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###### Department of Commerce

###### United States Patent and Trademark Office

          - [Docket No.: PTO-P-2010-0040]

# AGENCY:

United States Patent and Trademark Office, Commerce.

# ACTION:

Notice.

# SUMMARY:

The United States Patent and Trademark Office (USPTO) is increasing the availability of its patent electronic filing system, Electronic Filing System—Web (EFS-Web) by providing a new contingency option when the primary portal to EFS-Web has an unscheduled outage. Previously, the entire EFS-Web system is not available to the users during such an outage. The contingency option in EFS-Web will permit users to sign-on as unregistered EFS-Web users to file new applications, national stage submissions under the Patent Cooperation Treaty (PCT) submitted with the basic national fee necessary to enter the national stage, requests for reexamination, and certain petitions, during an unscheduled outage of the primary portal to EFS-Web.

# DATES:

*Effective Date:*                         May 19, 2010.                    

# FOR FURTHER INFORMATION CONTACT:

Joni Y. Chang, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Associate Commissioner for Patent Examination Policy, by telephone at 571-272-7720, or by mail addressed to: Mail Stop Comments Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

                        Inquiries regarding EFS-Web and other USPTO information technology (IT) systems may be directed to the Patent Electronic Business Center (Patent EBC), by telephone: 1-866-217-9197 (toll-free) and 571-272-4100, or by e-mail:                         *ebc@uspto.gov*.                    

Inquiries regarding IT policy for U.S. national patent applications may be directed to Mark Polutta, Senior Legal Advisor, Office of Patent Legal Administration, by telephone at 571-272-7709.

Inquiries regarding IT policy for international patent applications may be directed to Tamara Graysay, Special Program Examiner, Office of Patent Cooperation Treaty (PCT) Legal Administration, by telephone at 571-272-6728.

# SUPPLEMENTARY INFORMATION:

The USPTO is increasing the availability of EFS-Web by providing a new contingency option in EFS-Web when the primary portal to EFS-Web has an unscheduled outage. Currently, approximately eighty-seven percent of new patent applications are being electronically filed via EFS-Web. Applicants experience many benefits from filing their applications and follow-on documents electronically. For example, applicants promptly receive an electronic acknowledgment receipt of their electronic submissions and have the ability to review their applications or documents via the Patent Application Information Retrieval (PAIR) system within an hour after the USPTO receives the electronic submissions. Furthermore, independent inventors and other small entity applicants who file their applications electronically via EFS-Web receive a discount on the basic filing fee. Previously, when the primary portal to EFS-Web is unavailable during an unscheduled outage, the entire EFS-Web system is unavailable to users. The new contingency option in EFS-Web will minimize any inconvenience to users who wish to file a new application during an unscheduled outage of the primary portal to EFS-Web.

## I. EFS-Web Contingency Option

                    Effective immediately, the USPTO will provide EFS-Web Contingency Option to users to file new applications, national stage submissions under 35 U.S.C. 371, requests for reexamination, and certain petitions when the primary portal to EFS-Web is unavailable during an unscheduled outage. The USPTO will post a notification of any unscheduled outage of the primary portal to EFS-Web and provide the link to EFS-Web Contingency Option on the EFS-Web Internet page (                    *http://www.uspto.gov/​patents/​process/​file/​efs/​index.jsp*). The EFS-Web Contingency Option will have the same functionality as EFS-Web for unregistered e-filers (                    *https://sportal.uspto.gov/​secure/​portal/​efs-unregistered*). It will permit users to sign on as unregistered EFS-Web users to file new applications, national stage submissions under 35 U.S.C. 371 submitted with the basic national fee necessary to enter the national stage, requests for reexamination, and certain petitions. However, other follow-on documents and fee payments filed after the initial submission of the application or reexamination request (                    *e.g.,*                     amendments and replies to Office actions) cannot be filed using EFS-Web Contingency Option.                

Specifically, EFS-Web Contingency Option will only permit users to electronically file the following items as unregistered EFS-Web users:

1. Provisional patent applications under 35 U.S.C. 111(b);

2. Nonprovisional utility patent applications under 35 U.S.C. 111(a) (including reissue utility patent applications);

3. Nonprovisional design patent applications under 35 U.S.C. 171 (including reissue design patent applications);

4. International applications under PCT Article 11 for filing in the United States Receiving Office;

5. National stage submissions under 35 U.S.C. 371 submitted with the basic national fee necessary to enter the national stage;

                    6. Requests for                     *ex parte*                     reexamination under 35 U.S.C. 302 for utility or design patents;                

                    7. Requests for                     *inter partes*                     reexamination under 35 U.S.C. 311 for utility or design patents;                

                    8. Petitions to make special based on age under 37 CFR 1.102(c) when filed as an e-petition using the EFS-Web SB130 form, for the automatic processing of the e-petition (for more information                     *see http://www.uspto.gov/​ebc/​portal/​efs/​sb130_​instructions.doc*);                

                    9. Petitions to accept an unintentionally delayed payment of maintenance fee under 37 CFR 1.378(c) when filed as an e-petition using the EFS-Web SB66 form, for the automatic processing of the e-petition (for more information                     *see http://www.uspto.gov/​ebc/​portal/​efs/​sb0066e_​fill.doc*); and                

10. Petition to make special under the accelerated examination program (must be filed with a nonprovisional utility patent application under 35 U.S.C. 111(a)).

                    Documents filed via EFS-Web Contingency Option as part of the submissions listed above must meet the same file format requirements established for EFS-Web,                     *e.g.,*                     file size and PDF embedded-font requirements. The same file validation performed in EFS-Web will be performed in EFS-Web Contingency Option. Similar to EFS-                          ( print page 27987)                        Web, EFS-Web Contingency Option will provide an Electronic Acknowledgement Receipt that establishes the date of receipt by the USPTO of an application or document submitted via EFS-Web Contingency Option. Applicant will not be required to, and should not, resubmit the application or document when the primary portal to EFS-Web is once again available. Any resubmission of an application will result in filing a duplicate application and, if applicant pays the filing fees again when submitting the duplicate application, no refund will be provided.                

                    Applications filed via EFS-Web Contingency Option are protected with the same level of security as EFS-Web for unregistered e-filers by using Transport Layer Security (TLS) to encrypt transmission over the Internet. Registered e-filers who have uploaded documents to a Saved Submission package in EFS-Web will not be able to access those Saved Submission documents in EFS-Web Contingency Option. Applicants can submit on-line fee payments by selecting fees on the fee calculation screen and completing their payment at time of submission (                    *i.e.,*                     chose the “Yes! I want to pay now” button rather than “No—I will pay later” button).                

                    When the primary portal to EFS-Web is unavailable during an unscheduled outage, applicants may also file new applications, national stage submissions under 35 U.S.C. 371 submitted with the basic national fee necessary to enter the national stage, and reexamination requests, by hand-delivery to the USPTO, or “Express Mail” from the United States Postal Service (USPS) in accordance with 37 CFR 1.10, to establish the filing date or national stage entry date.                     *See Legal Framework for Electronic Filing System—Web (EFS-Web),*74 FR 55200, 55204 (October 27, 2009) (notice), and Revised Legal Framework for EFS-Web (                    *http://www.uspto.gov/​patents/​process/​file/​efs/​guidance/​New_​legal_​framework.jsp*) (Section C3). New applications, national stage submissions under 35 U.S.C. 371 submitted with the basic national fee necessary to enter the national stage, and reexamination requests cannot be submitted by facsimile transmission, and certificate of mailing procedures under 37 CFR 1.8 do not apply to these items.                

                    The EFS-Web Contingency Option does not permit follow-on fee payments and follow-on documents other than those listed above. Applicants may file the documents or fee payments by: (1) Facsimile transmission, (2) first class mail with a certificate of mailing in accordance with 37 CFR 1.8, (3) hand-delivery to the USPTO, or (4) “Express Mail” from USPS in accordance with 37 CFR 1.10. Documents that are required to establish the filing date of an application (                    *e.g.,*                     a missing drawing figure or page of the specification) cannot be submitted by facsimile transmission, and certificate of mailing procedures under 37 CFR 1.8 do not apply to these documents.                

## II. Improperly Filed Follow-on Documents

                    As previously stated, EFS-Web Contingency Option and EFS-Web for unregistered e-filers permit users to sign on as unregistered EFS-Web users to file new applications, national stage submissions under 35 U.S.C. 371 submitted with the basic national fee necessary to enter the national stage, requests for reexamination and certain petitions. Unfortunately, EFS-Web Contingency and EFS-Web for unregistered e-filers have limited functionality, which do not permit users to file other follow-on documents and follow-on fee payments after the initial submission of the application or reexamination request (                    *e.g.,*                     amendments and replies to Office actions). Accordingly, it will be improper for users to file follow-on documents as new applications. The USPTO will continue to provide answers to frequently asked questions, and other helpful information on the USPTO Web site. Users are encouraged to check the USPTO Web site for more information and contact the Patent Electronic Business Center for questions related to the usage of USPTO electronic systems.                

## III. Additional Information Regarding National Stage Submissions

                    The basic national fee is required in order for an international application to enter the national stage under 35 U.S.C. 371.                     *See*37 CFR 1.495. Users are permitted to submit the basic national fee with the national stage submission under 35 U.S.C. 371 via EFS-Web and EFS-Web Contingency Option using on-line payment screens that interface with the Revenue Accounting and Management (RAM) system. If the RAM system is unavailable, neither EFS-Web nor EFS-Web Contingency Option will permit users to make payment using the interactive payment screens. Applicant may pay the necessary national stage entry fees by including a written authorization to charge the desired fees together with the national stage submission under 35 U.S.C. 371, or sending the payment via “Express Mail” from the USPS in accordance with 37 CFR 1.10 on the same date that the national stage submission is electronically filed.                

                    For any national stage submissions under 35 U.S.C. 371 filed via the EFS-Web or EFS-Web Contingency Option, the system automatically checks the Patent Application Locating and Monitoring (PALM) system to verify that no previous national stage submission has been made for the particular PCT international application referenced in the initial national stage submission. If the PALM system is unavailable, neither EFS-Web nor EFS-Web Contingency Option can complete the PALM verification, and thus EFS-Web and EFS-Web Contingency Option will not permit any national stage submissions under 35 U.S.C. 371 to be filed. Therefore, if PALM is unavailable, applicants may use hand-delivery or “Express Mail” from the USPS in accordance with 37 CFR 1.10 to timely submit documents and fees for national stage entry. However, applicants may                     *not*                     file national stage submissions under 35 U.S.C. 371 and the basic national fee necessary to enter the national stage via facsimile transmission.                     *See*37 CFR 1.6(d)(3) and 1.8(a)(2)(i)(F).                

Dated: May 12, 2010.

David J. Kappos,

Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.

[FR Doc. 2010-11906 Filed 5-18-10; 8:45 am]

BILLING CODE 3510-16-P