suggestions are adopted, the processing of both new and
allowed applications could proceed more efficiently and promptly through
the Patent and Trademark Office.
HAND-DELIVERY OF PAPERS
Any paper which relates to a pending application may be personally
delivered to an examining group. However, the examining group will
accept the paper only if: (1) the paper is accompanied by some form of
receipt which can be handed back to the person delivering the paper; and
(2) the examining group being asked to receive the paper is responsible
for acting on the paper. Only CPAs filed under 37 CFR 1.53(d) may be
delivered in person to the examining groups.  All other patent
applications may be delivered in person addressed to the Assistant
Commissioner for Patents, USPTO Office of Initial Patent Examination,
Crystal Plaza Building 2, Room 1B03, 2011 South Clark Place, Arlington,
VA 22202, but not to the examining groups.
The receipt accompanying a handdelivered paper may take the form of a
card identifying the paper. The identifying data on the card should be
so complete as to leave no uncertainty as to the paper filed. For
example, the card should contain the applicant's name(s), application
number, the filing date, and a description of the paper being filed. If
more than one paper is being filed for the same application, the card
should contain a description of each paper or item.
Under this procedure, the paper and receipt will be date stamped with
the group date stamp. Group personnel receiving a paper will check it
against the receipt to make sure that the paper is accurately described
on the receipt and that the receipt does not list papers which are not
being filed. The receipt will be handed back to the person
handdelivering the paper. The paper will be correlated with the
application and made an official paper in the file, thereby avoiding the
necessity of processing and forwarding the paper to the examining group
via the Mail Center.
The examining group will accept and date stamp a paper, other than an
application which is not a CPA, even though the paper is accompanied by
a check or the paper contains an authorization to charge a deposit
account.  However, in such instances, the paper will be handcarried by
group personnel to the Office of Finance for processing and then made an
official paper in the file.
All such papers, together with the cash, checks, or money orders, shall
be handcarried to the Customer Service Window, Crystal Plaza Building 2,
Room 2-1B01.
 "EXPRESS MAIL" SERVICE
There are two types of "Express Mail" delivery offered by the U.S.
Postal Service - "Post Office to Addressee" and "Post Office to Post
Office." The only type of service which can be used for "Express Mail"
directed to the Patent and Trademark Office is the "Post Office to
Addressee" service of the U.S. Postal Service. 37 CFR 1.10. This service
provides for the use of a mailing label which clearly indicates the date
on which a particular paper or fee was deposited.
The addresses that should be used for "Express Mail" sent to the Patent
and Trademark Office are set forth in 37 CFR 1.1 (see MPEP Section
501).
"Post Office to Post Office" Express Mail does not provide for delivery
but instead is retained at the postal facility of the addressee for
pickup. The Postal Service does not notify the addressee that this type
of Express Mail has been received and is awaiting pickup. If not picked
up, this mail is held for 15 days and then returned to the sender.
Therefore, since the Patent and Trademark Office does not have resources
for picking up any mail, including Express Mail, the "Post Office to
Post Office" Express Mail will not reach the Patent and Trademark
Office.
See MPEP Section  513 for the use of the Express Mail Mailing procedure
of 37 CFR 1.10.
---SECTION---502.01 Correspondence Transmitted by Facsimile
37 CFR 1.6 Receipt of correspondence.
                  +++
(d) Facsimile transmission. Except in the cases enumerated below,
correspondence, including authorizations to charge a deposit account,
may be transmitted by facsimile. The receipt date accorded to the
correspondence will be the date on which the complete transmission is
received in the Patent and Trademark Office, unless that date is a
Saturday, Sunday, or Federal holiday within the District of Columbia.
See Section  1.6(a)(3). To facilitate proper processing, each
transmission session should be limited to correspondence to be filed in
a single application or other proceeding before the Patent and Trademark
Office. The application number of a patent or trademark application, the
control number of a reexamination proceeding, the interference number of
an interference proceeding, the patent number of a patent, or the
registration number of a trademark should be entered as a part of the
sender's identification on a facsimile cover sheet. Facsimile
transmissions are not permitted and, if submitted, will not be accorded
a date of receipt in the following situations:
(1) Correspondence as specified in Section  1.4(e), requiring an
original signature;
(2) Certified documents as specified in Section  1.4(f);
(3) Correspondence which cannot receive the benefit of the certificate
of mailing or transmission as specified in Section  1.8(a)(2)(i)(A)
through (D) and (F), Section  1.8(a)(2)(ii)(A), and Section
1.8(a)(2)(iii)(A), except that a continued prosecution application under
Section  1.53(d) may be transmitted to the Office by facsimile;
(4) Drawings submitted under Section Section  1.81, 1.83 through 1.85,
1.152, 1.165, 1.174, 1.437, 2.51, 2.52, or 2.72;
(5) A request for reexamination under Section  1.510;
(6) Correspondence to be filed in a patent application subject to a
secrecy order under Section Section  5.1 through 5.5 of this chapter and
directly related to the secrecy order content of the application;
(7) Requests for cancellation or amendment of a registration under
section 7(e) of the Trademark Act, 15 U.S.C. 1057(e); and certificates
of registration surrendered for cancellation or amendment under section
7(e) of the Trademark Act, 15 U.S.C. 1057(e);
(8) Correspondence to be filed with the Trademark Trial and Appeal
Board, except the notice of ex parte appeal;
(9) Correspondence to be filed in an interference proceeding which
consists of a preliminary statement under Section  1.621; a transcript
of a deposition under Section  1.676 or of interrogatories,
cross-interrogatories, or recorded answers under Section  1.684(c); or
an evidentiary record and exhibits under Section  1.653.
                  +++
The date of receipt accorded to any correspondence permitted to be sent
by facsimile transmission, including a continued prosecution application
(CPA) filed under 37 CFR 1.53(d), is the date the complete transmission
is received by an Office facsimile unit, unless the transmission is
completed on a Saturday, Sunday, or Federal holiday within the District
of Columbia. Correspondence for which transmission was completed on a
Saturday, Sunday, or Federal holiday within the District of Columbia,
will be accorded a receipt date of the next succeeding day which is not
a Saturday, Sunday, or Federal holiday within the District of Columbia.
For example, a facsimile transmission to the Office from California
starting on a Friday at 8:45 p.m. Pacific time and taking 20 minutes,
would be completed at 9:05 p.m. Pacific time. The complete transmission
would be received in the Office around 12:05 a.m. Eastern time on
Saturday. The receipt date accorded to the correspondence is the date of
the following business day, which in this case, would be Monday
(assuming that Monday was not a Federal holiday within the District of
Columbia). Note however, that if the Certificate of Transmission is
available (for documents not proscribed by 37 CFR 1.8(a)(2)), then the
above facsimile may be considered timely filed on Friday if it contains
a Certificate of Transmission and is in compliance with 37 CFR
1.8(a)(1)(i)(B) and (ii).
37 CFR 1.6(d) specifies the types of correspondence which may be
transmitted by facsimile. These would include CPAs filed under 37 CFR
1.53(d), amendments, declarations, petitions, issue fee transmittals and
authorizations to charge deposit accounts. The situations where
transmissions by facsimile are prohibited are identified in 37 CFR
1.6(d)(1)-(9). Prohibitions cover situations where originals are
required as specified in 37 CFR 1.4(e) and (f), and situations where
accepting a facsimile transmission would be unduly burdensome on the
Office. As a courtesy, the Office will attempt to notify senders
whenever correspondence is sent to the Office by facsimile transmission
that falls within one of these prohibitions. Senders are cautioned
against submitting correspondence by facsimile transmission which is not
permitted under 37 CFR 1.6(d) since such correspondence will not be
accorded a receipt date.
An applicant filing a CPA by facsimile transmission must include an
authorization to charge the basic filing fee to a deposit account, or
the application will be treated under 37 CFR 1.53(f) as having been
filed without the basic filing fee (as fees cannot otherwise be
transmitted by facsimile).
37 CFR 1.6 Receipt of correspondence.
                  +++
(f) Facsimile transmission of a patent application under Section
1.53(d).  In the event that the Office has no evidence of receipt of an
application under Section  1.53(d) (a continued prosecution application)
transmitted to the Office by facsimile transmission, the party who
transmitted the application under Section  1.53(d) may petition the
Commissioner to accord the application under Section  1.53(d) a filing
date as of the date the application under Section  1.53(d) is shown to
have been transmitted to and received in the Office,
(1) Provided that the party who transmitted such application under
Section  1.53(d):
(i) Informs the Office of the previous transmission of the application
under Section  1.53(d) promptly after becoming aware that the Office has
no evidence of receipt of the application under Section  1.53(d);
(ii) Supplies an additional copy of the previously transmitted
application under Section  1.53(d); and
(iii) Includes a statement which attests on a personal knowledge basis
or to the satisfaction of the Commissioner to the previous transmission
of the application under Section  1.53(d) and is accompanied by a copy
of the sending unit's report confirming transmission of the application
under Section  1.53(d) or evidence that came into being after the
complete transmission and within one business day of the complete
transmission of the application under Section  1.53(d).
(2) The Office may require additional evidence to determine if the
application under Section  1.53(d) was transmitted to and received in
the Office on the date in question.
37 CFR 1.6(f) provides for the situation in which the Office has no
evidence of receipt of a CPA transmitted to the Office by facsimile
transmission. 37 CFR 1.6(f) requires a petition be filed requesting that
the CPA be accorded a filing date as of the date the CPA is shown to
have been transmitted to and received in the Office.  The showing must
include, inter alia, a copy of the sending unit's report confirming
transmission of the application or evidence that came into being after
the complete transmission of the application and within one business day
of the complete transmission of the application.
The following list itemizes types of correspondence which may not be
filed by facsimile transmission, and, if submitted by facsimile, will
not be accorded a date of receipt:
CORRESPONDENCE RELATIVE TO PATENTS AND PATENT APPLICATIONS WHERE FILING
BY FACSIMILE TRANSMISSION IS NOT PERMITTED
(A) A document that is required by statute to be certified;
(B) A national patent application specification and drawing (provisional
or nonprovisional) or other correspondence for the purpose of obtaining
an application filing date, other than a continued prosecution
application filed under 37 CFR 1.53(d);
(C) Drawings submitted under 37 CFR 1.81, 1.83-1.85, 1.152, 1.165,
1.174, or 1.437;
(D) Correspondence in an interference which an Administrative Patent
Judge orders to be filed by hand or "Express Mail";
(E) Agreements between parties to an interference under 35 U.S.C.
135(c);
(F) Correspondence to be filed in an interference proceeding which
consists of a preliminary statement under 37 CFR 1.621; a transcript of
a deposition under 37 CFR 1.676; or an evidentiary record and exhibits
under 37 CFR 1.653;
(G) Correspondence to be filed in a patent application subject to a
secrecy order under 37 CFR 5.1-5.5 of this chapter and directly related
to the secrecy order content of the application;
(H) An international application for patent;
(I) A copy of the international application and the basic national fee
necessary to enter the national stage, as specified in 37 CFR 1.494(b)
or 37 CFR 1.495(b);
(J) A request for reexamination under 37 CFR 1.510.
Under 37 CFR 1.6(d)(4), drawings submitted under 37 CFR 1.81, 1.83-1.85,
1.152, 1.165, 1.174, or 1.437 may not be filed by facsimile transmission
in patent applications. However, applicants may submit by facsimile
transmission proposed drawing corrections for approval by the Office.
See MPEP Section  1834.01 for a discussion concerning facsimile
transmissions in PCT applications.
---SECTION---502.02 Correspondence Signature Requirements
37 CFR 1.4 Nature of correspondence and signature requirements.
                  +++
(d)(1) Each piece of correspondence, except as provided in paragraphs
(e) and (f) of this section, filed in a patent or trademark application,
reexamination proceeding, patent or trademark interference proceeding,
patent file or trademark registration file, trademark opposition
proceeding, trademark cancellation proceeding, or trademark concurrent
use proceeding, which requires a person's signature, must either:
(i) Be an original, that is, have an original signature personally
signed in permanent ink by that person; or
(ii) Be a direct or indirect copy, such as a photocopy or facsimile
transmission (Section  1.6(d)), of an original.  In the event that a
copy of the original is filed, the original should be retained as
evidence of authenticity.  If a question of authenticity arises, the
Patent and Trademark Office may require submission of the original.
(2) The presentation to the Office (whether by signing, filing,
submitting, or later advocating) of any paper by a party, whether a
practitioner or non-practitioner, constitutes a certification under
Section  10.18(b) of this chapter.  Violations of Section  10.18(b)(2)
of this chapter by a party, whether a practitioner or non-practitioner,
may result in the imposition of sanctions under Section  10.18(c) of
this chapter. Any practitioner violating Section  10.18(b) may also be
subject to disciplinary action.  See Section Section  10.18(d) and
10.23(c)(15).
(e) Correspondence requiring person's signature and relating to
registration practice before the Patent and Trademark Office in patent
cases, enrollment and disciplinary investigations, or disciplinary
proceedings must be submitted with an original signature personally
signed in permanent ink by that person.
(f) When a document that is required by statute to be certified must be
filed, a copy, including a photocopy or facsimile transmission, of the
certification is not acceptable.
                  +++
Correspondence filed in the Office, which requires a person's signature,
may be an original, or a copy thereof. The word original, as used
herein, is defined as correspondence which is personally signed in
permanent ink by the person whose signature appears thereon. Where
copies of correspondence are acceptable, photocopies or facsimile
transmissions may be filed. For example, a photocopy or facsimile
transmission of an original of an amendment, declaration (e.g., under 37
CFR 1.63 or 1.67), petition, issue fee transmittal form, authorization
to charge a deposit account, etc., may be submitted in a patent
application. Where copies are permitted, second and further generation
copies (i.e., copy of a copy) are acceptable. For example, a client may
fax a paper to an attorney and the attorney may then fax the paper to
the Office, provided the paper is eligible to be faxed (see MPEP Section
502.01). The original, if not submitted to the Office, should be
retained as evidence of proper execution in the event that questions
arise as to the authenticity of the signature reproduced on the
photocopy or facsimile-transmitted correspondence. If a question of
authenticity arises, the Office may require submission of the original.
When a document that is required by statute to be certified must be
filed (such as a certified copy of a foreign patent application pursuant
to 35 U.S.C. 119 or a certified copy of an international application
pursuant to 35 U.S.C. 365) a copy of the certification, including a
photocopy or facsimile transmission, will not be acceptable. The
requirement for an original certification does not apply to
certifications such as required under 37 CFR 1.8 since these
certifications are not required by statute.
---SECTION---503 Application Number and Filing Receipt
37 CFR 1.54 Parts of application to be filed together; filing receipt.
(a) It is desirable that all parts of the complete application be
deposited in the Office together; otherwise a letter must accompany each
part, accurately and clearly connecting it with the other parts of the
application. See Section  1.53 (f) and (g) with regard to completion of
an application.
(b) Applicant will be informed of the application number and filing date
by a filing receipt, unless the application is an application filed
under Section  1.53(d).
Application numbers consisting of a series code and a serial number are
assigned by the Office of Initial Patent Examination (OIPE) immediately
after mail has been opened.
The following series codes are assigned to the applications identified
below:
(A) 01/ - 09/ -  for nonprovisional applications (utility, plant, and
reissue);
(B) 29/ - for design applications;
(C) 60/ - for provisional applications; and
(D) 90/  - for reexamination proceedings.
If a selfaddressed postcard is submitted with a patent application, that
postcard will be provided with both the receipt date and application
number prior to returning it to the addressee. The application number
identified on such a postcard receipt is merely the preliminary
assignment of an application number to the application, and should not
be relied upon (e.g., with respect to foreign filings) as necessarily
representing the application number assigned to such application. See 37
CFR 1.53(b). The filing receipt represents the official assignment by
the PTO of a specific application number to a particular application.
See 37 CFR 1.54(b). The application number officially assigned to an
application on the filing receipt may differ from the application number
identified on a postcard receipt submitted with such application, and,
as between inconsistent filing receipts and postcard receipts, the
application number on the filing receipt is controlling.
A continued prosecution application filed under 37 CFR 1.53(d) will be
assigned the application number of the prior application for
identification purposes.
The identifying data on the postcard should include:
(A) applicant's name(s) (preferred) or an alphanumeric identifier;
(B) title of invention;
(C) number of pages of specification, claims (for nonprovisional
applications), and sheets of drawing;
(D) whether oath or declaration is included;
(E) provisional application cover sheet; and
(F) amount and manner of paying the fee.
A return postcard should be attached to each patent application for
which a receipt is desired.
It is important that the return postcard itemize all of the components
of the application. If the postcard does not itemize each of the
components of the application, it will not serve as evidence that any
component which was not itemized was received by the Office.
It should be recognized that the identification of an application by
application number does not necessarily signify that the Patent and
Trademark Office has accepted the application as complete (37 CFR
1.53(a)).
A nonprovisional application is entitled to a filing date as of the date
of receipt of the specification, including claims, and any required
drawing. The filing receipt will be mailed at the time a determination
is made that the application meets the minimum requirements to receive a
filing date. The oath or declaration and filing fee may be filed later
than the remaining application papers, but if so, they must be
accompanied by the required surcharge. If the oath or declaration,
and/or filing fee, and appropriate surcharge are not timely filed, the
application will be abandoned.
A provisional application is entitled to a filing date as of the date of
receipt of the specification and any required drawing(s). See 37 CFR
1.53(c).  A cover sheet or letter identifying the application as a
provisional application is required to prevent the provisional
application from being treated as a nonprovisional application. 37 CFR
1.53(c)(1).
Each application which meets the minimum requirements to receive a
filing date is given a filing date. It is important, when referring to
application files, to identify them by their filing dates as well as by
application numbers.
The OIPE mails a filing receipt to the attorney or agent, if any,
otherwise to the applicant, for each application filed which meets the
minimum requirements to receive a filing date, giving the application
number, filing date, and group to which assigned.
Attorney docket numbers must be limited to a maximum of 12 characters to
prevent truncation. The Patent Application Location and Monitoring
(PALM) system data base allows a maximum of 12 characters for the
attorney docket numbers. Spaces, slashes, and hyphens will no longer be
included in the entered docket number on the official filing receipt. In
an application where CASE or NAVY-CASE appears before the first
character in the docket number, only the characters after CASE or
NAVY-CASE will be entered on the official filing receipt.
The application papers are placed in a file wrapper and certain data
placed thereon by the OIPE.
Applications which are entitled to a filing date and are filed, whether
by regular mail or "Express Mail" under 37 CFR 1.10, by hand-delivery or
otherwise, will not be returned to applicant even if requested. See 37
CFR 1.59. Accordingly, applicants must be careful not to file
applications which are not intended to be filed, e.g., duplicates of
applications already filed. Since 37 CFR 1.26(a) precludes refund of an
application filing fee when applicant desires to withdraw an
application, any request by applicant not to process or charge an
application filing fee because the application was not intended to be
filed must be in the form of a petition under 37 CFR 1.183 requesting
suspension of the rules to the extent that the filing fee not be
processed or charged. Any such petition must include the fee set forth
in 37 CFR 1.17(h) and must be accompanied by an express abandonment of
the application in accordance with 37 CFR 1.138. In order for such a
petition to be granted, it must ordinarily be filed and acted upon prior
to the date on which the application filing fee is processed or charged
by the Office with regard to the application.
RETURN POSTCARD
If a receipt of any paper filed in the Patent and Trademark Office is
desired, it may be obtained by enclosing with the paper a self-addressed
postcard identifying the paper. The Patent and Trademark Office will
stamp the receipt date on the card and place it in the outgoing mail.
The identifying data on the card should be so complete as to clearly
identify the paper for which receipt is requested. For example, the card
should identify the applicant's name(s) or alphanumeric identifier,
application number, filing date, interference number, etc., and the
paper(s) should be identified by specifying the type thereof, namely
affidavit, amendment, appeal, components of applications, brief,
drawings, fees, motions, supplemental oath or declaration, petition,
etc.
Upon return of a postcard receipt from the PTO, the receipt should be
promptly reviewed by the person who filed the papers to ensure that each
itemized paper was received by the PTO. If the postcard receipt has been
annotated to indicate that a particular paper was not received, the
postcard receipt will not serve as prima facie evidence of receipt of
that paper in the PTO. Likewise, the postcard receipt will not serve as
prima facie evidence of receipt of papers which are not adequately
itemized. For example, merely listing on the postcard "a complete
application" or "patent application" will not serve as a proper receipt
for each of the required components of an application if one of the
components is found to be missing by the PTO.  Instead, each separate
component, e.g., the number of pages of specification, number of claims
(nonprovisional applications), number of sheets of drawings, cover sheet
(provisional applications), etc. should be itemized on the postcard.
The person receiving the paper(s) in the Patent and Trademark Office
should check the listing on the postcard against the papers being filed
to be sure they are properly identified and that all the items listed
are present. If any of the items listed are not being filed, those items
should be crossed off and the card initialed by the person receiving the
papers.
A postcard receipt which itemizes and properly identifies the papers
which are being filed serves as prima facie evidence of receipt in the
PTO of all the items listed thereon on the date stamped thereon by the
PTO.
---SECTION---504 Assignment of Application for Examination
The Office of Initial Patent Examination assigns a nonprovisional
application to the examining group to which it appears to belong.
Provisional applications will not be examined.
---SECTION---505 "Office Date" Stamp of Receipt
37 CFR 1.6 Receipt of correspondence.
(a) Date of receipt and Express Mail date of deposit. Correspondence
received in the Patent and Trademark Office is stamped with the date of
receipt except as follows:
(1) The Patent and Trademark Office is not open for the filing of
correspondence on any day that is a Saturday, Sunday, or Federal holiday
within the District of Columbia. Except for correspondence transmitted
by facsimile as provided for in paragraph (a)(3) of this section, no
correspondence is received in the Patent and Trademark Office on
Saturdays, Sundays, or Federal holidays within the District of Columbia.
(2) Correspondence filed in accordance with Section  1.10 will be
stamped with the date of deposit as "Express Mail" with the United
States Postal Service.
(3) Correspondence transmitted by facsimile to the Patent and Trademark
Office will be stamped with the date on which the complete transmission
is received in the Patent and Trademark Office unless that date is a
Saturday, Sunday, or Federal holiday within the District of Columbia, in
which case the date stamped will be the next succeeding day which is not
a Saturday, Sunday, or Federal holiday within the District of Columbia.
                  +++
The Office stamps papers and fees with the date of their receipt in the
Patent and Trademark Office. The stamp is referred to as the "Office
Date" stamp.
When the last day for taking any action or paying any fee in the U.S.
Patent and Trademark Office falls on a Saturday, Sunday, or a Federal
holiday within the District of Columbia, the action or the fee is
considered timely if the action is taken or the fee is paid on the next
succeeding business day.
WARNING: Since a provisional application can be pending for no more than
twelve months, the last day of pendency may occur on a Saturday, Sunday,
or Federal holiday within the District of Columbia which for copendency
would require the nonprovisional application to be filed prior to the
Saturday, Sunday, or Federal holiday. See 37 CFR 1.78(a)(3). However,
note that new patent applications filed in accordance with 37 CFR 1.10
will be stamped by the Office with the date of deposit as "Express Mail"
with the United States Postal Service.  For example, if a new patent
application is deposited in "Express Mail" in accordance with 37 CFR
1.10 on a Saturday and the United States Postal Service gives it a date
of deposit of Saturday, the Office will accord and stamp the
correspondence with the Saturday date. 37 CFR 1.6(a)(2).
If an application includes the necessary components for a filing date
(see 37 CFR 1.53(b)-(d) and MPEP Section  506), the "Office Date" stamp
establishes the "filing date." Applications will not be accepted and
stamped in the examining groups. They must be date stamped in the Mail
Room.
---SECTION---506 Completeness of Original Application
37 CFR 1.53 Application number, filing date, and completion of
application.
(a) Application number.  Any papers received in the Patent and Trademark
Office which purport to be an application for a patent will be assigned
an application number for identification purposes.
(b) Application filing requirements - Nonprovisional application.  The
filing date of an application for patent filed under this section,
except for a provisional application under paragraph (c) of this section
or a continued prosecution application under paragraph (d) of this
section, is the date on which a specification as prescribed by 35 U.S.C.
112 containing a description pursuant to Section  1.71 and at least one
claim pursuant to Section  1.75, and any drawing required by Section
1.81(a) are filed in the Patent and Trademark Office. No new matter may
be introduced into an application after its filing date. A continuing
application, which may be a continuation, divisional, or
continuation-in-part application, may be filed under the conditions
specified in 35 U.S.C. 120, 121 or 365(c) and Section  1.78(a).
(1) A continuation or divisional application that names as inventors the
same or fewer than all of the inventors named in the prior application
may be filed under this paragraph or paragraph (d) of this section.
(2) A continuation-in-part application (which may disclose and claim
subject matter not disclosed in the prior application) or a continuation
or divisional application naming an inventor not named in the prior
application must be filed under this paragraph.
(c) Application filing requirements - Provisional application. The
filing date of a provisional application is the date on which a
specification as prescribed by the first paragraph of 35 U.S.C. 112, and
any drawing required by Section  1.81(a) are filed in the Patent and
Trademark Office. No amendment, other than to make the provisional
application comply with the patent statute and all applicable
regulations, may be made to the provisional application after the filing
date of the provisional application.
(1) A provisional application must also include the cover sheet required
by Section  1.51(c)(1) or a cover letter identifying the application as
a provisional application. Otherwise, the application will be treated as
an application filed under paragraph (b) of this section.
(2) An application for patent filed under paragraph (b) of this section
may be converted to a provisional application and be accorded the
original filing date of the application filed under paragraph (b) of
this section,
(i) Provided that a petition requesting the conversion, with the fee set
forth in Section  1.17(q), is filed prior to the earliest of:
(A) Abandonment of the application filed under paragraph (b) of this
section;
(B) Payment of the issue fee on the application filed under paragraph
(b) of this section;
(C) Expiration of twelve months after the filing date of the application
filed under paragraph (b) of this section; or
(D) The filing of a request for a statutory invention registration under
Section  1.293 in the application filed under paragraph (b) of this
section.
(ii) The grant of any such petition will not entitle applicant to a
refund of the fees which were properly paid in the application filed
under paragraph (b) of this section.
(3) A provisional application is not entitled to the right of priority
under 35 U.S.C. 119 or 365(a) or Section  1.55, or to the benefit of an
earlier filing date under 35 U.S.C. 120, 121 or 365(c) or Section  1.78
of any other application.  No claim for priority under Section
1.78(a)(3) may be made in a design application based on a provisional
application.  No request under Section  1.293 for a statutory invention
registration may be filed in a provisional application.  The
requirements of Section Section  1.821 through 1.825 regarding
application disclosures containing nucleotide and/or amino acid
sequences are not mandatory for provisional applications.
(d) Application filing requirements - Continued prosecution
(nonprovisional) application.
(1) A continuation or divisional application (but not a
continuation-in-part) of a prior nonprovisional application may be filed
as a continued prosecution application under this paragraph, provided
that:
(i) The prior nonprovisional application is either:
(A) Complete as defined by Section  1.51(b) ; or
(B) The national stage of an international application in compliance
with 35 U.S.C. 371; and
(ii) The application under this paragraph is filed before the earliest
of:
(A) Payment of the issue fee on the prior application, unless a petition
under Section  1.313(b)(5) is granted in the prior application;
(B) Abandonment of the prior application; or
(C) Termination of proceedings on the prior application.
(2) The filing date of a continued prosecution application is the date
on which a request on a separate paper for an application under this
paragraph is filed.  An application filed under this paragraph:
(i) Must identify the prior application;
(ii) Discloses and claims only subject matter disclosed in the prior
application;
(iii) Names as inventors the same inventors named in the prior
application on the date the application under this paragraph was filed,
except as provided in paragraph (d)(4) of this section;
(iv) Includes the request for an application under this paragraph, will
utilize the file jacket and contents of the prior application, including
the specification, drawings and oath or declaration from the prior
application, to constitute the new application, and will be assigned the
application number of the prior application for identification purposes;
and
(v) Is a request to expressly abandon the prior application as of the
filing date of the request for an application under this paragraph.
(3) The filing fee for a continued prosecution application filed under
this paragraph is:
(i) The basic filing fee as set forth in Section  1.16; and
(ii) Any additional Section  1.16 fee due based on the number of claims
remaining in the application after entry of any amendment accompanying
the request for an application under this paragraph and entry of any
amendments under Section  1.116 unentered in the prior application which
applicant has requested to be entered in the continued prosecution
application.
(4) An application filed under this paragraph may be filed by fewer than
all the inventors named in the prior application, provided that the
request for an application under this paragraph when filed is
accompanied by a statement requesting deletion of the name or names of
the person or persons who are not inventors of the invention being
claimed in the new application. No person may be named as an inventor in
an application filed under this paragraph who was not named as an
inventor in the prior application on the date the application under this
paragraph was filed, except by way of a petition under Section  1.48.
(5) Any new change must be made in the form of an amendment to the prior
application as it existed prior to the filing of an application under
this paragraph.  No amendment in an application under this paragraph (a
continued prosecution application) may introduce new matter or matter
that would have been new matter in the prior application. Any new
specification filed with the request for an application under this
paragraph will not be considered part of the original application
papers, but will be treated as a substitute specification in accordance
with Section  1.125.
(6) The filing of a continued prosecution application under this
paragraph will be construed to include a waiver of confidentiality by
the applicant under 35 U.S.C. 122 to the extent that any member of the
public, who is entitled under the provisions of Section  1.14 to access
to, copies of, or information concerning either the prior application or
any continuing application filed under the provisions of this paragraph,
may be given similar access to, copies of, or similar information
concerning the other application or applications in the file jacket.
(7) A request for an application under this paragraph is the specific
reference required by 35 U.S.C. 120 to every application assigned the
application number identified in such request.  No amendment in an
application under this paragraph may delete this specific reference to
any prior application.
(8) In addition to identifying the application number of the prior
application, applicant should furnish in the request for an application
under this paragraph the following information relating to the prior
application to the best of his or her ability:
(i) Title of invention;
(ii) Name of applicant(s); and
(iii) Correspondence address.
(9) Envelopes containing only requests and fees for filing an
application under this paragraph should be marked "Box CPA."  Requests
for an application under this paragraph filed by facsimile transmission
should be clearly marked "Box CPA."
(e) Failure to meet filing date requirements.
(1) If an application deposited under paragraph (b), (c), or (d) of this
section does not meet the requirements of such paragraph to be entitled
to a filing date, applicant will be so notified, if a correspondence
address has been provided, and given a time period within which to
correct the filing error.
(2) Any request for review of a notification pursuant to paragraph
(e)(1) of this section, or a notification that the original application
papers lack a portion of the specification or drawing(s), must be by way
of a petition pursuant to this paragraph. Any petition under this
paragraph must be accompanied by the fee set forth in Section  1.17(i)
in an application filed under paragraphs (b) or (d) of this section, and
the fee set forth in Section  1.17(q) in an application filed under
paragraph (c) of this section.  In the absence of a timely (Section
1.181(f)) petition pursuant to this paragraph, the filing date of an
application in which the applicant was notified of a filing error
pursuant to paragraph (e)(1) of this section will be the date the filing
error is corrected.
(3) If an applicant is notified of a filing error pursuant to paragraph
(e)(1) of this section, but fails to correct the filing error within the
given time period or otherwise timely (Section  1.181(f)) take action
pursuant to this paragraph, proceedings in the application will be
considered terminated. Where proceedings in an application are
terminated pursuant to this paragraph, the application may be disposed
of, and any filing fees, less the handling fee set forth in Section
1.21(n), will be refunded.
(f) Completion of application subsequent to filing - Nonprovisional
(including continued prosecution) application. If an application which
has been accorded a filing date pursuant to paragraph (b) of this
section, including a continuation, divisional, or continuation-in-part
application, does not include the appropriate filing fee or an oath or
declaration by the applicant pursuant to Section  1.63 or Section
1.175, or, if an application which has been accorded a filing date
pursuant to paragraph (d) of this section does not include the
appropriate filing fee, applicant will be so notified, if a
correspondence address has been provided, and given a period of time
within which to file the fee, oath or declaration, and the surcharge as
set forth in Section  1.16(e) in order to prevent abandonment of the
application.  See Section  1.63(d) concerning the submission of a copy
of the oath or declaration from the prior application for a continuation
or divisional application.  If the required filing fee is not timely
paid, or if the processing and retention fee set forth in Section
1.21(l) is not paid within one year of the date of mailing of the
notification required by this paragraph, the application may be disposed
of. The notification pursuant to this paragraph may be made
simultaneously with any notification pursuant to paragraph (e) of this
section.  If no correspondence address is included in the application,
applicant has two months from the filing date to file the basic filing
fee, the oath or declaration in an application under paragraph (b) of
this section, and the surcharge as set forth in Section  1.16(e) in
order to prevent abandonment of the application; or, if no basic filing
fee has been paid, one year from the filing date to pay the processing
and retention fee set forth in Section  1.21(l) to prevent disposal of
the application.
(g) Completion of application subsequent to filing -Provisional
application. If a provisional application which has been accorded a
filing date pursuant to paragraph (c) of this section does not include
the appropriate filing fee or the cover sheet required by Section
1.51(c)(1), applicant will be so notified, if a correspondence address
has been provided, and given a period of time within which to file the
fee, cover sheet, and the surcharge as set forth in Section  1.16(l) in
order to prevent abandonment of the application.  If the required filing
fee is not timely paid, the application may be disposed of.  The
notification pursuant to this paragraph may be made simultaneously with
any notification pursuant to paragraph (e) of this section.  If no
correspondence address is included in the application, applicant has two
months from the filing date to file the basic filing fee, cover sheet,
and the surcharge as set forth in Section  1.16(l) in order to prevent
abandonment of the application.
(h) Subsequent treatment of application - Nonprovisional (including
continued prosecution) application.  An application for a patent filed
under paragraphs (b) or (d) of this section will not be placed on the
files for examination until all its required parts, complying with the
rules relating thereto, are received, except that certain minor
informalities may be waived subject to subsequent correction whenever
required.
(i) Subsequent treatment of application - Provisional application.  A
provisional application for a patent filed under paragraph (c) of this
section will not be placed on the files for examination and will become
abandoned no later than twelve months after its filing date pursuant to
35 U.S.C. 111(b)(1).
(j) Filing date of international application. The filing date of an
international application designating the United States of America is
treated as the filing date in the United States of America under PCT
Article 11(3), except as provided in 35 U.S.C. 102(e).
INCOMPLETE NONPROVISIONAL APPLICATIONS FILED UNDER 37 CFR 1.53(b)
If the nonprovisional application papers filed under 37 CFR 1.53(b) do
not include at least a specification containing a description and at
least one claim and a drawing, if necessary under 35 U.S.C. 113 (first
sentence), or if the submitted application papers are too informal to be
given a filing date, the case is held in the Office of Initial Patent
Examination (OIPE) as an incomplete application and the applicant is
informed of the shortcomings of the papers. No filing date is granted
until the incompleteness is corrected.
Form PTO-1123, Notice of Incomplete Application, is prepared and mailed
by the OIPE when nonprovisional application papers filed under 37 CFR
1.53(b) are deemed incomplete under 35 U.S.C. 111(a).
Such incompleteness may consist of the omission of any one of the
following parts of an application. The component parts of a
nonprovisional application filed under 37 CFR 1.53(b) necessary to
obtain a filing date are:
A specification as prescribed by 35 U.S.C. 112 and 37 CFR 1.71.
A claim as prescribed by 35 U.S.C. 112 and 37 CFR 1.75.
A drawing, if necessary under 35 U.S.C. 113 (first sentence) and 37 CFR
1.81(a).
See 37 CFR 1.53(b).
Even though an application purports to include the component parts
necessary to obtain a filing date, the application will still be held to
be incomplete and a filing date will be refused if the component parts
fail to satisfy the requirements set forth above.
For example, if the documents purporting to be a specification are so
obviously informal and incoherent that they would clearly not constitute
a specification as required by 35 U.S.C. 112 and 37 CFR 1.71, the
application would not be acceptable for examination and would not be
accorded a filing date until corrections are made. The filing date of
the application would be the date the corrections were made.
Filing dates are accorded to nonprovisional applications filed under 37
CFR 1.53(b) submitted without the names of all the inventors, the basic
filing fee and/or the oath or declaration. In such cases, a notice is
mailed by the OIPE requiring that at least the basic filing fee and the
oath or declaration (which must include the names of all the inventors)
be filed, accompanied by a surcharge (37 CFR 1.16(e)). In those cases
where the basic filing fee is paid, but additional fees are required, a
notice is mailed by the examining group, requiring that the balance of
the fee be paid.  See 37 CFR 1.53(f).
Occasionally, nonprovisional applications filed under 37 CFR 1.53(b)
which have already been signed by the inventors contain informal claims
that the attorney or agent feels should not be present in the
application upon filing.  However, since alteration after execution by
the inventor and before filing is prohibited, such applications must be
filed by the attorney or agent in the form in which they were executed
by the inventors.  A nonprovisional application filed under 37 CFR
1.53(b) may be filed with a preliminary amendment which is limited to
the cancellation of claims. This will diminish the number of claims to
be considered for calculation of the filing fee. Any other changes to
the application should be the subject of a separate amendment which may
be entered after the filing fee has been calculated and the filing date
granted. If a preliminary amendment which cancels claims does not
accompany the application at the time the application is filed, the
notification of insufficient fee will inform the inventor, attorney, or
agent of the possibility of correcting the insufficient payment by
either (1) paying the additional required fee amount, or (2) filing an
amendment which cancels claims to where the remaining claims are covered
by the fee submitted upon filing. However, no refund will be made once
the fee for claims is properly paid, even though claims are later
canceled.
In the past, the OIPE has reviewed the claimed subject matter of newly
filed nonprovisional applications to determine whether a filing date
should be granted. Such applications included those drawn to perpetual
motion devices and methods of doing business and applications for
reissue signed by assignees or filed more than 2 years after the grant
of the patent which appear to contain broadened reissue claims.
Under the current practice, a filing date is normally granted in such
cases if the nonprovisional application filed under 37 CFR 1.53(b) is
otherwise sufficient and then forwarded to the examiner for
consideration and decision during the regular course of examination.
INCOMPLETE PROVISIONAL APPLICATIONS
If the provisional application papers do not include at least a
specification containing a description and a drawing, if necessary under
35 U.S.C. 113 (first sentence) or if the submitted application papers
are too informal to be given a filing date, the case is held in the OIPE
as an incomplete application and the applicant is informed of the
shortcomings of the papers. No filing date is granted until the
incompleteness is corrected.
Such incompleteness may consist of the omission of any one of the
following parts of an application. The component parts of a provisional
application necessary to obtain a filing date are:
A specification as prescribed by 35 U.S.C. 112, first paragraph, and 37
CFR 1.71.
A drawing, if necessary under 35 U.S.C. 113 (first sentence) and 37 CFR
1.81(a).
Even though an application purports to include the component parts
necessary to obtain a filing date, the application will still be held to
be incomplete and a filing date will be refused if the component parts
fail to satisfy the requirements set forth above.  For example, if the
documents purporting to be a specification are so obviously informal and
incoherent that they would clearly not constitute a specification as
required by 35 U.S.C. 112, first paragraph, and 37 CFR 1.71, the
application would not be acceptable and would not be accorded a filing
date until corrections are made. The filing date of the application
would be the date the corrections were made. A provisional application
will not be examined. However, a provisional application which does not
include a cover sheet or letter identifying the application as a
provisional application will be treated as a nonprovisional application
filed under 37 CFR 1.53(b). See 37 CFR 1.53(c)(1).
NOTE:  No amendment, other than to make the provisional application
comply with all the applicable reglations, may be made to the
provisional application after the filing date of the provisional
application. See 37 CFR 1.53(c).
INFORMAL APPLICATIONS
An application is informal if it is typed on both sides of the paper, or
is not permanent, legible, or reproducible. If such informalities are
timely corrected, the application is given the filing date on which the
original informal papers were filed.
The OIPE accords a filing date, as of the date indicated by the "Office
Date" stamp (see MPEP Section  505), to application papers which include
a specification containing a description and at least one claim
(nonprovisional applications filed under 37 CFR 1.53(b)), and a drawing,
if necessary under 35 U.S.C. 113 (first sentence) but are informal
because they do not comply with the rules or notices. In such
applications, the OIPE prepares form PTO-152, Notice of Informal
Application, indicating the informality and places it in the file
wrapper. The examining group mails the letter to applicant. Failure to
correct the informality within the specified time results in abandonment
of the application.
The letter of transmittal accompanying the filing of continuing
applications should include such additional information as the
identification by application number of a provisional or parent
application, its status, and location (if known) in the Patent and
Trademark Office. The supplying of this information will simplify the
processing of these applications.
---SECTION---506.01 Return of Incomplete Application
If a request is made, the parts of an incomplete application which has
not been assigned a filing date may be returned by the OIPE. They may be
used by the applicant as part of a later complete application if the
missing parts are later supplied. See 37 CFR 1.53.
---SECTION---506.02 Review of Refusal To Accord Filing Date
The filing date of the provisional or nonprovisional application is the
date of receipt in the Office of the application which includes a
specification containing description pursuant to 37 CFR 1.71 and at
least one claim (nonprovisional applications) pursuant to 37 CFR 1.75,
and any drawings required by 37 CFR 1.81(a). See 37 CFR 1.53(b) and (c).
If any of these items are missing, applicant will be notified to file
them and the filing date will be the date of receipt of the missing
part(s). If the oath or declaration for a nonprovisional application was
executed and filed with the application, a supplemental oath or
declaration by the inventor is required in some circumstances, e.g.,
where the missing item is the claim, specification, or a drawing. The
supplemental declaration must identify the missing item and indicate, as
appropriate, that it accurately claims, describes, or illustrates
applicant's invention. See MPEP Section  601.01(d)-(g) where the
application is filed without all the pages of the specification, without
at least one claim (nonprovisional application), without drawings, or
without all the figures of the drawings. An error in or failure to
identify inventorship does not raise a filing date issue.
Any review of the refusal to grant a filing date as of the date of
deposit of the application would be by way of petition, accompanied by
the petition fee (37 CFR 1.17(i)). Petitioner should provide any
arguments that he or she has that the items noted were not missing or
that a filing date should be assigned in the absence of such items if
they are believed to be unnecessary. If petitioner alleges that no
defect exists, a request for refund of the petition fee may be included
in the petition.
For applications properly filed under 37 CFR 1.10, the filing date is
the date that the application was deposited as "Express Mail" in the
U.S. Postal Service. For example, if a new patent application is
deposited in "Express Mail" in accordance with 37 CFR 1.10 on a Saturday
and the United States Postal Service gives it a date of deposit of
Saturday, the Office will accord and stamp the correspondence with the
Saturday date. 37 CFR 1.6(a)(2). If the proper procedures were not
followed, the application will receive a filing date as of the date it
was received in the Office. Any review of these matters would be by way
of petition, accompanied by the petition fee (37 CFR 1.17(i)), providing
whatever arguments and evidence petitioner has that the application is
entitled to a filing date as of the date it was mailed via "Express
Mail."
Any petition under this section should be marked to the attention of the
Special Program Law Office.
---SECTION---507 Drafting Review Branch
The drawing in a nonprovisional application is inspected by the Drafting
Review Branch for formal compliance with the rules. If the drawing is
satisfactory, it is stamped "approved." If the drawing contains defects
which are not so serious as to warrant holding the application to be
incomplete, the Draftsman checks the appropriate notation on the "Notice
of Informal Patent Drawing" form PTO-948.
See MPEP Section  608.02(a) for handling of drawings so informal as to
render examination of the nonprovisional application impractical.
---SECTION---508 Distribution
The Micrographics Division prepares permanent prints made of the
drawings of all complete applications and secures the prints in the file
wrappers. The drawings and files are then assembled and nonprovisional
applications are forwarded to the examining operation.
When a new or substitute drawing is received, a print is made and
forwarded to the group to be placed in the file as an official paper.
As to the procedure to be followed when a model is filed, see MPEP
Section  608.03 and Section  608.03(a).
---SECTION---508.01 Papers Sent to Wrong Group
If drawings, amendments, or other papers are delivered to the wrong
group, the current group assignment should be obtained from PALM and be
placed on the paper and then forwarded to the appropriate group. The
assignment indicated by PALM may be verified by calling the group
indicated before forwarding the paper.
---SECTION---508.02 Papers Received After Patenting or Abandonment
After an application is patented or abandoned, any incoming
communication which is not to become part of the record will be returned
to the sender by the examining group.
---SECTION---508.03 Unmatched Papers
Unmatched papers for nonprovisional applications within a group should
be frequently reviewed to determine which should be sent to the Paper
Correlating Office (PCO).
Item I below treats the papers in the "Application number too high"
category. Items II-VI below are directed to all other unmatched papers
not in the "Application number too high" category.
I. UNMATCHED PAPERS IN THE "APPLICATION NO. TOO HIGH" CATEGORY
This collection of papers being held by the group should be reviewed at
least once a week. Any paper having an application number which clearly
should have already been received by the group should be removed from
this collection. Where the group does not have a corresponding
application for any of these papers, inquiry should be made of the
Office of Initial Patent Examination (OIPE) to determine the group of
record. If another group number is indicated, the paper should be
forwarded to that group. If the OIPE does not yield a new group number
for the indicated application no., the paper should be sent to the PCO.
II. UNMATCHED PAPERS HAVING AN APPLICATION NUMBER
It can be assumed that either the group number or the application number
on these papers is incorrect. Inquiry should be made of the OIPE and
PALM to determine the group of record and the procedure set out in item
I above followed. An exception to this practice should be made where the
paper has thereon the name of an examiner in the group. In these
situations, a careful check of the group records and files as well as
consultation with the indicated examiner should be made to determine the
correct application number. If this does not yield a new application
number, the paper should be sent to the PCO.
III. UNMATCHED PAPERS RELATING TO APPLICATIONS ABANDONED FROM GROUP
The application file should be ordered from Files Repository. If the
file is not received therefrom, the paper should be forwarded to the
PCO.
IV. PAPERS FOR APPLICATIONS WHICH HAVE BEEN SENT TO PUBLISHING DIVISION
All papers for applications which PALM indicates to be located in any of
the locations 7400 through 7650 should be forwarded to the Publishing
Division.
The instructions of this section (IV) apply to all files in issue
including those which have been assigned a patent number and issue date.
Papers requiring examiner review and action will be returned to the
examining group after Publishing Division personnel have matched the
paper to the appropriate file.
V. PAPERS FOR APPLICATIONS WHICH HAVE BEEN SENT TO THE FILE INFORMATION
UNIT (RECORD ROOM)
If PALM indicates that the application for a paper is in the File
Information Unit (Record Room) (location code 9210), the paper should be
forwarded to the PCO for response.
VI. UNMATCHED PAPERS FOR APPLICATIONS WHICH ARE KNOWN TO BE PENDING IN
THE GROUP BUT CANNOT BE LOCATED
Generally, these are applications which PALM indicates are present in
the group, but the file is not available. These papers should be
retained in the group for processing.
Each paper sent to the PCO must have a PCO Transmittal Form stapled
thereto. Each form attached to a paper should be filled out as
completely as possible. Transmittal Forms attached to papers in
categories I and II must have an indication of the information obtained
from both OIPE and PALM. The PALM information should be inserted in the
large space at the bottom of the form. This will help eliminate
duplication of effort by PCO personnel. Papers received without
transmittal forms or with incompletely filled out transmittal forms may
be returned to the originating group.
---SECTION---509 Payment of Fees
The latest fee schedule can be obtained by contacting the General
Information Services Division at (703) 308-4357.
37 CFR 1.22 Fees payable in advance.
(a) Patent and trademark fees and charges payable to the Patent and
Trademark Office are required to be paid in advance, that is, at the
time of requesting any action by the Office for which a fee or charge is
payable with the exception that under Section  1.53 applications for
patent may be assigned a filing date without payment of the basic filing
fee.
(b) All patent and trademark fees paid to the Patent and Trademark
Office should be itemized in each individual application, patent or
other proceeding in such a manner that it is clear for which purpose the
fees are paid.
37 CFR 1.23 Method of payment.
All payments of money required for Patent and Trademark Office fees,
including fees for the processing of international applications (Section
1.445), should be made in U.S. specie, Treasury notes, national bank
notes, post office money orders, or by certified check. If sent in any
other form, the Office may delay or cancel the credit until collection
is made. Money orders and checks must be made payable to the
Commissioner of Patents and Trademarks. Remittances from foreign
countries must be payable and immediately negotiable in the United
States for the full amount of the fee required. Money sent by mail to
the Patent and Trademark Office will be at the risk of the sender;
letters containing money should be registered.
37 CFR 1.24 Coupons.
Coupons in denominations of three dollars, for the purchase of patents,
designs, defensive publications, statutory invention registrations, and
trademark registrations are sold by the Patent and Trademark Office for
the convenience of the general public; these coupons may not be used for
any other purpose. The three-dollar coupons are sold individually and in
books of 50 for $150.00. These coupons are good until used; they may be
transferred but cannot be redeemed.
37 CFR 1.26 Refunds.
(a) Any fee paid by actual mistake or in excess of that required will be
refunded, but a mere change of purpose after the payment of money, as
when a party desires to withdraw an application, an appeal, or a request
for oral hearing, will not entitle a party to demand such a return.
Amounts of twenty five dollars or less will not be returned unless
specifically requested within a reasonable time, nor will the payer be
notified of such amount; amounts over twenty five dollars may be
returned by check or, if requested, by credit to a deposit account.
(b) [Reserved]
(c) If the Commissioner decides not to institute a reexamination
proceeding, a refund of $1,690 will be made to the requester of the
proceeding. Reexamination requesters should indicate whether any refund
should be made by check or by credit to a deposit account.
Where the Office has notified an applicant, in writing, that a fee is
due and has specified a particular dollar amount for that fee, if the
applicant timely submits the specified fee amount in response to the
notice, the applicant should be considered to have complied with the
notice so as to avoid abandonment of the application.  If the fee paid
by the applicant is insufficient, either because the notice specified an
incorrect dollar amount for the fee or because of a fee increase
effective after the mailing of the notice and before payment of the fee
by the applicant, the applicant should be notified in writing by the
Office of the fee insufficiency and given a new time period in which to
submit the remaining balance. The written notification of the fee
insufficiency should set forth the reason (i.e., the fee amount
indicated by the Office in the earlier notice was incorrect or the fees
have increased since the earlier notice was mailed) why applicant is
being required to submit an additional fee.
---SECTION---509.01 Deposit Accounts
37 CFR 1.25 Deposit accounts.
(a) For the convenience of attorneys, and the general public in paying
any fees due, in ordering services offered by the Office, copies of
records, etc. deposit accounts may be established in the Patent and
Trademark Office upon payment of the fee for establishing a deposit
account (Section  1.21(b)(1)). A minimum deposit of $1,000 is required
for paying any fees due or in ordering any services offered by the
Office. However, a minimum deposit of $300 may be paid to establish a
restricted subscription deposit account used exclusively for
subscription order of patent copies as issued. At the end of each month,
a deposit account statement will be rendered. A remittance must be made
promptly upon receipt of the statement to cover the value of items or
services charged to the account and thus restore the account to its
established normal deposit. An amount sufficient to cover all fees,
services, copies, etc., requested must always be on deposit. Charges to
accounts with insufficient funds will not be accepted. A service charge
(Section  1.21(b)(2)) will be assessed for each month that the balance
at the end of the month is below $1,000. For restricted subscription
deposit accounts, a service charge (Section  1.21(b)(3)) will be
assessed for each month that the balance at the end of the month is
below $300.
(b) Filing, issue, appeal, international-type search report,
international application processing, petition, and post-issuance fees
may be charged against these accounts if sufficient funds are on deposit
to cover such fees. A general authorization to charge all fees, or only
certain fees, set forth in Section Section  1.16 to 1.18 to a deposit
account containing sufficient funds may be filed in an individual
application, either for the entire pendency of the application or with
respect to a particular paper filed. An authorization to charge to a
deposit account the fee for a request for reexamination pursuant to
Section  1.510 and any other fees required in a reexamination proceeding
in a patent may also be filed with the request for reexamination. An
authorization to charge a fee to a deposit account will not be
considered payment of the fee on the date the authorization to charge
the fee is effective as to the particular fee to be charged unless
sufficient funds are present in the account to cover the fee.
An overdrawn account will be immediately suspended and no charges will
be accepted against it until a proper balance is restored, together with
a payment of $10 (37 CFR 1.21(b)(1)) to cover the work done by the
Patent and Trademark Office incident to suspending and reinstating the
account and dealing with charges which may have been made in the
meantime.
If there is an authorization to charge the filing fee to a deposit
account which is overdrawn or has insufficient funds, a surcharge (37
CFR 1.16(e)) is required in addition to payment of the filing fee.
Failure to timely pay the filing fee and surcharge will result in
abandonment of the application.
It is expected, however, that reasonable precautions will be taken in
all cases to avoid overdrafts, and if an account is suspended repeatedly
it will be closed.
Similarly, because of the burden placed on the Patent and Trademark
Office incident to the operation of deposit accounts, a charge of $10
(37 CFR 1.21(b)(1)) will be made for opening each new account.
  DEPOSIT ACCOUNT AUTHORIZATIONS
The rules of practice were amended effective Oct. 1, 1982, at 37 CFR
1.25(b) to state that:
A general authorization to charge all fees, or only cer tain fees, set
forth in Section Section  1.16 to 1.18 to a deposit account containing
sufficient funds may be filed in an individual application, either for
the entire pendency of the application or with respect to a particular
paper filed. A general authorization does not apply to document supply
fees under 37 CFR 1.19, such as those required for certified copies, to
post issuance fees under 37 CFR 1.20, such as those required for
maintenance fees, to miscellaneous fees and charges under 37 CFR 1.21,
such as assignment recording fees, or as a basis for a petition, such as
a petition for an extension of time (see MPEP Section  710.02(e),
Extension of Time).
Many applications contain broad language authorizing any additional fees
which might have been due to be charged to a deposit account. The Patent
and Trademark Office will interpret such broad authorizations to include
authorization to charge to a deposit account the issue fee as well as
any other fees set forth in 37 CFR 1.16, 1.17, and 1.18.  Fees under 37
CFR 1.19, 1.20, and 1.21 will not be charged as a result of a general
authorization under 37 CFR 1.25.
It is recommended that authorizations to charge fees to deposit accounts
include reference to the particular fees or fee sections of the rules
which applicant intends to authorize. For example, if filing and
processing fees under 37 CFR 1.16 and 1.17 only are intended to be
included in the authorization, and not the issue fee under 37 CFR 1.18,
the authorization could read: "The Commissioner is hereby authorized to
charge any fees under 37 CFR 1.16 and 1.17 which may be required during
the entire pendency of the application to Deposit Account No.---." Such
an authorization would clearly exclude issue fees under 37 CFR 1.18
while including all the filing and processing fees listed in 37 CFR 1.16
and 1.17. Similarly, if it were intended to authorize the charging of
fees relating only to a specific paper, the authorization could read
"The Commissioner is hereby authorized to charge any fees under 37 CFR
1.16 and 1.17 which may be required by this paper to Deposit Account
No.---." Such authorizations would cover situations in which a check to
cover a filing and processing fee under 37 CFR 1.16 and 1.17 was omitted
or was for an amount less than the amount required.
It is extremely important that the authorization be clear and
unambiguous. If applicants file authorizations which are ambiguous and
deviate from the usual forms of authorizations, the Office may not
interpret the authorizations in the manner applicants intend. In such
cases, applicants could be subject to further expenses, petitions, etc.
in order to correct fees which were not charged as intended due to an
ambiguous authorization.
When statutory fees are to be charged to a deposit account, the
processing of the application can be facilitated by submitting the
applicant's transmittal letter or other correspondence specifying the
account to be charged in duplicate. Submission of these documents in
duplicate will eliminate the need for the Mail Center to photocopy the
document and will thereby reduce the processing time of incoming mail.
---SECTION---509.02 Small Entity Status - Definitions
Public Law 97-247, enacted August 27, 1982, provides that effective Oct.
1, 1982, funds available under the Act to the Patent and Trademark
Office
shall be used to reduce by 50 per centum the payment of fees under
section 41(a) and (b) of title 35, United States Code, by independent
inventors and nonprofit organi zations as defined in regulations
established by the Commissioner of Patents and Trademarks, and by small
business concerns as defined in Section 3 of the Small Business Act and
by regulations established by the Small Business Administration.  The
fees which are reduced include patent application filing fees (37 CFR
1.16), extension of time, revival, and appeal fees (37 CFR 1.17), patent
issue fees (37 CFR 1.18), statutory disclaimer fee (37 CFR 1.20(d)), and
maintenance fees on patents (37 CFR 1.20). Other fees, established under
section 41 (c) or (d) of Title 35, United States Code, are not reduced
for small entities since such a reduction is not permitted or authorized
by Public Law 97-247.
Fees which are not reduced include petition and processing fees (other
than revival), 37 CFR 1.17(h)-(k), document supply fees, 37 CFR 1.19,
certificate of correction fees, 37 CFR 1.20(a), request for
reexamination fees, 37 CFR 1.20(c), miscellaneous fees and charges, 37
CFR 1.21, and international application fees, 37 CFR 1.445.
Public Law 97-247 gave the Commissioner authority to establish
regulations defining independent inventors and nonprofit organizations.
These definitions have been established as 37 CFR 1.9(c) and (e). The
Small Business Administration was given authority to establish the
definition of a small business concern. This definition is published in
37 CFR 1.9(d). A small entity for purposes of paying reduced fees is
defined in 37 CFR 1.9(f) as an independent inventor, a small business
concern, or a nonprofit organization.
37 CFR 1.9 Definitions.
(a)(1) A national application as used in this chapter means a U.S.
application for patent which was either filed in the Office under 35
U.S.C. 111, or which entered the national stage from an international
application after compliance with 35 U.S.C. 371.
(2) A provisional application as used in this chapter means a U.S.
national application for patent filed in the Office under 35 U.S.C.
111(b).
(3) A nonprovisional application as used in this chapter means a U.S.
national application for patent which was either filed in the Office
under 35 U.S.C. 111(a), or which entered the national stage from an
international application after compliance with 35 U.S.C. 371.
(b) An international application as used in this chapter means an
international application for patent filed under the Patent Cooperation
Treaty prior to entering national processing at the Designated Office
stage.
(c) An independent inventor as used in this chapter means any inventor
who (1) has not assigned, granted, conveyed, or licensed, and (2) is
under no obligation under contract or law to assign, grant, convey, or
license, any rights in the invention to any person who could not
likewise be classified as an independent inventor if that person had
made the invention, or to any concern which would not qualify as a small
business concern or a nonprofit organization under this section.
(d) A small business concern as used in this chapter means any business
concern meeting the size standards set forth in 13 CFR Part 121 to be
eligible for reduced patent fees. Questions related to size standards
for a small business concern may be directed to: Small Business
Administration, Size Standards Staff, 409 Third Street, SW, Washington,
DC 20416.
(e) A nonprofit organization as used in this chapter means (1) a
university or other institution of higher education located in any
country; (2) an organization of the type described in section 501(c)(3)
of the Internal Revenue Code of 1954 (26 U.S.C. 501(c)(3)) and exempt
from taxation under section 501(a) of the Internal Revenue Code (26
U.S.C. 501(a)); (3) any nonprofit scientific or educational organization
qualified under a nonprofit organization statute of a state of this
country (35 U.S.C. 201(i)); or (4) any non-profit organization located
in a foreign country which would qualify as a nonprofit organization
under paragraphs (e) (2) or (3) of this section if it were located in
this country.
(f) A small entity as used in this chapter means an independent
inventor, a small business concern, or a non-profit organization
eligible for reduced patent fees.
(g) For definitions in interferences see Section  1.601.
(h) A Federal holiday within the District of Columbia as used in this
chapter means any day, except Saturdays and Sundays, when the Patent and
Trademark Office is officially closed for business for the entire day.
INDEPENDENT INVENTOR
37 CFR 1.9(c) defines an independent inventor as any inventor who (1)
has not assigned, granted, conveyed, or licensed, and (2) is under no
obligation under contract or law to assign, grant, convey, or license
any rights in the invention to any person who could not likewise be
classified as an independent inventor if that person had made the
invention, or to any concern which would not qualify as a small business
concern or a nonprofit organization. The "rights in the invention" are
the rights in the United States. Once an individual sole inventor, or
one of several joint inventors, has assigned, granted, conveyed, or
licensed, or comes under an obligation to assign, grant, convey, or
license, any rights to the invention to anyone who could not likewise
obtain status as a small entity, the inventor(s) will no longer be
entitled to pay fees in the amounts established for an independent
inventor (37 CFR 1.9(c)).
Rights in the invention include the right to exclude others from making,
using, offering for sale, or selling the invention throughout the United
States or importing the invention into the United States. Therefore, for
example, status as a small entity is lost by an inventor who has
transferred or has an obligation to transfer a shop right to an employer
who could not qualify as a small entity.
37 CFR 1.9(c) permits an individual inventor to make an assignment,
grant, conveyance, or license of partial rights in the invention to
another individual or individuals who could qualify as an independent
inventor or inventors if they had made the invention. In addition, 37
CFR 1.9(c) permits an individual inventor to make an assignment, grant,
conveyance, or license of partial rights in the invention to a small
business concern or nonprofit organization. Under the circumstances
described in the previous two sentences, the individual inventor could
still qualify as an independent inventor. However, if the independent
inventor assigned, granted, conveyed, or licensed, or came under an
obligation to assign, grant, convey, or license, any rights to the
invention to any individual or organization which could not qualify as a
small entity (37 CFR 1.9(f)), then the inventor would no longer qualify
as an independent inventor.
SMALL BUSINESS CONCERN
In order to be eligible for reduced patent fees as a "small business
concern" under 37 CFR 1.9(d), a business concern must meet the size
standards set forth in 13 CFR Part 121.  Questions relating to size
standards for a small business concern may be directed to:
Small Business Administration
Size Standards Staff
409 Third Street, S.W.
Washington, D.C. 20416
NONPROFIT ORGANIZATIONS
37 CFR 1.9(e) defines a nonprofit organization by utilizing and
interpreting the definition contained in 35 U.S.C. 201(i). The term
"university or other institution of higher education" as used in 37 CFR
1.9(e) means an educational institution which
(A) admits as regular students only persons having a certificate of
graduation from a school providing secondary education, or the
recognized equivalent of such a certificate,
(B) is legally authorized within the jurisdiction in which it operates
to provide a program of education beyond secondary education,
(C) provides an educational program for which it awards a bachelor's
degree or provides not less than a 2-year program which is acceptable
for full credit toward such a degree,
(D) is a public or other nonprofit institution, and
(E) is accredited by a nationally recognized accrediting agency or
association.  The definition of "university or other institution of
higher education" as set forth herein essentially follows the definition
of "institution of higher education" contained in 20 U.S.C. 1141(a).
Institutions which are strictly research facilities, manufacturing
facilities, service organizations, etc., are not intended to be included
within the term "other institution of higher education" even though such
institutions may perform an educational function or publish the results
of their work.
Nonprofit organizations also include organizations of the type described
in section 501(c)(3) of the Internal Revenue Code of 1954 (26 U.S.C.
501(c)(3)) and which are exempt from taxation under 26 U.S.C. 501(a).
Organizations described in 26 U.S.C. 501(c)(3) include corporations, and
any community chest, fund, or foundation, organized and operated
exclusively for religious, charitable, scientific, testing for public
safety, literary, or educational purposes, or to foster national or
international amateur sports competition (but only if no part of its
activities involve the provision of athletic facilities or equipment),
or for the prevention of cruelty to children or animals, no part of the
net earnings of which inures to the benefit of any private shareholder
or individual, no substantial part of the activities of which is
carrying on propaganda, or otherwise attempting to influence legislation
and which does not participate in, or intervene in (including the
publishing or distributing of statements), any political campaign on
behalf of any candidate for public office.
LOCATION OF SMALL ENTITY
Small entities may claim reduced fees regardless of the country in which
they are located. There is no restriction requiring that the independent
inventor, small business concern, or nonprofit organization be located
in the United States. The same definitions apply to all applicants
equally in accordance with the Paris Convention for the Protection of
Industrial Property.
TRANSFER OF RIGHTS
With regard to transfer of rights in the invention, the rights in
question are those in the United States to be covered by the application
or patent. Transfer of rights to a Japanese patent, for example, would
not affect small entity status if no rights in the United States patent
were likewise transferred.
The payment of reduced fees under 35 U.S.C. 41 is limited to those
situations in which all of the rights in the invention are owned by
small entities, i.e., independent inventors, small business concerns, or
nonprofit organizations. To do otherwise would be clearly contrary to
the intended purpose of the legislation which contains no indication
that fees are to be reduced in circumstances where rights are owned by
non-small entities. For example, a non-small entity is not permitted to
transfer patent rights to a small business concern which would pay the
reduced fees and grant a license to the entity.
If rights transferred to a non-small entity are later returned to a
small entity so that all rights are held by small entities, reduced fees
may be claimed.
The term "license" in the definitions includes nonexclusive as well as
exclusive licenses and royalty free as well as royalty generating
licenses. Implied licenses to use and resell patented articles purchased
from a small entity, however, will not preclude the proper claiming of
small entity status. Likewise, an order by an applicant to a firm to
build a prototype machine or product for the applicant's own use is not
considered to constitute a license for purposes of the definitions.
RIGHTS HELD BY GOVERNMENT ORGANIZATIONS
Also, although the Federal government agencies do not qualify as
nonprofit organizations for paying reduced fees under the rules, a
license to a Federal agency resulting from a funding agreement with the
agency pursuant to 35 U.S.C. 202(c)(4) will not preclude the proper
claiming of small entity status.
Public Law 96-517 added a new chapter 18 of Title 35 of the United
States Code entitled "Patent Rights in Inventions Made With Federal
Assistance." Under the provisions of the statute, each funding agreement
between a Federal agency and an individual, small business firm, or
nonprofit organization must provide, inter alia, that  ". . . the
Federal agency shall have a nonexclusive, nontransferable, irrevocable,
paid-up license to practice or have practiced for or on behalf of the
United States any subject invention . . ."  See  35 U.S.C. 202(c)(4).
Under the provisions of  37 CFR 1.9 and 1.27, an independent inventor,
small business concern, or nonprofit organization cannot qualify for
reduced patent fees if it has assigned, granted, conveyed, or licensed
or is under an obligation under contract or law to assign, grant,
convey, or license any rights in the invention to other than an
individual who could be classified as an independent inventor if that
person had made the invention, a small business concern, or a nonprofit
organization. The Federal agencies do not qualify as nonprofit
organizations for paying reduced patent fees under the rules. Applying
this construction to the licensing of an invention to a Federal agency
by an independent inventor, small business concern, or nonprofit
organization pursuant to a funding agreement under  35 U.S.C. 202(c)(4)
would preclude their qualifying for paying reduced fees. This, however,
would frustrate the intent of Public Law 97-247 and Public Law 96-517
when taken together.
Government organizations as such, whether domestic or foreign, cannot
qualify as nonprofit organizations as defined in  37 CFR 1.9(e). Thus,
for example, a government research facility or other government-owned
corporation could not qualify.  37 CFR 1.9(e) was based upon  35 U.S.C.
201(i), as established by Public Law 96-517. The limitation to "an
organization of the type described in section 501(c)(3) of the Internal
Revenue Code of 1954 (26 U.S.C. 501(c)(3)) and exempt from taxation
under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a))"
would by its nature exclude the U.S. government and its agencies and
facilities, including research facilities and government corporations.
State and foreign governments and governmental agencies and facilities
would be similarly excluded.  37 CFR 1.9(e) is not intended to include
within the definition of a nonprofit organization government
organizations of any kind located in any country.  A university or other
institution of higher education located in any country would qualify,
however, as a "nonprofit organization" under  37 CFR 1.9(e) even though
it has some government affiliation since such institutions are
specifically included.
A wholly owned subsidiary of a nonprofit organization or of a university
is considered a part of the nonprofit organization or university and is
not precluded from qualifying for small entity status.
---SECTION---509.03 Claiming Small Entity Status
37 CFR 1.27 Statement of status as small entity.
(a) Any person seeking to establish status as a small entity (Section
1.9(f) of this part) for purposes of paying fees in an application or a
patent must file a statement in the application or patent prior to or
with the first fee paid as a small entity.  Such a statement need only
be filed once in an application or patent and remains in effect until
changed.
(b) When establishing status as a small entity pursuant to paragraph (a)
of this section, any statement filed on behalf of an independent
inventor must be signed by the independent inventor except as provided
in Section  1.42, Section  1.43, or Section  1.47 of this part and must
state that the inventor qualifies as an independent inventor in
accordance with Section  1.9(c) of this part. Where there are joint
inventors in an application, each inventor must file a statement
establishing status as an independent inventor in order to qualify as a
small entity. Where any rights have been assigned, granted, conveyed, or
licensed, or there is an obligation to assign, grant, convey, or
license, any rights to a small business concern, a nonprofit
organization, or any other individual, a statement must be filed by the
individual, the owner of the small business concern, or an official of
the small business concern or nonprofit organization empowered to act on
behalf of the small business concern or nonprofit organization
identifying their status. For purposes of a statement under this
paragraph, a license to a Federal agency resulting from a funding
agreement with that agency pursuant to  35 U.S.C. 202(c)(4) does not
constitute a license as set forth in Section  1.9 of this part.
(c)(1) Any statement filed pursuant to paragraph (a) of this section on
behalf of a small business concern must:
(i) Be signed by the owner or an official of the small business concern
empowered to act on behalf of the concern;
(ii) State that the concern qualifies as a small business concern as
defined in Section  1.9(d); and
(iii) State that the exclusive rights to the invention have been
conveyed to and remain with the small business concern or, if the rights
are not exclusive, that all other rights belong to small entities as
defined in Section  1.9.
(2) Where the rights of the small business concern as a small entity are
not exclusive, a statement must also be filed by the other small
entities having rights stating their status as such. For purposes of a
statement under this paragraph, a license to a Federal agency resulting
from a funding agreement with that agency pursuant to  35 U.S.C.
202(c)(4) does not constitute a license as set forth in Section  1.9 of
this part.
(d)(1) Any statement filed pursuant to paragraph (a) of this section on
behalf of a nonprofit organization must:
(i) Be signed by an official of the nonprofit organization empowered to
act on behalf of the organization;
(ii) State that the organization qualifies as a nonprofit organization
as defined in Section  1.9(e) of this part specifying under which one of
Section  1.9(e)(1), (2), (3), or (4) of this part the organization
qualifies; and
(iii) State that exclusive rights to the invention have been conveyed to
and remain with the organization or if the rights are not exclusive that
all other rights belong to small entities as defined in Section  1.9 of
this part.
(2) Where the rights of the nonprofit organization as a small entity are
not exclusive, a statement must also be filed by the other small
entities having rights stating their status as such.  For purposes of a
statement under this paragraph, a license to a Federal agency pursuant
to  35 U.S.C. 202(c)(4) does not constitute a conveyance of rights as
set forth in this paragraph.
37 CFR 1.27 provides in paragraph (a) that any person seeking to
establish status as a small entity, as defined in  37 CFR 1.9(f) for the
purpose of paying reduced fees, must file a statement to that effect
prior to or with the payment of the first fee paid as a small entity. 37
CFR 1.27(b) provides specifically for inventors filing statements
claiming status as independent inventors.
37 CFR 1.27(c) provides for claiming status as a small business concern.
37 CFR 1.27(d) provides for claiming status as a nonprofit organization.
Under  37 CFR 1.27, as long as all of the rights remain in small
entities, the fees established for a small entity can be paid. This
includes circumstances where the rights were divided between an
independent inventor, a small business concern, and a nonprofit
organization, or any combination thereof.
Under  37 CFR 1.4(d)(2), the presentation of a statement claiming small
entity status inherently contains a certification under  37 CFR
10.18(b). It is not required that a new statement be filed with each fee
paid.  Rather, once a statement is filed in an application or patent,
small entity status remains in the application or patent until the
Office is notified of a change in status. Notification of change in
status is required by  37 CFR 1.28(b).
Status as a small entity may be established in a provisional application
by complying with  37 CFR 1.27.
Status as a small entity must be specifically established in each
application or patent in which the status is available and desired.
Status as a small entity in one application or patent does not affect
any other application or patent, including applications or patents which
are directly or indirectly dependent upon the application or patent in
which the status has been established.  The filing of an application
under  37 CFR 1.53 as a continuation-in-part, continuation or division
(including a continued prosecution application under  37 CFR 1.53(d)),
or the filing of a reissue application requires a new determination as
to continued entitlement to small entity status for the continuing or
reissue application.
A nonprovisional application claiming benefit under  35 U.S.C. 119(e),
120, 121, or 365(c) of a prior application or a reissue application may
rely on a statement filed in the prior application or in the patent if
the nonprovisional or reissue application includes a reference to the
statement in the prior application or patent, or includes a copy of the
statement in the prior application or patent, and status as a small
entity is still proper and desired.  Payment of the small entity basic
statutory filing fee in a nonprovisional application, which claims
benefit under  35 U.S.C. 119(e), 120, 121, or 365(c) of a prior
application or in a reissue application, where the prior application or
the patent has small entity status, will constitute a reference in the
nonprovisional or reissue application to the small entity statement in
the prior applica tion or in the patent, thereby establishing small
entity status in the nonprovisional application. See MPEP Section
201.06(c) for continuation and divisional applications filed under  37
CFR 1.53(b).
The rules do not authorize a patent attorney to sign a statement
establishing status as a small entity on behalf of a client. The client
has to sign the statement. Paragraph (b) of  37 CFR 1.27 requires that
any statement filed on behalf of an independent inventor must be signed
by the independent inventor except as provided in  37 CFR 1.42, 1.43, or
1.47.  Paragraphs (c) and (d) of  37 CFR 1.27 require that any statement
filed on behalf of a small business concern or nonprofit organization
must be signed by an official of the concern or nonprofit organization
empowered to act on behalf of the concern or organization.
The term "official" is intended to include any officer, employee, or
part-owner empowered to act on behalf of a small business concern or
nonprofit organization. For example, an officer or employee of a
corporation empowered to act for the corporation by its board of
directors would be qualified to sign such a statement. The intent of
paragraphs (b)-(d) of  37 CFR 1.27 is that the statement be signed by
the person in the best position to know the facts as to whether or not
status as a small entity can be properly established insofar as the
attorney's responsibilities and duty to investigate are concerned.
37 CFR 1.28 Effect on fees of failure to establish status, or change
status, as a small entity.
(a)(1) The failure to establish status as a small entity (Section
Section  1.9(f) and 1.27 of this part) in any application or patent
prior to paying, or at the time of paying, any fee precludes payment of
the fee in the amount established for small entities.  A refund pursuant
to Section  1.26 of this part, based on establishment of small entity
status, of a portion of fees timely paid in full prior to establishing
status as a small entity may only be obtained if a statement under
Section  1.27 and a request for a refund of the excess amount are filed
within two months of the date of the timely payment of the full fee. The
two-month time period is not extendable under Section  1.136.  Status as
a small entity is waived for any fee by the failure to establish the
status prior to paying, at the time of paying, or within two months of
the date of payment of, the fee.
(2) Status as a small entity must be specifically established in each
application or patent in which the status is available and desired.
Status as a small entity in one application or patent does not affect
any other application or patent, including applications or patents which
are directly or indirectly dependent upon the application or patent in
which the status has been established.  The refiling of an application
under Section  1.53 as a continuation, division, or continuation-in-part
(including a continued prosecution application under Section  1.53(d)),
or the filing of a reissue application requires a new determination as
to continued entitlement to small entity status for the continuing or
reissue application. A nonprovisional application claiming benefit under
35 U.S.C. 119(e), 120, 121, or 365(c) of a prior application, or a
reissue application may rely on a statement filed in the prior
application or in the patent if the nonprovisional application or the
reissue application includes a reference to the statement in the prior
application or in the patent or includes a copy of the statement in the
prior application or in the patent and status as a small entity is still
proper and desired. The payment of the small entity basic statutory
filing fee will be treated as such a reference for purposes of this
section.
(3) Once status as a small entity has been established in an application
or patent, the status remains in that application or patent without the
filing of a further statement pursuant to Section  1.27 of this part
unless the Office is notified of a change in status.
(b) Once status as a small entity has been established in an application
or patent, fees as a small entity may thereafter be paid in that
application or patent without regard to a change in status until the
issue fee is due or any maintenance fee is due. Notification of any
change in status resulting in loss of entitlement to small entity status
must be filed in the application or patent prior to paying, or at the
time of paying, the earliest of the issue fee or any maintenance fee due
after the date on which status as a small entity is no longer
appropriate pursuant to Section  1.9 of this part. The notification of
change in status may be signed by the applicant, any person authorized
to sign on behalf of the assignee, or an attorney or agent of record or
acting in a representative capacity pursuant to Section  1.34(a) of this
part.
(c) If status as a small entity is established in good faith, and fees
as a small entity are paid in good faith, in any application or patent,
and it is later discovered that such status as a small entity was
established in error or that through error the Office was not notified
of a change in status as required by paragraph (b) of this section, the
error will be excused upon payment of the deficiency between the amount
paid and the amount due. The deficiency is based on the amount of the
fee, for other than a small entity, in effect at the time the deficiency
is paid in full.
(d)(1) Any attempt to fraudulently (i) establish status as a small
entity or (ii) pay fees as a small entity shall be considered as a fraud
practiced or attempted on the Office.
(2) Improperly and with intent to deceive (i) establishing status as a
small entity or (ii) paying fees as a small entity shall be considered
as a fraud practiced or attempted on the Office.
37 CFR 1.28 provides guidance to the effect of failure to establish or
notify the Office of any change from small entity status.  37 CFR
1.28(a)(3) provides that once status as a small entity has been
established in an application or patent, the status remains in that
application or patent without the filing of a further statement pursuant
to  37 CFR 1.27, unless the Office is notified of a change in status.
Under  37 CFR 1.28(a)(2), status as a small entity in one application or
patent does not affect any other application or patent, including
applications or patents which are directly or indirectly dependent upon
the application or patent in which the status has been established. A
nonprovisional application claiming the benefit under  35 U.S.C. 119(e),
120, 121, or 365(c) of a prior application or a reissue application may
rely on a statement filed in the prior application or in the patent if
the nonprovisional application includes a reference to the statement in
the prior application or patent, or includes a copy of the statement in
the prior application or patent, and status as a small entity is still
proper and desired. Payment of the small entity basic statutory filing
fee in a nonprovisional application, which claims benefit under  35
U.S.C. 119(e), 120, 121, or 365(c) of a prior application or in a
reissue application, where the prior application or the patent has small
entity status, will constitute a reference in the nonprovisional or
reissue application to the small entity statement in the prior
application or in the patent, thereby establishing small entity status
in the nonprovisional application. See MPEP Section  201.06(c) for
continuation and divisional applications under  37 CFR 1.53(b).  37 CFR
1.28(b) requires that notification of any change in status resulting in
loss of entitlement to small entity status be filed in the application
or patent prior to paying, or at the time of paying, the earliest of the
issue fee or any maintenance fee due after the date on which status as a
small entity is no longer appropriate. Notification is not required if
rights to an invention are transferred from one small entity to another
small entity but small entity status is not lost thereby. This means
that only four checks are required during the pendency of an
application, followed by the term of a patent after initial
establishment of small entity status if such establishment was made
prior to payment of the issue fee.
The Office will ordinarily require statements claiming small entity
status only from parties holding rights in the invention. For example,
if an independent inventor has transferred all rights in the invention
to a small business concern, the Office will not require a statement
from the inventor as well as from the small business concern. A
statement from the independent inventor, however, will be required in
the situation where all rights in the invention have been transferred to
an individual who files the statement form entitled "Statement By a
Non-Inventor Supporting A Claim by Another For Small Entity Status." The
language of this latter form clearly shows that it is meant to be filed
in addition to another statement form.
No confirming statement is required where there has been no change in
small entity status. Paragraph (c) of  37 CFR 1.28 provides that if
small entity status is established in good faith and the small entity
fees are paid in good faith, and it is later discovered that such status
as a small entity was established in error or through error the Office
was not notified of a change of status, the error will be excused if
payment of the deficiency between the amount paid and the amount
actually due is made. The deficiency is based on the amount of the fee,
for other than a small entity, in effect at the time the deficiency is
paid in full.
37 CFR 1.28 also provides guidance as to the effect of improperly
establishing status as a small entity. The intent of the reduced fees
for small entities is to soften the impact of the fee increases under
Section  41(a) and (b) of Title 35, United States Code, as such sections
were amended by Public Law 97-247, upon those who are least able to
absorb the increased fees without overall damage to their ability to
participate in the patent system through the filing, issuing, and
maintaining of patents. Accordingly, any attempt to improperly establish
status as a small entity will be viewed as a serious matter by the
Office and  37 CFR 1.28(d) indicates that any attempt to fraudulently
establish status as a small entity or pay fees as a small entity will be
considered as a fraud practiced or attempted on the Office. In addition,
improperly and with intent to deceive establishing status as a small
entity or paying fees as a small entity will be considered as a fraud
practiced or attempted on the Office. Normally, the Office will not
question a claim to status as a small entity. However, if the Office
must resolve such an issue in a question arising before it, the Office
will look to the actual or practical status of the individual or
organization claiming status as a small entity rather than the professed
or apparent status.
Request for refunds, along with the statements, should be addressed to
the Assistant Commissioner for Patents, Washington, D.C. 20231, and
directed to the attention of the Refund Section, Financial Accounting
Division, Office of Finance.
The Patent and Trademark Office does not give advisory opinions as to
whether or not a specific individual or organization qualifies for
status as a small entity. In establishing reduced fees for independent
inventors, small business concerns, and nonprofit organizations, the
Congressional consideration of the legislation which became Public Law
97-247 indicated an intent that the Patent and Trademark Office rely
exclusively on a self-certification that a patent applicant qualifies as
an independent inventor, small business concern, or nonprofit
organization. In addition, it was also stated during Congressional
consideration of the legislation that no additional resources would be
required to administer the system whereby fees would be reduced for
small entities.
In view of the intent expressed during Congressional consideration of
the legislation, it would be inappropriate for the Patent and Trademark
Office to give advisory opinions as to entitlement to small entity
status. Accordingly, any person seeking to establish status as a small
entity for purposes of paying the fee in an application or patent must
file the statement required by  37 CFR 1.27 and in so doing is
self-certifying entitlement to small entity status.
Small entity status must not be established unless the person or persons
signing the statement can unequivocally make the required
self-certification. Any appropriately signed and filed statement will be
considered by the Patent and Trademark Office to be a
self-certification.
If a statement claiming small entity status is filed in a language other
than English, it must be accompanied by an English translation (37 CFR
1.69(b)). A non-English language statement claiming small entity status
will not be given any effect until the English translation is filed and
the full fees will be due until then.
A maintenance fee improperly paid as a small entity will be treated as a
matter under  37 CFR 1.28(c) and will not be considered to involve
expiration of the patent under  37 CFR 1.378.
Form PTO/SB/09. StatementClaiming Small Entity Status (37 CFR 1.9(f) &
1.27(b))-Independent Inventor[GRAPHIC]
[GRAPHIC]
[GRAPHIC]
[GRAPHIC]
---SECTION---510 Patent and Trademark Office Business Hours
The Patent and Trademark Office working hours are 8:30 a.m. to 5:00
p.m., Monday through Friday, excluding Federal holidays in the District
of Columbia. Outside these hours, only Patent and Trademark Office
employees are authorized to be in areas of the Patent and Trademark
Office other than the Public Search Rooms.
The hours for the Patent Search Room are 8:00 a.m. to 8:00 p.m., and the
hours for the Trademark Search Room are 8:00 a.m. to 6:00 p.m., Monday
through Friday, excluding Federal holidays in the District of Columbia.
During working hours, all applicants, attorneys, and other members of
the public should announce their presence to the Office personnel in the
area of their visit. In the examining groups, visitors should inform the
group receptionist of their presence before visiting other areas of the
group.
FILING OF PAPERS DURING UNSCHEDULED CLOSINGS OF THE PATENT AND TRADEMARK
OFFICE
37 CFR 1.9(h) provides that the definition of "Federal holiday within
the District of Columbia" includes an official closing of the Office.
When the entire Patent and Trademark Office is officially closed for
business for an entire day, for reasons due to adverse weather or other
causes, the Office will consider each such day a "Federal holiday within
the District of Columbia" under  35 U.S.C. 21. Any action or fee due on
such a day may be taken, or fee paid, on the next succeeding business
day the Office is open.  In addition, 37 CFR 1.6(a)(1) provides "[t]he
Patent and Trademark Office is not open for the filing of correspondence
on any day that is a Saturday, Sunday or Federal holiday within the
District of Columbia" to clarify that any day that is a Saturday, Sunday
or Federal holiday within the District of Columbia is a day that the
Patent and Trademark Office is not open for the filing of applications
within the meaning of Article 4(C)(3) of the Paris Convention. Note
further that in accordance with  37 CFR 1.6(a)(2), even when the Office
is not open for the filing of correspondence on any day that is a
Saturday, Sunday or Federal holiday within the District of Columbia,
correspondence deposited as Express Mail with the United States Postal
Service in accordance with  37 CFR 1.10 will be considered filed on the
date of its deposit, regardless of whether that date is a Saturday,
Sunday or Federal holiday within the District of Columbia (under  35
U.S.C. 21(b) or  37 CFR 1.7).
When the Patent and Trademark Office is open for business during any
part of a business day between 8:30 a.m. and 5:00 p.m., papers are due
on that day even though the Office may be officially closed for some
period of time during the business day because of an unscheduled event.
The procedures of  37 CFR 1.10 may be used for filing applications.
Information regarding whether or not the Office is officially closed on
any particular day may be obtained by calling (703) 308-4357 which
transposes to (703) 308-HELP.
WARNING: Since a provisional application can be pending for no more than
twelve months, the last day of pendency may occur on a Saturday, Sunday,
or Federal holiday within the District of Columbia which for copendency
would require the nonprovisional application to be filed on or prior to
the Saturday, Sunday, or Federal holiday. See  37 CFR 1.78(a)(3).
However, note that new patent applications filed in accordance with  37
CFR 1.10 will be stamped by the Office with the date of deposit as
"Express Mail" with the United States Postal Service.  For example, if a
new patent application is deposited in "Express Mail" in accordance with
37 CFR 1.10 on a Saturday and the United States Postal Service gives it
a date of deposit of Saturday, the Office will accord and stamp the
correspondence with the Saturday date.  37 CFR 1.6(a)(2).
REGULATIONS FOR THE PUBLIC USE OF RECORDS IN THE PATENT SEARCH ROOM OF
THE PATENT AND TRADEMARK OFFICE
The Patent and Trademark Office has established procedures and
regulations for using the facilities of the Patent Search Room. The
procedures for the Search Room include the requirement that users obtain
and show, prior to entering the Search Room facilities, a User Pass.
This pass can be obtained at the receptionist's desk in the lobby of
Crystal Plaza Building 3, 2021 South Clark Place, Arlington, VA. User
Passes will be issued to persons not under prohibition from using the
search facilities who sign an application form and acknowledge receipt
of a copy of the noted regulations. User Passes are nontransferable and
are valid until reissue or revocation for cause. Office employees must
show their building pass in order to enter the Patent Search Room.
Persons exiting the Search Room will automatically pass electronic
sensing equipment designed to detect any marked documents or materials
being removed from the Search Room. The sensing equipment is capable of
detecting marked documents and materials in briefcases and parcels and
under clothing. The equipment does not use X-ray or other high energy
radiation and is, therefore, completely safe and harmless to persons,
photographic film, magnetic tape, and electronic or mechanical devices
such as wrist watches.
Whenever a marked document is transported past the sensing equipment,
Patent and Trademark Office officials and the security guards will be
alerted to the removal of the document. Persons triggering the alarm
will be asked to cooperate in identifying the source for the alarm.
Failure to cooperate when the alarm is triggered could result in
detention of the person, seizure of any briefcase or the like, or other
legal measures deemed necessary and appropriate in the specific case.
The regulations for the Search Room are reprinted in a regulation
brochure. It is available in the Search Room. In order to maintain an
environment conductive to search, the regulations will be strictly
enforced.
Although these procedures and regulations may cause some inconvenience,
it is hoped that with understanding and cooperation they will result in
improvement in search facilities which will benefit all participants in
the U.S. patent system.
Persons violating the regulations may be denied the use of the
facilities in the Patent Search Room, and may further be subjected to
prosecution under the Criminal Code. Additionally, the name of any
person violating these regulations who is registered to practice before
the Patent and Trademark Office may be forwarded to the Office of
Enrollment and Discipline for appropriate action under 37 CFR Part 10.
USE OF PATENT EXAMINING GROUP FACILITIES
The primary function of the Patent and Trademark Office is the
examination of nonprovisional applications for patents and the issuance
of valid patents based upon a search and consideration of the best
available prior art. This can be accomplished only through maintaining
strict search file integrity within the patent examining group
facilities.
Therefore, the regulations appearing below were established for those
authorized members of the public using the facilities of the patent
examining groups.
Although these regulations may cause some inconvenience, it is believed
that with the cooperation and understanding of the public, a more
efficient and reliable examination system within the patent examining
groups will result.
A copy of the following "Regulations for Users of the Patent Examining
Group Facilities," is posted in each of the Patent Examining Groups and
the Patent Search Room:
REGULATIONS FOR USERS OF THE PATENT EXAMINING GROUP SEARCH FACILITIES
(A) Group facilities are defined as those areas in Crystal City
(Arlington, VA) where the Examining Groups are located.
(B) The use of the Group facilities for search purposes by members of
the public is strictly limited to the search of materials not available
in the Patent Search Room or the Scientific and Technical Information
Center (STIC) and when it does not conflict with the regular business of
Patent and Trademark personnel and only between the hours of 8:45 a.m.
and 4:45 p.m. on regular business days.
(C) Authorized Officials, under these regulations, include Supervisory
Patent Examiners and Examining Group Directors.
(D) Under applicable statutes and regulations, including  40 U.S.C.
486(c); 41 CFR Subpart 101-20.3; and appropriate Sections of Department
Organization Orders 30-3A and 30-3B of the Department of Commerce, the
regulations appearing below are established for those members of the
public using the Group Facilities.
(1) All persons using these facilities are subject to the Regulations
Governing Conduct on Federal Property, as specified in 41 CFR Subpart
101-20.3.
(2) All posted Official Notices are to be complied with.
(3) A valid User Pass must be prominently displayed when searching in
the Group Facilities. User Passes are nontransferable and must be
surrendered upon request to authorized officials.
(4) All persons holding User Passes must register with the Group
Receptionist, unless otherwise directed, in each Examining Group where
they search and must sign a log (e.g., indicating time-in, time-out,
name, User Pass number, class(es) and subclass(es) searched).
(5) No patents, records, or other documents of the Patent and Trademark
Office shall be removed from the Group Facilities except by express
written authorization by an authorized official in the Examining Group
where the material resides. Such authorization will not be given for
U.S. patents and other material readily available through the Scientific
and Technical Information Center.
(6) Smoking is not permitted except in designated areas.
(7) No food or beverages in any form are to be consumed except in
designated areas.
(8) Loud talking, use of radios, and any other form of activity which
may disturb other members of the public or Patent and Trademark Office
personnel are forbidden.
(9) Children brought into the Group Facilities must not be allowed to
disturb others.
(10) The presence or use of equipment such as dictation equipment,
reproducing machines, typewriters, and photographic equipment is
prohibited without prior permission from an authorized official in the
Examining Group where the use is intended and then is permitted where
its use does not conflict with regulation (8) above.
(11) Patents and other documents must not be removed from their shoes
for any reason other than for cursory study thereof while kept in close
proximate association with the shoe and must not be moved out of their
normal sequence.
(12) All patent shoes must be promptly replaced in their proper location
in the shoe case.
(13) All textbooks, journals, and the like must be returned to their
proper location.
(14) The reserving of seats and/or working areas is prohibited.
(15) All packages, briefcases, or other personal effects brought into
the Group Facilities are subject to search by authorized officials upon
request and must be removed when leaving the Group Facilities.
(16) All verbal requests for compliance with these regulations or other
posted Patent and Trademark Office Notices pertaining to activity in the
Group Facilities, when made by authorized officials, must be promptly
complied with.
(E) Persons violating these regulations may be denied the use of the
facilities in the Examining Groups and Patent Search Room, and may
further be subject to prosecution under the Criminal Code. Additionally,
the name of any person violating these regulations who is registered to
practice before the Patent and Trademark Office may be forwarded to the
Office of Enrollment and Discipline for appropriate action under 37 CFR
Part 10.
If any individual is observed in violation of any of the regulations,
immediate compliance should be courteously requested. If a verbal
request is not complied with, a note should be made of the individual's
name and User's Pass number, if possible (the User's Pass is required to
be prominently displayed) and report the incident to the Supervisory
Patent Examiner, Supervisory Applications Examiner, or other appropriate
supervisor who will take further action.
In addition, if any individual in a search area appears to be a stranger
and is not wearing a User's Pass, some identification, such as a
Building or User's Pass, should be requested. If the individual refuses,
notify a supervisor. Consequently, all Office employees are expected to
carry their Building Pass with them at all times, especially when
searching outside of their assigned groups.
Supervisors, when aware of violations of the posted regulations, should
prepare a memorandum detailing the facts of the incident and forward
this memorandum to the Deputy Assistant Commissioner for Patents via
their Group Director. Supervisory Patent Examiners and Group Directors
are authorized to demand surrender of User Passes on-the-spot. If the
Supervisory Patent Examiner exercises this function, the Group Director
should be immediately notified, followed up by a memorandum as
previously set forth.
---SECTION---511 Postal Service Emergency Contingency Plan
35 U.S.C. 21 Filing date and day for taking action.
(a) The Commissioner may by rule prescribe that any paper or fee
required to be filed in the Patent and Trademark Office will be
considered filed in the Office on the date on which it was deposited
with the United States Postal Service or would have been deposited with
the United States Postal Service but for postal service interruptions or
emergencies designated by the Commissioner.
                  +++
37 CFR 1.6 Receipt of letters and papers.
                  +++
(e) Interruptions in U.S. Postal Service.
If interruptions or emergencies in the United States Postal Ser vice
which have been so designated by the Commissioner occur, the Patent and
Trademark Office will consider as filed on a particular date in the
Office any correspondence which is:
(1) Promptly filed after the ending of the designated interruption or
emergency; and
(2) Accompanied by a statement indicating that such correspondence would
have been filed on that particular date if it were not for the
designated interruption or emergency in the United States Postal
Service.
37 CFR 1.6(e) provides a procedure under which correspondence (papers
and fees) which could not be filed on a particular date because of an
interruption or emergency in the United States Postal Service which is
so designated by the Commissioner, may be promptly filed after the
ending of such a designated interruption or emergency and be considered
as having been filed on that particular date. Authority for such a
practice is found in  35 U.S.C. 21(a), as amended by Public Law 97-247.
The U.S. Patent and Trademark Office is establishing the following
contingency plan for filing correspondence in the Office in the event of
a designated interruption or emergency in the mail service in the United
States. Upon determination by the Commissioner of Patents and Trademarks
that such an emergency exists, a notice activating the plan will be
issued by the Commissioner. The activating notice will be published in
the Wall Street Journal and made available by telephone at area code
(703) 308-HELP or toll free 1-800-PTO-9199. Also, certain publications,
patent bar groups, and other organizations closely associated with the
patent system, will be notified. Termination of the program will be
similarly announced. Where the postal emergency is not nationwide, the
Commissioner will designate the areas of the United States in which the
procedures outlined below will be in effect.
U.S. Department of Commerce District Offices will be designated, on an
emergency basis, as receiving stations for filing correspondence in the
U.S. Patent and Trademark Office.
Upon determination that an emergency exists, the following procedures
may be followed:  All correspondence should be enclosed in a sealed
envelope addressed to the Patent and Trademark Office and deposited in
one of the District Offices. Such papers will be considered as received
in the U.S. Patent and Trademark Office on the day of deposit. The
District Office will date stamp each envelope and the accompanying
receipt card which completely identifies the deposited papers. The
receipt card will be returned to the depositor. Applicants or their
representatives should assure the legibility of the date stamp.
District Office deposits should be limited to checks in payment of issue
fees, new application papers wherein priority dates or statutory bars
may be involved, amendments where the 6-month statutory period for reply
is about to expire, trademark oppositions, Section 8 affidavits,
trademark renewals, and to other papers for which the patent and
trademark statutes do not provide a remedy for failure to obtain a
particular date.
Where papers originate from overseas, it is suggested that the papers be
mailed to a registered agent in Canada, with a request that the papers
be forwarded by courier to the nearest District Office in the United
States.
In regard to pending applications, if the time for taking any action or
paying any fee expires during the period that the Commissioner declares
to be an emergency, the time will be extended until 1-month after the
end of the emergency period, provided that such extension does not
exceed the maximum period for reply provided for in the statutes.
Since this extension of time will be automatic, there will be no record
in the individual files to indicate that a reply filed during the
extended period is in fact timely. In order to provide a complete
record, applicants or their representatives should file a paper
referring to this notice in each case in which a reply is filed during
the extended period.
The addresses of the Department of Commerce District Offices, subject to
subsequent changes, are as follows:
ALABAMA
Birmingham
- 950 22nd Street North, Room 707, 35203 - Tel. 205-731-1331.
ALASKA
Anchorage
-3601 C Street,  Suite 700, 99503 - Tel. 907-271-6237.
- 222 West 7th Ave., #23, 99513-7575 - Tel. 907-271-5136
Fairbanks
- 1 Eisele Rd., 99712  - Tel. 907-451-1271.
Juneau
- P.O. Box 21668, 99802-1668 - Tel. 907-586-7221
ARIZONA
Phoenix
- 2901 N. Central Ave., Suite 970, 85012 - Tel. 602-640-2513
Tucson
- 6363 S. Country Club Rd., Suite 151, 85706-5906 - Tel. 520-889-6056
ARKANSAS
Little Rock
- Suite 700, 425 W. Capitol Ave., 72201 - Tel. 501-324-5794
CALIFORNIA
El Monte
- 9660 Flair Drive, Suite 455, 91731 - Tel. 818-435-8636
Fresno
- 390-B Fir Ave., Clovis, 93611, Tel. 209-325-1619
Inland Empire
- 2940 Inland Empire Blvd., Suite 121, Ontario, 91764 - Tel.
909-466-4134
Irvine
- Suite 310, 2601 Main Street, 92714 - Tel. 714-251-9001
La Jolla
- 8604 La Jolla Shores Dr., 92038  - Tel. 619-546-7081
Long Beach
- One World Trade Center, Suite 1670, 90831 - Tel. 562-980-4551.
- 501 W. Ocean Blvd., Suite 4200, 90802-4213 - Tel. 310-980-4001
Los Angeles (Downtown)
- 350 S. Figueroa St., Suite 172, 90071 - Tel. 213-894-8784
Los Angeles (West)
- 11000 Wilshire Blvd., Room 9200, 90024 - Tel. 310-235-7104
Monterey
- Airport Road, Bldg. 4, Room 148, 93943 - Tel. 408-647-4206
- 411 Pacific St., Suite 200, 93940  - Tel. 408-641-9850.
Newport Beach
- Suite 345, 3300 Irvine Ave., 92660 - Tel. 714-660-0144
Novato
- 330 Ignacio Blvd., Suite 102, 94949 - Tel. 415-883-1966
Oakland
- 530 Water St., Suite 740, 94607  - Tel. 510-273-7350
Orange County
- 3300 Irvine Ave., Suite 305, Newport Beach, 92660 - Tel. 714-660-1688
Oxnard
- 300 Esplanade Drive, Suite 2090, 93030 - Tel. 805-981-8150
Sacramento
- 917 7th St., 2nd Floor, 95814 - Tel. 916-498-5155
San Francisco
- 250 Montgomery St., 14th Floor, 94104  - Tel. 415-705-2300.
- 221 Main St., Room 1280, 94105 - Tel. 415-744-3001
Santa Clara
- 5201 Great American Pkwy., # 456, 95054 - Tel. 408-970-4610
San Jose
- Suite 250, 96 N. Third Street, 95112-5119 - Tel. 408-291-4204
- 101 Park Center Plaza, Suite 1001, 95113 - Tel. 408-998-7402
San Diego
- 6363 Greenwich Dr., Suite 230, 92122 - Tel. 619-557-5395
Van Nuys
- 15350 Sherman Way, Suite 300, 91406-4224 - Tel. 818-904-6393
COLORADO
Boulder
- 325 Broadway, 80303 - Tel. 303-497-6431
- Radio Building, Room 5001, 80303 - Tel. 303-497-3237
- 1050 Walnut Street, Suite 220, 80302 - Tel. 303-939-0210
Denver
- 6900 W. Jefferson Ave., 80235-2032 - Tel. 1-303-969-6750
- 1244 Speer Blvd., Room 670, 80204 - Tel. 303-844-4715
-  1625 Broadway, Suite 680, 80202 - Tel. 303-844-6622
- 900 19th Street, Suite 765, 80202 - Tel. 303-312-7650
- 999 18th Street, Suite 735, 80202 - Tel. 303-312-7680
CONNECTICUT
Middletown
- Suite 903, 213 Court St., 06457-3346 - Tel. 860-638-6950
Milford
- 212 Rogers Ave., 06460-6435 - Tel. 203-783-4200
DELAWARE
615 Chestnut St., Suite 1501,  Philadelphia, PA 19106 - Tel.
215-597-6101
DISTRICT OF COLUMBIA
14th St. & Constitution Ave., NW, Room 7620, 20230 - Tel. 202-482-0907
FLORIDA
Clearwater
- 1130 Cleveland St., 34615, Tel. 813-461-0011
Coral Gables
- 1320 S. Dixie Hwy. Room 631, IRE Bldg.,  33146-2911 - Tel.
305-666-4612
Fort Lauderdale
- 200 E. Las Olas Blvd., Suite 1260, 33301 - Tel. 305-356-7540
Miami
- P.O. Box 590570, 33159, 5600 Northwest 36th St., Suite 617, 33166 -
Tel. 305-526-7425
- 51 S.W. First Ave., Room 1314, Federal Office Bldg., 33130 - Tel.
305-536-5054
- 75 Virginia Beach Dr., 33149-1603 - Tel. 305-361-4284
- 4301 Rickenbacker Causeway, Virginia Key
- Tel. 305-361-4300
- 3401 Northwest 59th St., P.O. Box 020197, 33102-0197
- Tel. 305-526-7100
Orlando
- 200 E. Robinson St., Suite 1270, 32801 - Tel. 407-648-6235
Tallahassee
- The Capitol, Suite 2001, 32399-0001 - Tel. 904-488-6469
St. Petersburg
- 9450 Koger Blvd., 33702 - Tel. 813-893-3141
GEORGIA
Atlanta
- 101 Marietta St. N.W., Suite 3200, 30303-2700 - Tel. 1-404-730-3832
- 401 W. Peachtree St., N.W., Suite 1820, 30308-3510 - Tel. 404-730-3002
- 285 Peachtree Center Ave., NE, Suite 200, 30303-1229 - Tel.
404-657-1900
- 401 West Peachtree St., N.W.,
- Room 1715, The Summit Bldg., 30308 - Tel. 404-730-3300
- 401 West Peachtree St., N.W., Suite 2342,  30308 - Tel. 404-730-2780
Savannah
- 6001 Chatham Center Dr., Suite 100, 31405, - Tel. 912-652-4204.
HAWAII
Honolulu
- 300 Ala Moana Blvd., Room 4106, P.O. Box 50026, 96850  - Tel.
808-541-1782.
- 300 Ala Moana Blvd. (mail to: NOAA, P.O. Box, Room 4110, Prince Kuhio
Federal Bldg., 50027, Honolulu, HI 96850-4493), - Tel. 808-541-1641
- 2570 Dole St., 96822-2396 - Tel. 808-943-1221
IDAHO
Boise
- 2nd Fl., 700 West State St., 83720
- Tel. 208-334-3857
ILLINOIS
Chicago
- 111 North Canal St., Suite 855, 60606-7204 - Tel. 312-353-7706
- 55 West Monroe St., Suite 2440, 60603 - Tel. 312-353-8045
- 2400 Devon Street, Suite 300, 60018 - Tel. 312-353-6640
- 55 E. Monroe St., Suite 1406, 60603 - Tel. 312-353-0182
Highland Park
- 610 Central Ave., Suite 150, 60035 - Tel. 847-681-8010
Rockford
- 515 North Court St., P.O. Box 1747, 61103 - Tel. 815-987-8123
Westchester
- 2255 Enterprise Dr., Suite 5501, 60154-5800 - Tel. 708-562-1350
Wheaton
- 201 E. Loop Road, 60187, c/o Illinois Institute of Technology, Rice
Campus - Tel. 312-353-4332
INDIANA
Indianapolis
- 11405 N. Pennsylvania St., Suite 106, 46032, - Tel. 317-582-2300.
Jeffersonville
- 1201 E. 10th St., Room 247, 47132, - Tel. 1-812-218-3344.
- Personal Census Search Unit, P.O. Box 1545, Jeffersonville, 47131,  -
Tel.  812-285-5314.
IOWA
Des Moines
- 210 Walnut St., Room 817,  50309 - Tel. 515-284-4222
KANSAS
Kansas City
- 400  State Ave., Gateway Tower II, Suite 600,  66101-2410 - Tel.
913-551-6728
Wichita
- 151 North Volutsia, 67214 - Tel. 316-269-6160
KENTUCKY
Louisville
- 601 W. Broadway, Room 634B, 40202, - Tel. 502-582-5066
Somerset
- 2292 S. Highway 27, Suite 320, 42501 - Tel. 606-677-6160
LOUISIANA
Delta
- 365 Canal St., Suite 2150, New Orleans, 70130 - Tel. 504-589-6546
Shreveport
- 5210 Hollywood Ave., Annex, 71109 - Tel. 318-676-3064
MAINE
Portland
- c/o Maine International Trade Center
- 511 Congress St., 04101 - Tel. 207-541-7400.
MARYLAND
Baltimore
- 401 East Pratt St., World Trade Center, Suite 2432 21202 - Tel.
410-962-4539
Hagerstown
- 319 East Antietam, Hagerstown Telephone Center,  St., FTS  -
301-416-7090
Oxford
- 904 South Morris Ave., Oxford Cooperative Laboratory, 21654 - Tel.
410-226-5193
Silver Spring
- 1315 East West Hwy., 20910 - Tel. 301-713-2259
- 1325 D East West Hwy., 20910 - Tel. 301-713-0684
- NIST Gaithersburg Bldg., 413 Room 114, 20899 - Tel. 301-975-4609
MASSACHUSETTS
Boston
- 2 Copley Place, Suite 301, P.O. Box 9108, 02117-9108,  - Tel.
617-424-0500
- 10 Causeway St., Room 350,  02222 - Tel. 617-565-6030
- 164 Northern Ave., Suite 307, World Trade Center,  02210 - Tel.
617-424-5990
- 10 Causeway St., Room 418, 02222-1041 - Tel. 617-565-6850
Gloucester
- One Blackburn Drive, 01930  - Tel. 508-281-9250
Marlborough
- 100 Granger Blvd., Unit 102, 01752 - Tel. 508-624-6000
Woods Hole
- Northeast Fisheries Center, 02543 - Tel. 617-548-5123
MICHIGAN
Ann Arbor
- 2205 Commonwealth Blvd., 48105-1593 - Tel. 313-668-2244
- 425 S. Main Street, Suite 103, 48104 - Tel. 313-741-2430
Detroit
- 1395 Brewery Park Blvd., P.O. Box 33405  48232-5405 - Tel.
313-259-1158
- 211 W. Fort St., Suite 2220, 48226 - Tel. 313-226-3650
Grand Rapids
- 301 W. Fulton St., Suite 718-S, 49504 - Tel. 616-458-3564
Pontiac
- 250 Elizabeth Lake Road, 48341 - Tel. 248-975-9600
MINNESOTA
Minneapolis
- 110 South 4th St., Room 108, 55401 - Tel. 612-348-1638.
MISSISSIPPI
Mississippi
- 704 East Main St., Raymond, 39154 - Tel. 601-857-0128.
Pascageula
- Mississippi Laboratory, P.O. Box 1207, 39568-1207 - Tel. 601-762-4591.
Stennis Space Center
- Stennis Space Center, SSC, 39529-6000, - Tel. 610-688-2800.
MISSOURI
Kansas City
- 601 E. 12th St., Room 1736, Federal Bldg., 64106, - Tel. 816-426-2050
- 601 E. 12th St., Room 635, 64106 - Tel. 816-426-3141
- 601 E. 12th St., Room 1728, Federal Bldg., 64106-2897 - Tel.
816-426-5922
- Bldg. 9, 617 Hardesty St., 65124-3097 - Tel. 816-374-6263
St. Louis
- 8182 Maryland Ave., Suite 303, 63105 - Tel. 314-425-3302
MONTANA
See Boise, Idaho
NEBRASKA
Omaha
- 11135 O St., 68137 - Tel. 402-221-3664
NEVADA
Reno
- 1755 East Plumb Lane, Suite 152, 89502 - Tel. 702-784-5203
NEW HAMPSHIRE
Portsmouth
- 17 New Hampshire Ave., 03801-2838 - Tel. 603-334-6074
NEW JERSEY
Highlands
- James J. Howard Marine Science Center, Bldg. 74
- McGuruder Rd., 07732  - Tel. 908-872-3000.
Newark
- One Gateway Center, 9th Fl., 07102 - Tel. 201-645-4682
Princeton
- Forrestal Campus, Princeton University, P.O. Box 308 08540
- Tel. 609-452-6502
Trenton
- 3131 Princeton Pike, Bldg. #6, Suite 100, 08648 - Tel. 609-989-2100
NEW MEXICO
Sante Fe
- c/o New Mexico Dept. of Economic Development, P.O. Box 20003,
87504-5003 - Tel. 505-827-0350.
NEW YORK
Bohemia
- 630 Johnson Ave., Airport Corp. Center,  11716 - Tel. 516-244-0100.
Buffalo
- 111 West Huron St., Room 1304, 14202 - Tel. 716-846-5290.
Harlem
- 163 West 125th St., Suite 904, New York, 10027 - Tel. 212-860-6200
Long Island
- 1550 Franklin Ave., Room 207, Mineola, 11501 - Tel. 516-739-1765
New York
- Room 37-130, Jacob J. Javits Federal Office Bldg.,  26 Federal Plaza,
10278-0044 - Tel. 1-212-264-3860
- Room 635, 6 World Trade Center, 10048 - Tel. 212-466-5222
- Room 3720, Jacob J. Javits Federal Office Bldg., 26 Federal Plaza,
10278
- Tel. 212-264-3262
Rochester
- 111 West Huron St., Room 1304, 14604 - Tel. 716-263-6480
Staten Island
- Teleport II, 2 Teleport Drive, 10311 - Tel. 718-370-0070.
Westchester
- 707 West Chester Ave., White Plains, 10604 - Tel. 914-682-6218
NORTH CAROLINA
Asheville
- 151 Patton Ave., 28801-5001, Tel. 704-271-4476
Beaufort
- 101 Pivers Island Rd., 28516-9722, - Tel. 919-728-8724
Carolinas
- 521 E. Morehead St., Suite 435, Charlotte, 28202 - Tel. 704-333-4886
Charlotte
- 901 Center Park Drive, Suite 106, 28217-2935 - Tel. 704-344-6142
Greensboro
- 400 West Market St., Suite 400, 27401 - Tel. 910-333-5345
NORTH DAKOTA
See Minneapolis, Minnesota
OHIO
Cincinnati
- 36 East 7th St., Suite 2650, 45202 - Tel. 513-684-2944
Cleveland
- 600 Superior Ave., East, Suite 700, 44114 - Tel. 216-522-4750.
Columbus
- 4th Fl., 37 North High St., 43215 - Tel. 614-365-9510.
Toledo
- 300 Madison Ave., 43604, Tel. 419-241-0683
OKLAHOMA
Norman
- 1313 Halley Circle, 73069, Tel. 405-366-0427
Oklahoma City
- 301 Northwest 63rd St., Suite 330, 73116
- Tel. 405-231-5302
Tulsa
-	700 N. Greenwood Ave., Suite 1400, 74106 - Tel. 918-581-7650.
OREGON
Eugene
- 1445 Williamette St.,  Suite 13 - Tel. 541-465-6575
Portland
- 121 S.W. Salmon St., Suite 242, 97204 - Tel. 503-326-3001.
PENNSYLVANIA
Harrisburg
- 3rd Fl., 417 Walnut St., 17101, Tel. 717-232-0051
Philadelphia
- 1st Fl., 105 South 7th St., 19106-3395 - Tel. 1-215-597-4920
- Independence Square West, Suite 140 South, 19106 - Tel. 215-597-4603
- Suite 1501, 615 Chestnut St., 19106 - Tel. 215-597-6101
- 600 Arch St., Room 10128, Federal Bldg., 19106 - Tel. 215-597-9236
Pittsburgh
- 1000 Liberty Ave., 2002 Federal Bldg., 15222 - Tel. 412-395-5050
Scranton
- 1 Montage Mountain Road, Suite B, Moosic, 18507 - Tel. 717-969-2530.
PUERTO RICO
San Juan
- 525 F.D. Roosevelt Ave., Suite 905, 00918 - Tel. 787-766-5555
RHODE ISLAND
Narragansett
- Narragansett Laboratory
- 28 Tarzwell Dr., 02882 - Tel. 401-782-3210
Providence
- One West Exchange St., 02903 - Tel. 401-528-5104
SOUTH CAROLINA
Charleston
- 81 Mary St., 29403, P.O. Box 975, 29402 - Tel. 803-727-4051
- Charleston Laboratory
- P.O. Box 12607, 29412-9110 - Tel. 803-762-8500
Columbia
- 1835 Assembly St., Suite 172, 29201 - Tel. 803-765-5345
Upstate
- Park Central Office Park, Bldg. 1, Suite 109
- 555 N. Pleasantburg Dr., Greenville, 29607 - Tel. 864-271-1976
SOUTH DAKOTA
Siouxland
- Augustana College,
- 2001 S. Summit Ave., Room SS-29A, Sioux Falls, 57197 - Tel.
605-330-4264
TENNESSEE
Knoxville
- 301 East Church Ave., 37915 - Tel. 423-545-4637
Memphis
- 22 North Front St., Suite 200, 38103 - Tel. 901-544-4137
Nashville
- 404 James Robertson Pkwy., Suite 114, 37219 - Tel. 615-736-5161
TEXAS
Austin
- 903 San Jacinto Blvd., Suite 121, 78701-2450 - Tel. 512-916-5595.
- 1700 Congress, 2nd Fl., 78701
- P.O. Box 12728, 78711 - Tel. 512-916-5939.
Dallas
- 6303 Harry Hines Blvd., Suite 210, 75235-5269 - Tel. 214-640-4400.
- 2050 N. Stemmons Fwy., Suite 170, 75207
- P.O. Box 420069, 75342-0069 - Tel. 214-767-0542.
- 525 Griffin St., Room 622, 75202 - Tel. 214-767-9294
- 1100 Commerce St., Room 7B23, 75242 - Tel. 214-767-8001
Fort Worth
- 819 Taylor St., Room 10A26, 76102-6171 - Tel. 817-334-2668.
- 711 Houston St., 76102 - Tel. 817-212-2673
Galveston
- Galveston Laboratory
- 4700 Ave. G, 77551-5997 - Tel. 409-766-8511.
Houston
- 500 Dallas, Suite 1160, 77002 - Tel. 713-718-3062
San Antonio
- 1222 N. Main, Suite 450, 78212 - Tel. 210-228-9878
UTAH
Salt Lake City
- 324 South State St., Suite 221, 84111 - Tel. 801-524-5116
- 125 S. State St., Room 1210, NOAA Federal Bldg. 84147-1102 - Tel.
801-524-5122
VERMONT
Montpeller
- National Life Bldg., Drawer 20, 05620-0501 - Tel. 802-828-4508
VIRGINIA
Arlington
- 2001 Jefferson Davis Hwy., Room 509, 20231 - Tel. 703-306-3315
- 1213 Jefferson Davis Hwy., Suite 805, 22202 - Tel. 703-603-0301.
Norfolk
- 200 World Trade Center, 23510 - Tel. 804-441-6864.
- 439 W. York St., 23510-1114 - Tel. 804-441-6776.
Northern Virginia
- 1616 N. Fort Meyer Dr., Suite 1300, Arlington, 22209 - Tel.
703-524-2885.
Richmond
- 704 East Franklin St., Suite 550, 23219 - Tel. 804-771-2246.
Springfield
- 381 Elden St., Herndon, 22070 - Tel. 703-487-9300.
Wallops Island
- P.O. Box 39, 23337 - Tel. 804-824-7311
WASHINGTON
Seattle
- 7600 Sand Point Way, N.E., 98115, - Tel. 206-526-6026.
- 101 Stewart St., Suite 500, 98101-1098, - Tel. 206-728-5300.
- Jackson Federal Bldg.
- 915 Second Ave., Room 1856, 98174  - Tel. 206-220-7660.
- 2001 6th Ave., Suite 650, 98121 - Tel. 206-553-5615.
- 2725 Montlake Blvd., East, 98112, - Tel. 206-860-3200.
- 1801 Fairview Ave., East 98102 - Tel. 206-442-7656.
- 915 Second Ave., Room 3292, Federal Bldg., 98174 - Tel. 206-220-7970.
Spokane
- 1020 West Riverside, 99201 - Tel. 509-353-2625.
WEST VIRGINIA
Charleston
- 405 Capitol St., Suite 807, 25301 - Tel. 304-347-5123.
Wheeling
- 1310 Market St., 2nd Fl., 26003 - Tel. 304-233-7492.
WISCONSIN
Milwaukee
- 517 East Wisconsin Ave., Room 596, 53202 - Tel. 414-297-3473.
WYOMING
Served by:
- 1625 Broadway, Suite 680,
- Denver, Colorado 80202 - Tel. 303-844-6622.
---SECTION---512 Certificate of Mailing or Transmission
37 CFR 1.8 Certificate of mailing or transmission.
(a) Except in the cases enumerated in paragraph (a)(2) of this section,
correspondence required to be filed in the Patent and Trademark Office
within a set period of time will be considered as being timely filed if
the procedure described in this section is followed. The actual date of
receipt will be used for all other purposes.
(1) Correspondence will be considered as being timely filed if:
(i) The correspondence is mailed or transmitted prior to expiration of
the set period of time by being:
(A) Addressed as set out in Section  1.1(a) and deposited with the U.S.
Postal Service with sufficient postage as first class mail; or
(B) Transmitted by facsimile to the Patent and Trademark Office in
accordance with Section  1.6(d); and
(ii) The correspondence includes a certificate for each piece of
correspondence stating the date of deposit or transmission. The person
signing the certificate should have reasonable basis to expect that the
correspondence would be mailed or transmitted on or before the date
indicated.
(2) The procedure described in paragraph (a)(1) of this section does not
apply to, and no benefit will be given to a Certificate of Mailing or
Transmission on, the following:
(i)	Relative to Patents and Patent Applications-
(A) The filing of a national patent application specification and
drawing or other correspondence for the purpose of obtaining an
application filing date, including a request for a continued prosecution
application under Section  1.53(d);
(B) The filing of correspondence in an interference which an
examiner-in-chief orders to be filed by hand or "Express Mail";
(C) The filing of agreements between parties to an interference under
35 U.S.C. 135(c);
(D) The filing of an international application for patent;
(E) The filing of correspondence in an international application before
the U.S. Receiving Office, the U.S. International Searching Authority,
or the U.S. International Preliminary Examining Authority;
(F) The filing of a copy of the international application and the basic
national fee necessary to enter the national stage, as specified in
Section  1.494(b) or Section  1.495(b).
(ii)	Relative to Trademark Registrations and Trademark Applications-
(A) The filing of a trademark application.
(B) [Reserved]
(C) [Reserved]
(D) [Reserved]
(E) [Reserved]
(F) [Reserved]
(iii)	Relative to Disciplinary Proceedings-
(A) Correspondence filed in connection with a disciplinary proceeding
under part 10 of this chapter.
(B) [Reserved]
(b) In the event that correspondence is considered timely filed by being
mailed or transmitted in accordance with paragraph (a) of this section,
but not received in the Patent and Trademark Office, and the application
is held to be abandoned or the proceeding is dismissed, terminated, or
decided with prejudice, the correspondence will be considered timely if
the party who forwarded such correspondence:
(1) Informs the Office of the previous mailing or transmission of the
correspondence promptly after becoming aware that the Office has no
evidence of receipt of the correspondence;
(2) Supplies an additional copy of the previously mailed or transmitted
correspondence and certificate; and
(3) Includes a statement which attests on a personal knowledge basis or
to the satisfaction of the Commissioner to the previous timely mailing
or transmission.  If the correspondence was sent by facsimile
transmission, a copy of the sending unit's report confirming
transmission may be used to support this statement.
(c) The Office may require additional evidence to determine if the
correspondence was timely filed.
A suggested format for a Certificate of Mailing and a Certificate of
Transmission under  37 CFR 1.8 to be included with the correspondence is
reproduced below.
Certificate of Mailing
I hereby certify that this correspondence is being deposited with the
United States Postal Service with sufficient postage as first class mail
in an envelope addressed to:
Assistant Commissioner for Patents
Washington, D.C. 20231
on ___________.
(Date)
Typed or printed name of person signing this certificate
___________________________________________
Signature________________________________________
Certificate of Transmission
I hereby certify that this correspondence is being facsimile transmitted
to the Patent and Trademark Office (Fax No. (703)___-____)
on____________.
(Date)
Typed or printed name of person signing this certificate
___________________________________________
Signature________________________________________
5.02 Format of Certificate of Mailing or Transmission
The following are suggested formats for either a Certificate of Mailing
or Certificate of Transmission under  37 CFR 1.8(a).  The certification
may be included with all correspondence concerning this application or
proceeding to establish a date of mailing or transmission under  37 CFR
1.8(a).  Proper use of this procedure will result in such communication
being considered as timely if the established date is within the
required period for reply.  The Certificate should be signed by the
individual actually depositing or transmitting the correspondence or by
an individual who, upon information and belief, expects the
correspondence to be mailed or transmitted in the normal course of
business by another no later than the date indicated.
Certificate of Mailing
I hereby certify that this correspondence is being deposited with the
United States Postal Service with sufficient postage as first class mail
in an envelope addressed to:
Assistant Commissioner for Patents
Washington, D.C. 20231
on ___________.
(Date)
Typed or printed name of person signing this certificate:
_____________________________________________
Signature: ___________________________________
Certificate of Transmission
I hereby certify that this correspondence is being facsimile transmitted
to the United States Patent and Trademark Office, Fax No. (703)_____
-_________ on _____________. (Date)
Typed or printed name of person signing this certificate:
_________________________________________
Signature: _________________________________________
Please refer to  37 CFR 1.6(d) and 1.8(a)(2) for filing limitations
concerning facsimile transmissions and mailing, respectively.
For a Pro Se inventor, Form Paragraph 17.11 may be used in place of Form
Paragraph 5.02.
17.11 Suggestion of Certificate of Mailing, Pro Se
It is called to applicant's attention that if a communication is
deposited with the U. S. Postal Service and mailed to the Office by
First Class Mail before the reply time has expired, applicant may submit
the reply with a "Certificate of Mailing" which merely asserts that the
reply is being mailed on a given date.  So mailed, before the period for
reply has expired, the reply may be considered timely. A suggested
format for a certificate follows:
I hereby certify that this correspondence is being deposited with the
United States Postal Service as First Class Mail in an envelope
addressed to:
Assistant Commissioner for Patents
Washington, D.C. 20231
on _______(date).
Typed or printed name of person signing this certificate
____________________________________
Signature____________________________
Date__________
Under  37 CFR 1.8, a person may state on certain papers directed to the
Office (exceptions are stated in  37 CFR 1.8), the date on which the
paper will be deposited in the United States Postal Service or
transmitted by facsimile. If the date stated is within the period for
reply, the reply in most instances will be considered to be timely. This
is true even if the paper does not actually reach the Office until after
the end of the period for reply. The Certificate of Mailing procedure
does not apply to papers mailed in a foreign country.
The Certificate of Transmission procedure, however, also applies to
papers transmitted to the Office from a foreign country provided that
the correspondence being transmitted is not prohibited from being
transmitted by facsimile and is not otherwise precluded from receiving
the benefits under  37 CFR 1.8.
It should be noted, however, that the Office will continue its normal
practice of stamping the date of receipt ("Office Date" Stamp) on all
papers received through the mail or by facsimile except those filed
under  37 CFR 1.10 (See MPEP Section  513). The date stamped will also
be the date which is entered on Office records and from which any
subsequent periods are calculated. For example,  37 CFR 1.192 gives an
appellant 2 months from the date of the appeal to file an appeal brief.
For example, if the last day to reply to a final rejection was November
10, 1997, and applicant deposited a Notice of Appeal with fee in the
U.S. mail on November 10, 1997, and so certified, that appeal is timely
even if it was not received in the Patent and Trademark Office until
November 16, 1997. Since the date of receipt will be used to calculate
the time at which the brief is due, the brief was due on January 16,
1997.  This is 2 months after the Mail Center date.
37 CFR 1.8(a)(2)(i)(A) specifically refers to a request for a continued
prosecution application (CPA) filed under  37 CFR 1.53(d) as a
correspondence filed for the purposes of obtaining an application filing
date and the procedures and benefit set forth in  37 CFR 1.8(a)(1) are
not applicable to a request for a CPA.  The date on a certificate of
mailing or transmission (37 CFR 1.8(a)) of a CPA is not controlling or
even relevant.  A CPA filed by facsimile transmission will not be
accorded a filing date as of the date on the certificate of transmission
unless Office records indicate, or applicant otherwise establishes
pursuant to 37 CFR 1.6(f), receipt in the Office of the complete CPA on
the date on the certificate of transmission and that date is not a
Saturday, Sunday, or Federal holiday within the District of Columbia.
PROCEDURE BY APPLICANT
(A) The certification requires a signature. Specifically, if the
certification appears on a paper that requires a signature, two
signatures are required, one for the paper and one for the
certification. Although not specifically required by 37 CFR 1.8, it is
preferred that the certificate be signed by the applicant, assignee, or
registered practitioner.
(B) When possible, the certification should appear on a portion of the
paper being submitted. However, if there is insufficient space to make
the certification on the same paper, the certification should be on a
separate sheet securely attached to the paper.
(C) When the certification is presented on a separate sheet, that sheet
must (1) be signed and (2) fully identify and be securely attached to
the paper it accompanies. The required identification should include the
serial number and filing date of the application as well as the type of
paper being filed, e.g., reply to rejection or refusal, Notice of
Appeal, etc. An unsigned certification will not be considered
acceptable.
Moreover, without the proper identifying data, a certification presented
on a separate sheet will not be considered acceptable if there is any
question or doubt concerning the connection between the sheet and the
paper filed.
If the sheet should become detached from the paper and thereafter not
associated with the appropriate file, evidence that this sheet was
received in the Office can be supported by submitting a copy of a
postcard receipt specifically identifying this sheet and the paper and
by submitting a copy of the sheet as originally mailed. Attention is
directed to MPEP Section  503 relative to the use of postcards as
receipts.
(D) In situations wherein the correspondence includes papers for more
than one application (e.g., a single envelope containing separate papers
responding to Office actions in different applications) or papers for
various parts of the Office (e.g., a patent issue fee transmittal form
PTOL-85B and an assignment), each paper must have its own certification
as a part thereof or attached thereto.
Although Form PTOL-85B, Issue Fee Transmittal Form, may contain a
Certificate of Mailing thereon, a separate Certificate of Mailing is
required for all papers included with this form, including formal
drawings, since papers are separated and flow to different areas of the
Office. Checks submitted with the papers do not require a separate
certification.
(E) In situations wherein the correspondence includes several papers
directed to the same area of the Office for the same application (for
example, a proposed reply under 37 CFR 1.116 and a Notice of Appeal),
each paper should have its own certification as a part thereof or
attached thereto.
(F) For the purposes of 37 CFR 1.8(a)(1)(i)(A), first class mail is
interpreted as including "Express Mail" and "Priority Mail" deposited
with the U.S. Postal Service.
Alternatively, the correspondence may be submitted with a cover or
transmittal letter which itemizes the papers and on which is placed the
certificate under 37 CFR 1.8.
USE OF STAMPED CERTIFICATION
Some practitioners place the certification language on the first page of
a paper with an inked stamp. Such a practice is encouraged because the
certification is not only readily visible but also forms an integral
part of the paper.
OFFICE PROCEDURE
A. Mail Center of the Office of Initial Patent Examination
The Mail Center of the Office of Initial Patent Examination will
continue to date stamp the actual date of receipt of all papers received
by mail in the Office. No attempt will be made to retain the envelopes
in which the papers are received or to indicate on the papers the postal
cancellation date (postmark).
However, the benefits of 37 CFR 1.8 or 37 CFR 1.10 apply only to
documents delivered to the Office by the U.S. Postal Service. A number
of instances have been uncovered where individuals are certifying that
documents were deposited with the U.S. Postal Service when, in fact, the
documents were hand-carried or delivered to the Office via commercial
couriers, e.g., "Federal Express," "DHL," "Purolator," "Air Borne,"
"UPS," etc. In those instances where documents include a Certificate of
Mailing under 37 CFR 1.8 or "Express Mail" mailing label (commonly used
to comply with 37 CFR 1.10) but were delivered to the Office by other
than the U.S. Postal Service, Mail Center personnel are placing a notice
indicating that fact on the correspondence involved to alert Office
personnel that the benefits of 37 CFR 1.8 or 37 CFR 1.10 do not apply.
B. Processing Areas
When papers are received in an examining group, the date of receipt in
the group is stamped on the papers in accordance with 37 CFR 1.6(a).
The date indicated on the Certificate of Mailing or of Transmission will
be used by the Office only to determine if the paper was deposited in
the United States Postal Service or transmitted by facsimile within the
period for reply. If the paper was actually received in the Office
within the period for reply, there is no need to refer to the
Certificate. Note however, that 37 CFR 1.6 (a)(3) provides that
"[c]orrespondence transmitted by facsimile to the Patent and Trademark
Office will be stamped with the date on which the complete transmission
is received in the Patent and Trademark Office unless that date is a
Saturday, Sunday, or Federal holiday within the District of Columbia, in
which case the date stamped will be the next succeeding day which is not
a Saturday, Sunday, or Federal holiday within the District of Columbia."
If, however, the paper was received in the Patent and Trademark Office
after the end of the period for reply, the paper should be inspected to
determine if a Certificate of Mailing or of Transmission has been
included. Where no such Certificate is found, the paper is untimely
since applicant did not reply within the period for reply. This may
result in abandonment of the application or other loss of rights.
In those instances where a Certificate of Mailing or of Transmission
does appear in the paper or a cover letter thereto, a check should be
made to determine whether the indicated date of deposit or transmission
is within the period for reply. If the date indicated in the Certificate
is after the end of the period for reply, the paper is untimely and no
notation of the date need be made. Where the date indicated on the
Certificate is within the period for reply, the paper should be
considered to be timely filed. A notation should be made adjacent to the
Office stamp indicating the date of receipt ("Office Date" Stamp) which
notes the date stated on the Certificate. This notation should be "C of
Mail" or "C of Fax'' followed by the date. A paper with a certificate
dated November 10, 1997, would be noted next to the "Office Date" Stamp
"(C of Mail. 11/10/97)." This notation should also appear on the
"Contents" portion of the file wrapper.
If the period set for taking an action in the Patent and Trademark
Office ends on a Saturday, Sunday, or Federal holiday within the
District of Columbia (37 CFR 1.7), the action will be considered to be
timely if deposited in the United States mail or transmitted by
facsimile and certified under 37 CFR 1.8(a) on the next succeeding day
which is not a Saturday, Sunday, or a Federal holiday.
It should be noted that the filing of a paper for the purpose of
obtaining a continuation or division application under 37 CFR 1.53(d)
and former 37 CFR 1.60 or 1.62 is excluded from the Certificate practice
under 37 CFR 1.8(a)(2)(i)(A) since it is considered to be the filing of
a national patent application.
WARNING: Since a provisional application can be pending for no more than
twelve months, the last day of pendency may occur on a Saturday, Sunday,
or Federal holiday within the District of Columbia which for copendency
would require the nonprovisional application to be filed prior to the
Saturday, Sunday, or Federal holiday. See 37 CFR 1.78(a)(3). No benefit
will be given to a Certificate of Mailing or Transmission relative to
the filing of a national patent application specification and drawing or
other correspondence for the purpose of obtaining an application filing
date. However, note that new patent applications filed in accordance
with 37 CFR 1.10 will be stamped by the Office with the date of deposit
as "Express Mail" with the United States Postal Service. For example, if
a new patent application is deposited as "Express Mail" in accordance
with 37 CFR 1.10 on a Saturday and the United States Postal Service
gives it a date of deposit of Saturday, the Office will accord and stamp
the correspondence with the Saturday date. 37 CFR 1.6(a)(2).
All Certificates of Mailing or Transmission filed in applications should
be placed in the file wrappers directly below the papers to which they
refer.
Group personnel receiving a hand-delivered paper from other than U.S.
Postal Service personnel should inspect the paper to ensure that the
benefits of 37 CFR 1.8 or "Express Mail" benefits under 37 CFR 1.10 are
not accorded in error. If the paper contains a certificate of mailing
under 37 CFR 1.8 or "Express Mail" mailing label (commonly used to
comply with 37 CFR 1.10), the words "HAND DELIVERED" should be written
adjacent to the group date stamp.
Applicant should be notified in the next Office action when a paper
containing a Certificate of Mailing has been denied the benefits under
37 CFR 1.8 or a paper containing an "Express Mail" mailing label
(commonly used to comply with 37 CFR 1.10) is denied benefits under 37
CFR 1.10 by including, for example, form paragraph 5.04.
5.04 Benefit of Certificate of Mailing Denied
The [1] filed [2] is not entitled to the benefits of 37 CFR 1. [3] since
it was not deposited with the U. S. Postal Service for delivery to the
Patent and Trademark Office. Therefore, the date of receipt in the
Patent and Trademark Office has been used to determine the timeliness of
the paper.
Examiner Note:
1. This form paragraph is to be used in those situations where
correspondence contains a Certificate of Mailing under 37 CFR 1.8 or
requests the benefit of "Express Mail" under 37 CFR 1.10, but the
correspondence was not actually deposited with the U. S. Postal Service.
2. In bracket 3, insert --8-- or --10--, as appropriate.
Misuse of a Certificate of Mailing under 37 CFR 1.8 or improperly
claiming the benefit of 37 CFR 1.10 which appears to be more than a
one-time, inadvertent error should be brought to the attention of the
Office of Enrollment and Discipline.
ORIGINAL MAILED PAPER NOT DELIVERED
Paragraphs (b) and (c) of 37 CFR 1.8 concern the situation where a paper
containing a Certificate was timely deposited in the U.S. mail or
transmitted by facsimile, but never received by the Patent and Trademark
Office. In the examining groups, all submissions under these paragraphs
should be considered and the sufficiency thereof determined by the Group
Director. The statement required by 37 CFR 1.8(b)(3) is no longer
required to be verified.
---SECTION---513 Deposit as Express Mail With U.S.  Postal Service
35 U.S.C. 21 Filing date and day for taking action.
(a) The Commissioner may by rule prescribe that any paper or fee
required to be filed in the Patent and Trademark Office will be
considered filed in the Office on the date on which it was deposited
with the United States Postal Service or would have been deposited with
the United States Postal Service but for postal service interruptions or
emergencies designated by the Commissioner.
                  +++
37 CFR 1.6 Receipt of correspondence.
(a) Date of receipt and Express Mail date of deposit. Correspondence
received in the Patent and Trademark Office is stamped with the date of
receipt except as follows:
(1) The Patent and Trademark Office is not open for the filing of
correspondence on any day that is a Saturday, Sunday, or Federal holiday
within the District of Columbia. Except for correspondence transmitted
by facsimile as provided for in paragraph (a)(3) of this section, no
correspondence is received in the Patent and Trademark Office on
Saturdays, Sundays, or Federal holidays within the District of Columbia.
(2) Correspondence filed in accordance with Section  1.10 will be
stamped with the date of deposit as "Express Mail" with the United
States Postal Service.
(3) Correspondence transmitted by facsimile to the Patent and Trademark
Office will be stamped with the date on which the complete transmission
is received in the Patent and Trademark Office unless that date is a
Saturday, Sunday, or Federal holiday within the District of Columbia, in
which case the date stamped will be the next succeeding day which is not
a Saturday, Sunday, or Federal holiday within the District of Columbia.
                  +++
37 CFR 1.10 Filing of correspondence by "Express Mail".
(a) Any correspondence received by the Patent and Trademark Office
(Office) that was delivered by the "Express Mail Post Office to
Addressee" service of the United States Postal Service (USPS) will be
considered filed in the Office on the date of deposit with the USPS. The
date of deposit with the USPS is shown by the "date-in" on the "Express
Mail" mailing label or other official USPS notation. If the USPS deposit
date cannot be determined, the correspondence will be accorded the
Office receipt date as the filing date. See Section  1.6(a).
(b) Correspondence should be deposited directly with an employee of the
USPS to ensure that the person depositing the correspondence receives a
legible copy of the "Express Mail" mailing label with the "date-in"
clearly marked. Persons dealing indirectly with the employees of the
USPS (such as by deposit in an "Express Mail" drop box) do so at the
risk of not receiving a copy of the "Express Mail" mailing label with
the desired "date-in" clearly marked. The paper(s) or fee(s) that
constitute the correspondence should also include the "Express Mail"
mailing label number thereon. See paragraphs (c), (d) and (e) of this
section.
(c) Any person filing correspondence under this section that was
received by the Office and delivered by the "Express Mail Post Office to
Addressee" service of the USPS, who can show that there is a discrepancy
between the filing date accorded by the Office to the correspondence and
the date of deposit as shown by the "date-in" on the "Express Mail"
mailing label or other official USPS notation, may petition the
Commissioner to accord the correspondence a filing date as of the
"date-in" on the "Express Mail" mailing label or other official USPS
notation, provided that:
(1) The petition is filed promptly after the person becomes aware that
the Office has accorded, or will accord, a filing date other than the
USPS deposit date;
(2) The number of the "Express Mail" mailing label was placed on the
paper(s) or fee(s) that constitute the correspondence prior to the
original mailing by "Express Mail;" and
(3) The petition includes a true copy of the "Express Mail" mailing
label showing the "date-in," and of any other official notation by the
USPS relied upon to show the date of deposit.
(d) Any person filing correspondence under this section that was
received by the Office and delivered by the "Express Mail Post Office to
Addressee" service of the USPS, who can show that the "date-in" on the
"Express Mail" mailing label or other official notation entered by the
USPS was incorrectly entered or omitted by the USPS, may petition the
Commissioner to accord the correspondence a filing date as of the date
the correspondence is shown to have been deposited with the USPS,
provided that:
(1) The petition is filed promptly after the person becomes aware that
the Office has accorded, or will accord, a filing date based upon an
incorrect entry by the USPS;
(2) The number of the "Express Mail" mailing label was placed on the
paper(s) or fee(s) that constitute the correspondence prior to the
original mailing by "Express Mail"; and
(3) The petition includes a showing which establishes, to the
satisfaction of the Commissioner, that the requested filing date was the
date the correspondence was deposited in the "Express Mail Post Office
to Addressee" service prior to the last scheduled pickup for that day.
Any showing pursuant to this paragraph must be corroborated by evidence
from the USPS or that came into being after deposit and within one
business day of the deposit of the correspondence in the "Express Mail
Post Office to Addressee" service of the USPS.
(e) Any person mailing correspondence addressed as set out in Section
1.1(a) to the Office with sufficient postage utilizing the "Express Mail
Post Office to Addressee" service of the USPS but not received by the
Office, may petition the Commissioner to consider such correspondence
filed in the Office on the USPS deposit date, provided that:
(1) The petition is filed promptly after the person becomes aware that
the Office has no evidence of receipt of the correspondence;
(2) The number of the "Express Mail" mailing label was placed on the
paper(s) or fee(s) that constitute the correspondence prior to the
original mailing by "Express Mail";
(3) The petition includes a copy of the originally deposited paper(s) or
fee(s) that constitute the correspondence showing the number of the
"Express Mail" mailing label thereon, a copy of any returned postcard
receipt, a copy of the "Express Mail" mailing label showing the
"date-in," a copy of any other official notation by the USPS relied upon
to show the date of deposit, and, if the requested filing date is a date
other than the "date-in" on the "Express Mail" mailing label or other
official notation entered by the USPS, a showing pursuant to paragraph
(d)(3) of this section that the requested filing date was the date the
correspondence was deposited in the "Express Mail Post Office to
Addressee" service prior to the last scheduled pickup for that day; and
(4) The petition includes a statement which establishes, to the
satisfaction of the Commissioner, the original deposit of the
correspondence and that the copies of the correspondence, the copy of
the "Express Mail" mailing label, the copy of any returned postcard
receipt, and any official notation entered by the USPS are true copies
of the originally mailed correspondence, original "Express Mail" mailing
label, returned postcard receipt, and official notation entered by the
USPS.
(f) The Office may require additional evidence to determine if the
correspondence was deposited as "Express Mail" with the USPS on the date
in question.
The statutory authority for the granting of a filing date based on the
date of deposit for correspondence sent by "Express Mail" and received
by the Office is found in section 21(a) of Title 35 of the United States
Code.
The specific rule for obtaining a filing date as of the date of deposit
in "Express Mail" (rather than the date of receipt at the Office) is 37
CFR 1.10, as revised, effective December 2, 1996.
EFFECTIVE DATE, WEEKENDS & HOLIDAYS
Effective December 2, 1996, 37 CFR 1.6(a)(2) provides that
correspondence deposited as "Express Mail" in accordance with 37 CFR
1.10 will be stamped, and, therefore, considered as filed on the date of
its deposit, regardless of whether that date is a Saturday, Sunday or
Federal holiday within the District of Columbia. 37 CFR 1.10 provides a
procedure for assigning the date on which any paper or fee is deposited
as "Express Mail" with the United States Postal Service (USPS) as the
filing date of the paper or fee in the Patent and Trademark Office
(Office). The date of deposit with the USPS is shown by the "date-in" on
the "Express Mail" mailing label or other official USPS notation.  This
holds true for any day that the correspondence may be accepted as
"Express Mail" by the USPS, even when the paper or fee is deposited and
accepted on a Saturday, Sunday or Federal holiday within the District of
Columbia. For example, if a person files a patent application by
"Express Mail" with the USPS on a Saturday in compliance with 37 CFR
1.10, he or she will receive the benefit of the Saturday date, even
though the Office is closed on Saturdays and, therefore, the person
could not have filed the application by depositing it directly at the
Office on that Saturday. See 37 CFR 1.6(a)(1). In those cases where the
procedure of 37 CFR 1.10(a) has not been properly followed, e.g., the
"date-in" is illegible, the filing date of the correspondence will be
the date of actual receipt in the Office. An applicant may file a
petition under the conditions specified in 37 CFR 1.10(c), (d) or (e)
(discussed below) presenting whatever arguments and evidence that the
paper or fee is entitled to a filing date other than the filing date
accorded by the Office.
DATE-IN, DIRECT DEPOSIT, "EXPRESS MAIL" BOX RECEPTACLES & LOG BOOKS
The procedure in 37 CFR 1.10(a) requires the use of the "Express Mail
Post Office to Addressee" service of the USPS. This service provides for
the use of a mailing label on which the USPS clearly indicates the date
on which it was deposited. Correspondence sent by the "Express Mail Post
Office to Addressee" service is considered filed in the Office on the
"date-in" entered by the USPS.  The "date-in" on the "Express Mail"
mailing label must be completed by the USPS, not by the applicant.  For
correspondence filed in accordance with 37 CFR 1.10, Office personnel
will routinely look to the "Express Mail" mailing label, and stamp the
"date-in" or other official USPS notation as the filing date of the
correspondence.  Accordingly, if the USPS enters the deposit date as its
"date-in," the correspondence will receive the deposit date as its
filing date.  If the USPS deposit date cannot be determined, the
correspondence will be accorded the date of receipt in the Office as the
filing date.  An applicant may file a petition under the conditions
specified in 37 CFR 1.10(c), (d), or (e) (discussed below) presenting
whatever arguments and evidence that the paper or fee is entitled to a
filing date other than the filing date accorded by the Office.
37 CFR 1.10(b) further provides that correspondence should be deposited
directly with an employee of the USPS to ensure that the person
depositing the correspondence receives a legible copy of the "Express
Mail" mailing label with the "date-in" clearly marked, and that persons
dealing indirectly with the employees of the USPS (such as by depositing
correspondence in an "Express Mail" drop box) do so at the risk of not
receiving a copy of the "Express Mail" mailing label with the desired
"date-in" clearly marked. On petition, the failure to obtain an "Express
Mail" receipt with the "date-in" clearly marked may be considered an
omission that could have been avoided by the exercise of due care, as
discussed below.  While the Office strongly urges direct deposit of
"Express Mail" correspondence in order to obtain a legible copy of the
"Express Mail" mailing label, parties are not precluded from using
"Express Mail" drop boxes, but do so at their own risk.
A paper or fee placed in an "Express Mail" box receptacle after the box
has been cleared for the last time on a given day will be considered to
be deposited as of the date of receipt ("date-in") indicated on the
"Express Mail" mailing label by the Postal Service "Express Mail"
acceptance clerk. 37 CFR 1.10(d) permits the Office to correct a USPS
"date-in" error when the correspondence is deposited in an "Express
Mail" drop box prior to last scheduled pick up of the day, that is, the
time clearly marked on the "Express Mail" drop box indicating when the
box will be cleared for the last time on the date of deposit. 37 CFR
1.10(d) sets forth the procedures to be followed to be entitled to such
a correction.
Parties who do use drop boxes can protect themselves from uncertainty
due to illegible mailing labels by routinely maintaining a log of
"Express Mail" deposits in which notations are entered by the person who
deposited the correspondence as "Express Mail" within one business day
after deposit with the USPS.  Such evidence could be useful to later
support a petition filed under 37 CFR 1.10(c), (d) or (e).  Evidence
that came into being after deposit and within one day after the deposit
of the correspondence as "Express Mail" may be in the form of a log book
which contains information such as the "Express Mail" number; the
application number, attorney docket number or other such file
identification number; the place, date and time of deposit; the time of
the last scheduled pick-up for that date and place of deposit; the
depositor's initials or signature; and the date and time of entry in the
log.
 "EXPRESS MAIL" MAILING LABEL NUMBER
Effective December 2, 1996, 37 CFR 1.10(b) no longer requires a
certificate of mailing by "Express Mail" or that the "Express Mail"
mailing label number be placed on the correspondence prior to mailing.
Correspondence deposited with the USPS on or after December 2, 1996, and
which is actually received by the Office will not be denied a filing
date as of the "date-in" appearing on the "Express Mail" mailing label
because the number of the "Express Mail" mailing label was not placed
thereon prior to the original mailing.  However, if the number of the
mailing label did not appear on the correspondence as originally filed,
relief will not be granted on petition under 37 CFR 1.10(c) through (e),
even if the party who filed the correspondence satisfies the other
requirements of 37 CFR 1.10(c), 1.10(d) or 1.10(e). To be effective, the
number must be placed on each separate paper and each fee transmittal
either directly on the document or by a separate paper firmly and
securely attached thereto. In situations wherein the correspondence
includes several papers directed to the same application (for example,
the specification, drawings, and declaration for a new application), the
correspondence may be submitted with a cover or transmittal letter which
should itemize the papers. It is not necessary that the number be placed
on each page of a particular paper or fee transmittal. Merely placing
the number in one prominent location on each separate paper or fee
transmittal (or cover sheet or transmittal letter which should itemize
the separate papers and fees) will be sufficient.
Since the filing of correspondence under 37 CFR 1.10 without the number
of the "Express Mail" mailing label thereon is an oversight that can be
avoided by the exercise of reasonable care, requests for waiver of this
requirement will not be granted on petition. A party's inadvertent
failure to comply with the requirements of a rule is not deemed to be an
extraordinary situation that would warrant waiver of a rule under 37 CFR
1.183, 2.146(a)(5) or 2.148, nor is such an inadvertent omis sion
considered "unavoidable," within the meaning of 15 U.S.C. 1062(b), 35
U.S.C. 133, 37 CFR 1.137(a) or 37 CFR 2.66(a). See Honigsbaum v. Lehman,
903 F. Supp. 8, 37 USPQ2d 1799 (D.D.C. 1995) (Commissioner did not abuse
his discretion in refusing to waive requirements of 37 CFR 1.10(c) in
order to grant filing date to patent application, where applicant failed
to produce "Express Mail" customer receipt or any other evidence that
application was actually deposited with USPS as "Express Mail."), aff'd
without opinion, 95 F.3d 1166 (Fed. Cir. 1996); Nitto Chemical Industry.
Co., Ltd. v. Comer, 39 USPQ2d 1778, 1782 (D.D.C. 1994) (Commissioner's
refusal to waive requirements of 37 CFR 1.10 in order to grant priority
filing date to patent applica tion not arbitrary and capricious, because
failure to comply with the requirements of 37 CFR 1.10 is an "avoidable"
oversight that could have been prevented by the exercise of ordinary
care or diligence, and thus not an extraordinary situation under 37 CFR
1.183.); Vincent v. Mossinghoff, 230 USPQ 621 (D.D.C. 1985)
(misunderstanding of 37 CFR 1.8 not unavoidable delay in responding to
Office Action); Gustafson v. Strange, 227 USPQ 174 (Comm'r Pats. 1985)
(counsel's unawareness of 37 CFR 1.8 not extraordinary situation
warranting waiver of a rule); In re Chicago Historical Antique
Automobile Museum, Inc., 197 USPQ 289 (Comm'r Pat. 1978) (since
certificate of mailing procedure under 37 CFR 1.8 was available to
petitioner, lateness due to mail delay not deemed to be extraordinary
situation).
PETITIONS
 37 CFR 1.10(c) through 1.10(e) set forth procedures for petitioning the
Commissioner to accord a filing date as of the date of deposit as
"Express Mail." Briefly, 37 CFR 1.10(c) applies where there is a
discrepancy between the filing date accorded by the Office and the
"date-in" entered by the USPS on the "Express Mail" mailing label or
other official USPS notation; 37 CFR 1.10(d) applies where the "date-in"
is incorrectly entered by the USPS; and 37 CFR 1.10(e) applies where
correspondence deposited with the USPS as "Express Mail" is not received
by the Office.
PETITION TO CORRECT FILING DATE AND DATE-IN DISCREPANCY
 37 CFR 1.10(c) sets forth procedures for filing a petition to the
Commissioner for a filing date as of the date of deposit with the USPS,
where there is a discrepancy between the filing date initially accorded
by the Office and the "date-in" entered by the USPS or other official
USPS notation.  Such a petition should:
(A) be filed promptly after the person becomes aware that the Office has
accorded, or will accord, a filing date other than the USPS deposit
date;
(B) include a showing that the number of the "Express Mail" mailing
label was placed on each piece of correspondence prior to the original
mailing; and
(C) include a true copy of the "Express Mail" mailing label showing the
"date-in" or other official notation by the USPS.
PETITION TO CORRECT INCORRECTLY ENTERED DATE-IN
 37 CFR 1.10(d) sets forth procedures for filing a petition to the
Commissioner to accord a filing date as of the actual date of deposit
with the USPS, where the "date-in" or other official notation is
incorrectly entered by the USPS.  Such a petition should:
(A) be filed promptly after the person becomes aware that the Office has
accorded, or will accord, a filing date based upon an incorrect entry by
the USPS;
(B) include a showing that the number of the "Express Mail" mailing
label was placed on each piece of correspondence prior to the original
mailing; and
(C) include a showing that the correspondence was deposited as "Express
Mail" prior to the last scheduled pickup on the requested filing date.
The showing under 37 CFR 1.10(d) must be corroborated by (1) evidence
from the USPS, or (2) evidence that came into being after deposit and
within one business day of the deposit of the correspondence as "Express
Mail". Evidence from the USPS may be the "Express Mail" Corporate
Account Mailing Statement. Evidence that came into being within one day
after the deposit of the correspondence as "Express Mail" may be in the
form of a log book which contains information such as the "Express Mail"
number; the application number, attorney docket number or other such
file identification number; the place, date and time of deposit; the
time of the last scheduled pick-up for that date and place of deposit;
the depositor's initials or signature; and the date and time of entry in
the log.
The reason the Office considers correspondence to have been filed as of
the date of deposit as "Express Mail" is that this date has been
verified by a disinterested USPS employee, through the insertion of a
"date-in," or other official USPS notation, on the "Express Mail"
mailing label. Due to the questionable reliability of evidence from a
party other than the USPS that did not come into being contemporaneously
with the deposit of the correspondence with the USPS, 37 CFR 1.10(d)
specifically requires that any petition under 37 CFR 1.10(d) be
corroborated either by evidence from the USPS, or by evidence that came
into being after deposit and within one business day after the deposit
of the correspondence as "Express Mail."
A petition alleging that the USPS erred in entering the "date-in" will
be denied if it is supported only by evidence (other than from the USPS)
which was:
(A) created prior to the deposit of the correspondence as "Express Mail"
with the USPS (e.g., an application transmittal cover letter, or a
client letter prepared prior to the deposit of the correspondence); or
(B) created more than one business day after the deposit of the
correspondence as "Express Mail" (e.g., an affidavit or declaration
prepared more than one business day after the correspondence was
deposited with the USPS as "Express Mail"). On the other hand, a
notation in a log book, entered after deposit by the person who
deposited the correspondence as "Express Mail" within one business day
of such deposit, setting forth the items indicated above, would be
deemed on petition to be an adequate showing of the date of deposit
under 37 CFR 1.10(d)(3).
37 CFR 1.10(d)(3) further provides that a party must show that
correspondence was deposited as "Express Mail" before the last scheduled
pickup on the requested filing date in order to obtain a filing date as
of that date.
PETITION FOR CORRESPONDENCE NEVER RECEIVED
37 CFR 1.10(e) sets forth procedures for filing a petition to the
Commissioner to accord a filing date as of the date of deposit with the
USPS, where correspondence deposited as "Express Mail" is never received
by the Office. Such a petition should:
(A) be filed promptly after the person becomes aware that the Office has
no evidence of receipt of the correspondence;
(B) include a showing that the number of the "Express Mail" mailing
label was placed on each piece of correspondence prior to the original
mailing;
(C) include a true copy of the originally deposited correspondence
showing the number of the "Express Mail" mailing label thereon, a copy
of any returned postcard receipt, a copy of the "Express Mail" mailing
label showing the "date-in" or other official notation entered by the
USPS; and
(D) include a statement, signed by the person who deposited the
documents as "Express Mail" with the USPS, setting forth the date and
time of deposit, and declaring that the copies of the correspondence,
"Express Mail" mailing label, and returned postcard receipt accompanying
the petition are true copies of the correspondence, mailing label and
returned postcard receipt originally mailed or received.
37 CFR 1.10(e) provides for the filing of a petition to accord
correspondence a filing date as of the date of deposit with the USPS as
"Express Mail" only where the correspondence was mailed with sufficient
postage and addressed as set out in 37 CFR 1.1(a). There is no
corresponding provision that correspondence be properly addressed and
mailed with sufficient postage in 37 CFR 1.10(a), (c) and (d), because
these sections apply only to correspondence that is actually received by
the Office. Correspondence mailed by "Express Mail" that is actually
received by the Office will not be denied a filing date as of the date
of deposit as "Express Mail" simply because the correspondence was not
mailed with sufficient postage or not addressed as set out in 37 CFR
1.1(a). 37 CFR 1.10(e)(3) provides that if the requested filing date is
a date other than the "date-in" on the "Express Mail" mailing label, the
petition should include a showing under 37 CFR 1.10(d)(3), as discussed
above, that the correspondence was deposited as "Express Mail" before
the last scheduled pickup on the requested filing date in order to
obtain a filing date as of that date. 37 CFR 1.10(e) applies only in
those situations in which the correspondence at issue was lost in toto
(i.e., the entire correspondence was not delivered to the Office).
Where there is a dispute as to the contents of correspondence submitted
to the Office (e.g., an applicant asserts that three sheets of drawings
were submitted under 37 CFR 1.10 with an application, but the Office
records indicate receipt of only two sheets of drawings with the
application), an applicant may not rely upon the provisions of 37 CFR
1.10(e) to establish what document(s) and/or fee(s) were filed in the
Office with such correspondence. Rather, where the records of the Office
(e.g., the file of the application) contain any document(s) or fee(s)
corresponding to the contents of the correspondence at issue, the Office
will rely upon its official record of the contents of such
correspondence in absence of convincing evidence (e.g., a postcard
receipt under MPEP Section  503 containing specific itemization of the
document(s) or fee(s) purported to have been filed with the
correspondence at issue) that the Office received and misplaced any
document(s) or fee(s) that is not among the official records of the
Office.
ADDITIONAL EVIDENCE MAY BE REQUIRED
 37 CFR 1.10(f) provides that the Office may require additional evidence
to determine whether the correspondence was deposited as "Express Mail"
with the USPS on the date in question.