2770 Federal Register / Vol. 72, No. 14 / Tuesday, January 23, 2007 / Rules and Regulations 

DEPARTMENT OF COMMERCE 

United States Patent and Trademark 

Office 

37 CFR Part 1 

[Docket No.: PTO–P–2005–0021] 

RIN 0651–AB92 

Changes To Facilitate Electronic Filing 

of Patent Correspondence 

AGENCY: United States Patent and 

Trademark Office, Commerce. 

ACTION: Final rule. 

SUMMARY: The United States Patent and 

Trademark Office (Office) is amending 

the rules of practice to support 

implementation of the Office’s 

electronic filing system (EFS) for patent 

correspondence, and in particular, the 

Web-based electronic filing system 

(EFS-Web). EFS-Web permits most 

patent correspondence, that is, most 

patent applications and other patent 

related documents, to be submitted in a 

portable document file (‘‘PDF’’) format. 

The major changes that the Office is 

adopting are changes to provide patent 

users with a process for showing that 

correspondence submitted in an 

application which has entered national 

stage under 35 U.S.C. 371 submitted via 

EFS-Web was actually received by the 

Office by relying on the 

acknowledgment receipt, and to treat 

certain correspondence as received, for 

timeliness purposes, as of the date 

submitted by applicant rather than the 

date received by the Office if the 

correspondence is filed via EFS-Web. 

DATES: Effective Date: January 23, 2007. 

The changes apply to any paper, 

application, or reexamination 

proceeding filed in the Office on or after 

January 23, 2007. 

FOR FURTHER INFORMATION CONTACT: Fred 

A. Silverberg ((571) 272–7719), Senior 

Legal Advisor, Office of Patent Legal 

Administration, Office of the Deputy 

Commissioner for Patent Examination 

Policy, or Robert A. Clarke ((571) 272–

7735), Deputy Director of the Office of 

Patent Legal Administration, Office of 

the Deputy Commissioner for Patent 

Examination Policy, directly by phone, 

or by facsimile to (571) 273–7719, or by 

mail addressed to: Mail Stop CommentsPatents, Commissioner for Patents, P.O. 

Box 1450, Alexandria, VA 22313–1450. 

SUPPLEMENTARY INFORMATION: The 

United States Patent and Trademark 

Office (Office) is amending the rules of 

practice to support implementation of 

the Office’s electronic filing system 

(EFS) for patent correspondence, and in 

particular, the new Web-based 

electronic filing system (EFS-Web), 

which went into production (for the 

public) on March 17, 2006. Specifically, 

the changes in this final rule: (1) 

Provide patent users with a process for 

showing that certain national stage 

correspondence submitted via EFS-Web 

was actually received by the Office by 

relying on the acknowledgment receipt; 

and (2) create a new certificate of EFSWeb transmission, which will allow the 

Office to treat certain correspondence as 

received (for timeliness purposes) as of 

the date submitted by applicant rather 

than the date received by the Office if 

the correspondence is filed by EFS-Web. 

The procedure for the certificate of EFSWeb transmission is similar to the 

procedure for the existing certificate of 

mailing or transmission under § 1.8. For 

example, correspondence sent in reply 

to an Office action setting a three-month 

shortened statutory period for reply 

would be considered timely if 

transmitted via EFS-Web at 11:59 p.m. 

Pacific Time on the last day of the threemonth period for reply even though it 

was received in the Office more than 

three months from the mailing of the 

Office action. Thus, the rules are 

amended so that EFS-Web submissions 

would be treated analogously to 

submissions filed via First-Class Mail or 

facsimile transmission with a certificate 

of mailing or transmission. This notice 

is also making minor changes to §§ 1.4, 

1.6, and 1.33 to align the rules of 

practice to existing practices regarding 

EFS-Web. 

Discussion of EFS-Web: The Office’s 

electronic filing system previously 

provided two distinct electronic filing 

systems for filing patent correspondence 

namely: (1) EFS-Web, and (2) the clientside components ePAVE for form 

generation, validation and submission 

to the Office in combination with EFSABX for authoring the patent 

application specification. Prior to EFSWeb, the Office only provided for the 

electronic submission of limited patent 

correspondence using ePAVE and EFS–

ABX. ePAVE and EFS–ABX were 

discontinued on November 1, 2006. See 

Retirement of Electronic Filing System— 

Application Body Extensible Markup 

Language (EFS–ABX) and Electronic 

Packaging and Validation Engine 

(ePAVE) Components, 1311 Off. Gaz. 

Pat. Off. 155 (October 24, 2006). Thus, 

EFS-Web is the sole system for 

electronic filing of most patent 

correspondence. EFS-Web permits most 

patent applications and other patentrelated documents, to be submitted in a 

‘‘PDF’’ file format. In addition, EFS-Web 

does not require any significant client 

side components (unlike ePAVE and 

EFS–ABX). Accordingly, EFS-Web 

allows users to streamline processing 

and filing of patent correspondence, and 

better integrates electronic filing into 

their current computer systems. 

Under EFS-Web, correspondence 

officially submitted is accorded a 

‘‘receipt date,’’ which is the date the 

correspondence was received by the 

Office (e.g., in Alexandria, Virginia 

(Eastern Time zone)). The receipt date is 

not limited to an official business day, 

but can be a Saturday, Sunday or 

Federal holiday within the District of 

Columbia. Correspondence is officially 

submitted to the Office via EFS-Web 

when a user clicks the submit button on 

the Confirm and Submit screen after the 

correspondence has been uploaded to 

the USPTO server for, inter alia, user 

review. An acknowledgment receipt is 

automatically, electronically sent to the 

person filing the correspondence after 

the correspondence is officially 

submitted. The acknowledgment receipt 

contains the ‘‘receipt date,’’ the time the 

correspondence was received at the 

Office (not the local time at the 

submitter’s location), and a full listing 

of the correspondence submitted. 

Accordingly, an acknowledgment 

receipt is a legal equivalent of a post 

card receipt described in the Manual of 

Patent Examining Procedure (MPEP), 

Section 503. As the acknowledgment 

receipt contains the time the 

correspondence was received at the 

Office, users may not be able to solely 

rely on the acknowledgment receipt to 

support a position that correspondence 

was submitted at a particular local time. 

Therefore, users are advised to keep a 

copy of papers submitted, including a 

certification of EFS-Web transmission 

under § 1.8, as evidence of the local 

time of all submissions to support a 

position that correspondence was 

submitted at a particular local time in 

the event such evidence is needed. For 

the filing of applications, the official 

filing date will continue to be stated on 

the Filing Receipt under § 1.54(b), 

which is sent to applicants after the 

submitted application parts are 

reviewed for compliance with the filing 

date requirements. 

An acknowledgment receipt will not 

be generated until EFS-Web 

correspondence is officially submitted 

to and received by the Office. If a user 

officially submits correspondence to the 

Office by clicking on the submit button 

on the Confirm and Submit screen in 

EFS-Web, but no acknowledgment 

receipt is generated thereafter, the user 

should check private PAIR, if possible, 

for the acknowledgment receipt, which 

should be entered in private PAIR a 

short period of time after the 


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correspondence is officially submitted 

to the Office. If no acknowledgment 

receipt is available in private PAIR or 

the user does not have access to private 

PAIR, then the user should contact the 

Patent Electronic Business Center (EBC) 

for assistance. If a user becomes 

disconnected from EFS-Web prior to 

officially submitting correspondence to 

the Office or who otherwise has 

difficulty submitting correspondence 

through EFS-Web, the user is 

encouraged to contact the Patent EBC 

for assistance. Full technical support is 

currently available through the Patent 

EBC during their Standard Hours of 

Operation, which are Monday through 

Friday from 6 a.m. until midnight 

(eastern time), and Saturday and 

Sunday from 10 a.m. through 6 p.m. 

(eastern time) at 866–217–9197 (tollfree). The patent EBC may also be 

contacted by E-mail: ebc@uspto.gov or 

FAX: 571–273–0177. Limited assistance 

is available at all other times through 

the Office’s Electronic Business Support 

(EBS) at 1–800–786–9199 or 571–272–

1000. 

If a transmission is attempted during 

a time when the Office’s electronic 

filing system is down, the Office will 

not be able to accept any 

correspondence electronically. In this 

situation, the user is advised to use 

alternative filing methods. For the filing 

of an application, alternative methods to 

establish the filing date for an 

application are Express Mail under 

§ 1.10 or hand-delivery to the Office. 

(Note that new applications filed under 

§ 1.53 cannot be submitted by facsimile 

transmission (§ 1.6(d)(3)).) For other 

patent correspondence, alternative 

methods to establish timeliness of a 

submission are First-Class Mail with a 

certificate of mailing under § 1.8 (if 

applicable), facsimile transmission with 

a certificate of transmission under § 1.8 

(if applicable), Express Mail under 

§ 1.10, or hand-delivery to the Office. 

Certificate of mailing or transmission 

procedures under § 1.8 do not apply to: 

(1) 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 of a design 

application under § 1.53(d) (see 

§ 1.8(a)(2)(i)(A)); (2) the filing of an 

international application for patent (see 

§ 1.8(a)(2)(i)(D)); (3) 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 (see 

§ 1.8(a)(2)(i)(E)); and (4) the filing of a 

copy of the international application 

and the basic national fee necessary to 

enter the national stage, as specified in 

§ 1.495(b) (see § 1.8(a)(2)(i)(F)) 

regardless of the media that is used. 

Likewise, if the user cannot pay fees online because the RAM interface is down, 

the user should pay fees via alternative 

methods such as authorizing payment to 

a deposit account or by a credit card in 

a document (e.g., a fee transmittal). 

Accordingly, users are strongly advised 

to submit their correspondence via EFSWeb sufficiently early in the day to 

allow time for alternative filing or 

payment methods when submissions via 

EFS or RAM cannot be initiated or 

correctly completed. 

As EFS-Web is easy to use and readily 

available twenty-four hours a day, every 

day, some users may find it tempting to 

include correspondence to multiple 

applications in one, single EFS-Web 

submission, or to submit the required 

reply piecemeal over multiple sessions. 

Such submissions may result in 

processing delays in the Office, and 

should be avoided. In order to facilitate 

proper processing of any 

correspondence submitted via EFS-Web, 

each submission session must be 

limited to correspondence for a single 

application, with each distinct reply 

being contained in a separate paper (see 

§ 1.4(c)). The application number or the 

patent number for which the 

correspondence pertains must be 

included in any submission to assure 

proper matching with the application 

file. 

For more information on EFS-Web, 

see the Legal Framework for EFS-Web 

(http://www.uspto.gov/ebc/portal/efs/ 

legal.htm), which provides guidance on 

the background statutes, regulations and 

policies that support the Office 

electronic filing system, including EFSWeb and the use of S-signature therein. 

The Legal Framework for EFS-Web is a 

valuable reference for applicants and 

patent practitioners using EFS-Web. 

Although EFS-Web accepts most 

patent correspondence, there are still 

certain types of correspondence that are 

not permitted to be filed by EFS-Web, 

such as any correspondence for 

reexamination proceedings. See the 

Legal Framework for EFS-Web for a 

current list of types of correspondence 

that are not permitted to be filed using 

EFS-Web. If any additional types of 

correspondence are permitted to be filed 

via EFS-Web, they will be announced 

on the Office’s Web site and will be 

added to the Legal Framework for EFSWeb in due course. Therefore, users are 

advised to periodically review the Legal 

Framework for EFS-Web to view current 

information on types of correspondence 

that are not permitted to be filed 

through EFS-Web. 

Discussion of Specific Rules 

Sections 1.4, 1.6, 1.8, and 1.33 

governing applicant correspondence are 

amended to reflect use of electronic 

commerce, in particular EFS-Web, as 

follows: 

Section 1.4: Section 1.4(d)(2) is 

amended to delete the reference to the 

character coded signature of paragraph 

(d)(3), which was only applicable to the 

ePAVE software, a component of the 

Office’s older, discontinued patent 

electronic filing system. Since Ssignatures are acceptable signatures in 

EFS-Web submissions in accordance 

with § 1.4(d)(2), this paragraph is also 

amended to eliminate the reference to 

‘‘EFS Tag(ged) Image File Format 

(TIFF)’’ because EFS-Web does not 

accept TIFF attachments. In addition, a 

reference to § 1.6(a)(4) is added as a 

conforming amendment. Accordingly, 

the relevant phrase has been rewritten 

as ‘‘via the Office Electronic Filing 

System as an attachment as provided in 

§ 1.6(a)(4).’’

A legible electronic image of a 

handwritten signature inserted, or 

copied and pasted by the person signing 

the correspondence into the 

correspondence may be considered to be 

an acceptable signature under § 1.4(d)(2) 

provided the signature is surrounded by 

a first single forward slash mark before 

the electronic image and a second single 

forward slash mark after the electronic 

image. That is, the legible electronic 

image of a handwritten signature must 

be enclosed between two single forward 

slashes, and the signer’s name indicated 

below or adjacent to the signature as 

required by § 1.4(d)(2). The slashes must 

be inserted in the correspondence prior 

to, or at the same time as, the insertion 

of the signature. The slashes must not be 

added after the insertion of the 

signature. 

Section 1.4(d)(3) is amended to 

provide requirements in using Office 

forms. The character coded signature 

requirements of former paragraph (d)(3) 

have been removed because such 

requirements were only applicable to 

the ePAVE software, which is now 

discontinued. 

The Office provides forms to the 

public to use in certain situations to 

assist in the filing of correspondence for 

a certain purpose and to meet certain 

requirements. Use of the forms for 

purposes for which they were not 

designed is prohibited. No changes to 

certification statements on the Office 

forms (e.g., oath or declaration forms, 

terminal disclaimer forms, petition 

forms, and the nonpublication request 


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form) may be made. For example, the 

following statements are certification 

statements on an oath or declaration 

form PTO/SB/01: (1) ‘‘I believe the 

inventor(s) named below to be the 

original and first inventor(s) of the 

subject matter which is claimed and for 

which a patent is sought on the 

invention entitled;’’ (2) ‘‘I hereby state 

that I have reviewed and understand the 

contents of the above-identified 

specification, including the claims, as 

amended by any amendment 

specifically referred to above;’’ (3) ‘‘I 

acknowledge the duty to disclose 

information which is material to 

patentability as defined in 37 CFR 1.56, 

including for continuation-in-part 

applications, material information 

which became available between the 

filing date of the prior application and 

the national or PCT international filing 

date of the continuation-in-part 

application;’’ and (4) ‘‘I hereby declare 

that all statements made herein of my 

own knowledge are true and that all 

statements made on information and 

belief are believed to be true; and 

further that these statements were made 

with the knowledge that willful false 

statements and the like so made are 

punishable by fine or imprisonment, or 

both, under 18 U.S.C. 1001 and that 

such willful false statements may 

jeopardize the validity of the 

application or any patent issued 

thereon.’’ As another example, the 

following statement is a certification on 

the nonpublication request form PTO/ 

SB/35: ‘‘I hereby certify that the 

invention disclosed in the attached 

application has not and will not be the 

subject of an application filed in another 

country, or under a multilateral 

international agreement, that requires 

publication at eighteen months after 

filing.’’ Other Office forms for patent 

applications or patents that contain 

certification statements include, but are 

not limited to, forms PTO/SB/01, PTO/ 

SB/01A, PTO/SB/03, PTO/SB/03A, 

PTO/SB/04, PTO/SB/25, PTO/SB/26, 

PTO/SB/28, PTO/SB/35, PTO/SB/51, 

PTO/SB/51s, PTO/SB/53, PTO/SB/62, 

PTO/SB/63, PTO/SB/64, PTO/SB/64a, 

PTO/SB/66, and PTO/SB/101–110. 

Most of the Office forms are static in 

that the forms do not allow users to 

customize the form to their particular 

needs. The existing text of a static form, 

other than a certification statement, may 

be modified, deleted or added to by a 

party, only if information identifying 

the form as an Office form (e.g., the form 

number and the Office of Management 

and Budget (OMB) approval information 

in the header and footer of the form) is 

removed. For example, a static form 

could be amended to add additional 

signature blocks if the form number and 

OMB information is removed. EFS-Web 

forms, however, do allow for 

customization. For example, users may 

add, remove, or change certain 

additional data blocks (e.g., signature 

blocks) as needed by selecting the ‘‘add’’

or ‘‘remove’’ buttons on the EFS-Web 

forms. These EFS-Web forms can be 

customized in a way provided for by the 

form without removing the text 

identifying the form as an Office form 

(e.g., the form number and OMB 

information in the header and the 

footer). Currently, only forms PTO/SB/ 

08 Information Disclosure Statement, 

PTO/SB/14 Application Data Sheet, 

PTO/SB/28 Petition to Make Special 

under the Accelerated Examination 

Program, PTO/SB/30 Request for 

Continued Examination (RCE) 

Transmittal, and PTO/SB/66 Petition to 

Accept Unintentionally Delayed 

Payment of Maintenance Fee in an 

Expired Patent (37 CFR 1.378(c)) are 

EFS-Web forms. 

The presentation to the Office 

(whether by signing, filing, submitting, 

or later advocating) of any form with 

text identifying the form as an Office 

form (e.g., the form number and the 

OMB information in the header and 

footer) by a party, whether a practitioner 

or non-practitioner, constitutes a 

certification under § 10.18(b) that the 

existing text and any certification 

statement on the form has not been 

altered other than permitted by EFSWeb customization. 

Section 1.4(d)(4) is amended to make 

conforming changes due to the removal 

of the character coded signature 

requirements of former paragraph (d)(3). 

Section 1.6: Section 1.6(a)(4) is added 

to indicate that most patent applications 

and other patent correspondence, 

including, inter alia, amendments, 

drawing changes and extensions of time, 

may be submitted using the Office 

electronic filing system only in 

accordance with the Office electronic 

filing system requirements (see the 

Legal Framework for EFS-Web, which 

sets forth the electronic filing system 

requirements (http://www.uspto.gov/ 

ebc/portal/efs/legal.htm)). The phrase 

‘‘using the Office electronic filing 

system only in accordance with the 

Office electronic filing system 

requirements’’ codifies and continues 

the current EFS practice. 

Under EFS-Web, correspondence is 

accorded a ‘‘receipt date’’ that is the 

date the correspondence is received 

(Eastern Time) at the Office’s 

correspondence address set forth in 

§ 1.1 (e.g., Alexandria, Virginia) when it 

was officially submitted. The receipt 

date is not limited to an official business 

day, but can be a Saturday, Sunday or 

Federal holiday within the District of 

Columbia. Correspondence is officially 

submitted to the Office via EFS-Web 

when a user clicks the submit button on 

the Confirm and Submit screen after the 

correspondence has been uploaded to 

the USPTO server for, inter alia, user 

review. 

The ‘‘receipt date’’ is recorded on an 

acknowledgment receipt, which is 

automatically sent to the person filing 

the correspondence after the 

correspondence is officially submitted. 

Under EFS-Web, the acknowledgment 

receipt contains a full listing of the 

correspondence submitted, including 

the count of pages and/or byte size for 

each piece of correspondence in the 

submission. Accordingly, the 

acknowledgment receipt is a legal 

equivalent of a post card receipt 

described in the Manual of Patent 

Examining Procedure (MPEP), Section 

503. For the filing of applications, the 

official filing date will continue to be 

stated on the filing receipt under 

§ 1.54(b), which is sent to applicants 

after the submitted application parts are 

reviewed for compliance with the filing 

date requirements. 

Section 1.6(g) is added to provide a 

new procedure for establishing that 

national stage correspondence, national 

stage filings, or follow-on 

correspondence required by § 1.495(b), 

which had been submitted via EFS was, 

in fact, received by the Office in the 

event that the Office has no evidence of 

receipt. 

To begin entry into the national stage, 

applicant is required to comply with 

§ 1.495(b) within thirty months from the 

priority date. Thus, applicant must pay 

the basic national fee on or before thirty 

months from the priority date and be 

sure that a copy of the international 

application has been received by the 

U.S. Designated or Elected Office prior 

to expiration of thirty months from the 

priority date. Where the international 

application was filed with the United 

States Receiving Office as the competent 

receiving Office, the copy of the 

international application referred to in 

§ 1.495(b) is not required. Payment of 

the basic national fee will indicate 

applicant’s intention to enter the 

national stage and will provide a U.S. 

correspondence address in most 

instances. Applicants cannot pay the 

basic national fee with a surcharge after 

the thirty-month deadline. Failure to 

pay the basic national fee within thirty 

months from the priority date will result 

in abandonment of the application. The 

time for payment of the basic fee is not 

extendable. Similarly, the copy of the 


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international application, if required 

under § 1.495(b), must be provided 

within thirty months from the priority 

date to avoid abandonment of the 

application. Accordingly, the ability to 

present evidence of timely receipt of 

national stage correspondence is critical 

to potentially avoid abandonment of the 

application. 

This new procedure is equivalent to 

the Office’s domestic filing process for 

providing evidence of the Office’s 

receipt of a continued prosecution 

application (CPA) for a design 

application under § 1.53(d) submitted 

by facsimile transmission in the event 

that the Office does not have evidence 

of receipt, as set forth in § 1.6(f) and 

MPEP 502.01. For a CPA, the procedure 

for providing evidence of receipt by the 

Office 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 (§ 1.6(f)). 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. Under the new procedure 

for providing evidence of a prior 

submission via EFS-Web, the petition 

and showing necessary to accept the resubmission of the correspondence as 

being filed on an earlier date is the same 

as the petition and showing required 

under § 1.6(f) with the exception that 

the acknowledgment receipt, or other 

equivalent evidence, must be provided 

rather than the sender’s facsimile report. 

If applicant has the acknowledgment 

receipt, applicant must include a copy 

of the acknowledgment receipt as 

evidence of the submission of the 

national stage correspondence. In the 

rare situations where applicant does not 

have the acknowledgment receipt, 

equivalent evidence, which is another 

piece of correspondence that shows 

substantially similar evidence that is 

provided by the acknowledgment 

receipt, will be considered in support of 

the petition. 

Section 1.8: Section 1.8(a)(1)(i) is 

amended by adding new paragraph (C) 

to permit certain correspondence, 

excluding correspondence not entitled 

to a certificate of mailing or 

transmission or not permitted to be 

electronically transmitted, to be treated 

as being timely received on the local 

date at the location where submitted if 

filed with a certificate of transmission 

via the Office’s electronic filing system, 

which is EFS-Web. See the Legal 

Framework for EFS-Web for a current 

list of types of correspondence that are 

not permitted to be filed using EFSWeb, such as any correspondence for 

reexamination proceedings. This rule 

change will provide a similar procedure 

for correspondence filed via EFS-Web 

that currently exists for correspondence 

filed via First-Class Mail under § 1.10 

and facsimile transmission using a 

certificate of mailing or transmission 

under § 1.8. Users should place the 

certificate of transmission on the 

correspondence (e.g., transmittal letter) 

submitted under EFS-Web in a similar 

manner as they would for 

correspondence submitted by facsimile 

transmission. See MPEP 512 for more 

information on certificate of mailing or 

transmission under § 1.8. 

Prior to this amendment to § 1.8, a 

person could state on certain papers 

directed to the Office, the date on which 

the paper will be deposited in the 

United States Postal Service or 

transmitted by facsimile. This 

amendment to § 1.8 will permit a 

similar procedure for establishing 

timeliness when correspondence is filed 

via EFS-Web. Accordingly, if the date 

stated in the correspondence submitted 

via EFS-Web 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. 

Even with such procedures under 

§ 1.8, the Office will continue its usual 

practice of recording the receipt date 

(e.g., ‘‘Office Date’’ Stamp) on all papers 

received through the mail, by facsimile, 

or via EFS-Web except those filed under 

§ 1.10 (See MPEP 513). The receipt date 

will also be the date that is entered on 

Office records and from which any 

subsequent periods are calculated. 

The certificate of mailing or 

transmission under § 1.8 is not available 

for all correspondence. Paragraph (a)(2) 

of § 1.8 lists some correspondence for 

which the certification of mailing or 

transmission does not apply to, and no 

benefit will be given to such certificates 

if used. The list enumerated in 

§ 1.8(a)(2) is not exhaustive, and the 

provisions of § 1.8 do not apply to the 

time periods or situations that have 

been explicitly excluded from § 1.8. For 

example, provisions of § 1.8(a) do not 

apply to time periods and situations set 

forth in §§ 1.217(e) and 1.703(f) because 

the exceptions are provided explicitly in 

§§ 1.217(e) and 1.703(f). 

Paragraphs (b) and (c) of § 1.8 will 

also apply to a certification of EFS-Web 

transmission by new paragraph 

(a)(1)(i)(C) of this section. Paragraphs (b) 

and (c) concern the situation where a 

paper containing a certificate was timely 

filed, but never received by the Office. 

Specifically, § 1.8(b) permits a party to 

notify the Office of a previous mailing, 

or transmission, of correspondence 

when a reasonable amount of time has 

elapsed from the time of mailing or 

transmitting of the correspondence, but 

Office records do not show receipt of 

the correspondence. Applicant may 

notify the Office of the previous mailing 

or transmission and supply a duplicate 

copy of the previously mailed or 

transmitted correspondence and a 

statement attesting on a personal 

knowledge basis or to the satisfaction of 

the Director to the previous timely 

mailing or transmission. If the person 

signing the statement did not sign the 

certificate of mailing or transmission, 

then the person signing the statement 

should explain how they have firsthand 

knowledge of the previous timely 

mailing or transmission. Such a 

statement should be filed promptly after 

the person becomes aware that the 

Office has not received the 

correspondence. Before notifying the 

Office of a previously submitted 

correspondence that appears not to have 

been received by the Office, applicants 

should check the Office’s private Patent 

Application Information Retrieval 

(PAIR) System to see if the 

correspondence has been entered into 

the application file. 

For EFS-Web submissions, applicants 

are encouraged to use the 

acknowledgment receipt generated by 

EFS-Web, if available, as part of the 

evidence to support the statement 

required by § 1.8(b)(3). An 

acknowledgment receipt is 

automatically electronically sent to the 

person filing the correspondence after 

the correspondence is officially 

submitted. As the acknowledgment 

receipt contains the time (Eastern Time) 

the correspondence was received at the 

Office, users may not be able to solely 

rely on the acknowledgment receipt to 

support a position that correspondence 

was submitted at a particular local time. 

Therefore, users are advised to keep a 

copy of papers submitted, including a 

certification of EFS-Web transmission, 

as evidence of the local time of all EFSWeb submissions to support a position 

that correspondence was submitted at a 

particular local time in the event such 

evidence is needed. 

Section 1.33: Section 1.33(a) is 

amended to accommodate changes due 

to electronic commerce. The Office 

anticipates that, in the near term future, 

applicants may have the option to view 

Office communications via the Office’s 

private PAIR system instead of receiving 

mailed communications. Also, when a 

submitter files correspondence using 


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2774 Federal Register / Vol. 72, No. 14 / Tuesday, January 23, 2007 / Rules and Regulations 

EFS-Web, an acknowledgment receipt is 

typically generated and automatically 

sent via e-mail to the submitter. The 

acknowledgment receipt is also placed 

in the Office’s electronic file and is 

viewable in private PAIR. To 

accommodate these processes, the 

phrases ‘‘, or otherwise make available,’’

and ‘‘the person associated with’’ was 

added so the third sentence will read as 

follows: ‘‘The Office will direct, or 

otherwise make available, all notices, 

official letters, and other 

communications relating to the 

application to the person associated 

with the correspondence address.’’ In 

addition, the word ‘‘generally’’ was 

added to the following sentence as a 

conforming change: ‘‘The Office will 

generally not engage in double 

correspondence with an applicant and a 

patent practitioner, or with more than 

one patent practitioner except as 

deemed necessary by the Director.’’

Rule Making Considerations 

Administrative Procedure Act 

This notice adopts changes to the 

rules of practice that concern the 

manner of submitting certain 

correspondence via the Office’s 

electronic filing systems. Specifically, 

the changes in this final rule: (1) 

Provide patent users with a process for 

showing that certain national stage 

correspondence submitted via EFS-Web 

was actually received by the Office by 

relying on the acknowledgment receipt; 

and (2) treat certain correspondence as 

received (for timeliness purposes) as of 

the date submitted by applicant rather 

than the date received by the Office if 

the correspondence is filed by EFS-Web, 

which will provide a similar procedure 

as the existing certificate of mailing or 

transmission under § 1.8. Therefore, 

these rule changes involve interpretive 

rules, or rules of agency practice and 

procedure. See Bachow 

Communications Inc. v. FCC, 237 F.3d 

683, 690 (D.C. Cir. 2001) (rules 

governing an application process are 

‘‘rules of agency organization, 

procedure, or practice’’ and exempt 

from the Administrative Procedure Act’s 

notice and comment requirement); see 

also Merck & Co., Inc. v. Kessler, 80 F.3d 

1543, 1549–50, 38 USPQ2d 1347, 1351 

(Fed. Cir. 1996) (the rules of practice 

promulgated under the authority of 

former 35 U.S.C. 6(a) (now in 35 U.S.C. 

2(b)(2)) are not substantive rules (to 

which the notice and comment 

requirements of the Administrative 

Procedure Act apply)), and Fressola v. 

Manbeck, 36 USPQ2d 1211, 1215 

(D.D.C. 1995) (‘‘it is extremely doubtful 

whether any of the rules formulated to 

govern patent or trade-mark practice are 

other than ‘interpretive rules, general 

statements of policy, * * * procedure, 

or practice.’ ’’) (quoting C.W. Ooms, The 

United States Patent Office and the 

Administrative Procedure Act, 38 

Trademark Rep. 149, 153 (1948)). 

Accordingly, prior notice and an 

opportunity for public comment were 

not required pursuant to 5 U.S.C. 

553(b)(A) (or any other law), and thirtyday advance publication is not required 

pursuant to 5 U.S.C. 553(d) (or any other 

law). 

Regulatory Flexibility Act 

As discussed previously, the changes 

in this final rule involve rules of agency 

practice and procedure under 5 U.S.C. 

553(b)(A), and prior notice and an 

opportunity for public comment were 

not required pursuant to 5 U.S.C. 

553(b)(A) (or any other law). As prior 

notice and an opportunity for public 

comment were not required pursuant to 

5 U.S.C. 553 (or any other law) for the 

changes in this final rule, a regulatory 

flexibility analysis under the Regulatory 

Flexibility Act (5 U.S.C. 601 et seq.) is 

not required for the changes in this final 

rule. See 5 U.S.C. 603. 

Executive Order 13132 

This rule making does not contain 

policies with federalism implications 

sufficient to warrant preparation of a 

Federalism Assessment under Executive 

Order 13132 (Aug. 4, 1999). 

Executive Order 12866 

This rule making has been determined 

to be not significant for purposes of 

Executive Order 12866 (Sept. 30, 1993). 

Paperwork Reduction Act 

This notice involves information 

collection requirements which are 

subject to review by the Office of 

Management and Budget (OMB) under 

the Paperwork Reduction Act of 1995 

(44 U.S.C. 3501 et seq.). The changes in 

this notice are limited to amending the 

rules of practice to support 

implementation of the Office’s 

electronic filing system (EFS) for patent 

correspondence, and in particular, the 

new web-based electronic filing system 

(EFS-Web). The changes in this final 

rule: (1) Provide patent users with a 

process for showing that certain 

national stage correspondence 

submitted via EFS-Web was actually 

received by the Office by relying on the 

acknowledgment receipt; and (2) treat 

certain correspondence as received (for 

timeliness purposes) as of the date 

submitted by applicant rather than the 

date received by the Office if the 

correspondence is filed by EFS-Web, 

which will provide a similar procedure 

as the existing certificate of mailing or 

transmission under § 1.8. The 

collections of information involved in 

this notice have been reviewed and 

previously approved by OMB under the 

following OMB control numbers: 0651–

0021, 0651–0031 and 0651–0032. The 

United States Patent and Trademark 

Office is not resubmitting the 

information collections package for 

OMB control numbers 0651–0031 and 

0651–0032 to OMB for its review and 

approval because the changes in this 

notice do not affect the information 

collection requirements associated with 

the information collection under OMB 

control numbers 0651–0031 and 0651–

0032. The United States Patent and 

Trademark Office is resubmitting the 

information collections package for 

OMB control numbers 0651–0021 to 

OMB for its review and approval 

because the changes in this notice do 

affect the information collection 

requirements associated with the 

information collection under OMB 

control number 0651–0021. 

The title, description and respondent 

description of the information collection 

under OMB control number 0651–0021 

are shown below with estimates of the 

annual reporting burdens. Included in 

the estimates is the time for reviewing 

instructions, gathering and maintaining 

the data needed, and completing and 

reviewing the collection of information. 

OMB Number: 0651–0021. 

Title: Patent Cooperation Treaty. 

Form Numbers: PCT/RO/101, PCT/ 

RO/134, PTO–1382, PTO–1390, PCT/ 

IPEA/401, PTO/SB/61/PCT, PTO/SB/64/ 

PCT, PCT/Model of power of attorney, 

PCT/Model of general power of 

attorney. 

Type of Review: Approved through 

March 2007. 

Affected Public: Individuals or 

households, businesses or other forprofits, not-for-profit institutions, farms, 

the Federal Government, and state, local 

or tribal governments. 

Estimated Number of Respondents: 

355,655. 

Estimated Time per Response: 15 

minutes to 8 hours. 

Estimated Total Annual Burden 

Hours: 347,889. 

Needs and Uses: The general purpose 

of the Patent Cooperation Treaty (PCT) 

is to standardize the format and filing 

procedures so that applicants may file 

one international application in one 

location, in one language, and pay one 

initial set of fees to seek protection for 

an invention in more than 100 

designated countries. This collection of 

information is necessary so that 

respondents can file an international 


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Federal Register / Vol. 72, No. 14 / Tuesday, January 23, 2007 / Rules and Regulations 2775 

patent application and so that the 

USPTO can fulfill its duties to process, 

search, and examine international 

patent applications under the provisions 

of the PCT. 

Interested persons are requested to 

send comments regarding these 

information collections, including 

suggestions for reducing this burden, to 

Robert J. Spar, Director, Office of Patent 

Legal Administration, Commissioner for 

Patents, P.O. Box 1450, Alexandria, VA 

22313–1450, or to the Office of 

Information and Regulatory Affairs, 

Office of Management and Budget, New 

Executive Office Building, Room 10235, 

725 17th Street, NW., Washington, DC 

20503, Attention: Desk Officer for the 

Patent and Trademark Office. 

Notwithstanding any other provision 

of law, no person is required to respond 

to nor shall a person be subject to a 

penalty for failure to comply with a 

collection of information subject to the 

requirements of the Paperwork 

Reduction Act unless that collection of 

information displays a currently valid 

OMB control number. 

List of Subjects in 37 CFR Part 1 

Administrative practice and 

procedure, Courts, Freedom of 

information, Inventions and patents, 

Reporting and recordkeeping 

requirements, Small businesses. 

■ For the reasons set forth in the 

preamble, 37 CFR part 1 is amended as 

follows: 

PART 1—RULES OF PRACTICE IN 

PATENT CASES 

■ 1. The authority citation for 37 CFR 

part 1 continues to read as follows: 

Authority: 35 U.S.C. 2(b)(2). 

■ 2. Section 1.4 is amended by revising 

paragraphs (d)(2) introductory text, 

(d)(3), and (d)(4)(ii) to read as follows: 

§ 1.4 Nature of correspondence and 

signature requirements. 

* * * * * 

(d) * * * 

(2) S-signature. An S-signature is a 

signature inserted between forward 

slash marks, but not a handwritten 

signature as defined by § 1.4(d)(1). An Ssignature includes any signature made 

by electronic or mechanical means, and 

any other mode of making or applying 

a signature not covered by a 

handwritten signature of § 1.4(d)(1). 

Correspondence being filed in the Office 

in paper, by facsimile transmission as 

provided in § 1.6(d), or via the Office 

electronic filing system as an 

attachment as provided in § 1.6(a)(4), for 

a patent application, patent, or a 

reexamination proceeding may be Ssignature signed instead of being 

personally signed (i.e., with a 

handwritten signature) as provided for 

in paragraph (d)(1) of this section. The 

requirements for an S-signature under 

this paragraph (d)(2) of this section are 

as follows. 

* * * * * 

(3) Forms. The Office provides forms 

to the public to use in certain situations 

to assist in the filing of correspondence 

for a certain purpose and to meet certain 

requirements for patent applications 

and proceedings. Use of the forms for 

purposes for which they were not 

designed is prohibited. No changes to 

certification statements on the Office 

forms (e.g., oath or declaration forms, 

terminal disclaimer forms, petition 

forms, and nonpublication request form) 

may be made. The existing text of a 

form, other than a certification 

statement, may be modified, deleted, or 

added to, if all text identifying the form 

as an Office form is removed. The 

presentation to the Office (whether by 

signing, filing, submitting, or later 

advocating) of any Office form with text 

identifying the form as an Office form 

by a party, whether a practitioner or 

non-practitioner, constitutes a 

certification under § 10.18(b) of this 

chapter that the existing text and any 

certification statements on the form 

have not been altered other than 

permitted by EFS-Web customization. 

(4) * * * 

(ii) Certifications as to the signature: 

(A) Of another: A person submitting 

a document signed by another under 

paragraph (d)(2) of this section is 

obligated to have a reasonable basis to 

believe that the person whose signature 

is present on the document was actually 

inserted by that person, and should 

retain evidence of authenticity of the 

signature. 

(B) Self certification: The person 

inserting a signature under paragraph 

(d)(2) of this section in a document 

submitted to the Office certifies that the 

inserted signature appearing in the 

document is his or her own signature. 

* * * * * 

■ 3. Section 1.6 is amended by adding 

new paragraphs (a)(4) and (g) to read as 

follows: 

§ 1.6 Receipt of correspondence. 

(a) * * * 

(4) Correspondence may be submitted 

using the Office electronic filing system 

only in accordance with the Office 

electronic filing system requirements. 

Correspondence submitted to the Office 

by way of the Office electronic filing 

system will be accorded a receipt date, 

which is the date the correspondence is 

received at the correspondence address 

for the Office set forth in § 1.1 when it 

was officially submitted. 

* * * * * 

(g) Submission of the national stage 

correspondence required by § 1.495 via 

the Office electronic filing system. In the 

event that the Office has no evidence of 

receipt of the national stage 

correspondence required by § 1.495, 

which was submitted to the Office by 

the Office electronic filing system, the 

party who submitted the 

correspondence may petition the 

Director to accord the national stage 

correspondence a receipt date as of the 

date the correspondence is shown to 

have been officially submitted to the 

Office. 

(1) The petition of this paragraph (g) 

requires that the party who submitted 

such national stage correspondence: 

(i) Informs the Office of the previous 

submission of the correspondence 

promptly after becoming aware that the 

Office has no evidence of receipt of the 

correspondence under § 1.495; 

(ii) Supplies an additional copy of the 

previously submitted correspondence; 

(iii) Includes a statement that attests 

on a personal knowledge basis, or to the 

satisfaction of the Director, that the 

correspondence was previously 

officially submitted; and 

(iv) Supplies a copy of an 

acknowledgment receipt generated by 

the Office electronic filing system, or 

equivalent evidence, confirming the 

submission to support the statement of 

paragraph (g)(1)(iii) of this section. 

(2) The Office may require additional 

evidence to determine if the national 

stage correspondence was submitted to 

the Office on the date in question. 

■ 4. Section 1.8 is amended by revising 

paragraphs (a)(1)(i) and (b)(3) to read as 

follows: 

§ 1.8 Certificate of mailing or 

transmission. 

(a) * * * 

(1) * * * 

(i) The correspondence is mailed or 

transmitted prior to expiration of the set 

period of time by being: 

(A) Addressed as set out in § 1.1(a) 

and deposited with the U.S. Postal 

Service with sufficient postage as first 

class mail; 

(B) Transmitted by facsimile to the 

Patent and Trademark Office in 

accordance with § 1.6(d); or 

(C) Transmitted via the Office 

electronic filing system in accordance 

with § 1.6(a)(4); and 

* * * * * 

(b) * * * 

(3) Includes a statement that attests on 

a personal knowledge basis or to the 


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2776 Federal Register / Vol. 72, No. 14 / Tuesday, January 23, 2007 / Rules and Regulations 

satisfaction of the Director to the 

previous timely mailing, transmission or 

submission. 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. If the correspondence 

was transmitted via the Office electronic 

filing system, a copy of an 

acknowledgment receipt generated by 

the Office electronic filing system 

confirming submission may be used to 

support this statement. 

* * * * * 

■ 5. Section 1.33 is amended by revising 

the introductory text of paragraph (a) to 

read as follows: 

§ 1.33 Correspondence respecting patent 

applications, reexamination proceedings, 

and other proceedings. 

(a) Correspondence address and 

daytime telephone number. When filing 

an application, a correspondence 

address must be set forth in either an 

application data sheet (§ 1.76), or 

elsewhere, in a clearly identifiable 

manner, in any paper submitted with an 

application filing. If no correspondence 

address is specified, the Office may treat 

the mailing address of the first named 

inventor (if provided, see §§ 1.76(b)(1) 

and 1.63(c)(2)) as the correspondence 

address. The Office will direct, or 

otherwise make available, all notices, 

official letters, and other 

communications relating to the 

application to the person associated 

with the correspondence address. For 

correspondence submitted via the 

Office’s electronic filing system, 

however, an electronic acknowledgment 

receipt will be sent to the submitter. The 

Office will generally not engage in 

double correspondence with an 

applicant and a patent practitioner, or 

with more than one patent practitioner 

except as deemed necessary by the 

Director. If more than one 

correspondence address is specified in a 

single document, the Office will select 

one of the specified addresses for use as 

the correspondence address and, if 

given, will select the address associated 

with a Customer Number over a typed 

correspondence address. For the party 

to whom correspondence is to be 

addressed, a daytime telephone number 

should be supplied in a clearly 

identifiable manner and may be 

changed by any party who may change 

the correspondence address. The 

correspondence address may be 

changed as follows: 

* * * * * 

Dated: January 17, 2007. 

Jon W. Dudas, 

Under Secretary of Commerce for Intellectual 

Property and Director of the United States 

Patent and Trademark Office. 

[FR Doc. E7–906 Filed 1–22–07; 8:45 am] 

BILLING CODE 3510–16–P 

ENVIRONMENTAL PROTECTION 

AGENCY 

40 CFR Parts 52 and 81 

[EPA–R06–OAR–2006–0386; FRL–8272–5] 

Approval and Promulgation of 

Implementation Plans; Texas; El Paso 

County Carbon Monoxide 

Redesignation to Attainment, and 

Approval of Maintenance Plan 

AGENCY: Environmental Protection 

Agency (EPA). 

ACTION: Direct final rule. 

SUMMARY: On January 20, 2006, the 

Texas Commission on Environmental 

Quality (TCEQ) submitted a State 

Implementation Plan (SIP) revision to 

request redesignation of the El Paso 

carbon monoxide (CO) nonattainment 

area to attainment for the CO National 

Ambient Air Quality Standard 

(NAAQS). This submittal also included 

a CO maintenance plan for the El Paso 

area and associated Motor Vehicle 

Emission Budgets (MVEBs). The 

maintenance plan was developed to 

ensure continued attainment of the CO 

NAAQS for a period of 10 years from 

the effective date of EPA approval of 

redesignation to attainment. In this 

action, EPA is approving the El Paso CO 

redesignation request and the 

maintenance plan with its associated 

MVEBs as satisfying the requirements of 

the Federal Clean Air Act (CAA) as 

amended in 1990. 

DATES: This rule is effective on March 

26, 2007 without further notice, unless 

EPA receives relevant adverse comment 

by February 22, 2007. 

ADDRESSES: Submit your comments, 

identified by Docket No. EPA–R06–

OAR–2006–0386, by one of the 

following methods: 

• http://www.regulations.gov: Follow 

the on-line instructions for submitting 

comments. 

• E-mail: Mr. Thomas Diggs at 

diggs.thomas@epa.gov. Please also send 

a copy by e-mail to the person listed in 

the FOR FURTHER INFORMATION CONTACT

section below. 

• Fax: Mr. Thomas Diggs, Chief, Air 

Planning Section (6PD–L), at fax 

number 214–665–7263. 

• Mail: Mr. Thomas Diggs, Chief, Air 

Planning Section (6PD–L), 

Environmental Protection Agency, 1445 

Ross Avenue, Suite 1200, Dallas, Texas 

75202–2733. 

• Hand Delivery: Mr. Thomas Diggs, 

Chief, Air Planning Section (6PD–L), 

Environmental Protection Agency, 1445 

Ross Avenue, Suite 1200, Dallas, Texas 

75202–2733. Such deliveries are only 

accepted during the Docket’s normal 

hours of operation, and special 

arrangements should be made for 

deliveries of boxed information. 

Instructions: Direct your comments to 

Docket ID No. EPA–R06–OAR–2006–

0386. EPA’s policy is that all comments 

received will be included in the public 

docket without change and may be 

made available online at http:// 

www.regulations.gov, including any 

personal information provided, unless 

the comment includes information 

claimed to be Confidential Business 

Information (CBI) or other information 

whose disclosure is restricted by statute. 

Do not submit information that you 

consider to be CBI or otherwise 

protected through www.regulations.gov 

or e-mail. The www.regulations.gov 

Web site is an ‘‘anonymous access’’

system, which means EPA will not 

know your identity or contact 

information unless you provide it in the 

body of your comment. If you send an 

e-mail comment directly to EPA without 

going through www.regulations.gov 

your e-mail address will be 

automatically captured and included as 

part of the comment that is placed in the 

public docket and made available on the 

Internet. If you submit an electronic 

comment, EPA recommends that you 

include your name and other contact 

information in the body of your 

comment and with any disk or CD–ROM 

you submit. If EPA cannot read your 

comment due to technical difficulties 

and cannot contact you for clarification, 

EPA may not be able to consider your 

comment. Electronic files should avoid 

the use of special characters, any form 

of encryption, and be free of any defects 

or viruses. 

Docket: All documents in the docket 

are listed in the www.regulations.gov 

index. Although listed in the index, 

some information is not publicly 

available, e.g., CBI or other information 

whose disclosure is restricted by statute. 

Certain other material, such as 

copyrighted material, will be publicly 

available only in hard copy. Publicly 

available docket materials are available 

either electronically in http:// 

www.regulations.gov or in hard copy at 

the Air Planning Section (6PD–L), 

Environmental Protection Agency, 1445 

Ross Avenue, Suite 700, Dallas, Texas 

75202–2733. The file will be made 

available by appointment for public 


jlentini on PROD1PC65 with RULES