Patent Law FAQ

If an applicant disagrees with the USPTO’s refusal to grant a filing date for their patent application, they can request a review through the following process:

• File a petition to the USPTO, accompanied by the required petition fee
• Provide arguments and evidence supporting why the application should be granted the desired filing date
• If alleging no defect exists, include a request for a refund of the petition fee

The MPEP states: Any review of the refusal to grant a filing date as of the date of deposit of the application would be by way of petition, accompanied by the petition fee (37 CFR 1.17(f)). Petitioner should provide any arguments that he or she has that the items noted were not missing or that a filing date should be assigned in the absence of such items if they are believed to be unnecessary.

Petitions relating to filing dates are decided by the Office of the Deputy Commissioner for Patent Examination Policy. The petition should be marked to the attention of the Office of Petitions.

It’s important to act promptly if you believe a filing date has been incorrectly refused, as the filing date can have significant implications for patent rights.

For more information on patent application review, visit: patent application review.

To qualify for micro entity status, an applicant must meet the following requirements:

• Qualify as a small entity
• Not be named as an inventor on more than 4 previously filed patent applications
• Not have a gross income exceeding 3 times the median household income in the previous calendar year
• Not have assigned, licensed, or be obligated to assign or license rights to an entity that exceeds the gross income limit

Alternatively, an applicant can qualify if they are employed by or have assigned rights to an institution of higher education.

The USPTO is not open for filing correspondence on Saturdays, Sundays, or federal holidays within the District of Columbia. However, there are exceptions:

• Correspondence deposited as Priority Mail Express® with the USPS in accordance with 37 CFR 1.10 is considered filed on the date of deposit, even on weekends or holidays
• Electronic filing systems may be available 24/7, but the official filing date will be the next business day

MPEP 510 cites 37 CFR 1.6(a)(1): “The Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or Federal holiday within the District of Columbia.”

The USPTO requires that different matters be submitted in separate papers to avoid confusion and delays. This requirement is outlined in 37 CFR 1.4(c), which states:

Since different matters may be considered by different branches or sections of the Office, each distinct subject, inquiry or order must be contained in a separate paper to avoid confusion and delay in answering papers dealing with different subjects.

Key points to remember:

• Each distinct subject, inquiry, or order should be in a separate paper.
• This applies to both patent and trademark correspondence.
• Exceptions are allowed for subjects provided for on a single Office or World Intellectual Property Organization form.

If you submit multiple subjects in a single paper, the USPTO may use Form Paragraph 5.01.01 to notify you of the requirement for separate papers in future correspondence.

Adhering to this requirement helps ensure that your correspondence is processed efficiently by the appropriate Office branches or sections.

To learn more:

• USPTO correspondence
• separate papers
• patent applications
• trademark applications

The qualification of a subsidiary for small entity status depends on several factors. According to the MPEP:

A business concern or organization is affiliates of another concern or organization if, directly or indirectly, either one controls or has the power to control the other, or a third party or parties controls or has the power to control both.

This means that:

• If a subsidiary is controlled by a large entity, it generally cannot claim small entity status.
• The control can be direct (e.g., majority ownership) or indirect (e.g., through contractual arrangements).
• Even if the subsidiary meets the size standards on its own, affiliation with a large entity typically disqualifies it from small entity status.

However, there may be exceptions in complex corporate structures. It’s advisable to consult with a patent attorney to evaluate your specific situation and determine eligibility for small entity status.

To learn more:

• subsidiary
• large entity
• small entity status
• affiliation

Fraudulently establishing small entity status or paying fees as a small entity is considered a serious offense. According to 37 CFR 1.27(h): ‘Any attempt to fraudulently establish status as a small entity or pay fees as a small entity will be considered as a fraud practiced or attempted on the Office.’

The consequences of such actions can be severe, potentially including:

• Invalidation of the patent
• Criminal charges for fraud
• Disciplinary action against registered patent practitioners

It’s crucial to ensure that all claims to small entity status are truthful and accurate. Do not rely on oral advice from USPTO employees regarding entitlement to small entity status.

To learn more:

• small entity status
• fraud
• USPTO procedures
• patent law

Are there any fee reductions or waivers available for USPTO patent fees?

Yes, the USPTO offers fee reductions for certain applicants. According to MPEP 509, “Certain fees may be reduced if the applicant qualifies as a small entity or micro entity.” Here’s a brief overview:

• Small Entity: Individuals, small businesses, and nonprofit organizations may qualify for a 50% fee reduction.
• Micro Entity: Certain applicants may qualify for a 75% fee reduction if they meet specific income and filing requirements.

To determine if you qualify and for detailed information on how to claim these statuses, refer to MPEP 509.02 for Small Entity Status and MPEP 509.04 for Micro Entity Status. Always ensure you meet all requirements before claiming a reduced fee status.

To learn more:

• fee reduction
• small entity
• micro entity
• patent fees

What is the USPTO’s policy on federal holidays?

The USPTO observes federal holidays and has specific policies regarding correspondence and deadlines that fall on these days:

• The USPTO is closed on all federal holidays.
• Deadlines that fall on a federal holiday are extended to the next business day.
• Correspondence is not accepted or processed on federal holidays.

According to MPEP 502: ‘Federal holidays falling on Sunday will be observed on the following Monday.’ This means that when a federal holiday falls on a Sunday, the USPTO will be closed on the following Monday, and any deadlines will be extended accordingly.

It’s important for patent applicants and attorneys to be aware of the federal holiday schedule and plan their filings accordingly to avoid missing critical deadlines.

The USPTO assigns different series codes to various types of patent applications:

• 01/ – 16/: Nonprovisional applications (utility, plant, and reissue)
• 29/: Design applications
• 35/: International design applications
• 60/, 61/, and 62/: Provisional applications
• 90/: Ex parte reexamination proceedings
• 95/: Inter partes reexamination proceedings
• 96/: Supplemental examination proceedings and resulting ex parte reexamination proceedings

The MPEP provides a detailed breakdown of series codes for nonprovisional applications from 1925 to the present. For example, ‘Series code 16 is assigned to nonprovisional applications filed from June 2018 to present.’ (MPEP 503)

When a USPTO deadline falls on a weekend or holiday, the due date is automatically extended. According to MPEP 505, When the last day for taking any action or paying any fee in the Office falls on a Saturday, Sunday, or a Federal holiday within the District of Columbia, the action or the fee is considered timely if the action is taken or the fee is paid on the next succeeding business day.

This rule applies to various USPTO actions, including:

• Filing responses to Office Actions
• Paying maintenance fees
• Submitting other time-sensitive documents

It’s important to note that while the deadline is extended, the USPTO is still closed on these days for regular correspondence receipt.

For more information on patent procedure, visit: patent procedure.

For more information on USPTO deadlines, visit: USPTO deadlines.

Yes, you can request a refund if you establish small entity status after paying full fees, but there are strict time limits:

• You must file an assertion of small entity status and a refund request within 3 months of the date of the full fee payment
• This 3-month period cannot be extended

According to 37 CFR 1.28(a): “A refund pursuant to § 1.26, based on establishment of small entity status, of a portion of fees timely paid in full prior to establishing status as a small entity may only be obtained if an assertion under § 1.27(c) and a request for a refund of the excess amount are filed within three months of the date of the timely payment of the full fee. The three-month time period is not extendable under § 1.136.”

To learn more:

• small entity status
• patent fees
• refunds

To learn more:

• USPTO procedures

Can small entity status be changed during the patent process?

Yes, small entity status can be changed during the patent process. The MPEP 509.03 provides guidance on this: “Once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.” This means that:

• You can change from small entity to large entity at any time by simply paying the full fee.
• If you lose small entity status, you must notify the USPTO before or with the next fee payment.
• Changing from large entity to small entity requires a new certification of entitlement to small entity status.

It’s important to monitor your status throughout the patent process and update the USPTO promptly if changes occur to avoid potential issues.

To learn more:

• small entity status
• patent process
• status change
• USPTO requirements

Yes, you must assert small entity status separately for each related application. Specifically:

• Status must be established in each related, continuing, and reissue application
• Small entity status in one application does not affect the status of any other application or patent
• A new assertion is required for continuations, divisionals, continuations-in-part, and reissue applications

According to 37 CFR 1.27(c)(4): “Status as a small entity must be specifically established by an assertion in each related, continuing and reissue application in which status is appropriate and desired. Status as a small entity in one application or patent does not affect the status of any other application or patent, regardless of the relationship of the applications or patents. The refiling of an application under § 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under § 1.53(d)), or the filing of a reissue application, requires a new assertion as to continued entitlement to small entity status for the continuing or reissue application.”

To learn more:

• small entity status
• patent application
• related applications

If corrected drawings are not received within the set time period, the application will be processed for issue or publication based on the originally filed drawings. The failure to submit corrected drawings may result in the application being withdrawn from issue or the patent being printed with defective drawings.

What are the signature requirements for patent practitioners in correspondence with the USPTO?

Patent practitioners (e.g., registered attorneys or agents) must follow specific signature requirements when corresponding with the USPTO:

• They must personally sign correspondence using either a handwritten signature or an S-signature.
• An S-signature is inserted between forward slash marks and includes the practitioner’s name and registration number.
• The signature must comply with 37 CFR 1.4(d)(1) or 1.4(d)(2).

According to MPEP 502.02, ‘The signature of a practitioner on correspondence filed with the USPTO must be a handwritten signature or an S-signature personally signed by such practitioner.’ This ensures accountability and authenticity in patent-related communications.

To learn more:

• patent practitioner
• signature requirements
• USPTO correspondence
• S-signature
• handwritten signature

If you don’t possess any record of correspondence with the USPTO for an application, patent, or other proceeding that is the subject of an unlocatable file notice, you must still respond to the notice. According to 37 CFR 1.251(a)(3):

If applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding, applicant or patentee must comply with a notice under this section by providing a statement that applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding.

It’s crucial to provide this statement within the specified time period to avoid potential negative consequences, such as abandonment of a pending application or limitations on the certified copy of a granted patent file that the USPTO can produce.

To learn more:

• USPTO correspondence
• Patent records
• Application procedures
• Unlocatable files

What are the income limitations for qualifying as a micro entity?

To qualify as a micro entity based on income, an applicant’s gross income in the previous calendar year must not exceed three times the median household income as reported by the Bureau of the Census. The MPEP states:

“The income limit is not described in terms of a specific dollar amount because median household income may change from year to year.” (MPEP 509.04(a))

For the most current income threshold, applicants should check the USPTO’s website or consult with a patent attorney. It’s important to note that this limit applies to each applicant, inventor, and joint inventor who is named in the application.

To learn more:

• micro entity
• income limitations
• patent fees
• USPTO

How do I set up a deposit account with the USPTO?

To set up a deposit account with the USPTO:

1. Visit the USPTO Deposit Accounts page
2. Download and complete the Deposit Account Application Form
3. Submit the form with an initial deposit (minimum $1,000)
4. Wait for account approval and receive your account number

According to MPEP 509: ‘A deposit account may be established by submitting a completed Deposit Account Application Form with an initial deposit of at least $1,000.’ This account can be used for future fee payments, offering convenience for frequent USPTO transactions.

To learn more:

• deposit account
• USPTO
• patent fees
• application form

If there are variations in your signature across different patent documents, you should:

• Try to use a consistent signature for all patent correspondence to avoid confusion.
• Be prepared for the USPTO to require ratification or confirmation of the signature if there are significant variations.
• If asked to ratify, state that you personally signed the previously submitted document and, if needed, submit a compliant format of the signature.

According to the MPEP: “For consistency purposes, and to avoid raising a doubt as to who has signed, the same S-signature should be utilized each time, with variations of the signature being avoided.”

If the USPTO requires ratification, they may ask you to submit a statement or a duplicate document with a compliant signature. This helps ensure the authenticity of signatures and clarity of the record.

To learn more:

• Signature Variations
• Patent Correspondence
• Ratification
• Signature Consistency
• USPTO Requirements

No, foreign universities do not qualify as ‘institutions of higher education’ for the purpose of establishing micro entity status. This is because the definition is limited to institutions located in U.S. states or territories.

According to MPEP 509.04(b): “As previously stated, foreign universities do not qualify as an ‘institution of higher education’ for purposes of establishing micro entity status.”

Even if a foreign university offers online programs in the U.S., it still doesn’t qualify because the institution itself must be physically located in a U.S. state or territory as defined in the Higher Education Act of 1965.

To learn more:

• foreign universities
• micro entity status
• institution of higher education
• patent fees

If the drawings in a patent application are not in compliance with the rules, the Office of Patent Application Processing (OPAP) will send a Notice to File Corrected Application Papers. This notice gives the applicant a time period of 2 months from the mailing date to file corrected drawings. The time period is extendable under 37 CFR 1.136(a). If corrected drawings are not timely filed, the application will be held abandoned.

To access USPTO public information facilities:

• A valid Public User or Visitor’s badge is required
• Badges can be obtained from the Office of Security next to the Public Search Facility
• An On-line Service Card is required for access to all Public Search Facilities and on-line systems

MPEP 510 states: “A valid Public User or Visitor’s badge is required to enter USPTO facilities. This badge can be obtained from the Office of Security next door to the Public Search Facility located on the first floor of the Madison East Building, 600 Dulany Street, Alexandria, VA 22314.”

If correspondence with a Certificate of Mailing or Transmission is not received by the USPTO after a reasonable amount of time, you can take steps to notify the Office and provide evidence of the previous timely filing. According to 37 CFR 1.8(b):

In the event that correspondence is considered timely filed by being mailed or transmitted in accordance with paragraph (a) of this section, but not received in the U.S. Patent and Trademark Office after a reasonable amount of time has elapsed from the time of mailing or transmitting of the correspondence […] the correspondence will be considered timely if the party who forwarded such correspondence: (1) Informs the Office of the previous mailing or transmission of the correspondence promptly after becoming aware that the Office has no evidence of receipt of the correspondence; (2) Supplies an additional copy of the previously mailed or transmitted correspondence and certificate; and (3) Includes a statement that attests on a personal knowledge basis or to the satisfaction of the Director to the previous timely mailing, transmission or submission.

It’s recommended to check the private Patent Application Information Retrieval (PAIR) System first to see if the correspondence has been entered into the application file before notifying the Office.

There are two main ways to obtain a receipt for items filed with the USPTO:

1. For paper filings: Include a self-addressed postcard with your submission, itemizing all components being filed. The USPTO will stamp the receipt date on the postcard and return it.
2. For electronic filings via EFS-Web or Patent Center: An Electronic Acknowledgement Receipt is automatically generated and sent to the filer.

The MPEP states: ‘If a submitter desires a receipt for any item (e.g., paper or fee) filed in the USPTO by means other than the USPTO patent electronic filing system, it may be obtained by enclosing with the paper a self-addressed postcard specifically identifying the item.’ (MPEP 503)

The USPTO strongly recommends the following methods for filing new patent applications:

1. Electronic Filing System (EFS-Web or Patent Center): This is the preferred method whenever permitted.
2. Priority Mail Express®: If not filing electronically, use this method in accordance with 37 CFR 1.10 to secure the date of deposit as the filing date.
3. Hand-delivery to the USPTO office.

Avoid filing by first-class mail, as it only secures the date of receipt at the USPTO as the filing date, risking delays in delivery.

As stated in MPEP 511: “The Office strongly recommends that applicants file new applications by Priority Mail Express® in accordance with 37 CFR 1.10 (if such applications are not filed via EFS-Web) because such correspondence will be accorded the date of deposit in Priority Mail Express® with the USPS as the filing date.”

Additionally, “In general, applicants should consider filing new patent applications (as well as patent-related correspondence) via the USPTO patent electronic filing system (EFS-Web or Patent Center) whenever permitted.”

A return postcard serves as prima facie evidence of receipt by the USPTO of all items listed on the postcard. It should include detailed identifying information such as:

• Inventor’s name
• Application number (if known)
• Confirmation number (if known)
• Filing date
• Title of the invention
• Type of paper being filed
• Number of pages for each component

The MPEP states: ‘A postcard receipt which itemizes and properly identifies the items which are being filed serves as prima facie evidence of receipt in the USPTO of all the items listed thereon on the date stamped thereon by the USPTO.’ (MPEP 503)

No, you cannot use a Certificate of Mailing or Transmission for filing a new patent application to establish the application’s filing date. The MPEP explicitly states:

No benefit will be given to a Certificate of Mailing or Certificate of Facsimile Transmission relative to the filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date.

This restriction is also specified in 37 CFR 1.8(a)(2)(i)(A), which excludes “[t]he filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date” from the Certificate of Mailing or Transmission procedure.

However, it’s worth noting that new patent applications can be filed electronically via the USPTO’s Electronic Filing System (EFS-Web), which provides its own timestamp for filing date purposes.

If you fail to comply with the requirements for correcting micro entity status errors, as outlined in 37 CFR 1.29(k)(1) and (k)(2), the USPTO has two options:

1. Treat it as an authorization to process the deficiency payment and charge a processing fee
2. Require compliance within a non-extendable one-month period

The MPEP states: If the requirements of paragraphs (k)(1) and (2) of this section are not complied with, such failure will either be treated at the option of the Office as an authorization for the Office to process the deficiency payment and charge the processing fee set forth in § 1.17(i), or result in a requirement for compliance within a one-month time period that is not extendable under § 1.136(a) to avoid the return of the fee deficiency payment.

It’s important to carefully follow the requirements to avoid additional fees or potential loss of rights.

To learn more:

• Micro Entity
• Fee Correction
• Patent Fees
• USPTO Procedures

If the Certificate of Mailing or Transmission is omitted from a paper, the USPTO will treat the paper as though it was not received. According to MPEP 512:

“If the certification of mailing or transmission is omitted and the paper is later received by the U.S. Patent and Trademark Office, the paper will be considered as having been filed as of the date of receipt in the Office.”

This means that without the certificate, the paper’s filing date will be the actual date it’s received by the USPTO, which could potentially be later than intended and may have significant consequences for patent applications or other time-sensitive submissions.

To learn more:

• Certificate of Mailing
• Certificate of Transmission
• USPTO filing
• patent application

For papers that have been scanned into the Image File Wrapper (IFW) system, the USPTO has a specific procedure for ‘returning’ them. According to MPEP 508.02:

“If a paper has been scanned into the IFW, ‘return’ of the paper will be accomplished by the Office closing it in IFW.”

This means that instead of physically returning the paper, the USPTO will electronically close or restrict access to the document within the IFW system. This process maintains the integrity of the digital file while effectively ‘returning’ the document.

To learn more:

• Image File Wrapper
• IFW
• USPTO procedures
• Digital patent files

The USPTO requires that different matters be submitted in separate papers to avoid confusion and delays. This requirement is outlined in 37 CFR 1.4(c), which states:

Since different matters may be considered by different branches or sections of the Office, each distinct subject, inquiry or order must be contained in a separate paper to avoid confusion and delay in answering papers dealing with different subjects.

Key points to remember:

• Each distinct subject, inquiry, or order should be in a separate paper.
• This applies to both patent and trademark correspondence.
• Exceptions are allowed for subjects provided for on a single Office or World Intellectual Property Organization form.

If you submit multiple subjects in a single paper, the USPTO may use Form Paragraph 5.01.01 to notify you of the requirement for separate papers in future correspondence.

Adhering to this requirement helps ensure that your correspondence is processed efficiently by the appropriate Office branches or sections.

To learn more:

• USPTO correspondence
• separate papers
• patent applications
• trademark applications

What is the USPTO’s policy on federal holidays?

The USPTO observes federal holidays and has specific policies regarding correspondence and deadlines that fall on these days:

• The USPTO is closed on all federal holidays.
• Deadlines that fall on a federal holiday are extended to the next business day.
• Correspondence is not accepted or processed on federal holidays.

According to MPEP 502: ‘Federal holidays falling on Sunday will be observed on the following Monday.’ This means that when a federal holiday falls on a Sunday, the USPTO will be closed on the following Monday, and any deadlines will be extended accordingly.

It’s important for patent applicants and attorneys to be aware of the federal holiday schedule and plan their filings accordingly to avoid missing critical deadlines.

The USPTO assigns different series codes to various types of patent applications:

• 01/ – 16/: Nonprovisional applications (utility, plant, and reissue)
• 29/: Design applications
• 35/: International design applications
• 60/, 61/, and 62/: Provisional applications
• 90/: Ex parte reexamination proceedings
• 95/: Inter partes reexamination proceedings
• 96/: Supplemental examination proceedings and resulting ex parte reexamination proceedings

The MPEP provides a detailed breakdown of series codes for nonprovisional applications from 1925 to the present. For example, ‘Series code 16 is assigned to nonprovisional applications filed from June 2018 to present.’ (MPEP 503)

There are two main ways to obtain a receipt for items filed with the USPTO:

1. For paper filings: Include a self-addressed postcard with your submission, itemizing all components being filed. The USPTO will stamp the receipt date on the postcard and return it.
2. For electronic filings via EFS-Web or Patent Center: An Electronic Acknowledgement Receipt is automatically generated and sent to the filer.

The MPEP states: ‘If a submitter desires a receipt for any item (e.g., paper or fee) filed in the USPTO by means other than the USPTO patent electronic filing system, it may be obtained by enclosing with the paper a self-addressed postcard specifically identifying the item.’ (MPEP 503)

A return postcard serves as prima facie evidence of receipt by the USPTO of all items listed on the postcard. It should include detailed identifying information such as:

• Inventor’s name
• Application number (if known)
• Confirmation number (if known)
• Filing date
• Title of the invention
• Type of paper being filed
• Number of pages for each component

The MPEP states: ‘A postcard receipt which itemizes and properly identifies the items which are being filed serves as prima facie evidence of receipt in the USPTO of all the items listed thereon on the date stamped thereon by the USPTO.’ (MPEP 503)

When a USPTO deadline falls on a weekend or holiday, the due date is automatically extended. According to MPEP 505, When the last day for taking any action or paying any fee in the Office falls on a Saturday, Sunday, or a Federal holiday within the District of Columbia, the action or the fee is considered timely if the action is taken or the fee is paid on the next succeeding business day.

This rule applies to various USPTO actions, including:

• Filing responses to Office Actions
• Paying maintenance fees
• Submitting other time-sensitive documents

It’s important to note that while the deadline is extended, the USPTO is still closed on these days for regular correspondence receipt.

For more information on patent procedure, visit: patent procedure.

For more information on USPTO deadlines, visit: USPTO deadlines.

If an applicant disagrees with the USPTO’s refusal to grant a filing date for their patent application, they can request a review through the following process:

• File a petition to the USPTO, accompanied by the required petition fee
• Provide arguments and evidence supporting why the application should be granted the desired filing date
• If alleging no defect exists, include a request for a refund of the petition fee

The MPEP states: Any review of the refusal to grant a filing date as of the date of deposit of the application would be by way of petition, accompanied by the petition fee (37 CFR 1.17(f)). Petitioner should provide any arguments that he or she has that the items noted were not missing or that a filing date should be assigned in the absence of such items if they are believed to be unnecessary.

Petitions relating to filing dates are decided by the Office of the Deputy Commissioner for Patent Examination Policy. The petition should be marked to the attention of the Office of Petitions.

It’s important to act promptly if you believe a filing date has been incorrectly refused, as the filing date can have significant implications for patent rights.

For more information on patent application review, visit: patent application review.

If corrected drawings are not received within the set time period, the application will be processed for issue or publication based on the originally filed drawings. The failure to submit corrected drawings may result in the application being withdrawn from issue or the patent being printed with defective drawings.

If the drawings in a patent application are not in compliance with the rules, the Office of Patent Application Processing (OPAP) will send a Notice to File Corrected Application Papers. This notice gives the applicant a time period of 2 months from the mailing date to file corrected drawings. The time period is extendable under 37 CFR 1.136(a). If corrected drawings are not timely filed, the application will be held abandoned.

To qualify for micro entity status, an applicant must meet the following requirements:

• Qualify as a small entity
• Not be named as an inventor on more than 4 previously filed patent applications
• Not have a gross income exceeding 3 times the median household income in the previous calendar year
• Not have assigned, licensed, or be obligated to assign or license rights to an entity that exceeds the gross income limit

Alternatively, an applicant can qualify if they are employed by or have assigned rights to an institution of higher education.

Are there any fee reductions or waivers available for USPTO patent fees?

Yes, the USPTO offers fee reductions for certain applicants. According to MPEP 509, “Certain fees may be reduced if the applicant qualifies as a small entity or micro entity.” Here’s a brief overview:

• Small Entity: Individuals, small businesses, and nonprofit organizations may qualify for a 50% fee reduction.
• Micro Entity: Certain applicants may qualify for a 75% fee reduction if they meet specific income and filing requirements.

To determine if you qualify and for detailed information on how to claim these statuses, refer to MPEP 509.02 for Small Entity Status and MPEP 509.04 for Micro Entity Status. Always ensure you meet all requirements before claiming a reduced fee status.

To learn more:

• fee reduction
• small entity
• micro entity
• patent fees

How do I set up a deposit account with the USPTO?

To set up a deposit account with the USPTO:

1. Visit the USPTO Deposit Accounts page
2. Download and complete the Deposit Account Application Form
3. Submit the form with an initial deposit (minimum $1,000)
4. Wait for account approval and receive your account number

According to MPEP 509: ‘A deposit account may be established by submitting a completed Deposit Account Application Form with an initial deposit of at least $1,000.’ This account can be used for future fee payments, offering convenience for frequent USPTO transactions.

To learn more:

• deposit account
• USPTO
• patent fees
• application form

The USPTO is not open for filing correspondence on Saturdays, Sundays, or federal holidays within the District of Columbia. However, there are exceptions:

• Correspondence deposited as Priority Mail Express® with the USPS in accordance with 37 CFR 1.10 is considered filed on the date of deposit, even on weekends or holidays
• Electronic filing systems may be available 24/7, but the official filing date will be the next business day

MPEP 510 cites 37 CFR 1.6(a)(1): “The Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or Federal holiday within the District of Columbia.”

To access USPTO public information facilities:

• A valid Public User or Visitor’s badge is required
• Badges can be obtained from the Office of Security next to the Public Search Facility
• An On-line Service Card is required for access to all Public Search Facilities and on-line systems

MPEP 510 states: “A valid Public User or Visitor’s badge is required to enter USPTO facilities. This badge can be obtained from the Office of Security next door to the Public Search Facility located on the first floor of the Madison East Building, 600 Dulany Street, Alexandria, VA 22314.”

The USPTO strongly recommends the following methods for filing new patent applications:

1. Electronic Filing System (EFS-Web or Patent Center): This is the preferred method whenever permitted.
2. Priority Mail Express®: If not filing electronically, use this method in accordance with 37 CFR 1.10 to secure the date of deposit as the filing date.
3. Hand-delivery to the USPTO office.

Avoid filing by first-class mail, as it only secures the date of receipt at the USPTO as the filing date, risking delays in delivery.

As stated in MPEP 511: “The Office strongly recommends that applicants file new applications by Priority Mail Express® in accordance with 37 CFR 1.10 (if such applications are not filed via EFS-Web) because such correspondence will be accorded the date of deposit in Priority Mail Express® with the USPS as the filing date.”

Additionally, “In general, applicants should consider filing new patent applications (as well as patent-related correspondence) via the USPTO patent electronic filing system (EFS-Web or Patent Center) whenever permitted.”

If correspondence with a Certificate of Mailing or Transmission is not received by the USPTO after a reasonable amount of time, you can take steps to notify the Office and provide evidence of the previous timely filing. According to 37 CFR 1.8(b):

In the event that correspondence is considered timely filed by being mailed or transmitted in accordance with paragraph (a) of this section, but not received in the U.S. Patent and Trademark Office after a reasonable amount of time has elapsed from the time of mailing or transmitting of the correspondence […] the correspondence will be considered timely if the party who forwarded such correspondence: (1) Informs the Office of the previous mailing or transmission of the correspondence promptly after becoming aware that the Office has no evidence of receipt of the correspondence; (2) Supplies an additional copy of the previously mailed or transmitted correspondence and certificate; and (3) Includes a statement that attests on a personal knowledge basis or to the satisfaction of the Director to the previous timely mailing, transmission or submission.

It’s recommended to check the private Patent Application Information Retrieval (PAIR) System first to see if the correspondence has been entered into the application file before notifying the Office.

No, you cannot use a Certificate of Mailing or Transmission for filing a new patent application to establish the application’s filing date. The MPEP explicitly states:

No benefit will be given to a Certificate of Mailing or Certificate of Facsimile Transmission relative to the filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date.

This restriction is also specified in 37 CFR 1.8(a)(2)(i)(A), which excludes “[t]he filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date” from the Certificate of Mailing or Transmission procedure.

However, it’s worth noting that new patent applications can be filed electronically via the USPTO’s Electronic Filing System (EFS-Web), which provides its own timestamp for filing date purposes.

If the Certificate of Mailing or Transmission is omitted from a paper, the USPTO will treat the paper as though it was not received. According to MPEP 512:

“If the certification of mailing or transmission is omitted and the paper is later received by the U.S. Patent and Trademark Office, the paper will be considered as having been filed as of the date of receipt in the Office.”

This means that without the certificate, the paper’s filing date will be the actual date it’s received by the USPTO, which could potentially be later than intended and may have significant consequences for patent applications or other time-sensitive submissions.

To learn more:

• Certificate of Mailing
• Certificate of Transmission
• USPTO filing
• patent application

If an applicant disagrees with the USPTO’s refusal to grant a filing date for their patent application, they can request a review through the following process:

• File a petition to the USPTO, accompanied by the required petition fee
• Provide arguments and evidence supporting why the application should be granted the desired filing date
• If alleging no defect exists, include a request for a refund of the petition fee

The MPEP states: Any review of the refusal to grant a filing date as of the date of deposit of the application would be by way of petition, accompanied by the petition fee (37 CFR 1.17(f)). Petitioner should provide any arguments that he or she has that the items noted were not missing or that a filing date should be assigned in the absence of such items if they are believed to be unnecessary.

Petitions relating to filing dates are decided by the Office of the Deputy Commissioner for Patent Examination Policy. The petition should be marked to the attention of the Office of Petitions.

It’s important to act promptly if you believe a filing date has been incorrectly refused, as the filing date can have significant implications for patent rights.

For more information on patent application review, visit: patent application review.

To qualify for micro entity status, an applicant must meet the following requirements:

• Qualify as a small entity
• Not be named as an inventor on more than 4 previously filed patent applications
• Not have a gross income exceeding 3 times the median household income in the previous calendar year
• Not have assigned, licensed, or be obligated to assign or license rights to an entity that exceeds the gross income limit

Alternatively, an applicant can qualify if they are employed by or have assigned rights to an institution of higher education.

The USPTO is not open for filing correspondence on Saturdays, Sundays, or federal holidays within the District of Columbia. However, there are exceptions:

• Correspondence deposited as Priority Mail Express® with the USPS in accordance with 37 CFR 1.10 is considered filed on the date of deposit, even on weekends or holidays
• Electronic filing systems may be available 24/7, but the official filing date will be the next business day

MPEP 510 cites 37 CFR 1.6(a)(1): “The Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or Federal holiday within the District of Columbia.”

The USPTO requires that different matters be submitted in separate papers to avoid confusion and delays. This requirement is outlined in 37 CFR 1.4(c), which states:

Since different matters may be considered by different branches or sections of the Office, each distinct subject, inquiry or order must be contained in a separate paper to avoid confusion and delay in answering papers dealing with different subjects.

Key points to remember:

• Each distinct subject, inquiry, or order should be in a separate paper.
• This applies to both patent and trademark correspondence.
• Exceptions are allowed for subjects provided for on a single Office or World Intellectual Property Organization form.

If you submit multiple subjects in a single paper, the USPTO may use Form Paragraph 5.01.01 to notify you of the requirement for separate papers in future correspondence.

Adhering to this requirement helps ensure that your correspondence is processed efficiently by the appropriate Office branches or sections.

To learn more:

• USPTO correspondence
• separate papers
• patent applications
• trademark applications

The qualification of a subsidiary for small entity status depends on several factors. According to the MPEP:

A business concern or organization is affiliates of another concern or organization if, directly or indirectly, either one controls or has the power to control the other, or a third party or parties controls or has the power to control both.

This means that:

• If a subsidiary is controlled by a large entity, it generally cannot claim small entity status.
• The control can be direct (e.g., majority ownership) or indirect (e.g., through contractual arrangements).
• Even if the subsidiary meets the size standards on its own, affiliation with a large entity typically disqualifies it from small entity status.

However, there may be exceptions in complex corporate structures. It’s advisable to consult with a patent attorney to evaluate your specific situation and determine eligibility for small entity status.

To learn more:

• subsidiary
• large entity
• small entity status
• affiliation

Fraudulently establishing small entity status or paying fees as a small entity is considered a serious offense. According to 37 CFR 1.27(h): ‘Any attempt to fraudulently establish status as a small entity or pay fees as a small entity will be considered as a fraud practiced or attempted on the Office.’

The consequences of such actions can be severe, potentially including:

• Invalidation of the patent
• Criminal charges for fraud
• Disciplinary action against registered patent practitioners

It’s crucial to ensure that all claims to small entity status are truthful and accurate. Do not rely on oral advice from USPTO employees regarding entitlement to small entity status.

To learn more:

• small entity status
• fraud
• USPTO procedures
• patent law

Are there any fee reductions or waivers available for USPTO patent fees?

Yes, the USPTO offers fee reductions for certain applicants. According to MPEP 509, “Certain fees may be reduced if the applicant qualifies as a small entity or micro entity.” Here’s a brief overview:

• Small Entity: Individuals, small businesses, and nonprofit organizations may qualify for a 50% fee reduction.
• Micro Entity: Certain applicants may qualify for a 75% fee reduction if they meet specific income and filing requirements.

To determine if you qualify and for detailed information on how to claim these statuses, refer to MPEP 509.02 for Small Entity Status and MPEP 509.04 for Micro Entity Status. Always ensure you meet all requirements before claiming a reduced fee status.

To learn more:

• fee reduction
• small entity
• micro entity
• patent fees

What is the USPTO’s policy on federal holidays?

The USPTO observes federal holidays and has specific policies regarding correspondence and deadlines that fall on these days:

• The USPTO is closed on all federal holidays.
• Deadlines that fall on a federal holiday are extended to the next business day.
• Correspondence is not accepted or processed on federal holidays.

According to MPEP 502: ‘Federal holidays falling on Sunday will be observed on the following Monday.’ This means that when a federal holiday falls on a Sunday, the USPTO will be closed on the following Monday, and any deadlines will be extended accordingly.

It’s important for patent applicants and attorneys to be aware of the federal holiday schedule and plan their filings accordingly to avoid missing critical deadlines.

The USPTO assigns different series codes to various types of patent applications:

• 01/ – 16/: Nonprovisional applications (utility, plant, and reissue)
• 29/: Design applications
• 35/: International design applications
• 60/, 61/, and 62/: Provisional applications
• 90/: Ex parte reexamination proceedings
• 95/: Inter partes reexamination proceedings
• 96/: Supplemental examination proceedings and resulting ex parte reexamination proceedings

The MPEP provides a detailed breakdown of series codes for nonprovisional applications from 1925 to the present. For example, ‘Series code 16 is assigned to nonprovisional applications filed from June 2018 to present.’ (MPEP 503)

When a USPTO deadline falls on a weekend or holiday, the due date is automatically extended. According to MPEP 505, When the last day for taking any action or paying any fee in the Office falls on a Saturday, Sunday, or a Federal holiday within the District of Columbia, the action or the fee is considered timely if the action is taken or the fee is paid on the next succeeding business day.

This rule applies to various USPTO actions, including:

• Filing responses to Office Actions
• Paying maintenance fees
• Submitting other time-sensitive documents

It’s important to note that while the deadline is extended, the USPTO is still closed on these days for regular correspondence receipt.

For more information on patent procedure, visit: patent procedure.

For more information on USPTO deadlines, visit: USPTO deadlines.

Yes, you can request a refund if you establish small entity status after paying full fees, but there are strict time limits:

• You must file an assertion of small entity status and a refund request within 3 months of the date of the full fee payment
• This 3-month period cannot be extended

According to 37 CFR 1.28(a): “A refund pursuant to § 1.26, based on establishment of small entity status, of a portion of fees timely paid in full prior to establishing status as a small entity may only be obtained if an assertion under § 1.27(c) and a request for a refund of the excess amount are filed within three months of the date of the timely payment of the full fee. The three-month time period is not extendable under § 1.136.”

To learn more:

• small entity status
• patent fees
• refunds

To learn more:

• USPTO procedures

Can small entity status be changed during the patent process?

Yes, small entity status can be changed during the patent process. The MPEP 509.03 provides guidance on this: “Once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.” This means that:

• You can change from small entity to large entity at any time by simply paying the full fee.
• If you lose small entity status, you must notify the USPTO before or with the next fee payment.
• Changing from large entity to small entity requires a new certification of entitlement to small entity status.

It’s important to monitor your status throughout the patent process and update the USPTO promptly if changes occur to avoid potential issues.

To learn more:

• small entity status
• patent process
• status change
• USPTO requirements

Yes, you must assert small entity status separately for each related application. Specifically:

• Status must be established in each related, continuing, and reissue application
• Small entity status in one application does not affect the status of any other application or patent
• A new assertion is required for continuations, divisionals, continuations-in-part, and reissue applications

According to 37 CFR 1.27(c)(4): “Status as a small entity must be specifically established by an assertion in each related, continuing and reissue application in which status is appropriate and desired. Status as a small entity in one application or patent does not affect the status of any other application or patent, regardless of the relationship of the applications or patents. The refiling of an application under § 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under § 1.53(d)), or the filing of a reissue application, requires a new assertion as to continued entitlement to small entity status for the continuing or reissue application.”

To learn more:

• small entity status
• patent application
• related applications

If corrected drawings are not received within the set time period, the application will be processed for issue or publication based on the originally filed drawings. The failure to submit corrected drawings may result in the application being withdrawn from issue or the patent being printed with defective drawings.

What are the signature requirements for patent practitioners in correspondence with the USPTO?

Patent practitioners (e.g., registered attorneys or agents) must follow specific signature requirements when corresponding with the USPTO:

• They must personally sign correspondence using either a handwritten signature or an S-signature.
• An S-signature is inserted between forward slash marks and includes the practitioner’s name and registration number.
• The signature must comply with 37 CFR 1.4(d)(1) or 1.4(d)(2).

According to MPEP 502.02, ‘The signature of a practitioner on correspondence filed with the USPTO must be a handwritten signature or an S-signature personally signed by such practitioner.’ This ensures accountability and authenticity in patent-related communications.

To learn more:

• patent practitioner
• signature requirements
• USPTO correspondence
• S-signature
• handwritten signature

If you don’t possess any record of correspondence with the USPTO for an application, patent, or other proceeding that is the subject of an unlocatable file notice, you must still respond to the notice. According to 37 CFR 1.251(a)(3):

If applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding, applicant or patentee must comply with a notice under this section by providing a statement that applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding.

It’s crucial to provide this statement within the specified time period to avoid potential negative consequences, such as abandonment of a pending application or limitations on the certified copy of a granted patent file that the USPTO can produce.

To learn more:

• USPTO correspondence
• Patent records
• Application procedures
• Unlocatable files

What are the income limitations for qualifying as a micro entity?

To qualify as a micro entity based on income, an applicant’s gross income in the previous calendar year must not exceed three times the median household income as reported by the Bureau of the Census. The MPEP states:

“The income limit is not described in terms of a specific dollar amount because median household income may change from year to year.” (MPEP 509.04(a))

For the most current income threshold, applicants should check the USPTO’s website or consult with a patent attorney. It’s important to note that this limit applies to each applicant, inventor, and joint inventor who is named in the application.

To learn more:

• micro entity
• income limitations
• patent fees
• USPTO

How do I set up a deposit account with the USPTO?

To set up a deposit account with the USPTO:

1. Visit the USPTO Deposit Accounts page
2. Download and complete the Deposit Account Application Form
3. Submit the form with an initial deposit (minimum $1,000)
4. Wait for account approval and receive your account number

According to MPEP 509: ‘A deposit account may be established by submitting a completed Deposit Account Application Form with an initial deposit of at least $1,000.’ This account can be used for future fee payments, offering convenience for frequent USPTO transactions.

To learn more:

• deposit account
• USPTO
• patent fees
• application form

If there are variations in your signature across different patent documents, you should:

• Try to use a consistent signature for all patent correspondence to avoid confusion.
• Be prepared for the USPTO to require ratification or confirmation of the signature if there are significant variations.
• If asked to ratify, state that you personally signed the previously submitted document and, if needed, submit a compliant format of the signature.

According to the MPEP: “For consistency purposes, and to avoid raising a doubt as to who has signed, the same S-signature should be utilized each time, with variations of the signature being avoided.”

If the USPTO requires ratification, they may ask you to submit a statement or a duplicate document with a compliant signature. This helps ensure the authenticity of signatures and clarity of the record.

To learn more:

• Signature Variations
• Patent Correspondence
• Ratification
• Signature Consistency
• USPTO Requirements

No, foreign universities do not qualify as ‘institutions of higher education’ for the purpose of establishing micro entity status. This is because the definition is limited to institutions located in U.S. states or territories.

According to MPEP 509.04(b): “As previously stated, foreign universities do not qualify as an ‘institution of higher education’ for purposes of establishing micro entity status.”

Even if a foreign university offers online programs in the U.S., it still doesn’t qualify because the institution itself must be physically located in a U.S. state or territory as defined in the Higher Education Act of 1965.

To learn more:

• foreign universities
• micro entity status
• institution of higher education
• patent fees

If the drawings in a patent application are not in compliance with the rules, the Office of Patent Application Processing (OPAP) will send a Notice to File Corrected Application Papers. This notice gives the applicant a time period of 2 months from the mailing date to file corrected drawings. The time period is extendable under 37 CFR 1.136(a). If corrected drawings are not timely filed, the application will be held abandoned.

To access USPTO public information facilities:

• A valid Public User or Visitor’s badge is required
• Badges can be obtained from the Office of Security next to the Public Search Facility
• An On-line Service Card is required for access to all Public Search Facilities and on-line systems

MPEP 510 states: “A valid Public User or Visitor’s badge is required to enter USPTO facilities. This badge can be obtained from the Office of Security next door to the Public Search Facility located on the first floor of the Madison East Building, 600 Dulany Street, Alexandria, VA 22314.”

If correspondence with a Certificate of Mailing or Transmission is not received by the USPTO after a reasonable amount of time, you can take steps to notify the Office and provide evidence of the previous timely filing. According to 37 CFR 1.8(b):

In the event that correspondence is considered timely filed by being mailed or transmitted in accordance with paragraph (a) of this section, but not received in the U.S. Patent and Trademark Office after a reasonable amount of time has elapsed from the time of mailing or transmitting of the correspondence […] the correspondence will be considered timely if the party who forwarded such correspondence: (1) Informs the Office of the previous mailing or transmission of the correspondence promptly after becoming aware that the Office has no evidence of receipt of the correspondence; (2) Supplies an additional copy of the previously mailed or transmitted correspondence and certificate; and (3) Includes a statement that attests on a personal knowledge basis or to the satisfaction of the Director to the previous timely mailing, transmission or submission.

It’s recommended to check the private Patent Application Information Retrieval (PAIR) System first to see if the correspondence has been entered into the application file before notifying the Office.

There are two main ways to obtain a receipt for items filed with the USPTO:

1. For paper filings: Include a self-addressed postcard with your submission, itemizing all components being filed. The USPTO will stamp the receipt date on the postcard and return it.
2. For electronic filings via EFS-Web or Patent Center: An Electronic Acknowledgement Receipt is automatically generated and sent to the filer.

The MPEP states: ‘If a submitter desires a receipt for any item (e.g., paper or fee) filed in the USPTO by means other than the USPTO patent electronic filing system, it may be obtained by enclosing with the paper a self-addressed postcard specifically identifying the item.’ (MPEP 503)

The USPTO strongly recommends the following methods for filing new patent applications:

1. Electronic Filing System (EFS-Web or Patent Center): This is the preferred method whenever permitted.
2. Priority Mail Express®: If not filing electronically, use this method in accordance with 37 CFR 1.10 to secure the date of deposit as the filing date.
3. Hand-delivery to the USPTO office.

Avoid filing by first-class mail, as it only secures the date of receipt at the USPTO as the filing date, risking delays in delivery.

As stated in MPEP 511: “The Office strongly recommends that applicants file new applications by Priority Mail Express® in accordance with 37 CFR 1.10 (if such applications are not filed via EFS-Web) because such correspondence will be accorded the date of deposit in Priority Mail Express® with the USPS as the filing date.”

Additionally, “In general, applicants should consider filing new patent applications (as well as patent-related correspondence) via the USPTO patent electronic filing system (EFS-Web or Patent Center) whenever permitted.”

A return postcard serves as prima facie evidence of receipt by the USPTO of all items listed on the postcard. It should include detailed identifying information such as:

• Inventor’s name
• Application number (if known)
• Confirmation number (if known)
• Filing date
• Title of the invention
• Type of paper being filed
• Number of pages for each component

The MPEP states: ‘A postcard receipt which itemizes and properly identifies the items which are being filed serves as prima facie evidence of receipt in the USPTO of all the items listed thereon on the date stamped thereon by the USPTO.’ (MPEP 503)

No, you cannot use a Certificate of Mailing or Transmission for filing a new patent application to establish the application’s filing date. The MPEP explicitly states:

No benefit will be given to a Certificate of Mailing or Certificate of Facsimile Transmission relative to the filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date.

This restriction is also specified in 37 CFR 1.8(a)(2)(i)(A), which excludes “[t]he filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date” from the Certificate of Mailing or Transmission procedure.

However, it’s worth noting that new patent applications can be filed electronically via the USPTO’s Electronic Filing System (EFS-Web), which provides its own timestamp for filing date purposes.

If you fail to comply with the requirements for correcting micro entity status errors, as outlined in 37 CFR 1.29(k)(1) and (k)(2), the USPTO has two options:

1. Treat it as an authorization to process the deficiency payment and charge a processing fee
2. Require compliance within a non-extendable one-month period

The MPEP states: If the requirements of paragraphs (k)(1) and (2) of this section are not complied with, such failure will either be treated at the option of the Office as an authorization for the Office to process the deficiency payment and charge the processing fee set forth in § 1.17(i), or result in a requirement for compliance within a one-month time period that is not extendable under § 1.136(a) to avoid the return of the fee deficiency payment.

It’s important to carefully follow the requirements to avoid additional fees or potential loss of rights.

To learn more:

• Micro Entity
• Fee Correction
• Patent Fees
• USPTO Procedures

If the Certificate of Mailing or Transmission is omitted from a paper, the USPTO will treat the paper as though it was not received. According to MPEP 512:

“If the certification of mailing or transmission is omitted and the paper is later received by the U.S. Patent and Trademark Office, the paper will be considered as having been filed as of the date of receipt in the Office.”

This means that without the certificate, the paper’s filing date will be the actual date it’s received by the USPTO, which could potentially be later than intended and may have significant consequences for patent applications or other time-sensitive submissions.

To learn more:

• Certificate of Mailing
• Certificate of Transmission
• USPTO filing
• patent application

For papers that have been scanned into the Image File Wrapper (IFW) system, the USPTO has a specific procedure for ‘returning’ them. According to MPEP 508.02:

“If a paper has been scanned into the IFW, ‘return’ of the paper will be accomplished by the Office closing it in IFW.”

This means that instead of physically returning the paper, the USPTO will electronically close or restrict access to the document within the IFW system. This process maintains the integrity of the digital file while effectively ‘returning’ the document.

To learn more:

• Image File Wrapper
• IFW
• USPTO procedures
• Digital patent files

If an applicant disagrees with the USPTO’s refusal to grant a filing date for their patent application, they can request a review through the following process:

• File a petition to the USPTO, accompanied by the required petition fee
• Provide arguments and evidence supporting why the application should be granted the desired filing date
• If alleging no defect exists, include a request for a refund of the petition fee

The MPEP states: Any review of the refusal to grant a filing date as of the date of deposit of the application would be by way of petition, accompanied by the petition fee (37 CFR 1.17(f)). Petitioner should provide any arguments that he or she has that the items noted were not missing or that a filing date should be assigned in the absence of such items if they are believed to be unnecessary.

Petitions relating to filing dates are decided by the Office of the Deputy Commissioner for Patent Examination Policy. The petition should be marked to the attention of the Office of Petitions.

It’s important to act promptly if you believe a filing date has been incorrectly refused, as the filing date can have significant implications for patent rights.

For more information on patent application review, visit: patent application review.

To qualify for micro entity status, an applicant must meet the following requirements:

• Qualify as a small entity
• Not be named as an inventor on more than 4 previously filed patent applications
• Not have a gross income exceeding 3 times the median household income in the previous calendar year
• Not have assigned, licensed, or be obligated to assign or license rights to an entity that exceeds the gross income limit

Alternatively, an applicant can qualify if they are employed by or have assigned rights to an institution of higher education.

The USPTO is not open for filing correspondence on Saturdays, Sundays, or federal holidays within the District of Columbia. However, there are exceptions:

• Correspondence deposited as Priority Mail Express® with the USPS in accordance with 37 CFR 1.10 is considered filed on the date of deposit, even on weekends or holidays
• Electronic filing systems may be available 24/7, but the official filing date will be the next business day

MPEP 510 cites 37 CFR 1.6(a)(1): “The Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or Federal holiday within the District of Columbia.”

The USPTO requires that different matters be submitted in separate papers to avoid confusion and delays. This requirement is outlined in 37 CFR 1.4(c), which states:

Since different matters may be considered by different branches or sections of the Office, each distinct subject, inquiry or order must be contained in a separate paper to avoid confusion and delay in answering papers dealing with different subjects.

Key points to remember:

• Each distinct subject, inquiry, or order should be in a separate paper.
• This applies to both patent and trademark correspondence.
• Exceptions are allowed for subjects provided for on a single Office or World Intellectual Property Organization form.

If you submit multiple subjects in a single paper, the USPTO may use Form Paragraph 5.01.01 to notify you of the requirement for separate papers in future correspondence.

Adhering to this requirement helps ensure that your correspondence is processed efficiently by the appropriate Office branches or sections.

To learn more:

• USPTO correspondence
• separate papers
• patent applications
• trademark applications

The qualification of a subsidiary for small entity status depends on several factors. According to the MPEP:

A business concern or organization is affiliates of another concern or organization if, directly or indirectly, either one controls or has the power to control the other, or a third party or parties controls or has the power to control both.

This means that:

• If a subsidiary is controlled by a large entity, it generally cannot claim small entity status.
• The control can be direct (e.g., majority ownership) or indirect (e.g., through contractual arrangements).
• Even if the subsidiary meets the size standards on its own, affiliation with a large entity typically disqualifies it from small entity status.

However, there may be exceptions in complex corporate structures. It’s advisable to consult with a patent attorney to evaluate your specific situation and determine eligibility for small entity status.

To learn more:

• subsidiary
• large entity
• small entity status
• affiliation

Fraudulently establishing small entity status or paying fees as a small entity is considered a serious offense. According to 37 CFR 1.27(h): ‘Any attempt to fraudulently establish status as a small entity or pay fees as a small entity will be considered as a fraud practiced or attempted on the Office.’

The consequences of such actions can be severe, potentially including:

• Invalidation of the patent
• Criminal charges for fraud
• Disciplinary action against registered patent practitioners

It’s crucial to ensure that all claims to small entity status are truthful and accurate. Do not rely on oral advice from USPTO employees regarding entitlement to small entity status.

To learn more:

• small entity status
• fraud
• USPTO procedures
• patent law

Are there any fee reductions or waivers available for USPTO patent fees?

Yes, the USPTO offers fee reductions for certain applicants. According to MPEP 509, “Certain fees may be reduced if the applicant qualifies as a small entity or micro entity.” Here’s a brief overview:

• Small Entity: Individuals, small businesses, and nonprofit organizations may qualify for a 50% fee reduction.
• Micro Entity: Certain applicants may qualify for a 75% fee reduction if they meet specific income and filing requirements.

To determine if you qualify and for detailed information on how to claim these statuses, refer to MPEP 509.02 for Small Entity Status and MPEP 509.04 for Micro Entity Status. Always ensure you meet all requirements before claiming a reduced fee status.

To learn more:

• fee reduction
• small entity
• micro entity
• patent fees

What is the USPTO’s policy on federal holidays?

The USPTO observes federal holidays and has specific policies regarding correspondence and deadlines that fall on these days:

• The USPTO is closed on all federal holidays.
• Deadlines that fall on a federal holiday are extended to the next business day.
• Correspondence is not accepted or processed on federal holidays.

According to MPEP 502: ‘Federal holidays falling on Sunday will be observed on the following Monday.’ This means that when a federal holiday falls on a Sunday, the USPTO will be closed on the following Monday, and any deadlines will be extended accordingly.

It’s important for patent applicants and attorneys to be aware of the federal holiday schedule and plan their filings accordingly to avoid missing critical deadlines.

The USPTO assigns different series codes to various types of patent applications:

• 01/ – 16/: Nonprovisional applications (utility, plant, and reissue)
• 29/: Design applications
• 35/: International design applications
• 60/, 61/, and 62/: Provisional applications
• 90/: Ex parte reexamination proceedings
• 95/: Inter partes reexamination proceedings
• 96/: Supplemental examination proceedings and resulting ex parte reexamination proceedings

The MPEP provides a detailed breakdown of series codes for nonprovisional applications from 1925 to the present. For example, ‘Series code 16 is assigned to nonprovisional applications filed from June 2018 to present.’ (MPEP 503)

When a USPTO deadline falls on a weekend or holiday, the due date is automatically extended. According to MPEP 505, When the last day for taking any action or paying any fee in the Office falls on a Saturday, Sunday, or a Federal holiday within the District of Columbia, the action or the fee is considered timely if the action is taken or the fee is paid on the next succeeding business day.

This rule applies to various USPTO actions, including:

• Filing responses to Office Actions
• Paying maintenance fees
• Submitting other time-sensitive documents

It’s important to note that while the deadline is extended, the USPTO is still closed on these days for regular correspondence receipt.

For more information on patent procedure, visit: patent procedure.

For more information on USPTO deadlines, visit: USPTO deadlines.

Yes, you can request a refund if you establish small entity status after paying full fees, but there are strict time limits:

• You must file an assertion of small entity status and a refund request within 3 months of the date of the full fee payment
• This 3-month period cannot be extended

According to 37 CFR 1.28(a): “A refund pursuant to § 1.26, based on establishment of small entity status, of a portion of fees timely paid in full prior to establishing status as a small entity may only be obtained if an assertion under § 1.27(c) and a request for a refund of the excess amount are filed within three months of the date of the timely payment of the full fee. The three-month time period is not extendable under § 1.136.”

To learn more:

• small entity status
• patent fees
• refunds

To learn more:

• USPTO procedures

Can small entity status be changed during the patent process?

Yes, small entity status can be changed during the patent process. The MPEP 509.03 provides guidance on this: “Once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.” This means that:

• You can change from small entity to large entity at any time by simply paying the full fee.
• If you lose small entity status, you must notify the USPTO before or with the next fee payment.
• Changing from large entity to small entity requires a new certification of entitlement to small entity status.

It’s important to monitor your status throughout the patent process and update the USPTO promptly if changes occur to avoid potential issues.

To learn more:

• small entity status
• patent process
• status change
• USPTO requirements

Yes, you must assert small entity status separately for each related application. Specifically:

• Status must be established in each related, continuing, and reissue application
• Small entity status in one application does not affect the status of any other application or patent
• A new assertion is required for continuations, divisionals, continuations-in-part, and reissue applications

According to 37 CFR 1.27(c)(4): “Status as a small entity must be specifically established by an assertion in each related, continuing and reissue application in which status is appropriate and desired. Status as a small entity in one application or patent does not affect the status of any other application or patent, regardless of the relationship of the applications or patents. The refiling of an application under § 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under § 1.53(d)), or the filing of a reissue application, requires a new assertion as to continued entitlement to small entity status for the continuing or reissue application.”

To learn more:

• small entity status
• patent application
• related applications

If corrected drawings are not received within the set time period, the application will be processed for issue or publication based on the originally filed drawings. The failure to submit corrected drawings may result in the application being withdrawn from issue or the patent being printed with defective drawings.

What are the signature requirements for patent practitioners in correspondence with the USPTO?

Patent practitioners (e.g., registered attorneys or agents) must follow specific signature requirements when corresponding with the USPTO:

• They must personally sign correspondence using either a handwritten signature or an S-signature.
• An S-signature is inserted between forward slash marks and includes the practitioner’s name and registration number.
• The signature must comply with 37 CFR 1.4(d)(1) or 1.4(d)(2).

According to MPEP 502.02, ‘The signature of a practitioner on correspondence filed with the USPTO must be a handwritten signature or an S-signature personally signed by such practitioner.’ This ensures accountability and authenticity in patent-related communications.

To learn more:

• patent practitioner
• signature requirements
• USPTO correspondence
• S-signature
• handwritten signature

If you don’t possess any record of correspondence with the USPTO for an application, patent, or other proceeding that is the subject of an unlocatable file notice, you must still respond to the notice. According to 37 CFR 1.251(a)(3):

If applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding, applicant or patentee must comply with a notice under this section by providing a statement that applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding.

It’s crucial to provide this statement within the specified time period to avoid potential negative consequences, such as abandonment of a pending application or limitations on the certified copy of a granted patent file that the USPTO can produce.

To learn more:

• USPTO correspondence
• Patent records
• Application procedures
• Unlocatable files

What are the income limitations for qualifying as a micro entity?

To qualify as a micro entity based on income, an applicant’s gross income in the previous calendar year must not exceed three times the median household income as reported by the Bureau of the Census. The MPEP states:

“The income limit is not described in terms of a specific dollar amount because median household income may change from year to year.” (MPEP 509.04(a))

For the most current income threshold, applicants should check the USPTO’s website or consult with a patent attorney. It’s important to note that this limit applies to each applicant, inventor, and joint inventor who is named in the application.

To learn more:

• micro entity
• income limitations
• patent fees
• USPTO

How do I set up a deposit account with the USPTO?

To set up a deposit account with the USPTO:

1. Visit the USPTO Deposit Accounts page
2. Download and complete the Deposit Account Application Form
3. Submit the form with an initial deposit (minimum $1,000)
4. Wait for account approval and receive your account number

According to MPEP 509: ‘A deposit account may be established by submitting a completed Deposit Account Application Form with an initial deposit of at least $1,000.’ This account can be used for future fee payments, offering convenience for frequent USPTO transactions.

To learn more:

• deposit account
• USPTO
• patent fees
• application form

If there are variations in your signature across different patent documents, you should:

• Try to use a consistent signature for all patent correspondence to avoid confusion.
• Be prepared for the USPTO to require ratification or confirmation of the signature if there are significant variations.
• If asked to ratify, state that you personally signed the previously submitted document and, if needed, submit a compliant format of the signature.

According to the MPEP: “For consistency purposes, and to avoid raising a doubt as to who has signed, the same S-signature should be utilized each time, with variations of the signature being avoided.”

If the USPTO requires ratification, they may ask you to submit a statement or a duplicate document with a compliant signature. This helps ensure the authenticity of signatures and clarity of the record.

To learn more:

• Signature Variations
• Patent Correspondence
• Ratification
• Signature Consistency
• USPTO Requirements

No, foreign universities do not qualify as ‘institutions of higher education’ for the purpose of establishing micro entity status. This is because the definition is limited to institutions located in U.S. states or territories.

According to MPEP 509.04(b): “As previously stated, foreign universities do not qualify as an ‘institution of higher education’ for purposes of establishing micro entity status.”

Even if a foreign university offers online programs in the U.S., it still doesn’t qualify because the institution itself must be physically located in a U.S. state or territory as defined in the Higher Education Act of 1965.

To learn more:

• foreign universities
• micro entity status
• institution of higher education
• patent fees

If the drawings in a patent application are not in compliance with the rules, the Office of Patent Application Processing (OPAP) will send a Notice to File Corrected Application Papers. This notice gives the applicant a time period of 2 months from the mailing date to file corrected drawings. The time period is extendable under 37 CFR 1.136(a). If corrected drawings are not timely filed, the application will be held abandoned.

To access USPTO public information facilities:

• A valid Public User or Visitor’s badge is required
• Badges can be obtained from the Office of Security next to the Public Search Facility
• An On-line Service Card is required for access to all Public Search Facilities and on-line systems

MPEP 510 states: “A valid Public User or Visitor’s badge is required to enter USPTO facilities. This badge can be obtained from the Office of Security next door to the Public Search Facility located on the first floor of the Madison East Building, 600 Dulany Street, Alexandria, VA 22314.”

If correspondence with a Certificate of Mailing or Transmission is not received by the USPTO after a reasonable amount of time, you can take steps to notify the Office and provide evidence of the previous timely filing. According to 37 CFR 1.8(b):

In the event that correspondence is considered timely filed by being mailed or transmitted in accordance with paragraph (a) of this section, but not received in the U.S. Patent and Trademark Office after a reasonable amount of time has elapsed from the time of mailing or transmitting of the correspondence […] the correspondence will be considered timely if the party who forwarded such correspondence: (1) Informs the Office of the previous mailing or transmission of the correspondence promptly after becoming aware that the Office has no evidence of receipt of the correspondence; (2) Supplies an additional copy of the previously mailed or transmitted correspondence and certificate; and (3) Includes a statement that attests on a personal knowledge basis or to the satisfaction of the Director to the previous timely mailing, transmission or submission.

It’s recommended to check the private Patent Application Information Retrieval (PAIR) System first to see if the correspondence has been entered into the application file before notifying the Office.

There are two main ways to obtain a receipt for items filed with the USPTO:

1. For paper filings: Include a self-addressed postcard with your submission, itemizing all components being filed. The USPTO will stamp the receipt date on the postcard and return it.
2. For electronic filings via EFS-Web or Patent Center: An Electronic Acknowledgement Receipt is automatically generated and sent to the filer.

The MPEP states: ‘If a submitter desires a receipt for any item (e.g., paper or fee) filed in the USPTO by means other than the USPTO patent electronic filing system, it may be obtained by enclosing with the paper a self-addressed postcard specifically identifying the item.’ (MPEP 503)

The USPTO strongly recommends the following methods for filing new patent applications:

1. Electronic Filing System (EFS-Web or Patent Center): This is the preferred method whenever permitted.
2. Priority Mail Express®: If not filing electronically, use this method in accordance with 37 CFR 1.10 to secure the date of deposit as the filing date.
3. Hand-delivery to the USPTO office.

Avoid filing by first-class mail, as it only secures the date of receipt at the USPTO as the filing date, risking delays in delivery.

As stated in MPEP 511: “The Office strongly recommends that applicants file new applications by Priority Mail Express® in accordance with 37 CFR 1.10 (if such applications are not filed via EFS-Web) because such correspondence will be accorded the date of deposit in Priority Mail Express® with the USPS as the filing date.”

Additionally, “In general, applicants should consider filing new patent applications (as well as patent-related correspondence) via the USPTO patent electronic filing system (EFS-Web or Patent Center) whenever permitted.”

A return postcard serves as prima facie evidence of receipt by the USPTO of all items listed on the postcard. It should include detailed identifying information such as:

• Inventor’s name
• Application number (if known)
• Confirmation number (if known)
• Filing date
• Title of the invention
• Type of paper being filed
• Number of pages for each component

The MPEP states: ‘A postcard receipt which itemizes and properly identifies the items which are being filed serves as prima facie evidence of receipt in the USPTO of all the items listed thereon on the date stamped thereon by the USPTO.’ (MPEP 503)

No, you cannot use a Certificate of Mailing or Transmission for filing a new patent application to establish the application’s filing date. The MPEP explicitly states:

No benefit will be given to a Certificate of Mailing or Certificate of Facsimile Transmission relative to the filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date.

This restriction is also specified in 37 CFR 1.8(a)(2)(i)(A), which excludes “[t]he filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date” from the Certificate of Mailing or Transmission procedure.

However, it’s worth noting that new patent applications can be filed electronically via the USPTO’s Electronic Filing System (EFS-Web), which provides its own timestamp for filing date purposes.

If you fail to comply with the requirements for correcting micro entity status errors, as outlined in 37 CFR 1.29(k)(1) and (k)(2), the USPTO has two options:

1. Treat it as an authorization to process the deficiency payment and charge a processing fee
2. Require compliance within a non-extendable one-month period

The MPEP states: If the requirements of paragraphs (k)(1) and (2) of this section are not complied with, such failure will either be treated at the option of the Office as an authorization for the Office to process the deficiency payment and charge the processing fee set forth in § 1.17(i), or result in a requirement for compliance within a one-month time period that is not extendable under § 1.136(a) to avoid the return of the fee deficiency payment.

It’s important to carefully follow the requirements to avoid additional fees or potential loss of rights.

To learn more:

• Micro Entity
• Fee Correction
• Patent Fees
• USPTO Procedures

If the Certificate of Mailing or Transmission is omitted from a paper, the USPTO will treat the paper as though it was not received. According to MPEP 512:

“If the certification of mailing or transmission is omitted and the paper is later received by the U.S. Patent and Trademark Office, the paper will be considered as having been filed as of the date of receipt in the Office.”

This means that without the certificate, the paper’s filing date will be the actual date it’s received by the USPTO, which could potentially be later than intended and may have significant consequences for patent applications or other time-sensitive submissions.

To learn more:

• Certificate of Mailing
• Certificate of Transmission
• USPTO filing
• patent application

For papers that have been scanned into the Image File Wrapper (IFW) system, the USPTO has a specific procedure for ‘returning’ them. According to MPEP 508.02:

“If a paper has been scanned into the IFW, ‘return’ of the paper will be accomplished by the Office closing it in IFW.”

This means that instead of physically returning the paper, the USPTO will electronically close or restrict access to the document within the IFW system. This process maintains the integrity of the digital file while effectively ‘returning’ the document.

To learn more:

• Image File Wrapper
• IFW
• USPTO procedures
• Digital patent files