45662 Federal Register / Vol. 73, No. 152 / Wednesday, August 6, 2008 / Proposed Rules 

selection, OAS will proceed with the 

selection process as follows. When the 

OAS receives the preferred selection 

from one party, it will notify the other 

party that it has fourteen (14) days in 

which to submit its selections. If that 

party fails to respond within the 

deadline, the first party’s choice will be 

honored unless prohibited by the 

collective bargaining agreement. Where 

both parties respond, the name that has 

the lowest combined number will be 

appointed. If, within fourteen (14) days, 

a second panel is requested, and is 

permitted by the collective bargaining 

agreement, the requesting party must 

pay a fee for the second panel. 

(e) The OAS will make a direct 

appointment of an arbitrator only upon 

joint request or as provided by 

paragraphs (c)(3) or (d) of this section. 

(f) A direct appointment in no way 

signifies a determination of arbitrability 

or a ruling that an agreement to arbitrate 

exists. The resolution of disputes over 

these issues rests solely with the parties. 

6. Amend the Appendix to 29 CFR 

Part 1404 by removing ‘‘$100’’ and 

adding ‘‘$150’’ in its place. 

Michael J. Bartlett, 

Deputy General Counsel. 

[FR Doc. E8–17674 Filed 8–5–08; 8:45 am] 

BILLING CODE 6732–01–P 

DEPARTMENT OF COMMERCE 

Patent and Trademark Office 

37 CFR Parts 1, 2, and 3 

[Docket No. PTO–P–2008–0022] 

RIN 0651–AC27 

Changes to Practice for Documents 

Submitted to the United States Patent 

and Trademark Office 

AGENCY: United States Patent and 

Trademark Office, Commerce. 

ACTION: Notice of proposed rulemaking. 

SUMMARY: The United States Patent and 

Trademark Office (Office) is proposing 

to revise the rules of practice to limit the 

types of correspondence that may be 

submitted to the Office by facsimile. 

The Office is also proposing an 

increased minimum font size for use on 

papers submitted to the Office for a 

patent application, patent or 

reexamination proceeding. The 

proposed changes will improve the 

legibility of documents in the Office’s 

files of patent applications and 

reexamination proceedings. 

DATES: Written comments must be 

received on or before October 6, 2008. 

No public hearing will be held. 

ADDRESSES: Comments should be sent 

by electronic mail over the Internet 

addressed to 

AC27.comments@uspto.gov. Comments 

may also be submitted by mail 

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

Box 1450, Alexandria, VA 22313–1450, 

marked to the attention of Raul Tamayo, 

Legal Advisor, Office of Patent Legal 

Administration (OPLA). Although 

comments may be submitted by mail, 

the Office prefers to receive comments 

via the Internet. 

Comments may also be sent by 

electronic mail message over the 

Internet via the Federal eRulemaking 

Portal. See the Federal eRulemaking 

Portal Web site (http:// 

www.regulations.gov) for additional 

instructions on providing comments via 

the Federal eRulemaking Portal. 

The comments will be available for 

public inspection at the Office of Patent 

Legal Administration, Office of the 

Deputy Commissioner for Patent 

Examination Policy, currently located at 

Room 7D74 of Madison West, 600 

Dulany Street, Alexandria, Virginia and 

will also be available through 

anonymous file transfer protocol (ftp) 

via the Internet (address: http:// 

www.uspto.gov). Because comments will 

be made available for public inspection, 

information that is not desired to be 

made public, such as an address or a 

telephone number, should not be 

included in the comments. 

FOR FURTHER INFORMATION CONTACT: 

Hiram H. Bernstein ((571) 272–7707), 

Senior Legal Advisor, or Raul Tamayo, 

Legal Advisor, ((571) 272–7728), Office 

of Patent Legal Administration, Office of 

Deputy Commissioner for Patent 

Examination Policy, directly by 

telephone, or by mail addressed to: Mail 

Stop Comments-Patents, Commissioner 

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

VA 22313–1450, marked to the attention 

of the Office of Patent Legal 

Administration. 

For information regarding 

reexamination issues, contact Stephen 

Marcus ((571) 272–7743) or Kenneth 

Schor ((571) 272–7710), Senior Legal 

Advisors, Office of Patent Legal 

Administration, Office of Deputy 

Commissioner for Patent Examination 

Policy. 

SUPPLEMENTARY INFORMATION: The Office 

is proposing to revise the rules of 

practice in title 37 of the Code of 

Federal Regulations (CFR) for facsimile 

transmissions of correspondence, and 

the minimum font size required to be 

used. The Office is specifically 

proposing revising §§ 1.6, 1.52, 1.366, 

2.195, 3.24, and 3.25. 

I. Background 

The number of patent applications 

and patent-related correspondence 

received by the Office has increased 

substantially over the last few years, and 

submissions are expected to continue to 

increase in the next few years. 

Processing paper is extremely laborintensive and subject to error and 

misfiling, particularly as the Office must 

sort through several thousand pieces of 

patent correspondence that are received 

on a daily basis. Although the Office has 

made substantial changes in an attempt 

to accurately and efficiently process the 

increased number of correspondence 

received, the Office believes that it 

should make further changes in its 

business practices to improve its 

handling of patent correspondence. 

II. Facsimile Transmission 

In 1988, the Office, due to widespread 

use of facsimile transmission and the 

resulting time saved in correspondence 

between applicants and the Office, 

established a trial program to accept 

facsimile transmission of certain 

correspondence. In light of the success 

of the trial program, a policy on 

acceptance of facsimile transmissions 

was incorporated into the rules of 

practice. See Changes in Signature and 

Filing Requirements for Correspondence 

Files in the Patent and Trademark 

Office, 58 FR 54494 (October 22, 1993). 

Facsimile transmission of 

correspondence has grown to over 

240,000 pieces of patent correspondence 

per year sent to the Office’s central 

facsimile number. While the number of 

facsimile transmissions in any one 

application may be small, the overall 

number of facsimile transmissions 

represents a significant processing 

burden on the Office. 

The advantage of facsimile 

transmitting patent and assignment 

correspondence has been the quick 

submission of such correspondence to 

the particular area of the Office 

concerned with promptly acting on 

them. The advantage, however, is not 

exclusive to facsimile transmissions. 

EFS–Web offers this advantage as well 

as others not available with facsimile 

transmission. For example, EFS–Web 

submissions are ‘‘soft scanned’’ (i.e., 

electronically uploaded) directly into 

the official application file, so multiple 

Office employees can simultaneously 

view the document(s). Furthermore, 

when documents are submitted via 

EFS–Web, the Office’s electronic system 

sends an auto-generated message 

notifying the appropriate area which 

treats the type of documents submitted. 

Additionally, EFS–Web offers 


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applicants the opportunity to review the 

content of their submissions after the 

‘‘soft scanning’’ process is complete. 

It should be recognized that 

correspondence received by the Office 

via facsimile are often of low image 

quality when printed and viewed. The 

low image quality is not so much 

dependent upon the type of printer used 

by the Office when receiving and 

printing the transmitted 

correspondence, but rather is dependent 

upon the quality of the machine used by 

an applicant in generating the facsimile 

transmission. When the Office scans 

these low image quality correspondence 

into the Office’s official application file 

called the Image File Wrapper (IFW), 

the image quality can be further 

compromised. 

In addition to low image quality, a 

number of other adverse consequences, 

from the Office’s perspective, exist 

when applicant submits patent and 

assignment documents via facsimile. 

For example, a number of applicants are 

not meticulous in determining the 

specific facsimile transmission number 

to which a correspondence should be 

sent. Under the current rules, receipt by 

the Office via any facsimile 

transmission number may suffice to 

represent a completed, effective 

transmission. However, the area of the 

Office needing to act on the errant 

transmission would not be aware of its 

receipt, and the area receiving it may 

not immediately recognize what type of 

correspondence has been received, or 

where the correspondence should be 

forwarded for prompt action. Such 

circumstances cause unnecessary delays 

and add unnecessary costs to the 

processing of errant correspondence. In 

some instances, routing errant 

correspondence to the correct area of the 

Office is not possible or is not done in 

a timely manner (e.g., the paper copy 

becomes misplaced before the proper 

forwarding area can be determined, or 

the proper forwarding area is not readily 

identifiable by the receiving area), 

thereby forcing the applicant to rely on 

a transmission receipt via a petition 

alleging that the correspondence was 

timely submitted. Additionally, even 

where the facsimile transmission is sent 

to the designated transmission number, 

the Office must print the transmitted 

correspondence, process the paper, scan 

the possibly low-quality image, and 

update the IFW. All of these steps are 

additionally time-consuming and costly. 

Accordingly, the Office believes that 

given: (1) The costs and quality 

concerns regarding facsimile 

transmitted correspondence; and (2) the 

newly upgraded EFS–Web electronic 

filing system, which offers the same 

benefit of quick submission to the 

particular area of the Office that needs 

to act on the correspondence, it is now 

appropriate to terminate the use of 

facsimile transmissions as a method for 

filing most correspondence intended to 

become part of the file record of a patent 

application, patent or reexamination 

proceeding. Specifically, 

correspondence that can be submitted 

via EFS–Web would no longer be 

accepted via facsimile transmission. For 

example, a petition to withdraw a patent 

application from issue per 37 CFR 1.313 

would no longer be accepted via 

facsimile transmission and would need 

to be submitted via EFS–Web. 

Similarly, it is also appropriate to 

eliminate facsimile transmission of 

other types of correspondence that can 

be submitted via certain other electronic 

systems of the Office. Specifically, any 

type of patent or trademark 

correspondence that can be submitted 

via the Office’s Electronic Patent 

Assignment System (EPAS) (discussed 

in Manual of Patent Examining 

Procedure (MPEP) § 302.10), and 

Electronic Trademark Assignment 

System (ETAS) (discussed in Trademark 

Manual of Examination Procedure 

(TMEP) § 503.03(a)), such as assignment 

documents submitted for recording in 

Assignment Services Division, would no 

longer be permitted to be submitted via 

facsimile transmission. While such 

documents are intended to become part 

of the official assignment records, they 

are not intended to become part of the 

official patent or trademark file to which 

they relate. 

Additional aspects of the proposed 

rule making would require applicants, 

third party requesters, and patent 

owners: (1) To utilize a facsimile 

transmission number identified by the 

Office for a particular type of 

correspondence, i.e., the submission 

must be transmitted directly to the area 

of the Office appropriate to receive the 

transmission at its identified 

transmission number (as opposed to 

transmission to any other facsimile 

transmission number, such as a 

facsimile transmission number 

identified for a different type of 

correspondence), or otherwise the 

transmission would not be effective (see 

§ 1.6(d)(3)); and (2) to limit each 

submission made via facsimile 

transmission to one application or other 

matter before the Office, except for a 

single submission of multiple patent 

maintenance fee payments or requests 

for refunds thereof. The submission for 

a single application or other matter may 

address more than one issue with more 

than one piece or type of 

correspondence in regard to the single 

application or matter if each 

correspondence can be properly 

submitted via facsimile. 

While this Notice proposes to restrict 

facsimile transmissions of 

correspondence directed to the Office, 

nothing in the proposed rule making is 

intended to curtail the ability of the 

Office to utilize facsimile transmissions 

for its outgoing correspondence as it 

deems appropriate, such as replies to 

certain inquiries from applicants. 

III. EFS–Web 

The Office’s Web-based electronic 

filing system (EFS–Web) went into full 

operation on March 17, 2006, and is 

supported by the LEGAL FRAMEWORK 

FOR EFS–WEB (http://www.uspto.gov/ 

ebc/portal/efs/legal.htm), which 

identifies what documents may be 

submitted via EFS–Web. The rules of 

practice were amended so that EFS–

Web submissions would be treated 

analogously to submissions filed via 

First-Class Mail or facsimile 

transmissions with a certificate of 

mailing or transmission. See Changes to 

Facilitate Electronic Filing of Patent 

Correspondence, 72 FR 2770 (January 

23, 2007); 1315 Off. Gaz. Pat. Office 57 

(February 13, 2007) (final rule). EFS–

Web is easy to use as correspondence 

can be submitted to the Office at the 

click of a button, and EFS–Web is 

available twenty-four hours a day, seven 

days a week. An increasing amount of 

patent-related correspondence has been 

filed via EFS–Web. In particular, the 

percentage of utility, plant, reissue, 

national stage applications, and requests 

for continued examination (RCE) filed 

via EFS–Web has dramatically increased 

from approximately 28% in the first 

week in October 2006 to approximately 

70% in the second week in January 

2008. 

As discussed above in item II, 

‘‘Facsimile transmission,’’ increased use 

of EFS–Web would increase efficiency 

and improve the quality of the images 

in the IFW used for prosecution and 

publication purposes. Additionally, 

system delays caused by paper 

processing and scanning would be 

much reduced. 

With EFS–Web being available for the 

submission of patent correspondence 

twenty-four hours a day, seven days a 

week, patent applicants, owners, and 

third party requesters in reexamination 

proceedings (both ex parte and inter 

partes) are provided easy and 

convenient access to a system for 

submitting their patent correspondence. 

Shortly after patent correspondence is 

officially submitted to the Office via 

EFS–Web, the Office receives the 

correspondence and issues an 


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acknowledgment receipt. 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 received. 

Accordingly, an acknowledgment 

receipt is the legal equivalent of a post 

card receipt described in MPEP § 503, 

with the added convenience of being 

automatically generated. In contrast, a 

return receipt for correspondence 

transmitted to the Office’s central 

facsimile number is only automatically 

generated when (1) the sender’s 

facsimile number is properly 

programmed in the sending facsimile 

machine and (2) the sender’s facsimile 

machine is capable of receiving a return 

facsimile transmission immediately 

following receipt of the original 

transmission. 

For the filing of patent 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. Under § 1.6(a)(4), 

patent correspondence filed via EFS–

Web is considered to have been filed on 

the date the Office receives the 

submission (regardless of whether that 

date is a Saturday, Sunday, or Federal 

holiday within the District of 

Columbia). Thus, by using EFS–Web, 

applicants and other EFS–Web users 

(e.g., practitioners) can, in a short period 

of time, ensure that they have received 

a ‘‘date certain’’ for any submission 

made via EFS–Web. 

Correspondence submitted by 

facsimile transmission is received in 

paper form and is considered paper 

correspondence (although it has an 

electronic transmission component), 

while EFS–Web transmissions are 

electronic transmissions that remain in 

electronic form after receipt. Critical 

data concerning patent correspondence 

submitted via EFS–Web is entered into 

the automated systems much sooner 

than if the correspondence was received 

in paper in that the electronic document 

of an EFS–Web submission is directly 

available in the IFW system (by ‘‘soft 

scanning’’), while the printed paper for 

a facsimile submission requires manual 

handling and scanning of the paper in 

order to make such documents available 

in the IFW system. 

Continued increases in the amount of 

patent correspondence encourage the 

Office to change its business approach 

for serving its users. With EFS–Web, 

users are provided with better quality, 

as well as improved accuracy of the 

information submitted to and processed 

by the Office, while using fewer 

resources, thus reducing the time 

required for processing and handling. 

Users have greater assurance that the 

content of the IFW is accurate. 

Submitting correspondence via EFS–

Web provides a level of consistency, 

accuracy, quality and predictability that 

a paper-based facsimile transmission 

cannot provide. EFS–Web users have 

repeatedly stated that they are satisfied 

with the ease of access and use of EFS–

Web, and appreciate the automatic 

generation of the acknowledgment 

receipt after they officially submit their 

correspondence to the Office. 

Accordingly, the need for the 

submission of patent correspondence to 

a central facsimile number or a facsimile 

number for a particular type of 

correspondence is greatly reduced. 

The Legal Framework for EFS–WEB 

permits submission of all types of 

correspondence that are not specifically 

excepted. See Item XXXIII. Documents 

Policy, in the legal framework document 

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

legal.htm. The following is a nonexclusive list of correspondence types 

that are identified in the legal 

framework document as currently not 

permitted: 

1. Correspondence concerning 

Registration to Practice submitted under 

§ 1.4(e). 

2. Certified copies submitted under 

§ 1.4(f). 

3. Correspondence to be filed in a 

patent application subject to a secrecy 

order under §§ 5.1 through 5.5 of this 

chapter. 

4. Submissions in contested cases 

before the Board of Patent Appeals and 

Interferences, except as the Board may 

expressly authorize. 

5. Papers filed in contested cases 

before the Board of Patent Appeals and 

Interferences, which are governed by 

§ 41.106(f). 

6. Correspondence filed in connection 

with a disciplinary proceeding pursuant 

to 37 CFR part 10. 

7. Submissions that are not associated 

with an application or a reexamination 

proceeding. 

8. Third party papers under § 1.99. 

9. Protests under § 1.291. 

10. Public use hearing papers under 

§ 1.292. 

11. Maintenance fees submitted under 

§ 1.366. 

Although a main purpose of the 

proposed changes to the facsimile 

transmission rules is to prohibit 

submission by facsimile transmission of 

those types of correspondence that can 

be submitted via EFS–Web, the Office is 

proposing to also terminate the ability of 

third parties to submit correspondence 

via facsimile transmission that cannot 

be submitted via EFS–Web, as third 

party submissions under § 1.99, protests 

under § 1.291, and public use hearing 

papers under § 1.292 are all ill-suited for 

facsimile transmission. 

Assignment documents submitted for 

recording under 35 U.S.C. 261 are also 

barred from submission via EFS–Web by 

item 7 (even though related to an 

application or a patent), but they may be 

electronically filed using the Electronic 

Patent Assignment System (EPAS) or 

the Electronic Trademark Assignment 

System (ETAS). Hence, there is no 

continued need to submit assignments 

for recording via facsimile transmission. 

Information regarding EPAS is available 

by sending an e-mail to epas@uspto.gov. 

Information regarding ETAS is available 

by sending an e-mail to etas@uspto.gov. 

EFS–Web permits registered users to 

file both new submissions and followon documents. Some examples of 

papers that may be submitted via EFS–

Web and therefore would no longer be 

able to be submitted by facsimile 

transmission are: (1) Amendments; (2) 

information disclosure statements; (3) 

petitions, including petitions to 

withdraw an application from issue, 

petitions for express abandonment to 

avoid publication, and maintenance fee 

related petitions; (4) requests for 

continued examination; (5) papers in ex 

parte or inter partes reexamination 

proceedings; (6) Design continued 

prosecution application (CPA) filings; 

(7) refund requests related to an 

application or a reexamination 

proceeding; (8) papers submitted to the 

U.S. Receiving Office; (9) papers 

submitted in regard to a pre-appeal or 

an appeal conference or an appeal to the 

Board of Patent Appeals and 

Interferences; and (10) status inquiries 

related to the issuance of the next Office 

action on the merits or the issuance of 

a decision on petition. 

Correspondence submitted via EFS–

Web should be intended to become part 

of the official file record. Generally, 

EFS–Web submissions are automatically 

made part of the official file record, 

except for pre-grant publication 

submissions (i.e., amended 

republications, amended first 

publications, voluntary publications), 

which must be submitted via EFS–Web 

but are not made part of the official file 

record if submitted properly. 

Maintenance fee payments, refunds of 

such payments, and related papers 

would continue to be able to be 

submitted via facsimile transmission. 

See the preamble discussion in regard to 

§ 1.6(d)(2)(i). Related papers would 

include a petition to transfer a 

maintenance fee payment from the 


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‘‘wrong’’ patent where the fee had not 

previously been paid (and therefore 

payment could be applied thereto) to 

the right patent (where the maintenance 

fee had not already been paid). Where 

a maintenance fee has already been 

paid, payment of an additional 

maintenance fee will result in an 

automatic refund. Maintenance fee 

payers should consult https:// 

ramps.uspto.gov/eram/ 

patentMaintFees.do. 

Types of reexamination proceeding 

correspondence that may be submitted 

via EFS–Web when the correspondence 

is intended to become part of the official 

file in a reexamination proceeding are: 

(1) An original request for ex parte or 

inter partes reexamination; (2) any 

corrected request for ex parte or inter 

partes reexamination submitted in 

response to either a Notice of Failure to 

Comply with Reexamination Request 

Filing Requirements or a Decision 

vacating the filing date that was 

accorded to a previously-submitted 

request for reexamination; (3) all followon prosecution papers (including appeal 

papers) filed by either the patent owner 

or a third party requester in any 

reexamination proceeding (including 

papers that are submitted together with 

a petition to expunge the papers from 

the record); (4) notices of prior or 

concurrent proceedings and decisions 

pursuant to MPEP sections 2282 and 

2686; and (5) petition papers filed by 

the patent owner or third party 

requester that are directed to any 

reexamination proceeding. 

Types of application correspondence 

not intended to become part of the 

official file record and currently not 

permitted to be submitted via EFS–Web 

would be able to continue to be 

submitted via facsimile transmission, 

unless specifically excepted, until such 

time that the Legal Framework for EFS–

WEB is amended to permit such type of 

correspondence to be submitted via 

EFS–Web. Some examples of 

correspondence that are not intended to 

be part of the official application or 

patent file record and therefore are not 

permitted to be submitted via EFS–Web 

and would be able to continue to be 

submitted via facsimile transmission 

are: 

(1) Proposed amendments for 

examiner review, such as in regard to an 

upcoming interview; 

(2) an inquiry as to whether a 35 

U.S.C. 371 national stage application, or 

a 35 U.S.C. 111(a) continuing 

application of a PCT application has 

been filed for a particular PCT 

application (which inquiry is obviously 

not intended to become part of an 

application file but only seeks to 

ascertain whether an application has 

been filed); and 

(3) orders for copies of application, 

patent, and reexamination files. 

Any proposed amendment submitted 

by facsimile transmission would not be 

part of the official file record, but must 

be made part of the official file record, 

when such amendment is referred to in 

another correspondence (e.g., interview 

summary) that is part of the official file 

record (whether referred to by applicant 

or the examiner). 

Correspondence directed to a 

reexamination proceeding that is not 

intended for entry into the record of the 

reexamination proceeding is considered 

to be an ‘‘unofficial paper,’’ and must 

not be submitted via EFS–Web. A patent 

owner or third party requester who 

desires to submit correspondence to be 

treated as an ‘‘unofficial paper’’ in an ex 

parte reexamination proceeding may 

expedite consideration of the 

correspondence by contacting the 

Central Reexamination Unit (CRU) 

((571) 272–7705) for instructions on 

how to submit the ‘‘unofficial paper’’

via transmission to a facsimile machine 

designated for such purpose in the CRU. 

Examples of an ‘‘unofficial paper’’

that a party to an ex parte reexamination 

proceeding may submit via facsimile 

transmission are: (1) A courtesy paper 

identifying issues to be discussed that is 

submitted prior to a permitted interview 

with the examiner; (2) a paper 

submitted for review by Office 

personnel (in rare instances where such 

is permitted, and the Office has been 

contacted for permission to submit the 

paper for review) to determine the 

formal sufficiency of the paper; and (3) 

a paper submitted to obtain examiner 

review of a proposed amendment 

intended to overcome an examiner 

rejection. Any such proposed 

amendment that is submitted 

unofficially, and as such is not part of 

the official file record, must be made 

part of the official file record, when 

such proposed amendment is referred to 

in a paper that is part of the official file 

record (whether referred to by a party to 

the reexamination proceeding or by the 

examiner or other Office official). Where 

there are two parties to the ex parte 

reexamination proceeding, an 

‘‘unofficial paper’’ submitted to the 

Office by one party need not be served 

on the other party to the reexamination 

proceeding, since such a paper is not 

considered to have been ‘‘filed’’ in the 

reexamination proceeding within the 

meaning of the rules (e.g., §§ 1.510(a), 

1.550(f), 1.903 or 1.913) because an 

‘‘unofficial paper’’ is a paper not 

intended to become part of the official 

record. 

It is to be noted that an ‘‘unofficial 

paper’’ (i.e., an ex parte communication) 

directed to an inter partes 

reexamination is strictly prohibited. 

Interviews are not permitted in inter 

partes reexamination, and the 

submission of a proposed amendment 

would constitute an impermissible 

interview. It is also noted that no 

correspondence is to be submitted 

directly to any examiner in inter partes 

reexamination irrespective of the 

delivery method. 

The Office will presume that 

application correspondence submitted 

via EFS–Web is intended to be an 

‘‘official paper’’ whereas 

correspondence that could be submitted 

via EFS–Web but is instead submitted 

via facsimile transmission will be 

presumed an ‘‘unofficial paper’’ (i.e., a 

paper not to be made part of the official 

file record). For example, an 

amendment to the application proposed 

by applicant and facsimile transmitted 

to an examiner for discussion during a 

scheduled interview would be 

considered an ‘‘unofficial paper.’’

Conversely, for an amendment 

submitted by EFS–Web, the Office will 

presume that the amendment should be 

part of the application file record, and 

the amendment will automatically 

become part of the application file 

record. 

A status inquiry regarding the 

issuance of an Office action on the 

merits, unlike an inquiry regarding the 

presence of a PCT filing (above), will be 

made part of the file record. See MPEP 

§ 203.08. Accordingly, use of facsimile 

transmission would not be permitted for 

status inquiries regarding the issuance 

of Office actions. Rather, a status 

inquiry submitted via EFS–Web, which 

is directed to the Technology Center 

where the application is docketed and 

not to the examiner, would be 

appropriate. 

In view of the linkage of what would 

be permitted as a facsimile transmission 

to what would not be permitted to be 

submitted via EFS–Web, applicants and 

other parties, prior to determining 

whether to submit documents via 

facsimile transmission, would need to 

review the current version of the Legal 

Framework for EFS–WEB, http:// 

www.uspto.gov/ebc/portal/efs/ 

legal.htm, to determine what is 

permitted to be submitted via EFS–Web 

or some other Office electronic system 

and thus not permitted to be facsimile 

transmitted. 

As it is noted in the Legal Framework 

for EFS–WEB, except for the initial 

filing of an application, use of a public 

key infrastructure (PKI) certificate for 

follow-on submissions is required. See 


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Item X of the legal framework. The 

process for obtaining a PKI certificate 

requires the completion of some 

paperwork, though the Office believes 

that the process is not unduly 

burdensome. However, should an 

applicant not wish to obtain a PKI 

certificate, the types of correspondence 

that would no longer be allowed to be 

submitted to the Office by facsimile 

transmission would still be able to be 

submitted by hand-carry, U.S. Postal 

Service first class mail using a § 1.8 

certificate of mailing, or the U.S. Postal 

Service ‘‘Express Mail Post Office to 

Addressee’’ service as set forth in § 1.10 

along with the benefits and protections 

currently contained therein. 

The Legal Framework for EFS–WEB 

does not permit a simple text file larger 

than 25 megabytes. See Item XV of the 

legal framework. However, a text file of 

more than 25 megabytes may be broken 

up into multiple text files that can be 

submitted together. There is a limitation 

of 60 files that can be submitted in one 

submission. Where there are more than 

60 files to be submitted, additional 

submissions may be made on the same 

day. See Item XVI of the legal 

framework. These types of very large 

submissions would probably not be 

appropriate for a facsimile transmission 

due to the quantity of sheets that must 

be handled at both the transmitting and 

receiving machines. 

Similarly, where filing sequence 

listings, tables related to sequence 

listings, or both are submitted for 

international applications in the U.S. 

Receiving Office, the applicant may 

partition an oversized file into multiple 

files, each of which is smaller or equal 

to 25 megabytes. See Item XIX. C. of the 

legal framework. 

Electronic forms of transmission, such 

as EFS–Web, EPAS, ETAS, and 

facsimile transmission have historically 

been subject to disturbances in service 

(‘‘down time’’) from time to time. 

However, providing notice as to down 

time is far faster in the EFS–Web 

environment than with an isolated and 

infrequently attended facsimile 

machine. The Office is continuing to 

address the need for fast notification of 

any disruption in the EFS–Web system. 

(See Item XXVIII. of the Legal 

Framework for EFS–WEB.) 

Applicants and other users are 

reminded to always check the 

availability of EFS–Web at the time a 

transmission is to be attempted. If EFS–

Web is unavailable, recourse is to use 

first class mail with a certificate of 

mailing pursuant to § 1.8, or Express 

Mail pursuant to § 1.10, depending on 

the type of correspondence being 

submitted and based on the actual 

receipt date desired. The unavailability 

of EFS–Web (e.g., due to an EFS–Web 

system failure, or an interruption in a 

user’s internet service provider) will not 

permit use of facsimile transmission 

based on an argument that the 

correspondence was not permitted to be 

submitted via EFS–Web. 

IV. Font Size 

The Office needs to receive 

application specifications and other 

papers that are legible and can be easily 

read by examiners and other Office 

personnel. In addition, the public will 

benefit when applications that have 

been published or otherwise opened to 

public inspection are legible. A key 

attribute of legible text is an appropriate 

font size of the text. Previously, the 

Office was neither able to define the 

preferred font size as the mandatory 

minimum font size of text in view of 

limitations imposed by Patent 

Cooperation Treaty (PCT) obligations 

and implementing regulations, nor had 

the Office believed that mandatory rules 

would be needed in order that all 

correspondence received by the Office 

be readily legible. Some practitioners 

and applicants, however, have adopted 

a continuing practice of submitting 

documents that are not readily legible, 

e.g., entire specifications with a font 

size as small as 6 point. 

Font size as small as 6 point does not 

have sufficient clarity to permit 

electronic capture by use of digital 

imaging and optical character 

recognition (OCR) in accordance with 

§ 1.52(a)(1)(v). Accordingly, the results 

of the Office’s electronic capture of the 

unusually small font by OCR are often 

unsatisfactory. The accuracy of OCR 

conversion is inversely proportional to 

the size of the text being electronically 

captured and it has been found that 

electronic capture by use of OCR of 

applications with smaller font sizes 

contain more errors, which must then be 

corrected, thus wasting time and 

resources on the part of both the Office 

and the applicant. The Office 

experiences significant difficulties when 

trying to publish applications and 

patents with specifications having 

unusually small text. Some applications 

are not even capable of being 

electronically captured by OCR as the 

text is too small. Errors in electronic 

capture may not be caught immediately 

and may delay issuance of a patent or, 

if not identified by the Office, represent 

problems with enforcement of any 

patent that should issue. 

The practice of using an unusually 

small font size has expanded to other 

papers, such as remarks, amendments, 

and maintenance fee payments. When 

requested to resubmit the paper with a 

larger font, some strong resistance has 

been encountered based on the lack of 

a regulatory requirement defining the 

minimum font needed by the Office to 

process and read the paper. The Office 

anticipates moving forward with a plan 

to OCR all amendments and remarks 

submitted by applicants. This plan 

would be adversely impacted by the 

continued submission of such papers 

with unusually small font size. 

Some practitioners argue that the 

Office should be capable of adjusting 

the font size to produce any text size 

that it desires. The Office, however, 

cannot automatically resize the 

document. Attempts to change the 

parameters of the document received 

may introduce substantive errors in the 

document, particularly where tables, 

charts, formulas, and drawings are 

concerned. 

In view of the significant problems 

facing the Office by applicants’ use of 

unusually small font size, and the recent 

amendment of PCT regulations 

(effective April 1, 2007, PCT Rule 

11.9(d) was revised from ‘‘all text matter 

shall be in characters the capital letters 

of which are not less than 0.21 cm high’’

to ‘‘all text matter shall be in characters 

the capital letters of which are not less 

than 0.28 cm high’’), the Office needs to 

and can now eliminate such practice. 

Accordingly, it is proposed to: (1) 

Increase the mandatory minimum font 

size where the font must have capital 

letters no smaller than 0.28 cm (0.11 

inch) high (e.g., a font size of 12 point 

in Times New Roman); (2) establish that 

the newly proposed font size 

requirement applies to prosecution 

papers (specification, including the 

claims and abstract, drawings, and oath 

or declaration, reexamination request, 

any amendments or correction(s)) and 

any remarks, petitions, requests, 

affidavits or other papers submitted 

during prosecution of an application or 

a reexamination proceeding; (3) clarify 

that the proposed font size requirement 

does not apply to pre-printed 

information on paper forms provided by 

the Office or the copy of the patent 

submitted on paper in double column 

format as the specification in a reissue 

application or request for 

reexamination; and (4) clarify that 

papers submitted electronically that are 

to become part of the patent application 

or reexamination file must be readily 

legible. 

Discussion of Specific Rules 

Title 37 of the Code of Federal 

Regulations, Parts 1, 2, and 3, are 

proposed to be amended as follows: 


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Section 1.6(a)(1) is proposed to be 

amended to add a descriptive title, and 

to update the reference to facsimile 

transmissions to paragraph (d)(1) of 

§ 1.6 from the current reference to 

§ 1.6(a)(3). 

Section 1.6(a)(2) is proposed to be 

amended to add a descriptive title. 

Section 1.6(a)(3) is proposed to be 

amended to add a descriptive title, and 

to add a reference to paragraph (d)(1) of 

§ 1.6 and the correspondence permitted 

by that section to be submitted via 

facsimile transmission. 

Section 1.6(a)(4) is proposed to be 

amended to add a descriptive title. 

Section 1.6(a)(5) is proposed to be 

newly added to set forth current 

practice that non-facsimile electronic 

transmission of patent-related 

correspondence other than 

correspondence filed via the Office’s 

patent-related electronic systems (e.g., 

EFS–Web, and EPAS) may not be used 

for submission of correspondence to the 

Office intended to become part of the 

official file record (e.g., Image File 

Wrapper) for an application, patent, or 

reexamination proceeding, or other 

matter before the Office, except as 

expressly authorized by the Board of 

Patent Appeals and Interferences (BPAI) 

in cases before the BPAI, or applicant 

when consistent with the Office’s 

express policy on internet usage. See 

Internet Usage Policy, 64 FR 33056 

(June 21, 1999). 

The prohibition includes e-mail, and 

additional forms of Internet-based 

transmission other than the Office 

patent electronic systems, i.e., EFS–

Web, and EPAS. E-mail may continue to 

be used for inquiries, such as questions 

regarding patent practice and procedure 

directed to PatentPractice@uspto.gov. 

Communications by the Office via the 

Internet are governed by the published 

Internet Usage Policy. See MPEP 

§ 502.03. As it is recognized that 

Internet e-mail communications are not 

secure, the Office will not respond via 

Internet e-mail to any Internet 

correspondence which contains 

information subject to the 

confidentiality requirement as set forth 

in 35 U.S.C. 122 without a written 

authorization by the applicant. Current 

internet (e-mail) policy covers both 

incoming correspondence to the Office 

from applicant and outgoing 

correspondence to applicant from the 

Office. A copy of the e-mail 

correspondence is required to be made 

of record in the file, even though such 

correspondence can only be directed 

towards communications other than 

those under 35 U.S.C. 132 or which 

otherwise require a signature. 

Section 1.6(d) is proposed to be 

amended by deleting material 

duplicative of material in current 

§ 1.6(a)(3), relating to the receipt date 

accorded facsimile transmissions. 

Additional material present in § 1.6(d) 

would be placed in amended paragraphs 

(d)(1)–(3), leaving § 1.6(d) with only the 

introductory title. 

Additionally, § 1.6(d) and paragraphs 

(d)(1)–(9) are proposed to be amended to 

change facsimile transmission practice 

from the existing practice that facsimile 

transmission is generally accepted but 

for some limited exceptions set forth in 

current paragraphs (d)(1)–(9), to the 

proposed practice that facsimile 

transmission would generally not be 

accepted for most types of 

correspondence in view of the 

availability of EFS–Web for submission 

of most types of correspondence. 

Accordingly, new paragraphs (d)(1)(i)–

(vi) would continue to prohibit the 

specific types of correspondence that 

are currently prohibited in current 

paragraphs (d)(1)–(6) (paragraphs (d)(7) 

and (8) are currently reserved and do 

not recite prohibitions). The prohibition 

set forth in proposed (d)(1)(iii) would 

not contain the exception in current 

§ 1.6(d)(3) and thus would result in the 

prohibition of the facsimile 

transmission of continued prosecution 

applications. While the prohibition 

proposed in (d)(1)(vi) only prohibits 

facsimile transmissions of 

correspondence in secrecy order 

applications that are directly related to 

the secrecy order, § 1.6(d)(viii) would 

also prohibit facsimile transmission of 

correspondence that is not directly 

related to the secrecy order but can be 

submitted pursuant to § 1.6(a)(4) (EFS–

Web). 

Newly proposed § 1.6(d)(1)(vii) would 

prohibit facsimile transmission of 

correspondence for cases before the 

Board of Patent Appeals and 

Interferences (BPAI), except as the BPAI 

may expressly authorize. This would 

expand the current facsimile 

transmission prohibition now limited to 

contested cases before the BPAI of 

current § 1.6(d)(9). 

Newly proposed § 1.6(d)(1)(viii) 

would prohibit facsimile transmission 

of the type of correspondence that could 

be submitted via EFS–Web, as would be 

set forth in the Legal Framework for 

EFS–WEB. This would include most 

types of patent correspondence for 

applications (including reissue and 

provisional applications), patents 

(including Certificates of Correction 

pursuant to §§ 1.322 and 1.323, and 

inventorship correction pursuant to 

§ 1.324), and reexamination proceedings 

(both ex parte and inter partes). 

Newly proposed paragraph (d)(1)(ix) 

would prohibit facsimile transmission 

of the type of correspondence permitted 

to be submitted via the Office’s patentrelated electronic system for 

assignments to be recorded, EPAS. 

Newly proposed paragraphs (d)(1)(x)–

(xii) would prohibit the facsimile 

transmission of third party papers under 

§ 1.99, protests under § 1.291, and 

public use hearing papers under § 1.292 

even though such papers may not 

currently be submitted via EPS–Web. 

The exclusions of third party papers and 

protests from EPS–Web submission, 

even though these papers are intended 

to become part of the Official file, was 

based on the need to use a PKI 

certificate for follow-on submissions, 

which a third party filing a paper under 

§§ 1.99 or 1.291 would not generally 

either have access to or would be given 

access to by the applicant. The Office is 

committed to working on a solution that 

would permit the filing of such papers 

via EPS–Web. As such papers can be 

massive or frequently have detailed 

drawings, it would not be in the interest 

of the parties submitting such papers to 

continue to use facsimile transmission. 

Section 1.6(d)(2) would be directed at 

setting forth the requirements for 

facsimile transmission for the types of 

correspondence not prohibited in 

§ 1.6(d)(1). 

Section 1.6(d)(2)(i) would make 

mandatory that a facsimile transmission 

be limited to a single application or 

other matters before the Office (e.g., 

patents and reexamination proceedings), 

except for the payment of maintenance 

fees pursuant to § 1.366 and requests for 

refunds thereof. For example, while an 

applicant may need to submit the same 

type of document for more than one 

application file, such as proposed 

amendments to claims in related 

applications that are to be discussed in 

the same upcoming interview, the 

proposed amendments for each 

application must be separately 

transmitted. The payment of 

maintenance fees in multiple patents 

would be exempt from this proposed 

requirement. Maintenance fee payments 

would continue to qualify for facsimile 

transmission as they may not be 

submitted via EPS–Web. 

Where a small entity assertion 

pursuant to § 1.27 is required to support 

payment of a small entity maintenance 

fee or a request for a maintenance fee 

refund, the payment or request for 

refund with the accompanying small 

entity assertion may be facsimile 

transmitted. Similarly, where, for 

example, the assignee is separately 

submitting a small entity assertion to 

support payment of a maintenance fee, 


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and an annuity company is the party 

making the small entity payment, the 

assignee may facsimile transmit the 

§ 1.27 small entity assertion. It should 

be noted, however, that small entity 

assertions can be submitted via EPS–

Web and the Office recommends that 

EPS–Web be used to ensure that the 

assertion becomes part of the patent file. 

For small entity fees other than 

maintenance fees, such as an issue fee 

in an application, which can be 

submitted via EPS–Web (as well as the 

small entity assertion), the fee and the 

supporting small entity assertion cannot 

be facsimile transmitted. It is only in 

situations where the fee payment, i.e., a 

maintenance fee payment, cannot be 

submitted via EPS–Web, that the small 

entity assertion for the payment (which 

would not otherwise be permitted to be 

facsimile transmitted) can also be 

facsimile transmitted. The facsimile 

transmission must be made to a 

facsimile number identified by the 

Office as appropriate for maintenance 

fee payments and refunds thereof. 

Section 1.6(d)(2)(ii) would set forth 

requirements set forth in current § 1.6(d) 

for identifying the application or matter 

before the Office for which the 

transmitted correspondence is intended. 

Section 1.6(d)(2)(ii) continues to advise 

the use of sufficient information to 

identify the application or matter before 

the Office for which the correspondence 

is intended as part of the sender’s 

identification on the required cover 

sheet. The inability to be able to readily 

ascertain the appropriate application or 

other matter for the transmission may 

result in: A delay in acting on the paper, 

or discarding of the paper without 

notice to the sender if the Office cannot 

reasonably determine to which 

application or other matter the paper is 

directed. 

Section 1.6(d)(2)(iii) would require 

that permitted facsimile transmissions 

must be sent to the specific facsimile 

transmission number identified by the 

Office for that type of correspondence. 

In the case of reexamination 

proceedings, contacting the CRU for the 

transmission number would be 

required. For applications, the Office 

would provide a Web page that would 

contain the usable transmission 

numbers and identification of types of 

correspondence that can be facsimile 

transmitted, as well as a link to EPS–

Web for the submission of types of 

correspondence that cannot be facsimile 

transmitted but can be transmitted via 

EPS–Web. Therefore, the central 

facsimile number would no longer be 

usable since the rules as proposed to be 

amended would require that the 

transmission for any remaining use 

must be sent directly to the area of the 

Office needing to receive the 

transmission at its identified 

transmission number. Office forms for 

which facsimile transmission would no 

longer be appropriate, such as the 

express abandonment forms PTO/SB/24, 

PTO/SB/24a, and the PTO/SB/24b, and 

the issue fee payment form PTOL–85, 

Part B, would have the facsimile 

transmission information removed. 

Section 1.6(d)(2)(iv) would require 

that each unofficial correspondence 

transmitted by facsimile include a 

conspicuous marking that identifies it as 

an ‘‘unofficial paper’’ (correspondence 

that could be submitted via EPS–Web 

but is instead submitted via facsimile 

transmission). Unofficial papers, 

regardless of whether they are properly 

marked as such, will not be entered into 

the record of the application or 

reexamination proceeding unless 

expressly permitted by rule or Office 

policy. Further, any of these unofficial 

papers submitted via facsimile without 

the required conspicuous marking may 

be discarded without consideration of 

the paper and without notification to 

the sender that the paper has been 

discarded without consideration. This 

requirement for conspicuous marking of 

facsimile transmitted papers and the 

discarding of unmarked or mis-marked 

papers would act to discourage 

applicants, patent owners, and third 

party requesters from attempting to file 

official papers via facsimile, instead of 

via EPS–Web. 

Section 1.6(d)(3) would set forth the 

consequences resulting from: (1) 

Transmitting correspondence to a 

number other than the specific facsimile 

transmission number identified by the 

Office for that type of correspondence; 

(2) facsimile transmission of 

correspondence not permitted to be 

submitted by facsimile transmission; or 

(3) facsimile transmission of an 

‘‘unofficial paper’’ without the 

conspicuous marking required in 

(d)(2)(iv). The consequences would be 

equally applicable to any copy of such 

correspondence created by the Office 

(e.g., paper copies made directly from 

the facsimile transmission or copies 

made from scanning the paper copy of 

the transmission). The consequences 

would be that such correspondence: (1) 

Would not be given a receipt date; (2) 

would not operate to be an effective 

paper (e.g., will not be considered a 

reply to the Office action, or a request 

for action by the Office); and (3) could 

be discarded by the Office without 

notification to the sender. When the 

Office discards submitted material it is 

without notification to the submitter, 

unless such notification is specifically 

provided for by rule or Office policy. 

The specific provision in the rule of lack 

of notification to the sender would be 

added merely to reinforce the concept of 

lack of notification. 

For example, an otherwise timely 

reply submitted by facsimile 

transmission to an outstanding first 

Office action would not be effective to 

toll the time period for reply as this type 

of correspondence would no longer 

(after implementation of the rule 

revision) be permitted to be submitted 

by facsimile transmission. Additionally, 

applicant could not simply later affirm 

the prior submission of the reply within 

the period for reply and rely on the 

previously submitted facsimile 

transmission of the reply. A new reply 

would need to be timely submitted to 

avoid abandonment. 

Current § 1.6(f), relating to a petition 

remedy where the facsimile 

transmission of a continued prosecution 

application (CPA) was not received by 

the Office, would be canceled and 

reserved. 

Section 1.52(a) is proposed to be 

amended to remove the italics. Sections 

1.52(a), (a)(1) and (a)(2) are proposed to 

be amended to remove ‘‘United States 

Patent and Trademark’’ for conformity 

with the use of ‘‘Office’’ in the 

remaining sections of § 1.52. 

Section 1.52(a)(5) is proposed to be 

amended to contain only a descriptive 

title. 

Section 1.52(a)(5)(i) would contain 

the language of current 1.52(a)(5). 

Sections 1.52(a)(5)(ii) would be an 

added paragraph intended to clarify that 

submissions must be presented in a 

form that is readily legible to the Office 

after receipt thereof by the Office. 

Section 1.52(b) would be amended to 

address a problem involving the font 

size used for specifications and 

prosecution papers. 

Section 1.52(b) is proposed to be 

amended by removing the italics and 

simplifying the recitation of the papers 

that are subject to the rule. Sections 

1.52(b)(1) and (b)(2) would be expanded 

to cover application and reexamination 

papers other than just the specification 

and amendments or corrections. These 

sections would be applicable to cover 

sheets, remarks, petitions, requests, 

affidavits, or other papers submitted in 

support of prosecution of the 

application or the reexamination 

proceeding. These sections would also 

be applicable to IDS listings and any 

other IDS requirements such as a 

concise explanation or a translation of a 

non-English language document (but not 

the actual non-English language 

document). ‘‘Amendment’’ covers all 

types of amendments, including 


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amendments to the claims, specification 

and the drawings. ‘‘Amendment’’ covers 

amendments made at any time during 

prosecution of the patent application or 

reexamination proceeding (e.g., 

amendments under §§ 1.111, 1.115, 

1.116, 1.312, 1.530, 1.941, etc.). 

Section 1.52(b)(2)(ii) is proposed to be 

amended to correspond to the 

amendment of PCT Rule 11.9(d) by 

requiring a text lettering style having 

capital letters, which capital letters 

must be no smaller than 0.28 cm. (0.11 

inch) high (e.g., a font size of 12 point 

in Times New Roman). The requirement 

for a nonscript font lettering style means 

utilization of a commercially available 

nonscript font in its commercially 

available form. Altering the font from its 

commercially available form (e.g., by 

changing the look of the characters or 

the automatic spacing between the 

characters) may not be in compliance 

with the rule. Compliance with the 

proposed font size and style 

requirements should not impose much 

difficulty as the Office has suggested 

their use for a number of years. The 

recitation of font size in terms relative 

to a type font having capital letters of a 

minimum size permits the normal and 

expected deviation for non-capital 

letters and numbers that a commercially 

available font complying with the 

required font size would utilize. It 

should be noted that utilizing capital 

letters that meet the 0.28 cm. 

requirement and then reducing the font 

size of the non-capital letters and 

numbers would not present a text 

lettering style within the rule. Further, 

by altering the line height to fit more 

characters per page, one runs the risk of 

presenting correspondence that is 

unreadable by Office personnel or 

presents a problem for optical character 

recognition in the electronic capture 

operation, which would require resubmission of the correspondence in 

compliant form. Specialized usage of 

the type font in a word processing 

program, such as ‘‘2nd’’, super and 

subscripts, etc., must comply also with 

the minimum font size requirements. In 

other words, the normal font size 

produced by the program for these 

specialized characters when the 

program is set to comply with the 

capital letter requirement must be 

maintained. Additionally, applicants 

also need to be aware that as a word 

processing program may normally set a 

footnote numeral and the text of a 

footnote to be smaller than the required 

0.28 cm. capital letter height to be used 

in the main text, applicants must adjust 

the font size of the footnote accordingly 

to meet the requirements of the rule. 

Forms: Sections 1.52(a) and (b) do not 

apply to applicant’s use of the Office’s 

pre-printed forms (that may contain 

smaller font size). Section 1.52(a)(3), 

which is reproduced in the rules section 

to provide context, is not proposed to be 

changed. Office forms have been exempt 

and continue to be exempt from font 

size requirements as: (1) The 

information in lower font size is 

standardized information, such as 

required of the Office by statute under 

the Paperwork Reduction Act, form 

number, etc., but is not required 

information that applicant must supply; 

(2) it is common practice for agencies to 

place this standardized information in a 

smaller font size, and doing so keeps the 

forms from being too long and makes 

them more usable by the public; and (3) 

the Office does not need to process such 

information when an Office form is 

submitted. Commercial forms that are 

subject to § 1.52(b), e.g., an application 

data sheet pursuant to § 1.76, must 

comply with the font size requirement. 

An Office form that has been altered in 

any way is considered a commercial 

form and must comply with the 

requirements of § 1.52. Such form must 

also have its OMB approval removed. 

Therefore, an applicant desiring to use 

a compact form (e.g., cover or 

transmittal sheet) that meets the 

requirements of § 1.52 should consider 

using an Office form in its original, 

unaltered state. Office-generated fillable 

forms containing the font size built into 

the form by the Office would comply 

with font size requirements. 

The strictness of the proposed rule 

and its application by the Office results 

from the Office’s need to efficiently 

process, read, and publish the text. It is 

emphasized that should the Office 

encounter difficulty in reading or 

electronically capturing the font for any 

portion of text, a substitute paper will 

be required. 

As the Office intends to strictly 

enforce the font size requirement, in a 

rare instance where applicant believes 

some variation should be permitted, a 

petition under § 1.183 would be 

required. 

Section 1.366 is proposed to be 

amended to add paragraph (h) that 

would require maintenance fee 

payments, when submitted in paper, by 

mail or facsimile transmission (which 

would continue as such type of 

correspondence may not be submitted 

via EFS–Web), to comply with §§ 1.52(a) 

and (b). Failure to comply with the 

format requirements of § 1.52 would not 

jeopardize the date of payment but 

would require a new submission in a 

compliant format. 

Section 2.195(d) is proposed to be 

amended to prohibit facsimile 

transmission of the type of 

correspondence that can be submitted 

via the Office’s electronic trademark 

system for assignments to be recorded, 

ETAS. 

Section 3.24(a) is proposed to be 

amended by inserting a reference in the 

title to EPAS as the electronic form of 

submission of patent assignment 

documents to be recorded. 

Section 3.24(b) is proposed to be 

amended as a conforming amendment to 

§ 1.6(d)(1)(ix), which would only permit 

patent-related assignments to be 

submitted via EPAS and no longer via 

facsimile transmission. Accordingly, the 

reference to facsimile transmissions in 

the title would be deleted. Material 

relating to return of recorded documents 

would be transferred to newly added 

paragraph (c). 

Section 3.24(c) is proposed to be 

added to highlight current material 

related to the non-return of patent 

documents submitted for recording, so 

that original documents would not be 

submitted. The rule is also proposed to 

be amended to delete ‘‘recorded’’ to 

clarify that any document submitted for 

recording will not be returned whether 

or not it is recorded. 

Section 3.25 is proposed to be 

amended by inserting a reference in the 

title to ETAS as the electronic form of 

submission of trademark assignment 

documents to be recorded. 

Section 3.25(c) is proposed to be 

amended as a conforming amendment to 

§ 2.195(d), which would only permit 

trademark-related assignments to be 

submitted via ETAS and on paper and 

no longer via facsimile transmission. 

Accordingly, the reference to facsimile 

transmissions in the title would be 

deleted. The phrasing of the rule is also 

proposed to be amended so that it is 

consistent with the analogous rule for 

patent assignment documents. 

Material relating to return of recorded 

documents would be transferred to 

newly added paragraph (c)(3). Section 

3.24(c)(3) is proposed to be added to 

highlight current material related to the 

non-return of trademark documents 

submitted for recording, so that original 

documents would not be submitted. The 

rule is also proposed to be amended to 

delete ‘‘recorded’’ to clarify that any 

document submitted for recording will 

not be returned whether or not it is 

recorded. 

Rule Making Considerations 

A. Administrative Procedure Act 

This notice proposes changes to the 

rules of practice to limit the submission 


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45670 Federal Register / Vol. 73, No. 152 / Wednesday, August 6, 2008 / Proposed Rules 

of correspondence by facsimile 

transmission in patent prosecution 

matters, and assignments to be recorded. 

The notice also proposes changes to the 

rules of practice to increase the size of 

the minimum font used on papers 

submitted to the Office for patent 

applications, patents or reexamination 

proceedings. The changes being 

proposed in this notice do not change 

the substantive criteria of patentability 

and do not effectively foreclose the 

applicant’s opportunity to make a case 

on the merits. Applicants, when no 

longer able to submit most types of 

patent prosecution or assignments to be 

recorded by facsimile transmission, may 

still rely on mail delivery in all 

instances and may almost always utilize 

an electronic system provided by the 

Office for filing submissions. Therefore, 

these rule changes involve interpretive 

rules, or rules of agency practice and 

procedure. See Bachow Communs., Inc. 

v. FCC, 237 F.3d 683, 690 (DC 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 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 

trademark 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 opportunity for comment is not 

required pursuant to 5 U.S.C. 553(b)(A) 

(or any other law), and thirty-day 

advance publication is not required 

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

law). Nevertheless, the Office is seeking 

public comment on changes 

contemplated to these rules of practice 

to obtain the benefit of such input prior 

to adopting changes to the rules of 

practice. 

B. Regulatory Flexibility Analysis 

As prior notice and an opportunity for 

public comment are not required 

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

law), neither a regulatory flexibility 

analysis nor a certification under the 

Regulatory Flexibility Act (5 U.S.C. 601 

et seq.) are required. See 5 U.S.C. 603. 

Nevertheless, for the reasons set forth 

herein, the Deputy General Counsel for 

General Law of the United States Patent 

and Trademark Office has certified to 

the Chief Counsel for Advocacy of the 

Small Business Administration that the 

changes proposed in this notice will not 

have a significant economic impact on 

a substantial number of small entities. 

See 5 U.S.C. 605(b). 

The primary impact of the changes 

proposed in this notice are that: (1) 

Certain documents may no longer be 

submitted to the Office via facsimile 

transmission; and (2) certain documents 

submitted to the Office must have a 

minimum font size, namely a font that 

has capital letters no smaller than 0.28 

cm (0.11 inch) high (e.g., a font size of 

12 point in Times New Roman). The 

elimination of the availability of 

facsimile transmission will not have a 

significant economic impact because 

these documents may be submitted to 

the Office via EFS-Web or via the USPS 

by first class mail. The requirement that 

documents submitted to the Office must 

have a minimum font size will not have 

a significant economic impact because 

the current rules of practice require that 

such documents be ‘‘[p]resented in a 

form having sufficient clarity and 

contrast between the paper and the 

writing thereon to permit the direct 

reproduction of readily legible copies in 

any number by use of photographic, 

electrostatic, photo-offset, and 

microfilming processes and electronic 

capture by use of digital imaging and 

optical character recognition’’ (37 CFR 

1.52(a)(1)(v)), and set forth that font size 

below the proposed minimum font size 

generally does not comply with this preexisting requirement of the rules of 

practice. In addition, the overwhelming 

majority of the documents to which this 

provision applies are created using 

word processors, and it will not have a 

significant economic impact to change 

the font size on a word processor. 

Therefore, the changes proposed in this 

notice will not have a significant 

economic impact on a substantial 

number of small entities. 

C. Executive Order 13132 (Federalism) 

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). 

D. Executive Order 12866 (Regulatory 

Planning and Review) 

This rule making has been determined 

to be not significant for purposes of 

Executive Order 12866 (Sept. 30, 1993), 

as amended by Executive Order 13258 

(Feb. 26, 2002) and Executive Order 

13422 (Jan. 18, 2007). 

E. Executive Order 13175 (Tribal 

Consultation) 

This rule making will not: (1) Have 

substantial direct effects on one or more 

Indian tribes; (2) impose substantial 

direct compliance costs on Indian tribal 

governments; or (3) preempt tribal law. 

Therefore, a tribal summary impact 

statement is not required under 

Executive Order 13175 (Nov. 6, 2000). 

F. Executive Order 13211 (Energy 

Effects) 

This rule making is not a significant 

energy action under Executive Order 

13211 because this rule making is not 

likely to have a significant adverse effect 

on the supply, distribution, or use of 

energy. Therefore, a Statement of Energy 

Effects is not required under Executive 

Order 13211 (May 18, 2001). 

G. Executive Order 12988 (Civil Justice 

Reform) 

This rule making meets applicable 

standards to minimize litigation, 

eliminate ambiguity, and reduce burden 

as set forth in sections 3(a) and 3(b)(2) 

of Executive Order 12988 (Feb. 5, 1996). 

H. Executive Order 13045 (Protection of 

Children) 

This rule making is not an 

economically significant rule and does 

not concern an environmental risk to 

health or safety that may 

disproportionately affect children under 

Executive Order 13045 (Apr. 21, 1997). 

I. Executive Order 12630 (Taking of 

Private Property) 

This rule making will not effect a 

taking of private property or otherwise 

have taking implications under 

Executive Order 12630 (Mar. 15, 1988). 

J. Congressional Review Act 

Under the Congressional Review Act 

provisions of the Small Business 

Regulatory Enforcement Fairness Act of 

1996 (5 U.S.C. 801 et seq.), prior to 

issuing any final rule the United States 

Patent and Trademark Office will 

submit a report containing the final rule 

and other required information to the 

U.S. Senate, the U.S. House of 

Representatives and the Comptroller 

General of the Government 

Accountability Office. The changes 

proposed in this notice are not expected 

to result in an annual effect on the 

economy of 100 million dollars or more, 

a major increase in costs or prices, or 

significant adverse effects on 

competition, employment, investment, 

productivity, innovation, or the ability 

of United States-based enterprises to 

compete with foreign-based enterprises 

in domestic and export markets. 

Therefore, this rule making is not likely 

to result in a ‘‘major rule’’ as defined in 

5 U.S.C. 804(2). 


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K. Unfunded Mandates Reform Act of 

1995 

The changes proposed in this notice 

do not involve a Federal 

intergovernmental mandate that will 

result in the expenditure by State, local, 

and tribal governments, in the aggregate, 

of 100 million dollars (as adjusted) or 

more in any one year, or a Federal 

private sector mandate that will result 

in the expenditure by the private sector 

of 100 million dollars (as adjusted) or 

more in any one year, and will not 

significantly or uniquely affect small 

governments. Therefore, no actions are 

necessary under the provisions of the 

Unfunded Mandates Reform Act of 

1995. See 2 U.S.C. 1501 et seq. 

L. National Environmental Policy Act 

This rule making will not have any 

effect on the quality of environment and 

is thus categorically excluded from 

review under the National 

Environmental Policy Act of 1969. See 

42 U.S.C. 4321 et seq. 

M. National Technology Transfer and 

Advancement Act 

The requirements of section 12(d) of 

the National Technology Transfer and 

Advancement Act of 1995 (15 U.S.C. 

272 note) are inapplicable because this 

rule making does not contain provisions 

which involve the use of technical 

standards. 

N. 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 collections 

of information involved in this notice 

have been reviewed and previously 

approved by OMB under OMB control 

numbers: 0651–0031, 0651–0032, and 

0651–0059. The United States Patent 

and Trademark Office is not 

resubmitting the other information 

collections listed above to OMB for its 

review and approval because the 

changes proposed in this notice do not 

affect the information collection 

requirements associated with the 

information collections under these 

OMB control numbers. The principal 

changes proposed in this notice are to 

provide that: (1) Certain documents may 

no longer be submitted to the Office via 

facsimile transmission; and (2) certain 

documents submitted to the Office must 

have a minimum font size, namely a 

font that has capital letters no smaller 

than 0.28 cm (0.11 inch) high (e.g., a 

font size of 12 point in Times New 

Roman). 

Comments are invited on: (1) Whether 

the collection of information is 

necessary for proper performance of the 

functions of the agency; (2) the accuracy 

of the agency’s estimate of the burden; 

(3) ways to enhance the quality, utility, 

and clarity of the information to be 

collected; and (4) ways to minimize the 

burden of the collection of information 

to respondents. 

Interested persons are requested to 

send comments regarding these 

information collections, including 

suggestions for reducing this burden, to: 

(1) The Office of Information and 

Regulatory Affairs, Office of 

Management and Budget, New 

Executive Office Building, Room 10202, 

725 17th Street, NW., Washington, DC 

20503, Attention: Desk Officer for the 

Patent and Trademark Office; and (2) 

Robert A. Clarke, Director, Office of 

Patent Legal Administration, 

Commissioner for Patents, P.O. Box 

1450, Alexandria, VA 22313–1450. 

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 

37 CFR Part 1 

Administrative practice and 

procedure, Inventions and patents, 

Reporting and recordkeeping 

requirements, Small businesses. 

37 CFR Part 2 

Administrative practice and 

procedure, Trademarks. 

37 CFR Part 3 

Administrative practice and 

procedure, Patents, Trademarks. 

For the reasons set forth in the 

preamble, 37 CFR parts 1, 2, and 3 are 

proposed to be 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 1.6 is amended by 

removing and reserving paragraph (f) 

and revising paragraphs (a) and (d) to 

read as follows: 

§ 1.6 Receipt of correspondence. 

(a) Date of receipt and Express Mail 

date of deposit. Correspondence 

received in the United States Patent and 

Trademark Office is stamped with the 

date of receipt except as follows: 

(1) Open for receipt of 

correspondence. The United States 

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 under 

paragraph (d)(1) of this section, or filed 

electronically under (a)(4) of this 

section, no correspondence is received 

in the Office on Saturdays, Sundays, or 

Federal holidays within the District of 

Columbia. 

(2) ‘‘Express Mail’’ stamp date. 

Correspondence filed in accordance 

with § 1.10 will be stamped with the 

date of deposit as ‘‘Express Mail’’ with 

the United States Postal Service. 

(3) Receipt date of facsimile 

transmission. Correspondence 

permitted by paragraph (d)(1) of this 

section to be filed by facsimile 

transmission to the United States Patent 

and Trademark Office will be stamped 

with the date on which the complete 

transmission is received in the United 

States 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. 

(4) Office electronic filing system 

(EFS–Web). Correspondence may be 

submitted using the Office electronic 

filing system only in accordance with 

the Office’s electronic filing system 

requirements. Correspondence 

submitted to the Office by way of the 

Office’s 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. 

(5) Non-facsimile electronic 

transmission of patent-related 

correspondence other than 

correspondence filed via the Office’s 

patent-related electronic systems (e.g., 

EFS–Web, and Electronic Patent 

Assignment System (EPAS)). Nonfacsimile electronic transmission of 

patent-related correspondence other 

than correspondence filed via the 

Office’s patent-related electronic 

systems may not be used for submission 

of correspondence to the Office 

intended to become part of the official 

file record for an application, patent, 

reexamination proceeding, or other 

matter before the Office, except as 

expressly authorized by: 


yshivers on PROD1PC62 with PROPOSALS
45672 Federal Register / Vol. 73, No. 152 / Wednesday, August 6, 2008 / Proposed Rules 

(i) The Board of Patent Appeal and 

Interferences in cases before the Board 

of Patent Appeals and Interferences, or 

(ii) Applicant pursuant to the Office’s 

express policy for internet usage. 

* * * * * 

(d) Facsimile transmission. (1) 

Facsimile transmission of 

correspondence to the Office is not 

permitted for: 

(i) Correspondence as specified in 

§ 1.4(e); 

(ii) Certified documents as specified 

in § 1.4(f); 

(iii) Correspondence which cannot 

receive the benefit of the certificate of 

mailing or transmission as specified in 

§§ 1.8(a)(2)(i)(A) through (D) and (F), 

and § 1.8(a)(2)(iii)(A); 

(iv) Color drawings submitted under 

§§ 1.81, 1.83 through 1.85, 1.152, 1.165, 

1.173, or 1.437; 

(v) A request for reexamination under 

§ 1.510 or 1.913; 

(vi) Correspondence to be filed in a 

patent application subject to a secrecy 

order under §§ 5.1 through 5.5 of this 

chapter and directly related to the 

secrecy order content of the application; 

(vii) Cases before the Board of Patent 

Appeals and Interferences, except as the 

Board may expressly authorize; 

(viii) Correspondence permitted to be 

submitted pursuant to paragraph (a)(4) 

of this section; 

(ix) Correspondence permitted to be 

submitted via the Office’s patent-related 

electronic system for recording 

assignments (e.g., Electronic Patent 

Assignment System (EPAS)); 

(x) Third party papers under § 1.99; 

(xi) Protests under § 1.291; and 

(xii) Public use hearing papers under 

§ 1.292. 

(2) A facsimile transmission of 

correspondence when not prohibited 

pursuant to paragraph (d)(1) of this 

section must: 

(i) Be limited to a single application 

or other matter before the Office, except 

for payments of maintenance fees 

pursuant to § 1.366 or requests for 

refunds thereof; 

(ii) Include a facsimile cover sheet 

with the sender’s identification, which 

should contain sufficient identifying 

information of the application or other 

matter to which the transmission is 

intended, such as: 

(A) The application number of a 

patent application; 

(B) The control number of a 

reexamination proceeding; 

(C) The interference number of an 

interference proceeding; or 

(D) The patent number of a patent; 

(iii) Be transmitted to the specific 

facsimile transmission number 

identified by the Office for that type of 

correspondence; and 

(iv) Include a conspicuous marking on 

each correspondence intended to be 

unofficial that identifies such 

correspondence as an unofficial paper. 

(3) Transmission to a facsimile 

number other than that identified by the 

Office for the type of correspondence 

transmitted, facsimile transmission of a 

type of correspondence that is not 

permitted to be facsimile transmitted, or 

facsimile transmission of 

correspondence without the 

conspicuous marking pursuant to 

paragraph (d)(2)(iv) of this section, and 

any copy of such correspondence 

created by the Office: 

(i) Will not be given a receipt date; 

(ii) Will not operate to be an effective 

paper; and 

(iii) May be discarded by the Office 

without notification to the sender. 

* * * * * 

3. Section 1.52 is amended by revising 

the introductory text of paragraph (a)(1), 

paragraphs (a)(2), (a)(3), (a)(5), the 

introductory text of paragraph (b), (b)(1), 

and (b)(2) to read as follows: 

§ 1.52 Language, paper, writing, margins, 

compact disc specifications. 

(a) Papers that are to become a part 

of the permanent Office records in the 

file of a patent application or a 

reexamination proceeding. (1) All 

papers, other than drawings, that are 

submitted on paper or by facsimile 

transmission, and are to become a part 

of the permanent Office records in the 

file of a patent application or 

reexamination proceeding, must be on 

sheets of paper that are the same size, 

not permanently bound together, and: 

* * * * * 

(2) All papers that are submitted on 

paper or by facsimile transmission, and 

are to become a part of the permanent 

records of the Office should have no 

holes in the sheets as submitted. 

(3) The provisions of this paragraph 

and paragraph (b) of this section do not 

apply to the pre-printed information on 

paper forms provided by the Office, or 

to the copy of the patent submitted on 

paper in double column format as the 

specification in a reissue application or 

request for reexamination. 

* * * * * 

(5) All papers submitted 

electronically to the Office must be: 

(i) Formatted and transmitted in 

compliance with the Office’s electronic 

filing system requirements; and 

(ii) Readily legible to the Office after 

receipt thereof. 

(b) The application (specification, 

including the claims and abstract, 

drawings, and oath or declaration) or a 

reexamination request, any amendments 

or correction(s) to an application or 

patent undergoing reexamination, and 

any remarks, petitions, requests, 

affidavits or other papers submitted 

during prosecution of an application or 

a reexamination proceeding: 

(1) Except as provided for in § 1.69 

and paragraph (d) of this section, must: 

(i) Comply with the requirements of 

paragraph (a) of this section; and 

(ii) Be in the English language or be 

accompanied by a translation of the 

application and a translation of any 

corrections or amendments into the 

English language together with a 

statement that the translation is 

accurate; and 

(2) Except for the specifications of 

reissue applications (but not 

amendments thereto made by a separate 

paper pursuant to § 1.173(b)) and 

specifications for patents for which 

reexamination has been requested (but 

not amendments thereto pursuant to 

§ 1.530) and as provided for in §§ 1.821 

through 1.825, must have: 

(i) Lines that are 11⁄2 or double 

spaced; 

(ii) Text written in a nonscript font 

(e.g., Arial, Times New Roman, or 

Courier) lettering style having capital 

letters which must be no smaller than 

0.28 cm (0.11 inch) high (e.g., a font size 

of 12 point in Times New Roman); and 

(iii) Only a single column of text. 

* * * * * 

4. Section 1.366 is amended by 

adding paragraph (h) to read as follows: 

§ 1.366 Submission of maintenance fees. 

* * * * * 

(h) Paper submissions of maintenance 

fee-related payments must comply with 

§ 1.52(a) and (b). 

PART 2—RULES OF PRACTICE IN 

TRADEMARK CASES 

5. The authority citation for 37 CFR 

part 2 continues to read as follows: 

Authority: 15 U.S.C. 1123, 35 U.S.C. 2, 

unless otherwise noted. 

6. Section 2.195 is amended by 

adding a new paragraph (d)(6) to read as 

follows: 

§ 2.195 Receipt of trademark 

correspondence. 

* * * * * 

(d) * * * 

(6) Correspondence permitted to be 

submitted via the Office’s electronic 

system for recording assignments (e.g., 

Electronic Trademark Assignment 

System (ETAS)). 

* * * * * 


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Federal Register / Vol. 73, No. 152 / Wednesday, August 6, 2008 / Proposed Rules 45673 

PART 3—ASSIGNMENT, RECORDING 

AND RIGHTS OF ASSIGNEE 

7. Section 3.24 is revised to read as 

follows: 

§ 3.24 Requirements for documents and 

cover sheets relating to patents and patent 

applications. 

(a) For electronic submissions (e.g., 

Electronic Patent Assignment System 

(EPAS)): Either a copy of the original 

document or an extract of the original 

document may be submitted for 

recording. All documents must be 

submitted as digitized images in Tagged 

Image File Format (TIFF) or another 

form as prescribed by the Director. 

When printed to a paper size of either 

21.6 by 27.9 cm (81⁄2 inches by 11 

inches) or 21.0 by 29.7 cm (DIN size 

A4), the document must be legible and 

a 2.5 cm (one inch) margin must be 

present on all sides. 

(b) For paper: Either a copy of the 

original document or an extract of the 

original document must be submitted 

for recording. Only one side of each 

page may be used. The paper size must 

be either 21.6 by 27.9 cm (81⁄2 inches by 

11 inches) or 21.0 by 29.7 cm (DIN size 

A4), and in either case, a 2.5 cm (one 

inch) margin must be present on all 

sides. The paper used should be 

flexible, strong, white, non-shiny, and 

durable. 

(c) Non-return of submissions: The 

Office will not return documents 

submitted for recording. Therefore, 

original documents must not be 

submitted for recording. 

8. Section 3.25 is amended by revising 

paragraph (c) as follows: 

§ 3.25 Recording requirements for 

trademark applications and registrations. 

* * * * * 

(c) All documents. (1) For electronic 

submissions (e.g., Electronic Trademark 

Assignment System (ETAS)): All 

documents must be submitted as 

digitized images in Tagged Image File 

Format (TIFF) or another form as 

prescribed by the Director. When 

printed to a paper size of either 21.6 by 

27.9 cm (81⁄2 inches by 11 inches) or 

21.0 by 29.7 cm (DIN size A4), the 

document must be legible and a 2.5 cm 

(one inch) margin must be present on all 

sides. 

(2) For paper: Only one side of each 

page may be used. The paper size must 

be either 21.6 by 27.9 cm (81⁄2 inches by 

11 inches) or 21.0 by 29.7 cm (DIN size 

A4), and in either case, a 2.5 cm (one 

inch) margin must be present on all 

sides. The paper used should be 

flexible, strong, white, non-shiny, and 

durable. 

(3) Non-return of submissions: The 

Office will not return documents 

submitted for recording. Therefore, 

original documents must not be 

submitted for recording. 

Dated: July 31, 2008. 

Jon W. Dudas, 

Under Secretary of Commerce for Intellectual 

Property and Director of the United States 

Patent and Trademark Office. 

[FR Doc. E8–18025 Filed 8–5–08; 8:45 am] 

BILLING CODE 3510–16–P 

ENVIRONMENTAL PROTECTION 

AGENCY 

40 CFR Part 63 

[EPA–HQ–OAR–2003–0121; FRL–8701–8] 

RIN 2060–AO07 

National Emission Standards for 

Organic Hazardous Air Pollutants 

From the Synthetic Organic Chemical 

Manufacturing Industry for Process 

Vents, Storage Vessels, Transfer 

Operations, and Wastewater; and 

National Emission Standards for 

Hazardous Air Pollutants: 

Miscellaneous Organic Chemical 

Manufacturing 

AGENCY: Environmental Protection 

Agency (EPA). 

ACTION: Proposed rule; amendments. 

SUMMARY: On November 10, 2003, EPA 

promulgated national emission 

standards for hazardous air pollutants 

(NESHAP) for miscellaneous organic 

chemical manufacturing. The rule is 

referred to as the miscellaneous organic 

NESHAP or the MON. The MON 

incorporates by reference the 

wastewater tank requirements in the 

National Emission Standards for 

Organic Hazardous Air Pollutants From 

the Synthetic Organic Chemical 

Manufacturing Industry for Process 

Vents, Storage Vessels, Transfer 

Operations, and Wastewater, which EPA 

promulgated on April 24, 1994, and 

which is referred to as the hazardous 

organic NESHAP or the HON. In this 

action EPA proposes to amend the HON, 

and thereby, the MON, by adding an 

equivalent means of emission limitation 

for wastewater tanks. This action also 

clarifies and corrects technical 

inconsistencies that have been 

discovered in the MON. 

DATES: Comments. Comments must be 

received on or before September 22, 

2008. 

Public Hearing. If anyone contacts 

EPA requesting to speak at a public 

hearing by August 18, 2008, a public 

hearing will be held on August 21, 2008. 

ADDRESSES: Submit your comments, 

identified by Docket ID No. EPA–HQ–

OAR–2003–0121, by one of the 

following methods: 

• www.regulations.gov. Follow the 

on-line instructions for submitting 

comments. 

• E-mail: a-and-r-Docket@epa.gov. 

• Fax: (202) 566–9744. 

• Mail: U.S. Postal Service, send 

comments to: Air and Radiation Docket 

and Information Center, EPA, Mailcode: 

2822T, 1200 Pennsylvania Ave., NW., 

Washington, DC 20460. Please include a 

total of two copies. 

• Hand Delivery: In person or by 

courier, deliver your comments to: Air 

and Radiation Docket, EPA, Room 3334, 

1301 Constitution Avenue, NW. 

Washington, DC 20004. Please include a 

total of two copies. Such deliveries are 

only accepted during the Docket’s 

normal hours of operation, and special 

arrangements should be made for 

deliveries of boxed information. We 

request that a separate copy of each 

public comment also be sent to the 

contact person listed below (see FOR

FURTHER INFORMATION CONTACT). 

Instructions: Direct your comments to 

Docket ID No. EPA–HQ–OAR–2003–

0121. EPA’s policy is that all comments 

received will be included in the public 

docket without change and may be 

made available online at 

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. For additional information 


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