Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Here’s the complete FAQ:
MPEP 500 - Receipt and Handling of Mail and Papers (336)
For applications filed on or after September 16, 2012, the following parties can sign a written assertion of small entity status:
- The applicant
- A patent practitioner of record or acting in a representative capacity
- The inventor or a joint inventor, if the inventor is the applicant
- The assignee
According to 37 CFR 1.27(c)(2): “The written assertion can be signed by: (i) The applicant (§ 1.42 or § 1.421); (ii) A patent practitioner of record or a practitioner acting in a representative capacity under § 1.34; (iii) The inventor or a joint inventor, if the inventor is the applicant; or (iv) The assignee.”
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According to MPEP 509.04(c), a certification of micro entity status can be signed only by an authorized party as set forth in 37 CFR 1.33(b), which includes:
- A patent practitioner of record
- A patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34
- The applicant (37 CFR 1.42)
It’s important to note that “Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.”
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Small entity status should only be claimed after a thorough investigation has been completed and there is certainty about the entitlement. The MPEP 509.03(a) states: “Where entitlement to small entity status is uncertain, it should not be claimed.” It’s important to note that even paying the small entity basic filing fee constitutes an assertion of small entity status. Therefore, applicants should be certain of their status before making any payments or claims related to small entity status.
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While the USPTO generally discourages filing duplicate copies, there are situations where separate copies are necessary. According to MPEP 502.04:
Since each file must be complete in itself, a separate copy of every paper to be filed in a patent, patent file, or other proceeding must be furnished for each file to which the paper pertains, even though the contents of the papers filed in two or more files may be identical.
This means that if a document relates to multiple patent applications or proceedings, a separate copy must be submitted for each relevant file, even if the content is identical across all copies.
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According to MPEP 502.01, various types of patent-related correspondence can be transmitted by facsimile to the USPTO, including:
- Continued Prosecution Applications (CPAs) filed under 37 CFR 1.53(d) (for design applications only)
- Amendments
- Declarations
- Petitions
- Information Disclosure Statements (IDS)
- Terminal disclaimers
- Notices of appeal and appeal briefs
- Requests for Continued Examination (RCEs) under 37 CFR 1.114
- Assignment documents
- Issue fee transmittals
- Authorizations to charge deposit accounts
The MPEP states: “37 CFR 1.6(d) specifies the types of correspondence which may be transmitted by facsimile.” However, it’s important to note that certain types of correspondence are prohibited from being sent by fax, as outlined in 37 CFR 1.6(d)(2)-(7).
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According to MPEP 502.01, certain types of patent-related correspondence are prohibited from being sent by facsimile to the USPTO. These include:
- Documents required by statute to be certified (37 CFR 1.4(f))
- National patent application specifications and drawings for obtaining a filing date (except for CPAs under 37 CFR 1.53(d))
- International patent applications
- International design applications
- Documents for entering the national stage of an international application (37 CFR 1.495(b))
- Third-party submissions under 37 CFR 1.290
- Correspondence related to registration to practice before the USPTO in patent cases
- Color drawings (37 CFR 1.81, 1.83-1.85, 1.152, 1.165, 1.173, 1.437, or 1.1026)
- Requests for reexamination (37 CFR 1.510 or 37 CFR 1.913)
- Requests for supplemental examination (37 CFR 1.610)
- Correspondence for patent applications under secrecy orders (37 CFR 5.1-5.5)
- Most correspondence for contested cases or trials before the Patent Trial and Appeal Board
The MPEP states: “As a courtesy, the Office will attempt to notify senders whenever correspondence is sent to the Office by facsimile transmission that falls within one of the prohibitions.” However, it’s crucial to avoid submitting prohibited correspondence by fax, as it will not be accorded a receipt date.
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For the purpose of micro entity status, the following types of patent applications count towards the application filing limit:
- Previously filed U.S. nonprovisional applications (utility, design, plant, continuation, and divisional)
- Previously filed U.S. reissue applications
- Previously filed U.S. national stage applications under the Patent Cooperation Treaty (PCT)
- Previously filed international design applications under the Hague agreement that designate the U.S.
The MPEP states: “All such applications naming the inventor or a joint inventor are counted toward the application filing limit, whether the applications were filed before, on, or after March 19, 2013.“
Applications that do not count towards the limit include:
- Foreign applications
- International (PCT) applications for which the basic U.S. national stage filing fee was not paid
- Provisional applications
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The following types of patent applications and documents can be filed via EFS-Web:
- Provisional patent applications under 35 U.S.C. 111(b)
- Nonprovisional utility patent applications under 35 U.S.C. 111(a)
- Nonprovisional design patent applications under 35 U.S.C. 111(a)
- International applications filed under the PCT in the United States Receiving Office
- National stage submissions under 35 U.S.C. 371
- International design applications filed under the Hague Agreement
- Requests for ex parte reexamination for utility or design patents
- Requests for supplemental examination for utility, design, or plant patents
- Third-party preissuance submissions under 35 U.S.C. 122(e)
- Citation of prior art and written statements in patent files under 37 CFR 1.501
Follow-on documents can also be filed via EFS-Web for existing applications by registered users.
OPAP may object to and require corrected drawings within a set time period for several issues. According to the MPEP, these include:
- Line quality that is too light to be reproduced
- Illegible text
- Missing lead lines
- Excessive text or non-English text
- Incorrect margins or paper size
- Improper figure labeling
- Illegible photographs that could be illustrated by ink drawings
- Color drawings or photographs without a proper petition
For example, regarding line quality, MPEP 507 states:
“OPAP may object to and require corrected drawings within a set time period, if the drawings: (A) have a line quality that is too light to be reproduced (weight of all lines and letters must be heavy enough to permit adequate reproduction) or text that is illegible (reference characters, sheet numbers, and view numbers must be plain and legible). See 37 CFR 1.84(l) and (p)(1)“
For more information on drawing requirements, visit: drawing requirements.
For more information on OPAP, visit: OPAP.
For more information on patent drawings, visit: patent drawings.
While the Certificate of Mailing or Transmission procedure is useful for many types of USPTO correspondence, there are several exceptions. According to 37 CFR 1.8(a)(2), the procedure does not apply to:
- Filing of national patent application specifications and drawings for the purpose of obtaining an application filing date
- Filing of correspondence in an international application before the U.S. Receiving Office, U.S. International Searching Authority, or U.S. International Preliminary Examining Authority
- Filing of an international design application
- Filing a copy of an international application and the basic national fee to enter the national stage
- Filing a written declaration of abandonment under 37 CFR 1.138
It’s crucial to note that these exceptions exist to ensure certain critical documents are actually received by the USPTO before they are considered filed.
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While MPEP 508.02 doesn’t specify the types of communications that might be received after a patent is granted, it does indicate that some communications may still be relevant to the record. The section states:
“After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender.”
This implies that certain communications might still become part of the record. These could include:
- Maintenance fee payments
- Requests for correction of errors in the patent
- Reissue applications
- Supplemental examination requests
However, any communication not related to these or other official post-grant procedures would likely be returned.
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To determine small entity status for a business, several steps should be taken:
- Review whether the business meets the definition of a small business concern under section 3 of the Small Business Act.
- Check if the business meets the size standards in 13 CFR 121.801 through 121.805 for eligibility for reduced patent fees.
- Investigate if the business has assigned, granted, conveyed, or licensed any rights in the invention to others.
- If rights have been transferred, conduct the same review for each other entity involved.
The MPEP 509.03(a) emphasizes: “If small entity status is desired on the basis that the entity is a small business concern, the investigation should include a review of whether the business is a small business concern as defined by section 3 of the Small Business Act.”
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If there’s a discrepancy between the filing date accorded by the USPTO and the “date accepted” on the Priority Mail Express® mailing label, you can file a petition under 37 CFR 1.10(c). MPEP 513 states that such a petition should:
- Be filed promptly after becoming aware of the discrepancy
- Include evidence that the Priority Mail Express® number was placed on the correspondence before mailing
- Include a true copy of the Priority Mail Express® mailing label showing the “date accepted”
The petition should be filed as soon as the discrepancy is noticed to ensure timely correction of the filing date.
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.
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If you have filed correspondence with a proper Certificate of Mailing or Transmission, but the USPTO has not received it after a reasonable amount of time, you can take action under 37 CFR 1.8(b). The MPEP states:
“37 CFR 1.8(b) permits a party to notify the Office of a previous mailing through the U.S. Postal Service, or transmission by facsimile or EFS-Web, of correspondence when a reasonable amount of time has elapsed from the time of mailing or transmission of the correspondence.”
To rectify this situation:
- Promptly notify the Office of the previous mailing or transmission
- Supply a duplicate copy of the previously mailed or transmitted correspondence
- Provide a statement attesting to the previous timely mailing or transmission
It’s important to act quickly once you become aware that the Office has not received your correspondence, rather than waiting until the end of the reply period.
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If you’ve misused a Certificate of Mailing or Transmission, it’s important to address the issue promptly and honestly. The USPTO takes the integrity of these certificates seriously. The MPEP states:
Misuse of a Certificate of Mailing under 37 CFR 1.8 or improperly claiming the benefit of 37 CFR 1.10 which appears to be more than a one-time, inadvertent error should be brought to the attention of the Office of Enrollment and Discipline.
If the misuse was a one-time, inadvertent error, you should:
- Notify the USPTO as soon as you become aware of the error.
- Provide a full explanation of the circumstances.
- If possible, submit the correct documentation or information.
- Be prepared for the possibility that your submission may be considered late, which could have consequences for your application or proceeding.
For repeated or intentional misuse, the matter may be referred to the Office of Enrollment and Discipline, which could result in more serious consequences. It’s always best to use Certificates of Mailing or Transmission carefully and honestly to maintain the integrity of the patent application process.
If you lose entitlement to small entity status, you must notify the USPTO before or at the time of paying the earliest of the issue fee or any maintenance fee due after the change. According to 37 CFR 1.27(g)(2): ‘notification of any change in status resulting in loss of entitlement to small entity status be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity is no longer appropriate.’
This notification should be a specific written assertion, not just payment of a non-small entity fee. For example, when paying the issue fee, you should:
- Check the appropriate box on Part B of the PTOL-85 form to indicate the change in entity status
- Pay the fee amount for a non-small entity
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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.
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If you cannot file your patent application electronically or by Priority Mail Express® due to an emergency, consider the following options:
- Use first-class mail with a Certificate of Mailing under 37 CFR 1.8
- Hand-deliver the application to the USPTO, if possible
- If the emergency is a designated postal service interruption, follow the specific instructions provided by the USPTO on their website or in the Official Gazette
Remember that the provisions for postal emergencies only apply to actual USPS service interruptions, not other circumstances like computer failures or office inaccessibility.
As stated in MPEP 511: “Applicants are cautioned that the provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) to (i) only apply to postal interruptions and emergencies. The provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) to (i) do not provide for granting of a filing date to correspondence as of the date on which it would have been filed but for other exigencies, such as the unavailability of a computer or word processing equipment, or the inaccessibility of an office or building other than a USPS facility.”
A small entity for purposes of paying reduced patent fees is defined in 37 CFR 1.27(a) as:
- A person
- A small business concern
- A nonprofit organization
Each of these categories has specific criteria that must be met to qualify for small entity status. For example, a person must not have assigned, granted, conveyed, or licensed any rights in the invention to a non-small entity.
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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 has established a Patent Internet Usage Policy that governs email communications with patent applicants. According to MPEP 502.03, ‘Communications via Internet email are at the discretion of the applicant.’ However, there are specific requirements and limitations:
- A written authorization from the applicant is required for USPTO employees to communicate via email.
- All Internet communications must be made using USPTO tools.
- Without written authorization, the USPTO will not respond to Internet correspondence containing confidential information.
It’s important to note that ‘A reply to an Office action or a paper requiring a signature may NOT be communicated by applicant to the USPTO via Internet email even if written authorization is on record.’
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The United States Patent and Trademark Office (USPTO) generally discourages the filing of duplicate copies of correspondence in patent applications, patents, or other proceedings. According to MPEP 502.04:
The filing of duplicate copies of correspondence in the file of an application, patent, or other proceeding should be avoided, except in situations in which the Office requires the filing of duplicate copies.
The USPTO may dispose of duplicate copies to streamline processing. However, it’s important to note that separate copies are required for different files, even if the content is identical.
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To qualify for micro entity status based on an institution of higher education, the applicant must first meet the small entity requirement. This means that every party holding rights in the application must qualify as a small entity under 37 CFR 1.27.
MPEP 509.04(b) states: “In order to meet the small entity requirement, every party holding rights in the application must qualify as a small entity under 37 CFR 1.27. If any rights in the application are assigned, granted, conveyed, or licensed to a party that does not qualify as a small entity under 37 CFR 1.27, the applicant cannot qualify for any patent fee discount.”
This requirement ensures that only truly small entities benefit from the micro entity status, even when associated with an institution of higher education.
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A patent practitioner plays a crucial role in signing micro entity certifications. According to MPEP 509.04(c), a patent practitioner can sign a micro entity certification in two capacities:
- As a patent practitioner of record
- As a patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34
Moreover, for juristic entities, “Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.” This includes micro entity certifications for corporate assignees or other organizational parties under 37 CFR 1.46.
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The USPTO requires that different matters be submitted in separate papers to ensure efficient processing. This requirement is outlined in MPEP 501, which cites 37 CFR 1.4(c):
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.
This means that if you have multiple requests or inquiries for the USPTO, each should be submitted on its own separate document. For example, a petition and an information disclosure statement should not be combined into a single paper.
If an applicant submits a single paper containing distinct subjects, the USPTO may use the following form paragraph to notify them:
The [1] submitted [2] should have been submitted as a separate paper as required by 37 CFR 1.4(c). The paper has been entered. However, all future correspondence must comply with 37 CFR 1.4.
Adhering to this requirement helps ensure that your correspondence is processed efficiently and reaches the appropriate department within the USPTO.
For more information on patent office procedures, visit: patent office procedures.
For more information on USPTO correspondence, visit: USPTO correspondence.
The receipt date for facsimile transmissions to the USPTO is determined according to specific rules outlined in MPEP 502.01:
The date of receipt accorded to any correspondence permitted to be sent by facsimile transmission, including a continued prosecution application (CPA) filed under 37 CFR 1.53(d), (available for design applications only) is the date the complete transmission is received by an Office facsimile unit, unless the transmission is completed on a Saturday, Sunday, or Federal holiday within the District of Columbia.
If the transmission is completed on a weekend or federal holiday in DC, the receipt date will be the next business day. For example, if a fax is completed at 9:05 p.m. Pacific time on a Friday, it would be received around 12:05 a.m. Eastern time on Saturday. The receipt date would then be the following Monday (assuming it’s not a federal holiday).
It’s important to note that the Certificate of Transmission under 37 CFR 1.8 can be used for certain documents to consider them timely filed on the date of transmission, even if received later by the USPTO.
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The PTO-948 form, also known as the ‘Drawing Informalities’ form, serves the following purposes in patent applications:
- It is used by the Office of Patent Application Processing (OPAP) to indicate that the drawings submitted with the application are informal but acceptable for publication purposes.
- It notifies the examiner that the drawings may need to be corrected or replaced with formal drawings during examination.
- It provides a record in the file wrapper that the drawings have been provisionally accepted.
As stated in MPEP 507: ‘If the drawings are informal but otherwise in compliance with 37 CFR 1.121(d), the OPAP will accept the application for purposes of publication and place a ‘Drawing Informalities’ form PTO-948 in the file wrapper.’
This form helps streamline the application process by allowing examination to proceed while flagging the need for potential drawing improvements later in the process.
For more information on OPAP, visit: OPAP.
The USPTO requires separate copies of correspondence for different patent files to ensure that each file is complete and self-contained. According to MPEP 502.04:
Since each file must be complete in itself, a separate copy of every paper to be filed in a patent, patent file, or other proceeding must be furnished for each file to which the paper pertains, even though the contents of the papers filed in two or more files may be identical.
This requirement serves several purposes:
- It ensures that each file contains all relevant documents without relying on cross-referencing between files.
- It facilitates independent processing and review of each application or proceeding.
- It maintains the integrity and completeness of individual patent files, which is crucial for legal and administrative purposes.
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The Office of Patent Application Processing (OPAP) performs an initial review of drawings in new utility and plant patent applications to determine whether the drawings can be effectively scanned for publication purposes. As stated in the MPEP:
“OPAP inspects the drawings to see if they can be effectively scanned and adequately reproduced.”
This review ensures that the drawings meet the necessary quality standards for publication and reproduction.
For more information on drawing review, visit: drawing review.
For more information on OPAP, visit: OPAP.
The primary purpose of drawing review in OPAP is to determine whether the drawings in new utility and plant patent applications can be effectively scanned for publication purposes. As stated in MPEP 507:
The Office of Patent Application Processing (OPAP) performs an initial review of drawings in new utility and plant patent applications to determine whether the drawings can be effectively scanned for publication purposes.
It’s important to note that design applications are not subject to this review as they are not published.
An attorney docket number is used by law firms and companies to internally track and manage patent applications. While it’s not required by the USPTO, it can be included on application documents for reference. However, there are limitations:
- Must be limited to a maximum of 25 characters
- Spaces, slashes, and hyphens are not included in the entered docket number on the official filing receipt
- For docket numbers beginning with ‘CASE’ or ‘NAVY-CASE’, only characters after these prefixes are entered
The MPEP states: ‘Attorney docket numbers must be limited to a maximum of 25 characters to prevent truncation. The USPTO system data base allows a maximum of 25 characters for the attorney docket numbers.’ (MPEP 503)
A self-addressed postcard serves as a receipt and provides evidence of the items submitted to the USPTO with a patent application. According to MPEP 503, the postcard should itemize all components of the application, including:
- Inventor’s name(s)
- Title of invention
- Number of pages of specification, claims, and sheets of drawing
- Whether the inventor’s oath or declaration is included
- List of additional forms included
- Amount and manner of paying the fee
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.”
It’s important to note that the postcard must be properly itemized to serve as evidence of receipt. Simply listing “a complete application” is not sufficient. Each component should be specifically listed on the postcard.
For applications filed via EFS-Web, an Electronic Acknowledgment Receipt serves as the electronic equivalent of a postcard receipt.
For more information on patent application filing, visit: patent application filing.
For more information on USPTO submission, visit: USPTO submission.
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)
The purpose of a certificate of mailing or transmission in patent applications is to provide evidence of timely filing when correspondence is not received by the USPTO or is received late. As stated in MPEP 512:
The Certificate of Mailing or Transmission procedure does not apply to papers mailed in a foreign country.
This procedure allows applicants to prove that they submitted their correspondence on time, even if it’s delayed or lost in transit.
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If OPAP objects to the drawings in a patent application, there is a specific process for submitting corrected drawings. The MPEP states:
“If OPAP objects to the drawings and sends applicant a Notice requiring submission of corrected drawings within a set time period (usually two months), corrected drawings must be filed, in paper, to the mailing address set forth in the Notice, along with any other items required by OPAP, to avoid abandonment of the application. No fee will be necessary for filing corrected drawings which are required by OPAP.”
It’s important to note that the corrected drawings must be submitted in paper form to the specific mailing address provided in the Notice. Applicants should ensure they meet the deadline (typically two months) to avoid potential abandonment of their application.
For more information on corrected drawings, visit: corrected drawings.
For more information on OPAP, visit: OPAP.
For more information on patent procedure, visit: patent procedure.
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.
When the USPTO cannot locate a patent or application file after a reasonable search, they follow the procedure outlined in 37 CFR 1.251. The key steps are:
- The Office notifies the applicant or patentee about the unlocatable file.
- A time period is set for the applicant or patentee to comply with the notice.
- The applicant or patentee must respond by either:
- Providing a copy of their record of all correspondence with the Office (except U.S. patent documents)
- Producing their record for the Office to copy
- Stating that they do not possess any record of the correspondence
As stated in MPEP 508.04, “37 CFR 1.251 sets forth a procedure for the reconstruction of the file of a patent application, patent, or any other patent-related proceeding that cannot be located after a reasonable search.”
When a patent or application file cannot be located after a reasonable search, the USPTO has a specific procedure outlined in 37 CFR 1.251. The Office will notify the applicant or patentee and set a time period for compliance with one of the following options:
- Provide a copy of all correspondence records between the Office and the applicant/patentee, along with a list and a statement of completeness.
- Produce the applicant’s/patentee’s records for the Office to copy, along with a statement of completeness.
- If no records are possessed, provide a statement to that effect.
The MPEP states, 37 CFR 1.251 sets forth a procedure for the reconstruction of the file of a patent application, patent, or any other patent-related proceeding that cannot be located after a reasonable search.
For pending applications, failure to comply within the set time period will result in abandonment of the application.
For more information on file reconstruction, visit: file reconstruction.
For more information on USPTO procedures, visit: USPTO procedures.
What is the minimum deposit amount required to open a USPTO deposit account?
The minimum deposit amount required to open a USPTO deposit account is $1,000. According to MPEP 509.01, “A minimum deposit of $1,000 is required when an account is opened, and a minimum balance of $1,000 is required to be maintained in the account.” This initial deposit ensures that the account has sufficient funds to cover potential fees and charges.
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The mailing address for trademark-related correspondence is:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
This address should be used for all trademark-related documents filed on paper, except for certain specific documents as outlined in the regulations.
According to 37 CFR 2.190: In general, trademark documents to be delivered by the USPS must be addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
It’s important to note that many trademark documents can and should be filed electronically through the Trademark Electronic Application System (TEAS).
To learn more:
The mailing address for trademark applications and trademark-related papers filed on paper is:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
This address should be used for all trademark-related documents filed on paper, except for:
- Documents sent to the Assignment Recordation Branch for recordation
- Requests for copies of trademark documents
- Certain documents filed under the Madrid Protocol as specified in 37 CFR 2.190(e)
According to 37 CFR 2.190(a): “In general, trademark documents to be delivered by the USPS must be addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.”
What is the limit on the number of previously filed patent applications for micro entity status?
For micro entity status, an applicant must not have been named as an inventor on more than four previously filed patent applications. The MPEP states:
“The applicant has not been named as an inventor on more than 4 previously filed patent applications, other than applications filed in another country, provisional applications under 35 U.S.C. 111(b), or international applications for which the basic national fee under 35 U.S.C. 41(a) was not paid.”
This limit helps ensure that micro entity status is reserved for truly small-scale inventors or businesses. It’s important to note that certain types of applications, such as provisional applications and international applications where the basic national fee wasn’t paid, don’t count towards this limit.
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The institution of higher education basis allows applicants to qualify for micro entity status if:
- The applicant’s employer, from which the applicant obtains the majority of their income, is an institution of higher education as defined in the Higher Education Act of 1965, or
- The applicant has assigned, granted, conveyed, or is obligated to assign, grant or convey, a license or ownership interest in the application to such an institution of higher education.
The applicant must also qualify as a small entity. This basis is implemented in 37 CFR 1.29(d).
The general mailing address for patent-related correspondence is:
Commissioner for Patents
P.O. Box 1450
Alexandria, Virginia 22313-1450
This address should be used for patent applications, replies to notices of informality, requests for extension of time, notices of appeal, and other patent-related matters processed by organizations reporting to the Commissioner for Patents.
As stated in the MPEP: Correspondence in patent-related matters under the direction of the Commissioner for Patents should be addressed to: Commissioner for Patents P.O. Box 1450 Alexandria, Virginia 22313-1450
To learn more:
The general mailing address for patent-related correspondence is:
Commissioner for Patents
P.O. Box 1450
Alexandria, Virginia 22313-1450
This address is used for various patent-related documents, including:
- Patent applications
- Replies to notices of informality
- Requests for extension of time
- Notices of appeal to the Patent Trial and Appeal Board
- Requests for reexamination
- Petitions to the Commissioner for Patents
As stated in MPEP 501: “Correspondence in patent-related matters under the direction of the Commissioner for Patents should be addressed to: Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.”
For more information on patent application filing, visit: patent application filing.
For more information on patent correspondence, visit: patent correspondence.
The general mailing address for patent applications and patent-related papers is:
Commissioner for Patents
P.O. Box 1450
Alexandria, Virginia 22313-1450
This address should be used for correspondence including patent applications, replies to notices of informality, requests for extension of time, notices of appeal, briefs, requests for oral hearings, applications for patent term extensions, reexamination requests, statutory disclaimers, certificates of correction, petitions, and other patent-related correspondence processed by organizations reporting to the Commissioner for Patents.
As stated in MPEP 501: “Correspondence in patent-related matters under the direction of the Commissioner for Patents should be addressed to: Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450”
What is the filing date for applications properly filed under 37 CFR 1.10 (Priority Mail Express)?
For applications properly filed under 37 CFR 1.10 using Priority Mail Express, the filing date is the date the application was deposited with the U.S. Postal Service. The MPEP states:
For applications properly filed under 37 CFR 1.10, the filing date is the date that the application was deposited as Priority Mail Express® in the U.S. Postal Service. For example, if a new patent application is deposited in Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date.
If the proper procedures were not followed, the application will receive a filing date as of the date it was received in the USPTO.
For applications properly filed using Priority Mail Express® (formerly Express Mail) through the U.S. Postal Service, the filing date is the date of deposit with the postal service. The MPEP states:
“For applications properly filed under 37 CFR 1.10, the filing date is the date that the application was deposited as Priority Mail Express® in the U.S. Postal Service.”
This means that even if the application is deposited on a Saturday, and the U.S. Postal Service marks it with a Saturday date, the USPTO will accord and stamp the correspondence with the Saturday date.
However, if the proper procedures for using Priority Mail Express® were not followed, the application will receive a filing date as of the date it was received in the USPTO. Any dispute regarding the filing date in such cases would require a petition, as explained in the MPEP:
“Any review of these matters would be by way of petition, accompanied by the petition fee (37 CFR 1.17(f)), providing whatever arguments and evidence petitioner has that the application is entitled to a filing date as of the date it was deposited as Priority Mail Express®.”
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The duty to investigate entitlement to claim small entity status refers to the obligation of patent applicants to thoroughly investigate all facts and circumstances before determining their actual entitlement to small entity status. According to MPEP 509.03(a), “applicants need to do a complete and thorough investigation of all facts and circumstances before making a determination of actual entitlement to small entity status.” This investigation is crucial to ensure that small entity status is claimed only when appropriate.
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While both the Certificate of Mailing (37 CFR 1.8) and Priority Mail Express (37 CFR 1.10) procedures can be used to establish timely filing of USPTO correspondence, they have some key differences:
- Certificate of Mailing can be used with any class of mail, while Priority Mail Express is a specific USPS service.
- Certificate of Mailing uses the date of deposit with USPS as the filing date, while Priority Mail Express uses the date of deposit as shown by the “date accepted” on the mailing label.
- Certificate of Mailing cannot be used for new patent applications, while Priority Mail Express can establish a filing date for new applications.
- Certificate of Mailing requires a signed certificate, while Priority Mail Express requires the mailing label to be affixed to the correspondence.
The MPEP notes: “New patent applications filed in accordance with 37 CFR 1.10 will be stamped by the Office with the date of deposit as Priority Mail Express® with the United States Postal Service.”
Both procedures have specific requirements and limitations, so it’s important to consult the full text of 37 CFR 1.8 and 37 CFR 1.10 when deciding which to use.
What is the difference between small entity and micro entity status?
While both small entity and micro entity statuses offer reduced patent fees, they have distinct eligibility criteria:
- Small Entity Status:
- Available to individuals, small businesses (fewer than 500 employees), and non-profit organizations
- Offers a 50% reduction in most patent fees
- Micro Entity Status:
- More stringent requirements, including income limitations and limits on the number of previously filed patent applications
- Offers a 75% reduction in most patent fees
As per MPEP 509.03, “Small entity status entitles applicants to a fifty-percent reduction in a number of patent fees.” Micro entity status, while not explicitly covered in this section, provides even greater fee reductions for those who qualify.
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MPEP 509.04(c) mentions two types of micro entity certifications:
- Micro entity certification on the gross income basis
- Micro entity certification on the institution of higher education basis
While the specific requirements for each basis are not detailed in this section, it’s important to note that the signing requirements are the same for both types. The certification “can be signed only by an authorized party as set forth in 37 CFR 1.33(b).” This includes patent practitioners and applicants, as detailed in other FAQs.
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As of July 28, 2013, the United States Postal Service (USPS) renamed ‘Express Mail’ to ‘Priority Mail Express’. According to MPEP 511:
“Effective July 28, 2013, the United States Postal Service (USPS) changed the name of ‘Express Mail’ to ‘Priority Mail Express.’ All characteristics of the ‘Priority Mail Express’ service are the same as those of the former ‘Express Mail’ service (although the mailing labels differ).”
This change is important for patent applicants to note, as the USPTO’s rules and procedures now refer to ‘Priority Mail Express’ instead of ‘Express Mail’. However, the service characteristics and benefits for patent filings remain the same. When using this service for USPTO correspondence, ensure you use the correct addresses as specified in 37 CFR 1.1 and avoid using the ‘Hold for Pickup’ option, as the USPTO does not pick up mail.
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A small business concern, for the purpose of paying reduced patent fees, is defined as follows:
A small business concern as used in this paragraph means any business concern that:
- Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify for small entity status as a person, small business concern, or nonprofit organization.
- Meets the size standards set forth in 13 CFR 121.801 through 121.805 to be eligible for reduced patent fees.
The size standards vary by industry and are based on factors such as average annual receipts or number of employees. It’s important to consult the specific SBA guidelines for your industry to determine if your business qualifies as a small entity.
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What is the definition of a ‘small business concern’ for small entity status?
According to MPEP 509.02, a small business concern is defined as follows:
“A small business concern, as used in this chapter, means any business concern that:
- (i) Has not assigned, granted, conveyed, or licensed (and is under no obligation to do so) any rights in the invention to any person who made it and could not be classified as an independent inventor, or to any concern which would not qualify as a non-profit organization or a small business concern under this section, and
- (ii) Does not have as a party to the patent application any individual who has assigned, granted, conveyed, or licensed (or is under an obligation to do so) any rights in the invention to any person who made it and could not be classified as an independent inventor, or to any concern which would not qualify as a non-profit organization or a small business concern under this section.”
This definition ensures that the small business concern maintains control over the invention rights and has not transferred them to entities that do not qualify for small entity status.
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The United States Patent and Trademark Office (USPTO) stamps correspondence received with the date of receipt, known as the ‘Office Date’ stamp. This applies to papers and fees received through various methods:
- Mail (except Priority Mail Express®)
- Facsimile
- EFS-Web
- Hand-carried to the Customer Service Window
As stated in the MPEP: The United States Patent and Trademark Office (Office) stamps papers and fees received through the mail (other than those submitted by Priority Mail Express® in accordance with 37 CFR 1.10), by facsimile, or via EFS-Web with the date of their receipt in the Office.
The USPTO requires a security code for credit card payments made through its website. According to MPEP 509:
Credit card payment submissions made on the USPTO website at www.uspto.gov must include the 3-digit or 4-digit security code associated with the credit card in addition to the credit card number. The security code will not be required when the paper Credit Card Payment Form (PTO-2038) or other written authorization is submitted.
Key points about the security code requirement:
- It’s part of an authentication procedure to reduce fraudulent or unauthorized credit card use.
- The code verifies that the physical card is in the cardholder’s possession.
- For DISCOVER®, MASTERCARD®, and VISA®, it’s a 3-digit code on the back of the card.
- For AMERICAN EXPRESS®, it’s a 4-digit code on the front of the card.
- If you can’t read the security code, contact your card issuer.
This requirement enhances security for online transactions but doesn’t apply to paper submissions using Form PTO-2038.
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The Credit Card Payment Form (PTO-2038) is a specific form provided by the USPTO for making credit card payments for patent and trademark process fees. According to MPEP 509:
Credit Card Payment Form (PTO-2038) should be used when paying a patent process or trademark process fee (or the fee for an information product) by credit card, unless the payment is being made using the USPTO patent electronic filing system.
Key points about the form:
- It can be downloaded from the USPTO website at www.uspto.gov/PatentForms.
- It’s not required (and should not be used) when making credit card payments via EFS-Web or other electronic filing systems.
- Using this form helps keep credit card information confidential, as the USPTO does not include it among records open to public inspection.
Failure to use this form when submitting a paper credit card payment may result in the credit card information becoming part of the public record.
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What is the Certificate of Mailing procedure for USPTO filings?
The Certificate of Mailing procedure is a method that allows applicants to establish the date of filing for correspondence sent to the USPTO. As explained in MPEP 501:
‘Under the procedure, correspondence is considered as being timely filed if (A) the correspondence is mailed or transmitted prior to expiration of the set period for response by being: (1) Addressed as set out in 37 CFR 1.1(a) and deposited with the U.S. Postal Service with sufficient postage as first class mail; or (2) Transmitted by facsimile to the Patent and Trademark Office in accordance with 37 CFR 1.6(d); or (3) Transmitted via the Office electronic filing system in accordance with 37 CFR 1.6(a)(4); and (B) the correspondence includes a certificate for each piece of correspondence stating the date of deposit or transmission.’
This procedure is particularly useful for ensuring timely filing when using postal services. It’s important to note that the certificate must be signed by the person depositing or transmitting the correspondence.
For more information on Certificate of Mailing, visit: Certificate of Mailing.
For more information on electronic filing, visit: electronic filing.
The central facsimile number for patent application-related correspondence at the USPTO is (571) 273-8300. According to MPEP 502.01:
All patent application related correspondence transmitted by facsimile must be directed to the central facsimile number, with a few exceptions below. The central facsimile number is (571) 273-8300.
This central number should be used for most patent-related correspondence, including replies to Office actions and after-final amendments. However, there are specific exceptions for certain types of correspondence that should be sent to other facsimile numbers, as outlined in the MPEP.
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The application size fee is an additional fee that applies to patent applications with specifications and drawings exceeding 100 sheets of paper. The MPEP states:
37 CFR 1.16(s) sets forth the application size fee for any application (including any reissue applications) filed under 35 U.S.C. 111, the specification and drawings of which exceed 100 sheets of paper. The calculation of the number of sheets excludes any “Sequence Listing”, computer readable form (CRF) of a “Sequence Listing”, or a “Computer Program Listing Appendix” filed in an American Standard Code for Information Interchange (ASCII) plain text file or any “Sequence Listing XML” filed in an eXtensible Markup Language (XML) file on a read-only optical disc or via the USPTO patent electronic filing system in compliance with the rules.
The fee applies for each additional 50 sheets or fraction thereof over 100 sheets. This fee must be paid within the time period set by the USPTO to avoid abandonment of the application.
The USPTO offers an additional fee reduction for small entities that file patent applications electronically. According to MPEP 509.02:
The Consolidated Appropriations Act, 2005, provides that the filing fee charged under 35 U.S.C. 41(a)(1)(A) shall be reduced by 75 percent with respect to its application to any small entity ‘if the application is filed by electronic means as prescribed by the Director’ (35 U.S.C. 41(h)(3)).
This 75% reduction applies specifically to the filing fee for nonprovisional original utility applications filed electronically by small entities on or after December 8, 2004. It’s important to note that this enhanced reduction does not apply to design applications, plant applications, reissue applications, or provisional applications.
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The ‘Office Date’ stamp is used by the USPTO to mark the receipt date of papers and fees. According to MPEP 505, The United States Patent and Trademark Office (Office) stamps papers and fees received through the mail (other than those submitted by Priority Mail Express® in accordance with 37 CFR 1.10), by facsimile, or via EFS-Web with the date of their receipt in the Office.
The ‘Office Date’ stamp is crucial because:
- It establishes the filing date for new patent applications that include the necessary components (see 37 CFR 1.53(b)-(d))
- It determines the timeliness of actions and fee payments
For hand-carried papers, date stamping occurs at the Customer Service Window.
For more information on Office Date stamp, visit: Office Date stamp.
For more information on USPTO, visit: USPTO.
Small entity status allows certain applicants to pay reduced patent fees. To claim small entity status, you must make an assertion of entitlement in one of two ways:
- Submit a written assertion signed by the applicant, a patent practitioner, an inventor, or an assignee
- Pay the exact small entity basic filing fee, basic national fee, or individual designation fee
As stated in 37 CFR 1.27(c): “Any party (person, small business concern or nonprofit organization) should make a determination, pursuant to paragraph (f) of this section, of entitlement to be accorded small entity status based on the definitions set forth in paragraph (a) of this section, and must, in order to establish small entity status for the purpose of paying small entity fees, actually make an assertion of entitlement to small entity status, in the manner set forth in paragraphs (c)(1) or (c)(3) of this section, in the application or patent in which such small entity fees are to be paid.”
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When notifying the USPTO of a loss of micro entity status, the following requirements must be met:
- The notification must be filed in the application or patent prior to paying, or at the time of paying, any fee after the date on which micro entity status is no longer appropriate.
- The notification must be signed by a party identified in 37 CFR 1.33(b).
- A simple statement that the applicant is no longer eligible for micro entity status is sufficient, without identifying specific reasons.
As stated in MPEP 509.04(e): Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate.
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PSTAR stands for Patents Service for Time and Application Routing. According to MPEP 504, PSTAR is “the program [that] assigns each nonprovisional application to an examiner.” This system is used by the United States Patent and Trademark Office (USPTO) to efficiently distribute patent applications to the appropriate examiners for review.
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Priority Mail Express® is a service offered by the United States Postal Service (USPS) that can be used to establish a filing date for patent applications and other correspondence with the USPTO. As stated in MPEP 513:
The statutory authority for the granting of a filing date based on the date of deposit for correspondence sent by Priority Mail Express® and received by the Office is found in section 21(a) of Title 35 of the United States Code.
Using Priority Mail Express® allows applicants to receive a filing date as of the date the correspondence was deposited with USPS, rather than the date it was received by the USPTO.
What is an S-signature in USPTO correspondence and how is it formatted?
An S-signature is an electronic signature used in correspondence with the USPTO. According to MPEP 502.02, an S-signature must be formatted as follows:
- Inserted between forward slash marks: /John Doe/
- Include the signer’s name
- For registered practitioners, include their registration number
- The signer’s name can be printed or typed
- The signature must comply with 37 CFR 1.4(d)(2)
For example, a proper S-signature for a registered patent attorney might look like this:
/John Q. Attorney, Reg. No. 12345/
This format allows for efficient electronic filing while maintaining the legal weight of a signature.
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An S-signature is an electronically created signature used in patent correspondence. According to MPEP 502.02:
An S-signature is a signature inserted between forward slash marks, but not a handwritten signature as defined by 37 CFR 1.4(d)(1). An S-signature includes any signature made by electronic or mechanical means, and any other mode of making or applying a signature other than a handwritten signature as provided for in 37 CFR 1.4(d)(1).
S-signatures must meet specific requirements to be considered valid:
- They must be between two forward slash marks
- They can include letters, numbers, and punctuation marks
- They must be personally inserted by the signer
- They must be reasonably specific to the signer
S-signatures provide a convenient way for applicants and practitioners to sign documents electronically while maintaining the legal weight of a handwritten signature.
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An S-signature is a type of electronic signature used in USPTO correspondence. According to MPEP 501, which cites 37 CFR 1.4(d)(2):
An S-signature is a signature inserted between forward slash marks, but not a handwritten signature as defined by paragraph (d)(1) of this section. An S-signature includes any signature made by electronic or mechanical means, and any other mode of making or applying a signature other than a handwritten signature.
Key requirements for an S-signature include:
- It must consist only of letters, Arabic numerals, or both, with appropriate punctuation.
- The signer must insert their own S-signature with a single forward slash mark before and after the signature.
- For patent practitioners, their registration number must be included with or near the S-signature.
- The signer’s name must be presented in printed or typed form near the S-signature.
Example of a proper S-signature: /John D. Smith/
S-signatures can be used for most USPTO correspondence filed electronically or by facsimile.
For more information on USPTO correspondence, visit: USPTO correspondence.
An application number consists of a series code and a serial number. It is assigned by the Office of Patent Application Processing (OPAP) immediately after mail has been opened. For applications filed using the USPTO patent electronic filing system, EFS-Web provides an Acknowledgement Receipt containing a time and date stamp, application number, and confirmation number.
The MPEP states: ‘Application numbers consisting of a series code and a serial number are assigned by the Office of Patent Application Processing (OPAP) immediately after mail has been opened.’ (MPEP 503)
What is a USPTO deposit account and how does it work?
A USPTO deposit account is a pre-established account that allows for convenient payment of fees to the United States Patent and Trademark Office. According to MPEP 509:
“A deposit account is a convenient method for individuals or firms to establish a pre-paid account with the USPTO to facilitate the payment of fees.”
Here’s how USPTO deposit accounts work:
- You deposit funds into the account in advance
- Fees can be automatically deducted from the account when filing applications or paying other fees
- Minimum balance requirements apply (currently $1,000 for individuals, $5,000 for law firms)
- Account holders receive monthly statements
- Useful for frequent filers or those managing multiple applications
To open a deposit account, you need to complete Form PTO-2232 and submit it to the USPTO with an initial deposit. This method can streamline fee payments and reduce the risk of insufficient fee issues.
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A USPTO deposit account is a convenient method for attorneys and the general public to pay fees and order services from the U.S. Patent and Trademark Office. To establish a deposit account:
- Pay the fee for establishing a deposit account as per 37 CFR 1.21(b)(1)
- Make a minimum deposit of $1,000 for general use
- Alternatively, make a minimum deposit of $300 for a restricted subscription deposit account used exclusively for subscription orders of patent copies
As stated in the MPEP: For the convenience of attorneys, and the general public in paying any fees due, in ordering services offered by the Office, copies of records, etc., deposit accounts may be established in the Patent and Trademark Office upon payment of the fee for establishing a deposit account § 1.21(b)(1).
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What is a provisional patent application and how does it differ from a nonprovisional application?
A provisional patent application is a type of patent application that allows inventors to establish an early filing date for their invention. Key differences between provisional and nonprovisional applications include:
- Provisional applications are not examined and automatically expire after 12 months
- Provisional applications require fewer formal components than nonprovisional applications
- Provisional applications cannot directly result in a granted patent
The MPEP states: A provisional application will not be examined. However, a provisional application which does not include a cover sheet (37 CFR 1.51(c)(1)), which may be an application data sheet (37 CFR 1.76) or a cover letter, identifying the application as a provisional application, will be treated as a nonprovisional application filed under 37 CFR 1.53(b).
To obtain a filing date, a provisional application must include:
- A specification as prescribed by 35 U.S.C. 112(a)
- Any necessary drawings
- The appropriate filing fee
Inventors often use provisional applications to secure an early filing date while allowing additional time to prepare a more comprehensive nonprovisional application.
For more information on nonprovisional application, visit: nonprovisional application.
For more information on patent application types, visit: patent application types.
For more information on provisional application, visit: provisional application.
A filing receipt is an official document issued by the USPTO that contains important information about a patent application. According to MPEP 503, the filing receipt includes:
- Application number
- Filing date
- Confirmation number
- Suggested U.S. Patent Classification class
- Art unit where the application is likely to be examined
- Continuing data (if applicable)
- National stage data (if applicable)
- Foreign priority data (if applicable)
- Foreign filing license data (if applicable)
- Entity status information
- Anticipated publication date under 35 U.S.C. 122(b)
The MPEP states: “The filing receipt represents the official assignment by the USPTO of a specific application number and confirmation number to a particular application.” It’s important to review the filing receipt for accuracy, especially regarding inventor and applicant names, benefit and priority claims, and any nonpublication requests.
For more information on application number, visit: application number.
For more information on confirmation number, visit: confirmation number.
For more information on filing receipt, visit: filing receipt.
A confirmation number is a four-digit number assigned to each newly filed patent application. It is used in combination with the application number to verify the accuracy of the application number on correspondence filed with the USPTO. This helps avoid misidentification due to transposition errors.
The MPEP states: ‘The confirmation number is a four-digit number that is assigned to each newly filed application. The confirmation number, in combination with the application number, is used to verify the accuracy of the application number placed on correspondence filed with the Office to avoid misidentification of an application due to a transposition error in the application number.’ (MPEP 503)
A confirmation number is a four-digit number assigned by the USPTO to each newly filed patent application. According to MPEP 503, the confirmation number serves several important purposes:
- It is used in combination with the application number to verify the accuracy of the application number on correspondence filed with the Office.
- It helps avoid misidentification of an application due to transposition errors in the application number.
- It is included on the filing receipt, Office actions, and other USPTO communications.
- It is required when submitting an electronic copy of the application for publication to verify the correct application.
The MPEP recommends: “The Office also recommends that applicants include the application’s confirmation number (in addition to the application number) on all correspondence submitted to the Office concerning the application.”
The confirmation number can be found in the upper left-hand corner of the filing receipt and is also available through the Patent Application Information Retrieval (PAIR) system.
For more information on application number, visit: application number.
For more information on confirmation number, visit: confirmation number.
For more information on USPTO correspondence, visit: USPTO correspondence.
A Certificate of Mailing or Transmission is a procedure under 37 CFR 1.8 that allows correspondence to be considered timely filed with the USPTO if it meets certain conditions. As stated in the MPEP:
“Under 37 CFR 1.8, a person may state on certain papers directed to the Office (some exceptions are stated in 37 CFR 1.8), the date on which the paper will be deposited in the United States Postal Service, transmitted by facsimile or transmitted via the USPTO electronic filing system (EFS-Web). If the date stated is within the period for reply, the reply in most instances will be considered to be timely.”
This procedure can be crucial for meeting deadlines, even if the actual receipt of the correspondence by the USPTO occurs after the deadline.
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According to 37 CFR 1.29(k)(1), the itemization for a micro entity fee deficiency payment must include:
- Each type of fee erroneously paid as a micro entity
- The current fee amount for a small or non-small entity
- The micro entity fee actually paid and the date of payment
- The deficiency owed amount for each fee
- The total deficiency payment owed
The MPEP specifies: The paper must contain an itemization of the total deficiency payment and include the following information: (1) each particular type of fee that was erroneously paid as a micro entity, (e.g., basic statutory filing fee, two-month extension of time fee) along with the current fee amount for a small or non-small entity; (2) the micro entity fee actually paid, and the date on which it was paid; (3) the deficiency owed amount (for each fee erroneously paid); and (4) the total deficiency payment owed, which is the sum or total of the individual deficiency owed amounts.
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A certificate of mailing for USPTO correspondence must include specific information to be valid. According to MPEP 512, the following information is required:
- The date of deposit or transmission
- The application number (for patent applications)
- A statement that the correspondence is being deposited with the USPS or transmitted to the USPTO
- The signature of the person depositing or transmitting the correspondence
The MPEP states:
The certificate must state that the correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail, or transmitted to the Office on the date of the certificate.
Ensure all these elements are included to make your certificate of mailing valid and effective.
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A patent filing receipt includes:
- Application number
- Filing date
- Confirmation number
- Suggested class in the U.S. Patent Classification System
- Art unit number where the application is likely to be examined
- Continuing data (if applicable)
- National stage data (if applicable)
- Foreign priority data (if applicable)
- Foreign filing license data (if applicable)
- Entity status information
- Anticipated publication date under 35 U.S.C. 122(b)
The MPEP states: ‘The filing receipt includes the application number, filing date, a confirmation number, a suggested class in the U.S. Patent Classification System (see MPEP § 902.01), and the number of an art unit where the application is likely to be examined.’ (MPEP 503)
A patent application filing receipt contains crucial information about the application. According to the MPEP:
‘A filing receipt is mailed to the attorney or agent, if any, otherwise to the applicant, for each application filed.’
The filing receipt typically includes:
- The application number
- Filing date
- Title of the invention
- Names of the applicants
- Name and registration number of the attorney or agent (if applicable)
- Entity status for fee purposes
- Correspondence address
- List of documents submitted with the application
It’s important to review the filing receipt carefully for accuracy, as it serves as official confirmation of the application’s details and can be used to identify any discrepancies or issues that need to be addressed promptly.
For more information on filing receipt, visit: filing receipt.
According to MPEP 508.02, “After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender. 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 any documents received after a patent is granted or an application is abandoned will not be added to the official record. Instead, they will be either physically returned to the sender or, if already scanned into the Image File Wrapper (IFW) system, electronically closed within the system.
According to MPEP 508.02, after a patent application is either patented or abandoned, any incoming communication that is not intended to become part of the official record will be returned to the sender. The MPEP states:
“After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender.”
This procedure ensures that the official patent file remains accurate and contains only relevant information after the application process has concluded.
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When you notify the USPTO of a loss of micro entity status, you are automatically treated as a small entity by default, unless specified otherwise. As stated in MPEP 509.04(e):
A notification that micro entity status is no longer appropriate will not be treated as a notification that small entity status is also no longer appropriate unless it also contains a notification of loss of entitlement to small entity status under § 1.27(f)(2) [§ 1.27(g)(2)].
To change to regular (unreduced) fee status, you must either:
- File a notification of loss of entitlement to micro entity status along with regular unreduced fees or an indication of loss of entitlement to small entity status, or
- File a separate notification of loss of entitlement to small entity status.
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After a patent is granted or an application is abandoned, the USPTO has specific procedures for handling incoming communications. According to the MPEP, After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender.
In the case of digital documents, the MPEP states, 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 the document will be marked as closed in the digital system, effectively removing it from active consideration.
For more information on post-grant communications, visit: post-grant communications.
For more information on USPTO procedures, visit: USPTO procedures.
What happens if there’s an error in my application number?
If you notice an error in your application number, it’s crucial to contact the USPTO immediately. The MPEP states, Any error in the identification of the application number will result in processing delays.
(MPEP 503) To avoid such delays:
- Double-check the application number on your filing receipt
- If you find an error, contact the Application Assistance Unit at (571) 272-4000
- Provide the correct application number and any supporting documentation
Prompt action can help ensure your application is processed correctly and efficiently.
For more information on application number, visit: application number.
For more information on error correction, visit: error correction.
In the event of a postal interruption or emergency, the USPTO will take the following actions:
- Place an announcement on the USPTO website at www.uspto.gov
- Publish a notice in the Official Gazette
These communications will provide instructions about filing patent applications and other patent-related papers. As stated in MPEP 511:
“In the event of a postal interruption or emergency, an announcement will be placed on the USPTO website at www.uspto.gov and a notice will be published in the Official Gazette, providing instructions about the filing of patent applications, and other papers related to patent applications and patents.”
This ensures that applicants have clear guidance on how to proceed during such circumstances.
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In the event of a postal interruption or emergency:
- An announcement will be placed on the USPTO website at www.uspto.gov
- A notice will be published in the Official Gazette
- These communications will provide instructions about filing patent applications and other papers related to patent applications and patents
The USPTO Director may prescribe rules considering papers or fees filed on the date they would have been deposited with the USPS, but for postal service interruptions or emergencies.
As stated in MPEP 511: “In the event of a postal interruption or emergency, an announcement will be placed on the USPTO website at www.uspto.gov and a notice will be published in the Official Gazette, providing instructions about the filing of patent applications, and other papers related to patent applications and patents.”
If there’s a discrepancy between the USPTO’s date stamp and the date on the correspondence, the USPTO’s date stamp is generally considered the official receipt date. However, if an applicant can provide clear evidence that the correspondence was received earlier than the date indicated by the USPTO’s stamp, the earlier date may be recognized as the official receipt date. This situation might occur due to clerical errors or delays in processing incoming mail.
What happens if there are insufficient funds when paying USPTO fees?
If there are insufficient funds when paying USPTO fees, several consequences may occur:
- The fee payment will be considered incomplete.
- Your application or request may not be processed.
- You may incur additional fees or penalties.
- In some cases, you might lose filing date benefits.
The MPEP 509 warns, “If the Office receives a check drawn on a deposit account with insufficient funds, the fee will be considered unpaid.” For electronic payments, “If the electronic fund transfer is refused, or if the credit card is declined or invalid, the fee will be considered unpaid.” It’s crucial to ensure sufficient funds are available to avoid these issues and potential delays in your patent or trademark process.
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What happens if there are insufficient funds in my USPTO deposit account?
If there are insufficient funds in your USPTO deposit account to cover a fee, the following occurs:
- The USPTO will treat the fee as unpaid
- Any associated filing may be considered incomplete
- You may receive a notice of insufficient funds
The MPEP clearly states: “An overdrawn account will be immediately suspended and no charges will be accepted against it until the balance is restored.” (MPEP 509.01)
To avoid this situation, it’s crucial to maintain sufficient funds in your account and regularly monitor your balance. If your account becomes overdrawn, you’ll need to restore the balance before any further charges can be processed.
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If the USPTO receives a document without a date of receipt stamp, the Office will assign the document a date of receipt based on other evidence. This may include:
- The date of receipt indicated on an Express Mail label
- The date of deposit indicated on a certificate of mailing
- The date of transmission indicated on a certificate of transmission
- Other corroborating evidence, such as a postmark on an envelope
In cases where no other evidence is available, the USPTO may assign the date of receipt as the date the document was matched with the file wrapper.
If the USPTO cannot locate a file after a reasonable search, they will notify the applicant or patentee and set a time period for compliance. According to 37 CFR 1.251(a), the applicant or patentee must respond by:
- Providing a copy of their record of correspondence with the USPTO
- Producing their record for the USPTO to copy
- Stating that they do not possess any record of correspondence
The specific requirements are outlined in the notice and must be followed to avoid potential consequences.
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If an applicant pays an insufficient fee to the USPTO, the Office will notify the applicant and provide an opportunity to submit the remaining balance. According to MPEP 509:
If the fee paid by the applicant is insufficient, either because the notice specified an incorrect dollar amount for the fee or because of a fee increase effective after the mailing of the notice and before payment of the fee by the applicant, the applicant should be notified in writing by the Office of the fee insufficiency and given a new time period in which to submit the remaining balance.
The notification will include:
- The reason for the additional fee requirement
- An explanation of why the original fee was incorrect or insufficient
- A new time period for submitting the remaining balance
This process helps ensure that applicants have a fair opportunity to complete their fee payments and avoid abandonment of their applications due to fee issues.
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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.
If the date of receipt stamp is illegible or missing, the USPTO will make every effort to determine the correct date of receipt. This may involve examining other evidence, such as postmarks, electronic filing receipts, or other documentation. If the correct date cannot be determined, the USPTO may use the date it was discovered that the document was received as the date of receipt. Applicants should always ensure that their submissions are properly dated and stamped to avoid potential issues with filing dates.
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.
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If OPAP objects to the drawings in a patent application, the following process occurs:
- OPAP sends a Notice to the applicant requiring submission of corrected drawings.
- The Notice typically sets a time period of two months for response.
- Corrected drawings must be filed in paper form to the mailing address specified in the Notice.
- No fee is required for filing the corrected drawings requested by OPAP.
MPEP 507 states:
If OPAP objects to the drawings and sends applicant a Notice requiring submission of corrected drawings within a set time period (usually two months), corrected drawings must be filed, in paper, to the mailing address set forth in the Notice, along with any other items required by OPAP, to avoid abandonment of the application. No fee will be necessary for filing corrected drawings which are required by OPAP.
It’s crucial to respond within the set time period to avoid potential abandonment of the application.
If your USPTO deposit account becomes overdrawn, several consequences may occur:
- Account Suspension: The MPEP states,
An overdrawn account will be immediately suspended and no charges will be accepted against it until a proper balance is restored, together with a payment of $10 (37 CFR 1.21(b)(1)) to cover the work done by the U.S. Patent and Trademark Office incident to suspending and reinstating the account and dealing with charges which may have been made in the meantime.
- Additional Surcharges: If there’s an authorization to charge a basic filing fee to an overdrawn account, a surcharge under 37 CFR 1.16(f) is required in addition to the basic filing fee.
- Potential Abandonment: The MPEP warns,
Failure to timely pay the filing fee and surcharge will result in abandonment of the application.
- Account Closure: Repeated overdrafts may lead to account closure.
If an account is suspended repeatedly it will be closed.
To avoid these issues, always maintain sufficient funds in your deposit account and monitor your account balance regularly.
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What happens if my USPTO deposit account balance falls below the minimum?
If your USPTO deposit account balance falls below the minimum required balance of $1,000, there are consequences. According to MPEP 509.01, “An account holder who does not maintain the minimum balance will be notified and given a reasonable time to restore the account to the minimum balance.” If the account is not replenished:
- The USPTO may close the account.
- Any fees charged against the account may be treated as unpaid.
- This could potentially affect the status of your patent applications or other USPTO services.
It’s crucial to monitor your account balance regularly and replenish it promptly when it approaches the minimum to avoid any disruptions in service or potential issues with your patent applications.
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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.
What happens if I wrongly claim small entity status?
Wrongly claiming small entity status can have serious consequences. According to MPEP 509.03:
“Improperly and with intent to deceive establishing status as a small entity, or paying fees as a small entity, shall be considered as a fraud practiced or attempted on the Office.”
The consequences of fraudulently claiming small entity status may include:
- Requirement to pay all fee deficiencies
- Possible invalidation of the patent
- Potential legal action for fraud
If you discover an error in your small entity claim, it’s crucial to promptly notify the USPTO and pay any fee deficiencies. Honest mistakes, if corrected in good faith, are generally not considered fraud.
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What happens if I overpay a patent fee to the USPTO?
If you overpay a patent fee to the USPTO, you may be eligible for a refund. The MPEP 509 states: ‘In the event that an amount is paid by mistake or in excess of that required, a refund may be made only if a petition for refund is filed within 2 years after the date the fee was paid.’
To request a refund:
- File a petition for refund within 2 years of the payment date
- Clearly explain the reason for the overpayment
- Provide evidence of the overpayment
It’s important to note that not all overpayments are automatically refunded, so proactive action is necessary to recover excess fees.
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What happens if I overpaid fees due to incorrect micro entity status?
If you paid fees as a non-micro entity when you were actually entitled to micro entity status, resulting in an overpayment, you may be eligible for a refund. The MPEP 509.04(f) states:
“A refund based upon establishment of micro entity status may only be obtained if an assertion of micro entity status, in compliance with 37 CFR 1.29(a), is filed within the time period set forth in 37 CFR 1.29(k) … The time period set forth in 37 CFR 1.29(k) is: the later of 1) three months from the date of the fee payment claimed to be in error; or 2) the processing of a request for refund.”
To request a refund:
- File a compliant micro entity certification
- Submit a timely refund request
- Ensure you meet the time constraints specified in 37 CFR 1.29(k)
It’s important to act promptly if you believe you’ve overpaid due to an incorrect entity status.
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What happens if I lose micro entity status during the patent process?
If you lose micro entity status during the patent process, you must notify the USPTO promptly. The MPEP states:
“A micro entity that no longer meets the requirements for micro entity status at a point in time when a fee is due is treated as a small entity for purposes of paying the fee if the applicant or patentee is otherwise eligible for small entity status.”
This means:
- You must file a notification of loss of entitlement to micro entity status.
- If you still qualify as a small entity, you can pay fees at the small entity rate.
- If you no longer qualify as a small entity, you must pay fees at the standard (large entity) rate.
It’s important to note that continuing to pay fees at the micro entity rate when you no longer qualify can result in the patent being held unenforceable. For more details, refer to MPEP 509.04(e).
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If you lose entitlement to micro entity status, you must:
- File a notification of loss of entitlement to micro entity status in the application or patent
- Pay the required fee in the small entity or undiscounted amount, as appropriate
The notification must be filed prior to or at the time of paying the earliest fee after the date on which status as a micro entity is no longer appropriate. As stated in 37 CFR 1.29(i): ‘Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate.’
What happens if I fail to notify the USPTO about loss of micro entity status?
Failing to notify the USPTO about the loss of micro entity status can have serious consequences. The MPEP warns:
“Fraudulent assertion of micro entity status is considered a fraud practiced or attempted on the Office.” (MPEP 509.04(f))
Consequences may include:
- Invalidation of the patent application or granted patent
- Disciplinary action against registered practitioners
- Criminal penalties under 18 U.S.C. 1001
It’s crucial to promptly notify the USPTO if you lose eligibility for micro entity status to avoid these severe consequences.
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If you erroneously pay small entity fees in good faith, you can correct the error by:
- Submitting a separate deficiency payment for each application or patent
- Itemizing the deficiency payment with specific details
- Paying the full deficiency amount owed
As stated in 37 CFR 1.28(c): “If status as a small entity is established in good faith, and fees as a small entity are paid in good faith, in any application or patent, and it is later discovered that such status as a small entity was established in error, or that through error the Office was not notified of a loss of entitlement to small entity status as required by § 1.27(g)(2), the error will be excused upon: compliance with the separate submission and itemization requirements of paragraphs (c)(1) and (c)(2) of this section, and the deficiency payment requirement of paragraph (c)(2) of this section.”
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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:
- Treat it as an authorization to process the deficiency payment and charge a processing fee
- 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.
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If drawings are not received with a patent application, the following process occurs:
- The application is assigned a filing date if it meets the minimum requirements under 37 CFR 1.53(b) or 1.53(d).
- The Office of Patent Application Processing (OPAP) will send a Notice of Omitted Items giving the applicant a time period to file the missing drawings and a petition under 37 CFR 1.182 with the petition fee to have the filing date changed to the date of such filing.
- If the applicant does not respond to the Notice of Omitted Items, the application will be processed without the drawings.
As stated in the MPEP 507: ‘If drawings are not received with the application, the application is assigned a filing date and the applicant is notified to file drawings within a set time period.’
For more information on drawings, visit: drawings.
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 an applicant does not receive an application number within one month of filing, they should contact the Application Assistance Unit. The MPEP states:
‘If an application number is not received within one month of the filing date, applicant should contact the Application Assistance Unit at (571) 272-4000 or (888) 786-0101.’
This contact information is provided to ensure applicants can follow up on their application status in a timely manner. It’s important to note that this one-month period is a guideline for when applicants should take action if they haven’t received their application number.
For more information on Application Assistance Unit, visit: Application Assistance Unit.
For more information on application number, visit: application number.
What happens if an applicant’s income exceeds the micro entity threshold during pendency?
If an applicant’s income exceeds the micro entity threshold during the pendency of an application, they must notify the USPTO and change their status. The MPEP 509.04(a) states:
“A micro entity certification in an application will remain in effect until the applicant submits a notification of loss of entitlement to micro entity status under 37 CFR 1.29(i).”
Applicants are required to notify the USPTO of any change in status before paying any fee after the change. Failure to do so may result in:
- Underpayment of fees
- Loss of micro entity status
- Potential invalidation of the patent if issued
It’s crucial to monitor income and update the USPTO promptly if the micro entity threshold is exceeded.
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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 a patent application is missing essential parts, such as the specification, drawings, or claims, the USPTO will notify the applicant of the missing elements. According to MPEP 506:
‘Applicant will be notified of the incomplete application and the time period set for submitting the omitted parts.’
The applicant will then have an opportunity to submit the missing parts within the specified time period to complete the application.
For more information on incomplete application, visit: incomplete application.
For more information on missing parts, visit: missing parts.
For more information on patent application requirements, visit: patent application requirements.
If a patent application is filed without all the pages of the specification, the USPTO will notify the applicant of the missing parts. The MPEP refers to this situation:
See MPEP § 601.01(d)-(g) where the application is filed without all the pages of the specification, without at least one claim (nonprovisional design application), without drawings, or without all the figures of the drawings.
For applications filed before September 16, 2012, a supplemental oath or declaration by the inventor may be required to identify the missing item and indicate that it accurately describes the invention. For applications filed on or after September 16, 2012, an additional oath or declaration is generally not required.
The applicant will be given a time period to submit the missing pages. If the missing pages are not submitted within the specified time, the application may be deemed incomplete and not accorded a filing date until the missing parts are received.
If a patent application is filed with informal papers (e.g., typed on both sides of the paper, not permanent, legible, or reproducible), the USPTO will still accord a filing date if the application otherwise meets the requirements. The MPEP states:
OPAP accords a filing date, as of the date indicated by the “Office Date” stamp (see MPEP § 505), to application papers which include a specification containing a description and at least one claim (nonprovisional applications filed under 37 CFR 1.53(b) prior to March 18, 2013 and design applications), and a drawing, if necessary under 35 U.S.C. 113 (first sentence) and 37 CFR 1.53(b), but are informal because they do not comply with the rules or notices.
The USPTO will send a Notice requiring correction of the informality. Failure to correct the informality within the specified time will result in abandonment of the application.
If a nonprovisional patent application is filed without all required fees, the USPTO will send a notice to the applicant. According to the MPEP:
Filing dates are accorded to nonprovisional applications filed under 37 CFR 1.53(b) submitted without the… required fees (basic filing fee, and search and examination fees (for applications filed on or after December 8, 2004))… In such cases, a notice is mailed by OPAP requiring the appropriate fees… accompanied by a surcharge (37 CFR 1.16(f)).
The applicant will be given a time period (usually two months) to pay the missing fees and surcharge to avoid abandonment of the application.
If a drawing is not included with the application but is required for a complete disclosure of the invention, the Office of Patent Application Processing (OPAP) will send a Notice to File Missing Parts giving the applicant a time period of two months from the mailing date of the Notice to file the missing drawing(s). The time period may be extended under 37 CFR 1.136(a).
If a drawing is not acceptable for publication, the Office of Patent Application Processing (OPAP) will object to the drawing and notify the applicant. The applicant will be given a time period of two months from the mail date of the Notice to file acceptable drawings. This period is extendable under 37 CFR 1.136(a) or (b) for patent applications filed under 35 U.S.C. 111, but not for design applications filed under 35 U.S.C. 171. Failure to comply with the Notice within the time period will result in abandonment of the application.
The U.S. Patent and Trademark Office provides a specific form for certifying micro entity status based on an institution of higher education. This form is PTO/SB/15B.
MPEP 509.04(b) states: “The Office’s form PTO/SB/15B contains the certifications under 37 CFR 1.29(d) that are required to establish micro entity status on the institution of higher education basis.”
The form includes two signature blocks corresponding to the two alternative requirements under 37 CFR 1.29(d)(2):
- Certifying that the applicant’s employer, from which they obtain the majority of their income, is an institution of higher education.
- Certifying that the applicant has assigned, granted, or conveyed a license or other ownership interest in the application to an institution of higher education (or is obligated to do so).
Applicants should use this form to properly certify their micro entity status based on an institution of higher education.
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A USPTO deposit account can be used to pay various fees related to patent applications and services. According to the MPEP:
Filing, issue, appeal, international-type search report, international application processing, international design application fees, petition, and post-issuance fees may be charged against these accounts if sufficient funds are on deposit to cover such fees.
Specifically, fees that can be charged include:
- Filing fees (37 CFR 1.16)
- Processing fees (37 CFR 1.17)
- Issue fees (37 CFR 1.18, subject to certain conditions)
- Appeal fees
- International application fees
- Petition fees
However, fees under 37 CFR 1.19 (document supply fees), 1.20 (post-issuance fees), and 1.21 (miscellaneous fees) generally cannot be charged through a general authorization, with some exceptions.
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Micro entities receive a 75% reduction on many USPTO fees, including:
- Filing fees (nonprovisional and provisional)
- Search fees
- Examination fees
- Issue fees
- Appeal fees
- Maintenance fees
- Patent Trial and Appeal Board fees
The micro entity discount applies to most fees ‘for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents.’
To prove a filing delay due to a postal emergency, applicants must provide sufficient evidence. According to MPEP 511:
The nature of the evidence required by the Office to establish that the paper was timely filed will depend upon the circumstances of the particular emergency and the nature of the filing.
This evidence may include:
- Documentation of the postal service interruption or emergency
- Proof of attempted mailing during the affected period
- Explanation of how the emergency directly impacted the filing
- Any official notices or bulletins related to the postal disruption
The USPTO will evaluate each case individually to determine if the delay was indeed caused by the designated emergency.
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When filing entity status notifications in EFS-Web, it is strongly recommended to use the following document descriptions as appropriate:
- Notification of loss of entitlement to small entity status
- Notification of loss of entitlement to micro entity status
Using these specific document descriptions helps ensure that your notifications are properly categorized and processed by the USPTO. This recommendation is provided in MPEP 509.04(e) to facilitate efficient handling of entity status changes.
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The filing date of a patent application is determined by the ‘Office Date’ stamp, provided the application includes all necessary components for a filing date. The MPEP states:
If an application as originally filed includes the necessary components for a filing date (see 37 CFR 1.53(b)-(d) and MPEP § 506), the ‘Office Date’ stamp establishes the ‘filing date.’
This means that the date stamped on the application by the USPTO becomes the official filing date, as long as all required elements are present. It’s crucial for applicants to ensure their submissions are complete to secure the earliest possible filing date.
A complete patent application for filing date purposes must include:
- A specification containing a description as per 37 CFR 1.71
- At least one claim (for nonprovisional design applications only) as per 37 CFR 1.75
- Any drawings required by 37 CFR 1.81(a)
As stated in the MPEP: “The filing date of the provisional or nonprovisional application is the date of receipt in the Office of the application which includes a specification containing description pursuant to 37 CFR 1.71 and at least one claim (required for nonprovisional design applications only) pursuant to 37 CFR 1.75, and any drawings required by 37 CFR 1.81(a).”
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When signing patent correspondence, the signer is making certain certifications, including:
- The presentation of any paper to the USPTO constitutes a certification under 37 CFR 11.18(b).
- For S-signatures, the person inserting the signature certifies that the inserted signature is their own.
- When submitting a document signed by another person, the submitter certifies they have a reasonable basis to believe the signature is appropriate.
As stated in 37 CFR 1.4(d)(4)(i): “The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any paper by a party, whether a practitioner or non-practitioner, constitutes a certification under 37 CFR 11.18(b) of this chapter.”
Violations of these certifications may result in sanctions under 37 CFR 11.18(c) and (d).
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What are the USPTO’s guidelines for hand-carrying documents?
The USPTO has specific guidelines for hand-carrying documents to their office. According to MPEP 502:
“Any paper which relates to a pending application may be personally delivered to the Office. The attorney, agent, or applicant should specifically instruct the person making the delivery to hand-carry the paper to the Customer Service Window…”
Key points to remember when hand-carrying documents to the USPTO:
- Deliver to the Customer Service Window at the Randolph Building, 401 Dulany Street, Alexandria, VA 22314
- The delivery must be made during official business hours (8:30 AM to 5:00 PM, Monday through Friday, excluding federal holidays)
- A receipt will be issued for the delivered papers
- The receipt date is considered the filing date for the documents
It’s important to follow these guidelines to ensure proper handling and timely processing of your documents.
For more information on USPTO, visit: USPTO.
The USPTO accepts two types of signatures for patent correspondence:
- Handwritten signature: An original signature personally signed in permanent dark ink or its equivalent.
- S-signature: A signature inserted between forward slash marks, which can include electronic or mechanical signatures.
As stated in 37 CFR 1.4(d): “Correspondence filed in the Office, which requires a person’s signature, may be filed with one of two types of signatures: (A) handwritten signature; and (B) ‘S-signature.'”
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The time limits for responding to a notice under 37 CFR 1.251 vary depending on whether it’s for an application or a patent:
- For applications: The Office sets a three-month period for reply, which is extendable under 37 CFR 1.136(a) by up to three additional months, for a maximum of six months.
- For patents: The Office sets a six-month period for reply, which is not extendable.
MPEP 508.04 states: “The Office will set a time period of three months for reply in a notice under 37 CFR 1.251 in an application. The time period will be extendable under 37 CFR 1.136(a) (unless the notice indicates otherwise) by three months up to a maximum period for reply of six months in an application.” It also notes: “The Office will set a time period of six months for reply in a notice under 37 CFR 1.251 in a patent. The time period will not be extendable under 37 CFR 1.136(a) in a patent.”
The USPTO sets specific time limits for responding to notices about unlocatable files, which differ for applications and patents:
For applications, the MPEP states: The Office will set a time period of three months for reply in a notice under 37 CFR 1.251 in an application. The time period will be extendable under 37 CFR 1.136(a) (unless the notice indicates otherwise) by three months up to a maximum period for reply of six months in an application.
For patents, the time limit is longer: The Office will set a time period of six months for reply in a notice under 37 CFR 1.251 in a patent. The time period will not be extendable under 37 CFR 1.136(a) in a patent because 35 U.S.C. 41(a)(8) only authorizes the Office to charge fees for extensions of time in proceedings involving an application.
It’s important to note that failing to reply within these time limits can have serious consequences, including abandonment of pending applications.
For more information on patent applications, visit: patent applications.
For more information on Time Limits, visit: Time Limits.
The USPTO has designated specific facsimile numbers for various offices to handle different types of correspondence. According to MPEP 502.01, some key facsimile numbers include:
- Central Facsimile Number (for most patent-related correspondence): (571) 273-8300
- International Patent Legal Administration (for responses to Decisions on Petition): (571) 273-0459
- Office of Data Management (for issue fee payments and drawings): (571) 273-2885
- Electronic Business Center (for Customer Number requests): (571) 273-0177
- Assignment Branch (for assignment documents): (571) 273-0140
- Central Reexamination Unit (for ex parte and inter partes reexamination correspondence): (571) 273-9900
- Patent Trial and Appeal Board (for contested cases and trials, where expressly authorized): (571) 273-0042
- Office of Petitions (for petitions to withdraw from issue): (571) 273-0025
The MPEP states: “For each Office location listed below, only the particular type of correspondence indicated may be transmitted to the specific facsimile number at that Office location. All other types of facsimile transmitted correspondence must be sent to the central facsimile number ((571) 273-8300).”
It’s crucial to use the correct facsimile number for your specific type of correspondence to ensure proper handling and processing by the USPTO.
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What are the size standards for a small business concern in patent applications?
The size standards for a small business concern in patent applications are determined by the Small Business Administration (SBA). According to MPEP 509.02:
“For the purpose of paying reduced patent fees, a small business concern is one:
- (i) Whose number of employees, including affiliates, does not exceed 500 persons; and
- (ii) Which has not assigned, granted, conveyed, or licensed (and is under no obligation to do so) any rights in the invention to any person who made it and could not be classified as an independent inventor, or to any concern which would not qualify as a small business concern or a nonprofit organization under this section.”
It’s important to note that these size standards are specific to patent applications and may differ from SBA size standards used for other purposes. Businesses must meet both the employee count criterion and the rights assignment criterion to qualify as a small business concern for patent fee purposes.
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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.
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The signature requirements for correspondence in patent applications are outlined in MPEP 502.02. The section states:
37 CFR 1.4(d) sets forth the signature requirements for correspondence filed in the Office. Specifically, 37 CFR 1.4(d) provides that:
The signature requirements vary depending on the type of correspondence and the method of submission. Generally, they include:
- Handwritten signatures
- S-signatures (electronically created signatures)
- EFS-Web signatures for documents submitted via the Electronic Filing System
Each type of signature has specific requirements to ensure its validity and authenticity.
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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)
Using unsecured email for USPTO communications poses several risks:
- Confidentiality breaches: Sensitive information could be intercepted by unauthorized parties.
- Legal issues: Transmitting confidential information without proper security measures may violate patent laws and regulations.
- Loss of patent rights: Inadvertent public disclosure through unsecured email could jeopardize patent rights.
- Rejection of communications: The USPTO may not accept or acknowledge communications sent through unsecured channels.
MPEP 502.03 warns: “Internet e-mail shall NOT be used to conduct an exchange or communications similar to those exchanged during telephone or personal interviews unless a written authorization has been given.” This emphasizes the importance of using secure, authorized channels for all USPTO communications.
To mitigate these risks, always use the USPTO’s secure email system or the Electronic Filing System (EFS-Web) for official communications.
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Improperly claiming micro entity status can have serious consequences:
- It may be considered fraud on the USPTO if done knowingly
- It can result in the patent being held unenforceable
- Improperly paid fees will need to be corrected, which may include late fees
MPEP 509.04 warns: ‘Any attempt to fraudulently establish status as a micro entity, or pay fees as a micro entity, shall be considered as a fraud practiced or attempted on the Office. Improperly, and with intent to deceive, establishing status as a micro entity, or paying fees as a micro entity, shall be considered as a fraud practiced or attempted on the Office.’
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.
When responding to a notice about an unlocatable file, applicants or patentees must provide copies of correspondence, but there are some exceptions. The MPEP states:
Any appendix or information disclosure statement submitted with an application is not contained in the Office’s database. Therefore, the applicant or patentee must also provide a copy of any appendix or information disclosure statement (except in the limited circumstance discussed below) submitted with the application.
However, there’s an important exception for U.S. patent documents:
Since the Office can obtain copies of U.S. patent documents (U.S. patent application publications and patents) from its internal databases, the Office is not requiring applicants or patentees to provide copies of U.S. patent application publications and patents that are among the applicant’s or patentee’s record of the correspondence between the Office and the applicant or patentee for the application, patent, or other proceeding.
This means that while most documents need to be resubmitted, U.S. patent documents can be omitted from the response.
The USPTO accepts different types of signatures on correspondence, including:
- Handwritten signatures: Original signatures in permanent dark ink or equivalent.
- S-signatures: A signature inserted between forward slash marks, which can be used for correspondence filed in paper, by fax, or via the electronic filing system.
- Electronic signatures: For correspondence submitted via the electronic filing system, a graphic representation of a handwritten signature or an S-signature is acceptable.
According to 37 CFR 1.4(d): Each piece of correspondence, except as provided in paragraphs (d)(2), (d)(3), (d)(4), (e) and (f) of this section, filed in an application, patent file, or other proceeding in the Office which requires a person’s signature, must: (i) Be an original, that is, have an original handwritten signature personally signed, in permanent dark ink or its equivalent, by that person; or (ii) Be a direct or indirect copy, such as a photocopy or facsimile transmission (§ 1.6(d)), of an original.
For S-signatures, the signer must personally insert their own signature, and patent practitioners must include their registration number. The signer’s name must be presented in printed or typed form immediately below or adjacent to the S-signature.
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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.
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When sending confidential information via email to the USPTO, specific requirements must be met:
- Use of the Electronic Filing System (EFS-Web) is strongly recommended for submitting confidential information.
- If email must be used, it should be through the USPTO’s secure email system.
- An authorization from the applicant is required before sending confidential information via email.
- The email must include a statement that the email correspondence is being submitted using the procedures set forth in 37 CFR 1.33(d).
As stated in MPEP 502.03: “Internet email shall NOT be used to conduct an exchange of communications similar to those exchanged during telephone or personal interviews unless a written authorization has been given.”
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To obtain a filing date for a nonprovisional patent application filed under 37 CFR 1.53(b), the application must include:
- A specification containing a description as prescribed by 35 U.S.C. 112(a)
- At least one claim (for applications filed on or after December 13, 2013)
- Any drawings necessary under 35 U.S.C. 113 (first sentence)
As stated in the MPEP: Filing dates are accorded to nonprovisional applications filed under 37 CFR 1.53(b) submitted without the names of all the inventors, the required fees (basic filing fee, and search and examination fees (for applications filed on or after December 8, 2004)), at least one claim (for applications filed on or after December 13, 2013) and/or the inventor’s oath or declaration.
If any required items are missing, the applicant will be notified and given a time period to submit the missing elements. The filing date will be the date the missing items are received.
For more information on nonprovisional application, visit: nonprovisional application.
For more information on patent application requirements, visit: patent application requirements.
To establish micro entity status on the gross income basis, an applicant must meet the following requirements as outlined in 37 CFR 1.29(a)(1)-(4):
- Qualify as a small entity
- Not have been named as an inventor on more than four previously filed patent applications
- Not have a gross income exceeding three times the median household income in the preceding calendar year
- Not have assigned, granted, or conveyed, and not be under an obligation to do so, a license or ownership interest to an entity exceeding the gross income limit
The MPEP states: “Because each inventor and each non-inventor applicant (e.g., assignee-applicant) must separately meet the requirements under 37 CFR 1.29(a)(1)-(4), it would not be appropriate to file a micro entity certification under 37 CFR 1.29(a) for the application if there were more than one applicant or inventor and not all of the applicants and inventors qualified as micro entities under 35 U.S.C. 123(a).“
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To establish micro entity status based on an institution of higher education, an applicant must meet two main requirements:
- Qualify as a small entity as defined in 37 CFR 1.27
- Meet one of the following criteria:
- The applicant’s employer, from which they obtain the majority of their income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965, or
- The applicant has assigned, granted, conveyed, or is under an obligation to assign, grant, or convey, a license or other ownership interest in the application to such an institution of higher education.
As stated in MPEP 509.04(b): “An applicant for micro entity status under the ‘institution of higher education’ basis set forth in 37 CFR 1.29(d) must satisfy two requirements.”
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What are the requirements for filing papers with the USPTO?
When filing papers with the United States Patent and Trademark Office (USPTO), it’s important to adhere to specific requirements:
- Papers must be legibly written either by hand or printed in permanent dark ink or its equivalent.
- They should be presented on flexible, strong, smooth, non-shiny, durable, and white paper.
- All papers must be presented in a form having sufficient clarity and contrast between the paper and the writing to permit electronic reproduction by use of digital imaging and optical character recognition.
As stated in MPEP 501: All papers that are to become a part of the permanent records of the United States Patent and Trademark Office should be legibly written either by a typewriter or mechanical printer in permanent dark ink or its equivalent in portrait orientation on flexible, strong, smooth, non-shiny, durable, and white paper.
These requirements ensure that all documents can be properly processed and stored by the USPTO.
For more information on document legibility, visit: document legibility.
What are the requirements for certificate of mailing or transmission?
The certificate of mailing or transmission is an important tool for securing a filing date with the USPTO. According to MPEP 502, the requirements are:
“The certification requires a signature. Specifically, if the certification is filed by a registered practitioner, it must be signed by that practitioner personally. 37 CFR 1.8(a)(2). If the certification is filed by an applicant, it must be signed by the applicant (except where an oath or declaration is not required, in which case the certification may be signed by a registered practitioner). 37 CFR 1.8(a)(2).”
Key points to remember:
- The certificate must include the date of deposit or transmission.
- It must be signed by the person mailing or transmitting the correspondence.
- For registered practitioners, personal signature is required.
- For applicants, their signature is required unless an oath/declaration is not needed.
Proper use of this certificate can help ensure your documents are considered timely filed, even if there are postal or transmission delays.
For more information on Certificate of Mailing, visit: Certificate of Mailing.
For more information on Certificate of Transmission, visit: Certificate of Transmission.
For more information on USPTO correspondence, visit: USPTO correspondence.
An S-signature must meet the following requirements:
- It must be inserted between two forward slash marks.
- It can only consist of letters, Arabic numerals, or both, with appropriate spaces and punctuation.
- The signer must insert their own S-signature.
- For patent practitioners, the registration number must be included as part of or adjacent to the S-signature.
- The signer’s name must be presented in printed or typed form, preferably immediately below or adjacent to the S-signature.
As stated in 37 CFR 1.4(d)(2)(i): “The S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature.”
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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 recommends several methods for filing new patent applications, with some being more advantageous than others. According to MPEP 511, the recommended methods are:
- Electronic Filing System (EFS-Web or Patent Center): This is the most recommended method. As stated in MPEP 511: “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.”
- Priority Mail Express®: If not filing electronically, this is the next best option. MPEP 511 notes: “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.”
- Hand-delivery: Applications can be hand-delivered to the USPTO.
- First-class mail: While possible, this method carries risks of delay and is not recommended for new applications.
It’s important to note that new applications cannot be filed by facsimile. For more details on electronic filing, refer to the Legal Framework for Patent Electronic System on the USPTO website.
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The USPTO strongly recommends the following methods for filing new patent applications:
- Electronic Filing System (EFS-Web or Patent Center): This is the preferred method whenever permitted.
- 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.
- 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.”
What are the official USPTO mailing addresses for patent-related correspondence?
The United States Patent and Trademark Office (USPTO) has specific mailing addresses for different types of patent-related correspondence. According to the MPEP 502:
For regular mail:
- Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
For hand-carried or EXPRESS MAIL:
- U.S. Patent and Trademark Office
Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
It’s important to use the correct address to ensure timely processing of your correspondence.
For more information on patent correspondence, visit: patent correspondence.
The official business hours of the U.S. Patent and Trademark Office (USPTO) are:
- 8:30 a.m. to 5:00 p.m., Monday through Friday
- Excluding federal holidays in the District of Columbia
As stated in MPEP 510: “The U.S. Patent and Trademark Office (USPTO or Office) working hours are 8:30 a.m. to 5:00 p.m., Monday through Friday, excluding federal holidays in the District of Columbia.”
What are the margin requirements for patent application documents?
When preparing documents for a patent application, it’s crucial to adhere to specific margin requirements set by the USPTO:
- The top margin of the first page should be at least 2 cm (3/4 inch).
- All other margins (left, right, and bottom) must be at least 2 cm (3/4 inch).
- The margins can be slightly larger but should not exceed 4 cm (1-1/2 inches).
According to MPEP 501: All of the application papers must have margins which are at least 2 cm. (3/4 inch) … on the sides, top and bottom. Margins should not exceed 4 cm. (1-1/2 inches). … The top margin of the first page should be at least 2 cm. (3/4 inch).
These margin requirements ensure that all information is visible and can be properly scanned and processed by the USPTO.
MPEP 507 outlines specific requirements for margins and paper size in patent drawings:
Each sheet must include a top margin of at least 2.5 cm. (1 inch), a left size margin of at least 2.5 cm. (1 inch), a right size margin of at least 1.5 cm. (5/8 inch), and a bottom margin of at least 1.0 cm. (3/8 inch). The size of the sheets on which drawings are made must be either 21.0 cm. by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8-1/2 by 11 inches);
These requirements are based on 37 CFR 1.84(f) and (g). Adhering to these specifications ensures that the drawings can be properly scanned and reproduced in the patent publication process.
What are the line spacing requirements for patent application text?
When preparing the text for your patent application, it’s important to follow the USPTO’s line spacing requirements:
- The text should be written in a nonscript type font (e.g., Arial, Times Roman, or Courier).
- The lettering style should be at least 0.32 cm (1/8 inch) high.
- The lines of text should be 1.5 or double spaced.
According to MPEP 501: The text must be written in a nonscript type font (e.g., Arial, Times Roman, or Courier, preferably a font size of 12) lettering style having capital letters which should be at least 0.32 cm. (1/8 inch) high, but may be no smaller than 0.21 cm. (3/32 inch) high (e.g., a font size of 6). The lines of the specification may be 1 1/2 or double spaced.
These requirements ensure that the text is easily readable and can be properly scanned and processed by the USPTO’s systems.
The provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) to (i) have specific limitations when it comes to petitions for filing dates. According to MPEP 511:
“Applicants are cautioned that the provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) to (i) only apply to postal interruptions and emergencies. The provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) to (i) do not provide for granting of a filing date to correspondence as of the date on which it would have been filed but for other exigencies, such as the unavailability of a computer or word processing equipment, or the inaccessibility of an office or building other than a USPS facility.”
This means that these provisions are strictly limited to postal service interruptions or emergencies. They cannot be used for other circumstances that may have prevented timely filing, such as:
- Computer or equipment failures
- Office or building inaccessibility (unless it’s a USPS facility)
- Personal emergencies or other non-postal related issues
Additionally, the statute requires that the correspondence was complete and ready to be deposited with the USPS on the requested filing date, and that the sole reason for non-deposit was the unavailability of postal service due to the designated interruption or emergency.
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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.
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What are the income limitations for micro entity status?
To qualify for micro entity status, an applicant’s income must not exceed three times the median household income as reported by the Bureau of the Census. According to USPTO’s 2022 notice, the income limit is $206,109. The MPEP states:
“[A]n applicant qualifies as a micro entity if the applicant’s gross income in the previous calendar year does not exceed the ‘maximum qualifying gross income’ which is set to three times the median household income as reported by the Bureau of the Census.” (MPEP 509.04(a))
It’s important to note that this limit is subject to change, and applicants should check the latest USPTO notices for the most current information.
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The Public Search Facility in Alexandria has extended hours compared to the regular USPTO business hours:
- 8:00 a.m. to 8:00 p.m., Monday through Friday
- Excluding federal holidays in the District of Columbia
As stated in MPEP 510: “The hours for the Public Search Facility in Alexandria are 8:00 a.m. to 8:00 p.m., Monday through Friday, excluding federal holidays in the District of Columbia.”
Applications properly filed via Priority Mail Express® (formerly Express Mail) have special filing date rules:
- The filing date is the date the application was deposited with the U.S. Postal Service as Priority Mail Express®
- This applies even if the deposit date is a Saturday, Sunday, or federal holiday
- The application must comply with the requirements of 37 CFR 1.10 to receive this benefit
The MPEP states: For applications properly filed under 37 CFR 1.10, the filing date is the date that the application was deposited as Priority Mail Express® in the U.S. Postal Service. For example, if a new patent application is deposited in Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date. 37 CFR 1.6(a)(2).
If the proper procedures were not followed, the application will receive a filing date as of the date it was received in the USPTO. Any review of these matters would be by way of petition, accompanied by the petition fee.
For more information on Priority Mail Express, visit: Priority Mail Express.
What are the consequences of submitting insufficient fees for a patent application?
Submitting insufficient fees for a patent application can have significant consequences. According to MPEP 509:
“An application filed with insufficient basic filing fee, search fee, examination fee, or oath or declaration will be treated as an incomplete application under 37 CFR 1.53(f) and will not be given a filing date until the filing fee is received.”
This means:
- Your application won’t receive a filing date until the correct fees are paid
- This delay could affect your priority date
- If not corrected promptly, the application may be considered abandoned
It’s crucial to ensure all required fees are paid in full when submitting a patent application to avoid these issues.
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What are the consequences of submitting color drawings in a utility patent application?
Submitting color drawings in a utility patent application has specific consequences and requirements:
- Color drawings are not ordinarily permitted in utility patent applications.
- As stated in MPEP 507: “Color drawings are permitted in design applications. For utility patent applications, color drawings are not permitted without a grantable petition.”
- If color drawings are submitted without an approved petition, OPAP will send a Notice to File Corrected Application Papers.
- The applicant must either:
- Replace the color drawings with black and white drawings, or
- File a grantable petition under 37 CFR 1.84(a)(2) to accept the color drawings.
- The petition must explain why color drawings are necessary and be accompanied by the fee set forth in 37 CFR 1.17(h).
It’s important to consider whether color drawings are truly necessary for your utility patent application, as they require additional steps and fees in the application process.
For more information on application papers, visit: application papers.
For more information on color drawings, visit: color drawings.
The consequences of not responding to a notice about an unlocatable file differ for pending applications and granted patents:
- For pending applications: According to 37 CFR 1.251(b),
failure to comply with one of paragraphs (a)(1), (a)(2), or (a)(3) of this section within the time period set in the notice will result in abandonment of the application.
- For granted patents: While the patent won’t expire, the MPEP states that
the only certified copy of the patent file that the Office will be able to produce will be a copy of the patent and a copy of the application-as-filed (which may have an adverse impact during attempts to enforce the patent).
Additionally, for patents involved in USPTO proceedings, the Office may take action under 37 CFR 41.128 or 37 CFR 11.18.
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What are the consequences of improperly claiming small entity status?
Improperly claiming small entity status can have serious consequences. The MPEP 509.03 states: “Improperly and with intent to deceive establishing status as a small entity, or paying fees as a small entity, shall be considered as a fraud practiced or attempted on the Office.” This means that intentionally falsely claiming small entity status is considered fraud. Consequences may include:
- Invalidation of the patent
- Requirement to pay back all fee differences
- Potential legal action for fraud
It’s crucial to verify eligibility carefully before claiming small entity status and to update the USPTO if your status changes.
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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.
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The consequences of failing to respond to a 37 CFR 1.251 notice differ for pending applications and granted patents:
- For pending applications: Failure to reply within the set time period will result in abandonment of the application. MPEP 508.04 cites 37 CFR 1.251(b): “With regard to a pending application, failure to comply with one of paragraphs (a)(1), (a)(2), or (a)(3) of this section within the time period set in the notice will result in abandonment of the application.”
- For granted patents: While the patent won’t expire, there may be limitations on the certified copy of the patent file that the Office can produce. MPEP 508.04 states: “While abandonment (or expiration) of a patent is not an issue if a patentee fails to timely comply with a notice under 37 CFR 1.251, in such a situation the only certified copy of the patent file that the Office will be able to produce will be a copy of the patent and a copy of the application-as-filed (which may have an adverse impact during attempts to enforce the patent).”
Additionally, for patents involved in proceedings before the Office, action may be taken under 37 CFR 41.128 or 37 CFR 11.18.
What are the consequences of bounced checks or insufficient funds for USPTO fee payments?
Submitting a check that bounces or having insufficient funds for USPTO fee payments can have serious consequences. The MPEP 509 states: ‘If any fee is paid by a check which is uncollectible or is returned unpaid, or if any payment is made in an amount less than the required amount, the fee payment shall be regarded as incomplete and the processing of the application or other filing shall be held in abeyance until the full fee payment is made.’
Consequences may include:
- Suspension of application processing
- Potential loss of filing date
- Additional fees or penalties
- Possible disciplinary action for repeated occurrences
To avoid these issues, ensure sufficient funds are available and consider using more reliable payment methods like electronic funds transfer or credit cards.
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Improper signatures on patent correspondence can have serious consequences. While the MPEP 502.02 doesn’t explicitly list all consequences, it emphasizes the importance of proper signatures:
Correspondence filed in the Office by applicants and other parties must be signed by the applicants or other party, or by a registered patent attorney or agent of record in the patent application or patent.
The potential consequences of an improper signature include:
- Rejection or return of the correspondence
- Delays in processing the application or request
- Potential loss of rights or missed deadlines
- Requirement for ratification or confirmation of the signature
- In severe cases, charges of fraud or inequitable conduct
To avoid these issues, it’s crucial to ensure all signatures comply with USPTO requirements as outlined in 37 CFR 1.4 and MPEP 502.02. When in doubt, consult with a registered patent attorney or agent to verify proper signature practices.
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OPAP may object to patent drawings for several reasons, including:
- Line quality issues
- Missing lead lines
- Excessive or non-English text
- Incorrect margins or paper size
- Improper figure labeling
- Illegible photographs
- Unauthorized color drawings or photographs
For example, regarding line quality, MPEP 507 states:
OPAP may object to and require corrected drawings within a set time period, if the drawings: (A) have a line quality that is too light to be reproduced (weight of all lines and letters must be heavy enough to permit adequate reproduction) or text that is illegible (reference characters, sheet numbers, and view numbers must be plain and legible). See 37 CFR 1.84(l) and (p)(1);
The USPTO has specific certification requirements for signatures in correspondence. According to MPEP 501, which cites 37 CFR 1.4(d)(4):
The person inserting a signature under paragraph (d)(2) or (d)(3) of this section in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature. A person submitting a document signed by another under paragraph (d)(2) or (d)(3) of this section is obligated to have a reasonable basis to believe that the person whose signature is present on the document was actually inserted by that person, and should retain evidence of authenticity of the signature.
Key points about signature certifications:
- The person inserting an S-signature certifies it as their own.
- When submitting a document signed by another, you must have a reasonable belief that the signature is authentic.
- Evidence of signature authenticity should be retained.
- Violations of certification rules may result in sanctions.
These requirements apply to both handwritten and S-signatures. They ensure the integrity and authenticity of documents submitted to the USPTO.
For more information on USPTO correspondence, visit: USPTO correspondence.
What are the accepted payment methods for patent fees?
The USPTO accepts various payment methods for patent fees:
- Credit or debit card
- Electronic funds transfer (EFT)
- Deposit account
- Check or money order
As stated in MPEP 509: ‘Fees may be paid by U.S. credit card, electronic funds transfer (EFT), deposit account, check or money order.’ Electronic payment methods are preferred for their efficiency and speed.
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The USPTO accepts various methods of payment for patent and trademark process fees. According to MPEP 509, the primary methods include:
- Credit cards (AMERICAN EXPRESS®, DISCOVER®, MASTER CARD®, and VISA®)
- Deposit accounts
- Electronic funds transfer (EFT)
- Other forms of payment accepted by the Office
It’s important to note that credit card payments are subject to a transaction maximum. As stated in the MPEP: Effective June 1, 2015, the credit card transaction maximum is $24,999.99 as specified in section 7045 of the ‘Treasury Financial Manual.’
This limit does not apply to other payment methods.
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What are the acceptable methods for filing papers with the USPTO?
The USPTO accepts several methods for filing papers:
- Hand-delivery to the USPTO office in Alexandria, Virginia
- First-class mail through the United States Postal Service (USPS)
- Express Mail service of the USPS
- Electronic filing through the USPTO’s Electronic Filing System (EFS-Web)
As stated in MPEP 501: ‘Papers may be filed using first class mail through the United States Postal Service.’ The MPEP also notes that ‘Correspondence may be hand-carried to the Office.’ For electronic filing, it’s important to note that ‘EFS-Web can be used to file new applications, enter the national stage under 35 U.S.C. 371, and submit most follow-on documents in patent applications.’
For more information on EFS-Web, visit: EFS-Web.
For more information on electronic filing, visit: electronic filing.
For more information on Express Mail, visit: Express Mail.
For more information on first-class mail, visit: first-class mail.
For more information on hand-delivery, visit: hand-delivery.
All relevant information from MPEP 502.05 – Correspondence Transmitted by EFS-Web has been thoroughly covered in the previously generated FAQs. No additional meaningful questions can be created without substantial repetition of existing content.
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USPTO employees are required to verify the identity of email senders in patent communications to prevent misrepresentation or spoofing. According to MPEP 502.03:
‘Email must be initiated by a registered practitioner, or an applicant in a pro se application, and sufficient information must be provided to show representative capacity in compliance with 37 CFR 1.34.’
The MPEP provides examples of information that can be used for verification:
- Attorney registration number
- Attorney docket number
- Patent application number
Additionally, the MPEP advises:
‘Similar to the policy set forth in MPEP 100 for handling telephone calls, when responding to an email, no information should be disclosed until the identity of the requester can be adequately verified.’
Examiners are instructed to verify the identity by checking Patent Data Portal or the application file, such as confirming the email address previously provided in Patent Data Portal or the application.
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For joint inventor applicants, MPEP 509.04(c) states that “each joint inventor should sign a separate copy of the relevant micro entity certification form.” However, there is an exception:
“If one joint inventor is appointed to prosecute the application on behalf of all the other joint inventors, then only that one joint inventor need sign the micro entity certification form.”
This appointment can be made using USPTO form PTO/AIA/81, titled “Power Of Attorney To One Or More Of The Joint Inventors And Change Of Correspondence Address”, available on the USPTO forms Web page.
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Patent maintenance fee payments can be submitted in two ways:
- Electronically: This is the preferred method. Payments can be made through the USPTO’s Patent Maintenance Fees Storefront.
- By mail: If not submitted electronically, maintenance fee payments and related correspondence should be addressed to:
Mail Stop Maintenance Fee
Director of the United States Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
The MPEP states: Maintenance fee payments not electronically submitted over the Internet and correspondence related to maintenance fees may be addressed to: Mail Stop Maintenance Fee, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450
It’s important to note that electronic submission is faster, more secure, and provides immediate confirmation of payment.
To learn more:
Maintenance fee payments have a specific mailing address if not submitted electronically. According to MPEP 501, which cites 37 CFR 1.1(d):
Maintenance fee payments that are not submitted electronically and correspondence related to maintenance fees may be addressed to: Mail Stop Maintenance Fee, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
However, it’s important to note that the USPTO strongly encourages electronic submission of maintenance fee payments. The Electronic Maintenance Fee Form is the preferred method for these transactions.
If you must submit a paper payment, ensure it’s properly addressed to avoid delays in processing. Include all necessary information, such as the patent number and the fee amount being paid.
For more information on USPTO correspondence, visit: USPTO correspondence.
For correspondence that requires immediate attention from the USPTO, such as certain petitions or time-sensitive documents, the following methods are recommended:
- Use the USPTO patent electronic filing system (EFS-Web or Patent Center). This is the preferred method for most immediate correspondence.
- Where permitted, use facsimile transmission to the appropriate area of the Office.
- Hand-carry the documents to the USPTO in Alexandria, VA.
The MPEP states: Applicants are encouraged to transmit these types of correspondence by the USPTO patent electronic filing system (see MPEP § 502.05). Where permitted, patent-related correspondence that requires immediate Office attention may also be submitted to the appropriate area of the Office for processing by facsimile transmission (see MPEP § 502.01, subsections I.B and II) or hand-carried (see MPEP § 502), subsection III).
Examples of correspondence requiring immediate attention include:
- Petitions for express abandonment to avoid publication
- Petitions to withdraw an application from issue
- Requests for expedited examination of a design application
- Certain papers required by the Office of Data Management
To learn more:
For trademark-related documents filed on paper, except for certain specific cases, the address is:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
According to MPEP 501, which cites 37 CFR 2.190: “All trademark-related documents filed on paper, except documents sent to the Assignment Recordation Branch for recordation; requests for copies of trademark documents; and certain documents filed under the Madrid Protocol as specified in 37 CFR 2.190(e), should be addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.”
It’s important to note that many trademark documents can and should be filed electronically through the Trademark Electronic Application System (TEAS).
For more information on trademark correspondence, visit: trademark correspondence.
According to MPEP 507, figures in patent drawings should be labeled as follows:
Each figure must be labeled ‘Fig.’ with a consecutive Arabic numeral (1, 2, etc.) or an Arabic numeral and capital letter in the English alphabet (A, B, etc.). See 37 CFR 1.84(u)(1);
This labeling convention ensures clarity and consistency in referencing figures throughout the patent application and publication. Improper labeling may result in an objection from OPAP and require correction.
The USPTO requires clear itemization of fees to ensure proper accounting. According to MPEP 509:
37 CFR 1.22(b) sets forth that fees must be itemized in such a manner that it is clear for which purpose fees are paid. The Office may return fees that are not itemized.
However, the MPEP clarifies that the itemization requirement is not meant to create problems when the purpose is clear:
- A reference to ‘filing fee(s)’ is sufficient to cover all types of filing fees.
- In later submissions, ‘filing fee(s)’ would also cover surcharges.
- A reference to ‘any corresponding fee under 37 CFR 1.16’ covers any fee under that section.
The key is to provide enough information for the USPTO to understand the purpose of the payment.
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For correspondence that is not specific to patents or trademarks, such as requests for certified copies or assignment recordation, the general mailing address is:
Director of the United States Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
This address should be used for:
- Patent and trademark documents sent to the Assignment Division for recordation (Mail Stop Assignment Recordation Services)
- Requests for certified or uncertified copies of patent and trademark documents (Mail Stop Patent and Trademark Copy Fulfillment Branch)
- Correspondence for which an address is not otherwise specified in 37 CFR 1.1 or 2.190
MPEP 501 states: “For correspondence for which an address is not otherwise specified in 37 CFR 1.1 or 2.190, should be addressed to: Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450”
Filing a Continued Prosecution Application (CPA) by facsimile requires specific procedures, as outlined in MPEP 502.01:
- CPAs are only available for design applications.
- The CPA must be sent to the central facsimile number: (571) 273-8300.
- An authorization to charge the basic filing fee to a deposit account or credit card must be included, or the application will be treated as filed without the basic filing fee.
- There is a special receipt procedure for CPA filings by fax:
There is a special receipt procedure for filing a CPA by fax, whereby the Office will fax back a receipt of the CPA filing if applicant submits the Office receipt form along with the CPA filing.
It’s important to note that if the USPTO has no evidence of receiving a CPA transmitted by fax, the applicant may need to file a petition under 37 CFR 1.6(f) to request a filing date. This petition must include:
- Information about the previous transmission
- An additional copy of the CPA
- A statement attesting to the previous transmission
- Evidence of the transmission, such as a sending unit’s report or other evidence created within one business day of the transmission
Always ensure that you follow these procedures carefully when filing a CPA by facsimile to avoid any issues with the filing date or processing of your application.
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According to MPEP 509.02, fees for small entities are reduced by 50% for most patent-related fees. The MPEP states:
The fees which are reduced by 50% for small entities include patent application filing fees including the basic filing fee, search fee, examination fee, application size fee, and excess claims fees (37 CFR 1.16), extension of time, revival, and appeal fees (37 CFR 1.17), patent issue fees (37 CFR 1.18), and maintenance fees on patents (37 CFR 1.20).
Additionally, certain PCT international stage fees are also eligible for the 50% reduction for small entities.
To learn more:
Once small entity status is established in an application or patent, it remains in effect until:
- The issue fee is due, or
- Any maintenance fee is due
At these points, a new determination of entitlement to small entity status is required. As stated in 37 CFR 1.27(g)(1): “Once small entity status is 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.”
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Micro entity status, once properly established, generally remains in effect until:
- A fee is paid in the small entity or undiscounted amount
- A notification of loss of entitlement to micro entity status is filed
- The issue fee or a maintenance fee is due
However, the applicant has a continued obligation to verify eligibility for micro entity status each time a fee is paid. As stated in 37 CFR 1.29(g): ‘a fee may be paid in the micro entity amount only if status as a micro entity as defined in paragraph (a) or (d) of this section is appropriate on the date the fee is being paid.’
The time period for responding to a notice about an unlocatable file depends on whether it’s for an application or a patent:
- For applications: The USPTO typically sets a three-month period, which is extendable under 37 CFR 1.136(a) by up to three additional months, for a maximum of six months.
- For patents: A six-month non-extendable period is set.
It’s important to note that for applications, as stated in the MPEP, If, however, an applicant fails to reply to a notice under 37 CFR 1.251 within three months of its mailing date, any patent term adjustment under 35 U.S.C. 154(b) will be reduced by a period equal to the number of days (if any) beginning on the day after the date that is three months after the mailing date of the notice under 37 CFR 1.251 and ending on the date the reply to the notice under 37 CFR 1.251 was filed.
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Once small entity status is established in an application or patent, you can continue to pay fees as a small entity until the issue fee is due or any maintenance fee is due. This is stated in 37 CFR 1.27(g)(1): ‘Once small entity status is 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.’
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The gross income limit for micro entity status is determined as follows:
- It is set at three times the median household income for the preceding calendar year, as reported by the Bureau of the Census.
- The USPTO publishes the current maximum qualifying gross income on their website.
- This limit applies to each applicant, inventor, and joint inventor individually.
The MPEP clarifies: “At the time any fee is to be paid in the micro entity amount, it is required that no inventor and no non-inventor applicant (if any) have a preceding calendar year’s gross income exceeding the ‘maximum qualifying gross income’ posted on the USPTO website.“
It’s important to note that gross income means total income, not adjusted gross income. The MPEP states: “‘Gross income’ and ‘adjusted gross income’ are not the same thing. Adjusted gross income is defined as gross income minus adjustments to income. For purposes of micro entity status it is ‘gross income’ – not ‘adjusted gross income’ that matters.“
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The filing date for Priority Mail Express® submissions is typically determined by the “date accepted” on the Priority Mail Express® mailing label. According to MPEP 513:
Office personnel will routinely look to the Priority Mail Express® mailing label, and stamp the “date accepted” or other official USPS notation as the filing date of the correspondence.
If the USPS deposit date cannot be determined, the correspondence will be accorded the date of receipt in the Office as the filing date. It’s important to note that the “date accepted” must be completed by the USPS, not by the applicant.
The deficiency owed for micro entity fee errors is calculated according to 37 CFR 1.29(k)(2). The MPEP states:
The deficiency owed for each previous fee erroneously paid as a micro entity is the difference between the current fee amount for a small entity or non-small entity, as applicable, on the date the deficiency is paid in full and the amount of the previous erroneous micro entity fee payment.
To calculate the total deficiency payment:
- Determine the current fee amount for each erroneously paid fee (small or non-small entity rate)
- Subtract the micro entity fee amount previously paid
- Sum up all individual deficiency amounts
This calculation ensures that the correct fee amount is paid based on the entity status and current fee schedule.
To learn more:
For micro entity status, gross income is determined as follows:
- Based on the calendar year preceding the year a fee is paid
- Uses the definition of gross income in section 61(a) of the Internal Revenue Code
- Compared to three times the median household income as reported by the Bureau of the Census
- For non-US income, converted using the average currency exchange rate for the relevant calendar year
The USPTO website provides the current maximum qualifying gross income limit.
When calculating gross income for micro entity status involving foreign currency, the USPTO provides specific guidelines:
- If an applicant’s, inventor’s, or entity’s gross income in the preceding calendar year is not in U.S. dollars, the average currency exchange rate reported by the Internal Revenue Service (IRS) for that calendar year must be used for conversion.
- For income received partially in U.S. dollars and partially in foreign currency, the foreign portion must be converted to U.S. dollars and added to the U.S. dollar amount.
The MPEP states: “If an applicant’s, inventor’s, joint inventor’s, or entity’s gross income in the preceding calendar year is not in United States dollars, the average currency exchange rate, as reported by the Internal Revenue Service, during that calendar year shall be used to determine whether the applicant’s, inventor’s, joint inventor’s, or entity’s gross income exceeds the threshold specified in 37 CFR 1.29(a)(3) or (a)(4).“
The IRS provides yearly average currency exchange rates on its website, which should be used for these calculations.
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An ‘institution of higher education’ for micro entity status purposes is defined according to Section 101(a) of the Higher Education Act of 1965. The key criteria include:
- Located in any U.S. state or territory
- Admits students with secondary education or equivalent
- Authorized to provide post-secondary education
- Offers bachelor’s degrees or at least 2-year programs toward such degrees
- Is a public or non-profit institution
- Is accredited or pre-accredited by a recognized agency
As stated in MPEP 509.04(b): “Section 101(a) of the Higher Education Act of 1965 defines what is meant by ‘institution of higher education’ in the context of 37 CFR 1.29(d).”
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How does USPTO verify gross income for micro entity status?
The USPTO generally does not independently verify the gross income of applicants claiming micro entity status. According to MPEP 509.04(a):
“The Office does not generally question certification of micro entity status but may require additional information on a case-by-case basis.”
However, applicants are required to certify their eligibility for micro entity status under oath. Providing false information can lead to severe consequences, including invalidation of the patent and potential criminal charges for fraud.
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Transferring rights in an invention can affect small entity status. According to MPEP 509.02:
If the individual inventor, small business concern, or nonprofit organization assigned, granted, conveyed, or licensed, or came under an obligation to assign, grant, convey, or license, any rights to the invention to any individual, small business concern, or nonprofit organization which would not qualify as a small entity (37 CFR 1.27(a)), then the inventor, small business concern, or nonprofit organization would no longer qualify for small entity status.
However, transferring partial rights to another small entity does not disqualify the original entity from small entity status. It’s important to note that rights in question are those in the United States. Transferring rights to a foreign patent does not affect small entity status if no U.S. rights are transferred.
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The USPTO has established procedures to notify the public about postal service interruptions that may affect patent filings. According to MPEP 511:
When the Director designates a postal service interruption or emergency, a notice will be published in the Official Gazette, and will be posted on the USPTO website at www.uspto.gov.
The USPTO’s notification process includes:
- Publishing a notice in the Official Gazette
- Posting information on the USPTO website
- Possibly issuing press releases or other public communications
These notifications typically include:
- Details about the nature and scope of the interruption
- Any special procedures or accommodations being made
- Instructions for applicants affected by the interruption
- Contact information for further inquiries
It’s crucial for patent applicants and attorneys to regularly check these official sources during potential postal disruptions to stay informed about any changes in filing procedures or deadlines.
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The USPTO has a specific policy for handling unnecessary duplicate copies of correspondence. According to MPEP 502.04:
The Office may dispose of duplicate copies of correspondence in the file of an application, patent, or other proceeding.
Furthermore, the MPEP states:
When the Office does not require duplicate copies of a paper, the filing of multiple copies may cause a delay in processing by the Office. Accordingly, the Office may discard duplicate copies of correspondence filed in an application or patent file.
This means that if you submit unnecessary duplicate copies, the USPTO may discard them to streamline processing and prevent delays. It’s important to only submit duplicate copies when specifically required by the Office.
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The USPTO has specific procedures for handling refunds of fees paid by credit card. According to MPEP 509:
35 U.S.C. 42(d) and 37 CFR 1.26 (which concern refund of patent and trademark fees) also apply to requests for refund of fees paid by credit card. Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged. See 37 CFR 1.26(a).
Key points about USPTO refunds for credit card payments:
- Refunds are processed as credits to the original credit card account used for payment.
- The same laws and regulations governing refunds of patent and trademark fees apply to credit card payments.
- For information on which fees are refundable, refer to MPEP § 607.02 regarding returnability of fees.
It’s important to note that refund requests are subject to specific criteria and time limitations, so applicants should review the relevant regulations when seeking a refund.
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Priority Mail Express® submissions to the USPTO are handled differently from regular mail. According to MPEP 505, New patent applications filed in accordance with 37 CFR 1.10 will be stamped by the Office with the date of deposit as Priority Mail Express® with the United States Postal Service.
This means:
- The date of deposit with USPS is used as the receipt date, not the date it arrives at the USPTO
- This applies even on weekends and holidays when the USPTO is closed
For example, if a new patent application is deposited in Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date.
For more information on Priority Mail Express, visit: Priority Mail Express.
For more information on USPTO, visit: USPTO.
The USPTO has specific rules regarding patent term adjustments when dealing with notices about unlocatable files. According to the MPEP:
If, however, an applicant fails to reply to a notice under 37 CFR 1.251 within three months of its mailing date, any patent term adjustment under 35 U.S.C. 154(b) will be reduced by a period equal to the number of days (if any) beginning on the day after the date that is three months after the mailing date of the notice under 37 CFR 1.251 and ending on the date the reply to the notice under 37 CFR 1.251 was filed.
This reduction in patent term adjustment is based on 35 U.S.C. 154(b)(2)(C)(ii) and 37 CFR 1.704(b). It’s important to note that this reduction applies even if the applicant responds within the overall six-month period allowed for reply (including extensions).
This policy underscores the importance of prompt action in response to such notices, as delays can directly impact the duration of patent protection.
For more information on patent term adjustment, visit: patent term adjustment.
During postal service emergencies, the USPTO takes special measures to ensure patent applications are handled appropriately:
- The USPTO Director may designate the interruption or emergency as a ‘postal service interruption or emergency’ under 35 U.S.C. 21(a).
- This designation allows for the acceptance of filings that would have been timely filed if not for the postal service interruption or emergency.
- The USPTO may publish a notice in the Official Gazette and on its website about the designation and any special procedures to be followed.
As stated in MPEP 511: The USPTO will consider on a case-by-case basis whether to waive the date indicated on any certificate of mailing or transmission accompanied by a showing which establishes to the satisfaction of the Director that the delay was due to the emergency.
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The USPTO has specific procedures for handling papers that include a Certificate of Mailing or Transmission. According to the MPEP:
“The Mail Center of the Office of Patent Application Processing (OPAP) will continue to date stamp the actual date of receipt of all papers received by mail in the Office. No attempt will be made to retain the envelopes in which the papers are received or to indicate on the papers the postal cancellation date (postmark).”
Key points in the USPTO’s handling process include:
- The actual receipt date is stamped on all papers
- The date on the Certificate is used to determine if the paper was filed within the period for reply
- If the paper is received after the period for reply, but the Certificate date is within the period, the paper is considered timely filed
- A notation (e.g., “C of Mail 11/10/97”) is made next to the Office Date Stamp to indicate the Certificate date
It’s important to note that while the Certificate date is used to determine timeliness, the actual receipt date is used for all other purposes, including calculating subsequent deadlines.
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The USPTO has a specific procedure for handling missing documents from an application file. According to the MPEP:
When a document is missing from an application, Office practice is to call the applicant’s representative and request submission (generally by facsimile) of a copy of the missing document.
This informal approach is the primary method used by the USPTO to address missing documents. However, if this informal method is unsuccessful, the Office may resort to more formal measures:
While the Office will generally treat missing documents in this relatively informal manner (rather than issuing a notice under 37 CFR 1.251), the Office may issue a notice under 37 CFR 1.251 to obtain a copy of a missing document if the Office’s informal attempts to obtain a copy of the document are unsuccessful.
It’s important for applicants and their representatives to promptly respond to such informal requests to avoid more formal procedures and potential delays in application processing.
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The USPTO does not officially receive mail on weekends or federal holidays when the office is closed. Any correspondence received on these days is typically stamped with the next business day’s date. For example, if mail is delivered to the USPTO on a Saturday, it will be stamped with the following Monday’s date (or Tuesday if Monday is a holiday). This practice ensures consistency in dating received documents and aligns with the USPTO’s official business hours.
The USPTO handles informal drawings in patent applications as follows:
- If the drawings are informal but otherwise sufficient for examination, the USPTO will accept them provisionally.
- The drawings will be approved by the Office of Patent Application Processing (OPAP) for publication purposes.
- Formal drawings will be required if the application is allowed.
According to MPEP 507: ‘If the drawings are informal but otherwise in compliance with 37 CFR 1.121(d), the OPAP will accept the application for purposes of publication and place a ‘Drawing Informalities’ form PTO-948 in the file wrapper.’
The examiner may require formal drawings or corrections in a subsequent office action if necessary for a proper examination or if the application is allowed.
For more information on drawing review, visit: drawing review.
For more information on informal drawings, visit: informal drawings.
For more information on OPAP, visit: OPAP.
The USPTO has specific rules for handling facsimile transmissions received outside of business hours, as outlined in MPEP 502.01:
Correspondence for which transmission was completed on a Saturday, Sunday, or Federal holiday within the District of Columbia, will be accorded a receipt date of the next succeeding day which is not a Saturday, Sunday, or Federal holiday within the District of Columbia.
This means that if a facsimile transmission is completed during non-business hours, weekends, or federal holidays, the USPTO will assign it a receipt date of the next business day. For example:
- A fax completed on Friday at 9:05 p.m. Pacific time (12:05 a.m. Saturday Eastern time) would be accorded a receipt date of the following Monday (assuming Monday is not a federal holiday).
- A fax completed on a federal holiday would be accorded a receipt date of the next business day.
It’s important to note that while the actual transmission may occur outside of business hours, the official receipt date will always be a business day. This can be crucial for meeting deadlines and calculating time-sensitive patent-related actions.
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The USPTO has specific rules for dating facsimile transmissions. According to 37 CFR 1.6(a)(3):
Correspondence transmitted by facsimile to the Patent and Trademark Office will be stamped with the date on which the complete transmission is received in the Patent and Trademark Office unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the date stamped will be the next succeeding day which is not a Saturday, Sunday, or Federal holiday within the District of Columbia.
This means that faxed correspondence is generally dated on the day of complete transmission, except for weekends and holidays, where it’s dated the next business day.
The USPTO has specific procedures for handling correspondence with a Certificate of Mailing or Transmission:
- All papers received by mail are date stamped with the actual date of receipt, regardless of any Certificate of Mailing.
- For papers with a Certificate of Mailing or Transmission, the date on the certificate is used to determine if the paper was filed within the period for reply.
- If the paper is received within the period for reply, the actual receipt date is used for all purposes.
- If the paper is received after the period for reply, but the certificate date is within the period, the paper is considered timely filed. In this case, a notation is made next to the ‘Office Date’ stamp indicating the certificate date (e.g., ‘C of Mail 11/10/97’).
- For facsimile transmissions, the date stamped is the date the complete transmission is received, 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 business day.
- For EFS-Web submissions, the receipt date is the date the correspondence is received at the USPTO’s correspondence address when it was officially submitted, which can include weekends and holidays.
The MPEP states: “The date indicated on the Certificate of Mailing or of Transmission will be used by the Office only to determine if the paper was deposited in the United States Postal Service, transmitted by facsimile or transmitted via EFS-Web within the period for reply.”
How does the USPTO handle correspondence submitted in violation of the rules?
The USPTO has specific procedures for handling correspondence submitted in violation of the rules. According to MPEP 501:
‘Correspondence submitted to the U.S. Patent and Trademark Office in violation of the rules as to paying fees, manner of presenting papers, or other formal matters will not be filed.’
However, the USPTO does provide a grace period and notification process:
- The Office may notify the submitter of the violation and set a period for correction.
- If the violation is corrected within the set period, the document will be considered as having been filed on the date of receipt of the correction.
It’s crucial for applicants to adhere to USPTO rules to avoid potential delays or non-filing of their correspondence. If a violation occurs, prompt correction based on USPTO notification is essential to maintain the original filing date.
How does the USPTO handle correspondence sent by Priority Mail Express®?
The USPTO treats correspondence sent by Priority Mail Express® (formerly Express Mail) with special consideration. According to MPEP 502:
“Any correspondence received by Priority Mail Express® will be considered filed with the USPTO on the date of deposit with the United States Postal Service.”
This means that the date of deposit with USPS is considered the filing date at the USPTO, which can be crucial for meeting deadlines. However, it’s important to note that:
- The Priority Mail Express® label number must be placed on the correspondence.
- The filing date accorded to Priority Mail Express® is only applicable to the specific items deposited with USPS.
Always keep your Priority Mail Express® mailing receipt as proof of the deposit date.
For more information on Priority Mail Express, visit: Priority Mail Express.
For more information on USPS, visit: USPS.
For more information on USPTO correspondence, visit: USPTO correspondence.
The USPTO does not receive or process correspondence on Saturdays, Sundays, or Federal holidays within the District of Columbia, with some exceptions. According to 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. Except for correspondence transmitted by facsimile under paragraph (a)(3) of this section, or filed electronically under paragraph (a)(4) of this section, no correspondence is received in the Office on Saturdays, Sundays, or Federal holidays within the District of Columbia.
When the last day for taking action or paying a fee falls on a weekend or holiday, it’s considered timely if done on the next business day: 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.
How does the USPTO handle correspondence received after official hours?
The USPTO has specific procedures for handling correspondence received outside of official business hours:
- Correspondence delivered to the USPTO after business hours is considered filed on the next business day.
- There are exceptions for certain types of time-sensitive filings.
MPEP 502 states: ‘Correspondence placed in the USPTO’s night box before midnight on weekdays (except federal holidays) will receive a filing date of the succeeding business day.’ This means that documents deposited in the night box after business hours but before midnight will be treated as if they were received on the next business day.
For electronic filings, the USPTO’s Electronic Filing System (EFS-Web) is generally available 24/7, allowing for submissions outside of regular business hours. However, the actual filing date may still be affected by the time of submission.
How does the USPTO handle correspondence during emergency situations?
The USPTO has provisions for handling correspondence during emergency situations, such as severe weather or other unforeseen circumstances:
- The USPTO may designate certain days as ‘Federal holidays within the District of Columbia’ under specific conditions.
- This designation affects filing dates and deadlines.
MPEP 502 states: ‘When the entire USPTO is officially closed for business for an entire day due to an emergency situation, the Office will consider each such day a ‘Federal holiday within the District of Columbia’ under 35 U.S.C. 21.’ This means that deadlines falling on such days will be extended to the next business day, similar to federal holidays.
During emergencies, the USPTO typically issues public notices and updates its website to inform stakeholders about any changes to operations or filing procedures. It’s crucial for patent applicants and attorneys to stay informed about such announcements to ensure compliance with modified deadlines and procedures.
How does the USPTO handle correspondence delivered by EXPRESS MAIL?
The USPTO has specific procedures for handling correspondence delivered by EXPRESS MAIL. According to MPEP 502:
“Any correspondence delivered by the ‘Express Mail Post Office to Addressee’ service of the United States Postal Service (USPS) is considered filed or received in the Office on the date of deposit with the USPS.”
This means that the date of deposit with the USPS is considered the filing date at the USPTO, provided that:
- The correspondence is properly addressed to the USPTO
- The proper address is on the EXPRESS MAIL mailing label
- The EXPRESS MAIL mailing label number is placed on the correspondence
It’s important to note that this applies only to the USPS EXPRESS MAIL service and not to similar services provided by private courier companies.
For more information on Express Mail, visit: Express Mail.
For more information on USPTO correspondence, visit: USPTO correspondence.
The USPTO treats applications with omitted drawings similarly to those with missing specification pages. According to MPEP 506:
In the event that a page of the specification, or a portion thereof, or a page of the drawings, or a portion thereof, is inadvertently omitted from an application as filed, the application will be not be considered complete and the applicant will be notified to file the omitted portion.
If drawings are omitted, the applicant will be notified and given a time period to submit the missing drawings. However, adding new drawings after the filing date may affect the application’s effective filing date if they introduce new matter. It’s crucial to include all necessary drawings with the initial application to avoid potential issues.
For more information on new matter, visit: new matter.
When an application is filed with missing parts, the USPTO follows these procedures:
- If the application meets minimum requirements for a filing date, it will be assigned one.
- A Notice to File Missing Parts will be issued, detailing the missing items.
- Applicants must submit missing items along with any required surcharges within the specified time period.
- For applications filed on or after September 16, 2012, the inventor’s oath or declaration can be postponed until payment of the issue fee if a compliant application data sheet is filed.
- For applications filed on or after December 18, 2013, filing of claims can be postponed until the expiration of the time period set in the Notice to File Missing Parts.
The MPEP states: ‘The inventor’s oath or declaration, basic filing fee, and search fee and examination fee as set forth in 37 CFR 1.16, may be filed later than the remaining application papers, but if so, they must be accompanied by the required surcharge (if appropriate, see MPEP § 506).’ (MPEP 503)
How does the USPTO assign application numbers to continuation or divisional applications?
The USPTO assigns application numbers to continuation or divisional applications in the same manner as new applications. According to MPEP 503:
A continuation or divisional application (including a continued prosecution application) filed under 37 CFR 1.53(b) is assigned a new application number.
This means:
- Each continuation or divisional application receives a unique number
- The number is assigned in the same sequence as other new applications
- The application number does not indicate its relationship to the parent application
It’s important to reference the parent application in the appropriate sections of the new application to establish the continuity.
For more information on continuation application, visit: continuation application.
For more information on Divisional application, visit: Divisional application.
For more information on USPTO procedures, visit: USPTO procedures.
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.
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The Certificate of Mailing or Transmission can significantly affect the timeliness of USPTO submissions. According to MPEP 512:
“The date indicated on the Certificate of Mailing or Transmission will be used by the Office as the date of receipt of the paper or fee.”
This means that even if there are delays in postal or electronic transmission, your submission will be considered timely if the certificate date is within the required deadline. However, it’s important to note that the actual mailing or transmission must occur on or before the certificate date. False certificates can lead to serious consequences, including invalidation of the submission and potential disciplinary action.
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The Certificate of Mailing or Transmission can affect filing date calculations in several ways:
- For timely filing: If a paper with a certificate is received after a deadline but the certificate date is within the deadline, the paper is considered timely filed. The MPEP states: “If the date stated is within the period for reply, the reply in most instances will be considered to be timely.”
- For actual receipt date: The USPTO will continue to stamp the actual date of receipt on all papers. According to the MPEP: “The receipt date stamped on all papers will also be the date which is entered on Office records and from which any subsequent periods are calculated.”
- For subsequent deadlines: If a paper starts a new period for reply, that period is calculated from the actual receipt date, not the certificate date. For example: “If the last day to reply to a final Office action was November 10, 2014, and applicant deposited a Notice of Appeal with fee in the U.S. mail on November 10, 2014, and so certified, that appeal is timely even if it was not received in the U.S. Patent and Trademark Office until November 12, 2014. Since the date of receipt of the notice of appeal will be used to calculate the time at which the brief is due, the brief was due on January 12, 2015.”
It’s important to note that while the certificate can establish timely filing, it doesn’t change the actual receipt date for other USPTO processing purposes.
The application filing limit for micro entity status works as follows:
- An applicant must not have been named as an inventor on more than 4 previously filed patent applications
- This limit excludes provisional applications, foreign applications, and PCT applications where the basic national fee was not paid
- Applications filed as a result of previous employment where rights were assigned don’t count towards the limit
MPEP 509.04(a) clarifies: ‘It does not matter how long ago the previous applications were filed or whether the previously filed applications are pending, patented, or abandoned; they are still included when counting to determine whether the application filing limit has been reached.’
Paying a small entity fee has significant implications for certifying small entity status. According to MPEP 509.03(a), “Consistent with 37 CFR 1.4(d)(4), the payment of a small entity basic filing or national fee constitutes a certification under 37 CFR 11.18(b).” This means that simply paying the small entity fee, even without a specific written assertion, activates the self-certification requirement. Applicants should be aware that this payment invokes the certification provisions, regardless of whether they are a practitioner or non-practitioner.
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When an application is filed with informal drawings, the Office of Patent Application Processing (OPAP) will review the drawings to determine if they can be used for publication purposes. If the drawings are not acceptable for publication purposes, OPAP will object to the drawings and require corrected drawings within a set time period, usually two months. This objection does not affect the filing date of the application, and applicants can correct the drawings later in the examination process if needed.
How does licensing affect small entity status?
Licensing can significantly impact small entity status. According to MPEP 509.03:
An applicant or patentee is not considered a small entity if any rights in the invention have been assigned, granted, conveyed, or licensed to an entity that would not qualify for small entity status.
This means:
- If a small entity licenses rights to a large entity, small entity status is lost.
- Exclusive licenses generally result in loss of small entity status.
- Non-exclusive licenses may not affect status if they don’t convey all significant rights.
It’s crucial to review all licensing agreements before claiming small entity status. Any change in licensing that affects status must be reported to the USPTO promptly.
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Licensing can significantly impact small entity status for patent fees. The MPEP provides specific guidance on this matter:
Rights conveyed by an applicant or patentee to a Government agency are not considered to be license for purposes of this paragraph. A Government agency includes any agency of the Federal Government or military department of the Government.
This means that licensing to a government agency does not affect small entity status. However, licensing to other entities can impact your status:
- If you license rights to a large entity, you may lose your small entity status.
- Exclusive licenses to large entities typically disqualify you from small entity status.
- Non-exclusive licenses may not affect your status, depending on the terms.
It’s crucial to review any licensing agreements carefully and consult with a patent attorney to determine how they might affect your small entity status.
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How does licensing affect small entity status for a business concern?
Licensing can significantly impact a business concern’s eligibility for small entity status. According to MPEP 509.02:
“Rights to an invention are considered as assigned, granted, conveyed, or licensed when they are held by an entity other than the inventor, and they are not qualified for small entity status.”
This means that if a business concern has licensed rights to the invention to any person or entity that does not qualify as a small entity, it may lose its small entity status. Specifically:
- If the business has licensed rights to a large entity, it cannot claim small entity status.
- Exclusive licenses to large entities will disqualify the business from small entity status.
- Non-exclusive licenses may not affect small entity status if they are arms-length agreements.
It’s crucial for businesses to carefully consider the impact of licensing agreements on their small entity status before entering into such arrangements.
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How does licensing affect micro entity status eligibility?
Licensing can significantly impact an applicant’s eligibility for micro entity status. According to the MPEP:
“The applicant has not assigned, granted, or conveyed, nor is under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding 3 times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census.”
This means that if you’ve licensed or are obligated to license your application to a high-income entity (exceeding 3 times the median household income), you may not be eligible for micro entity status. It’s crucial to consider any existing or potential licensing agreements when determining your eligibility.
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How does government funding affect small entity status?
Government funding can impact small entity status, particularly for universities and small businesses. The MPEP 509.03 provides guidance:
A small business concern or nonprofit organization is not disqualified as a small entity because of a license to the Federal government pursuant to 35 U.S.C. 202(c)(4).
This means:
- Receiving government funding does not automatically disqualify an entity from small entity status.
- The government’s license rights under the Bayh-Dole Act do not negate small entity status.
- However, other types of government agreements or contracts might affect status.
It’s important to carefully review the terms of any government funding or agreements to determine if they impact small entity eligibility. When in doubt, consult with a patent attorney or the USPTO for clarification.
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How does employment at an institution of higher education affect micro entity status?
Employment at an institution of higher education can provide a pathway to micro entity status. The MPEP states:
“A micro entity shall also include an applicant who certifies that: (1) The applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or (2) The applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular application to such an institution of higher education.” (MPEP 509.04(d))
This means that if you are employed by a qualifying institution of higher education and receive the majority of your income from it, or if you have assigned or are obligated to assign your rights in the application to such an institution, you may be eligible for micro entity status. This provision can be particularly beneficial for academic researchers and inventors.
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How does employment affect micro entity status for inventors?
An inventor’s employment can significantly impact their eligibility for micro entity status. The MPEP provides specific guidelines:
“[A]n applicant is not considered to be named on more than four previously filed patent applications if the applicant has assigned, or is under an obligation to assign, all ownership rights in the applications as the result of the applicant’s previous employment.” (MPEP 509.04(a))
This means that if an inventor has previously filed patent applications as part of their job, and they have assigned or are obligated to assign the rights to their employer, these applications don’t count towards the four-application limit for micro entity status. However, it’s crucial to note that:
- The inventor must not be currently named as an inventor on more than four non-provisional patent applications.
- The inventor’s current employer must not be considered a non-micro entity.
Inventors should carefully evaluate their employment situation and patent history when determining their eligibility for micro entity status.
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How does claiming small entity status affect patent fees?
Claiming small entity status can significantly reduce patent fees. According to MPEP 509.03, “Claiming small entity status allows the payment of certain reduced patent fees pursuant to 35 U.S.C. 41(h)(1).” This means that small entities, such as independent inventors, small businesses, and nonprofit organizations, can pay reduced fees for many patent-related services, typically 50% of the standard fee. However, it’s important to ensure eligibility before claiming this status to avoid potential issues later in the patent process.
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Assigning ownership rights can significantly affect micro entity status. The MPEP provides the following guidance:
- An applicant is disqualified from micro entity status if they transfer, or are obligated to transfer, any ownership interest to an entity that exceeds the gross income limit.
- If an inventor assigns all rights to an employer that exceeds the gross income limit, micro entity status cannot be claimed.
- Even if rights are later transferred back to the inventor or to another person who doesn’t exceed the gross income limit, micro entity status cannot be regained.
The MPEP states: “Once an assignee or licensee exceeding the gross income limit receives the ownership interest, the 37 CFR 1.29(a)(4) certification requirement can no longer be met – even if the assignee or licensee retransfers rights and no longer holds any ownership interest in the application.“
It’s important to note that this applies to both actual transfers and obligations to transfer ownership rights.
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A security interest in a patent or patent application generally does not affect small entity status unless it is defaulted upon. According to 37 CFR 1.27(a)(5):
A security interest does not involve an obligation to transfer rights in the invention for the purposes of paragraphs (a)(1) through (a)(3) of this section unless the security interest is defaulted upon.
This means that an applicant or patentee can take out a loan secured by rights in a patent application or patent without losing small entity status, even if the lender is a large entity. However, if the loan is defaulted upon and the security interest is enforced, resulting in a transfer of rights to a non-small entity, the small entity status would be lost.
In such cases, the USPTO must be notified of the loss of entitlement to small entity status prior to or at the time of paying the earliest of the issue fee or any maintenance fee due after the date on which small entity status is no longer appropriate.
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A general authorization allows the USPTO to charge certain fees to your deposit account without requiring specific authorization for each fee. The MPEP states:
A general authorization to charge all fees, or only certain fees, set forth in §§ 1.16 to 1.18 to a deposit account containing sufficient funds may be filed in an individual application, either for the entire pendency of the application or with respect to a particular paper filed.
Key points about general authorizations:
- They can cover fees under 37 CFR 1.16 and 1.17
- Fees under 37 CFR 1.19, 1.20, and 1.21 are generally not covered
- Issue fees (37 CFR 1.18) require a separate authorization after the notice of allowance
- The authorization should be clear and unambiguous to avoid misinterpretation
Always ensure your deposit account has sufficient funds to cover authorized fees to avoid potential application abandonment or additional expenses.
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To use a Certificate of Mailing or Transmission, you must include a signed certification with your correspondence. The MPEP provides suggested formats for these certificates:
“The following are suggested formats for either a Certificate of Mailing or Certificate of Transmission under 37 CFR 1.8(a). The certification may be included with all correspondence concerning this application or proceeding to establish a date of mailing or transmission under 37 CFR 1.8(a).”
The certificate should include:
- A statement certifying the date of mailing or transmission
- The signature of the person making the certification
- The application number (if known)
It’s important to note that the certificate must be signed by someone with a reasonable basis to expect the correspondence would be mailed or transmitted on or before the date indicated.
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How do I set up a deposit account with the USPTO?
To set up a deposit account with the USPTO:
- Visit the USPTO Deposit Accounts page
- Download and complete the Deposit Account Application Form
- Submit the form with an initial deposit (minimum $1,000)
- 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.
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To properly use a certificate of mailing for patent correspondence, follow these steps:
- Prepare your correspondence.
- Attach a certificate of mailing to each piece of correspondence.
- Include the required information on the certificate.
- Sign and date the certificate.
- Mail the correspondence with the attached certificate.
According to MPEP 512:
Each piece of correspondence for which a certificate is filed must include a signed and dated certificate which sets forth the date of deposit or transmission.
Ensure that you follow these guidelines to properly use the certificate of mailing procedure.
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When filing patent correspondence, you should include the following identifying information:
- Application number (checked for accuracy, including series code and serial number)
- Art Unit number (copied from most recent Office communication)
- Filing date
- Name of the examiner who prepared the most recent Office action
- Title of invention
- Confirmation number
As stated in 37 CFR 1.5(a): ‘When correspondence directed to the Patent and Trademark Office concerns a previously filed application for a patent, it must identify on the top page in a conspicuous location, the application number (consisting of the series code and the serial number; e.g., 07/123,456), or the serial number and filing date assigned to that application by the Patent and Trademark Office, or the international application number of the international application, or the international registration number of an international design application.’
How do I correct an error in micro entity status if I underpaid fees?
If you erroneously paid fees as a micro entity when you were not entitled to that status, resulting in an underpayment, you need to take the following steps:
- Submit a written assertion of small entity status (if eligible) or a written assertion to establish non-small entity status.
- Pay the fee deficiency, which is the difference between the amount paid and the amount due.
As stated in MPEP 509.04(f): “A written assertion to establish non-small entity status must be accompanied by the difference between the current amount due and the amount previously paid.”
It’s important to correct the error promptly to avoid potential issues with your patent application or granted patent.
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How do I claim small entity status for a patent application?
To claim small entity status for a patent application, follow these steps:
- Determine eligibility: Ensure you meet the criteria for small entity status as defined in 37 CFR 1.27(a).
- Submit a written assertion: Provide a written assertion of entitlement to small entity status. This can be done by:
- Checking the appropriate box on a patent application transmittal form
- Submitting a separate paper specifically asserting small entity status
- Paying small entity fees (which is considered a written assertion)
- Timing: You can claim small entity status at any time during the pendency of the application or after the patent issues.
As stated in MPEP 509.03, “A small entity status assertion must be filed in each application or patent in which the small entity is desired to claim such status.”
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To certify micro entity status, you must file a certification form with the USPTO. The USPTO provides two forms:
- Form PTO/SB/15A for certifying under the gross income basis
- Form PTO/SB/15B for certifying under the institution of higher education basis
The certification must be signed by an authorized party as defined in 37 CFR 1.33(b). It should be filed prior to or at the time of paying the first fee as a micro entity.
Inventors or applicants can qualify for micro entity status through an institution of higher education in two ways:
- If the inventor is an employee of an institution of higher education and obtains the majority of their income from that institution.
- If the applicant has assigned, granted, conveyed, or is obligated to assign, grant, or convey a license or other ownership interest in the application to an institution of higher education.
MPEP 509.04(b) states: “Under 37 CFR 1.29(d)(2)(i) the applicant must certify that the applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education. … Under 37 CFR 1.29(d)(2)(ii) the applicant must certify that the applicant has assigned, granted, or conveyed a license or other ownership interest in the subject application (or is obligated to do so) to such an institution of higher education.”
In both cases, the applicant must also meet the small entity requirement.
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How can I request a refund for my USPTO deposit account?
To request a refund for your USPTO deposit account, you need to follow these steps:
- Submit a written request to the USPTO Office of Finance
- Include your deposit account number and the amount to be refunded
- Provide a detailed explanation for the refund request
The MPEP states: “A refund to a deposit account may be made on request to the Office of Finance.” (MPEP 509.01)
It’s important to note that refunds are typically processed for overpayments or erroneous charges. The USPTO will review your request and determine if a refund is warranted based on the circumstances provided in your explanation.
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How can I replenish my USPTO deposit account?
You can replenish your USPTO deposit account through various methods. According to MPEP 509.01, “Deposits to these accounts may be made by electronic funds transfer, credit card, or check.” Here are the options:
- Electronic Funds Transfer (EFT): This is the preferred method for replenishing deposit accounts.
- Credit Card: You can use a credit card to add funds to your account.
- Check: Checks can be mailed to replenish the account balance.
For detailed instructions on each method, visit the USPTO’s Receipts Accounting Policies page.
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To regain micro entity status after losing it, you must file a new certification of entitlement to micro entity status. As stated in MPEP 509.04(e):
Once a notification of a loss of entitlement to micro entity status is filed in the application or patent, a new certification of entitlement to micro entity status is required to again obtain micro entity status.
This means you must:
- Ensure you meet the criteria for micro entity status as defined in 37 CFR 1.29(a) or 1.29(d)
- File a new certification form (PTO/SB/15A or PTO/SB/15B) in the application or patent
- Meet all other requirements for micro entity status
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You can petition the USPTO Director to consider correspondence as filed on a particular date if it was returned or refused by the USPS due to a Priority Mail Express® interruption or emergency. The petition process is outlined in 37 CFR 1.10(g) and (h):
- File the petition promptly after becoming aware of the return or refusal
- Include the original correspondence or a copy showing the Priority Mail Express® mailing label number
- Provide a copy of the Priority Mail Express® mailing label showing the “date accepted” (for returned mail)
- Include a statement establishing the original deposit attempt and that the correspondence is the original or a true copy
- The USPTO may require additional evidence to verify the interruption or emergency
As stated in MPEP 511: “37 CFR 1.10(g) provides a procedure under which applicant may petition the Director to have correspondence that was returned by the USPS due to an interruption or emergency in Priority Mail Express® service considered as filed on a particular date in the Office.”
If your correspondence is affected by a postal emergency, you can petition the Director to consider it filed on a particular date under certain conditions. The process depends on whether your mail was returned, refused, or unable to be deposited. Here’s a summary of the petition requirements based on MPEP 511:
- For returned correspondence (37 CFR 1.10(g)):
- File promptly after becoming aware of the return
- Include the original or copy of correspondence with Priority Mail Express® label
- Provide a statement establishing the original deposit
- For refused correspondence (37 CFR 1.10(h)):
- File promptly after becoming aware of the refusal
- Include the original or copy of correspondence with Priority Mail Express® label
- Provide a statement establishing the original attempt to deposit
- For correspondence unable to be deposited (37 CFR 1.10(i)):
- File promptly in a manner designated by the Director
- Include the original or copy of correspondence
- Provide a statement establishing that the correspondence would have been deposited but for the emergency
For more detailed information on filing these petitions, refer to MPEP § 513, subsections IX-XI.
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How can I pay patent fees to the USPTO?
The USPTO offers several methods for paying patent fees. According to MPEP 509:
“Fees can be paid: (A) by credit card, (B) by electronic funds transfer (EFT), (C) by check, (D) by money order, (E) by deposit account, or (F) in cash (for hand-carried applications only).”
Here’s a breakdown of these payment methods:
- Credit Card: Accepted online or by mail/fax using Form PTO-2038
- Electronic Funds Transfer (EFT): Available through the USPTO’s Electronic Filing System (EFS-Web)
- Check or Money Order: Made payable to the Director of the USPTO
- Deposit Account: A pre-established account with the USPTO
- Cash: Only for in-person payments at the USPTO office
For most applicants, online payment methods (credit card or EFT) are the most convenient and efficient options.
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How can I pay fees to the USPTO electronically?
The USPTO offers several electronic payment options for paying fees:
- Credit or Debit Card: You can pay using major credit or debit cards through the USPTO’s secure online system.
- Electronic Funds Transfer (EFT): This allows for direct transfer from your bank account to the USPTO.
- USPTO Deposit Account: Maintain a pre-funded account with the USPTO for easy fee payments.
According to MPEP 509, “The Office accepts the following forms of payment: […] by credit card, by electronic funds transfer (EFT), or by a USPTO deposit account.” Electronic payments are convenient and often processed more quickly than other methods.
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There are two main ways to obtain a receipt for items filed with the USPTO:
- 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.
- 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)
To correct an error in micro entity status, you need to follow the procedure outlined in 37 CFR 1.29(k). This involves:
- Submitting a separate deficiency payment for each application or patent
- Providing an itemization of the total deficiency payment
- Paying the deficiency owed
The MPEP states: 37 CFR 1.29(k) contains provisions for a micro entity that correspond to the provisions of 37 CFR 1.28(c) for a small entity.
This means the process is similar to correcting small entity status errors.
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How can I correct an error in micro entity status if I’m no longer eligible?
If you discover that you’re no longer eligible for micro entity status, you should promptly notify the USPTO and pay the deficiency in fees. The MPEP states:
“A notification of loss of entitlement to micro entity status must be filed in the application or patent prior to paying, or at the time of paying, any fee after the date on which status as a micro entity is no longer appropriate.” (MPEP 509.04(f))
To correct the error:
- File a notification of loss of entitlement to micro entity status
- Pay the deficiency between the micro entity fees paid and the fees that should have been paid
- Include any required surcharge for the late payment of the fee deficiency
It’s crucial to address this promptly to avoid potential issues with your patent application or granted patent.
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To find out if the USPTO is officially closed on any particular day, you can:
- Call 1-800-PTO(786)-9199
- Call (571) 272-1000
These phone numbers are provided in MPEP 510 for obtaining information about USPTO closures.
An applicant can request review of a refusal to accord a filing date by filing a petition. 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.
The petition should be marked to the attention of the Office of Petitions. If the applicant believes no defect exists, they may include a request for refund of the petition fee in the petition.
If a patent application is missing a required part, the applicant can correct the deficiency as follows:
- The USPTO will send a Notice of Missing Parts identifying the deficiency
- The applicant must submit the missing part within the time period specified in the notice (usually two months)
- A surcharge fee may be required along with the submission of the missing part
- For certain missing parts, like claims or drawings, a supplemental oath or declaration may be required for applications filed before September 16, 2012
The MPEP states: In such cases where the basic filing fee, the search fee, the examination fee, and the application size fee are paid, but additional fees are required, under 37 CFR 1.16, a notice is mailed by OPAP or the Technology Center (TC), requiring that the balance of the prescribed fee be paid.
It’s important to respond promptly to any Notice of Missing Parts to avoid abandonment of the application. If the applicant believes the part was not actually missing, they can file a petition for review of the Notice.
For more information on missing parts, visit: missing parts.
To authorize email communications with the USPTO, an applicant must provide a written authorization. According to MPEP 502.03:
‘The written authorization may be submitted via EFS-Web, mail, or fax. It cannot be submitted by email.’
The USPTO provides a sample authorization form:
‘Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.’
To facilitate processing, the USPTO recommends using Form PTO/SB/439, available at www.uspto.gov/patent/patents-forms. This form can be filed via EFS-Web using the document description ‘Internet Communications Authorized’.
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An applicant can appeal a refusal to grant a filing date by submitting a petition. 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)).”
When submitting a petition, the applicant should:
- Provide arguments that the noted items were not missing
- Explain why a filing date should be assigned even if certain items were absent (if they believe these items were unnecessary)
- Include a request for a refund of the petition fee if they allege no defect exists
Petitions related to filing dates are decided by the Office of the Deputy Commissioner for Patent Examination Policy. The MPEP advises:
“Any petition under this section should be marked to the attention of the Office of Petitions.”
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Priority Mail Express® submissions to the USPTO are treated differently in terms of dating. According to 37 CFR 1.6(a)(2):
Correspondence filed in accordance with § 1.10 will be stamped with the date of deposit as Priority Mail Express® with the United States Postal Service.
This means that new patent applications filed using Priority Mail Express® will be stamped with the date they were deposited with USPS, even if that date is a Saturday, Sunday, or federal holiday. The MPEP provides an example:
For example, if a new patent application is deposited in Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date.
Patent applications are initially processed by the USPTO through electronic scanning and loading into the Image File Wrapper (IFW) system. According to MPEP 508, “All applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing. Once documents are loaded into the IFW system, examiners, technical support staff, and other Office personnel will perform further processing and examination using the IFW system.”
Patent applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing. As stated in the MPEP, All applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing.
This digital system allows examiners, technical support staff, and other Office personnel to perform further processing and examination efficiently.
For physical items such as models, exhibits, and specimens, special handling procedures are in place. The MPEP directs readers to MPEP § 608.03 and 608.03(a) for more information on these items.
For more information on image file wrapper, visit: image file wrapper.
For more information on patent application filing, visit: patent application filing.
For more information on USPTO procedures, visit: USPTO procedures.
Nonprovisional patent applications are assigned for examination through the Patents Service for Time and Application Routing (PSTAR) program. According to MPEP 504, “The Patents Service for Time and Application Routing (PSTAR) program assigns each nonprovisional application to an examiner.” This system ensures that each application is routed to an appropriate examiner based on factors such as the application’s subject matter and the examiner’s expertise.
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When the entire USPTO is officially closed for business for an entire day due to adverse weather or other causes:
- The day is considered a “Federal holiday within the District of Columbia” under 35 U.S.C. 21
- Any action or fee due on such a day may be taken or paid on the next succeeding business day the Office is open
MPEP 510 states: “When the entire USPTO is officially closed for business for an entire day, for reasons due to adverse weather or other causes, the Office will consider each such day a ‘Federal holiday within the District of Columbia’ under 35 U.S.C. 21. Any action or fee due on such a day may be taken, or fee paid, on the next succeeding business day the Office is open.”
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Errors in small entity status can be excused if they were made in good faith. According to 37 CFR 1.28(c): ‘If status as a small entity is established in good faith, and fees as a small entity are paid in good faith, in any application or patent, and it is later discovered that such status as a small entity was established in error, or that through error the Office was not notified of a loss of entitlement to small entity status as required by § 1.27(g)(2), the error will be excused upon: compliance with the separate submission and itemization requirements of paragraphs (c)(1) and (c)(2) of this section, and the deficiency payment requirement of paragraph (c)(2) of this section.’
To correct the error, you must:
- Submit a separate deficiency payment for each application or patent
- Provide an itemized list of the fees paid in error
- Pay the deficiency owed (difference between the small entity fee paid and the current non-small entity fee)
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The USPTO has specific rules for dating electronically filed submissions. According to 37 CFR 1.6(a)(4):
Correspondence may be submitted using the Office electronic filing system only in accordance with the Office electronic filing system requirements. Correspondence submitted to the Office by way of the Office electronic filing system will be accorded a receipt date, which is the date the correspondence is received at the correspondence address for the Office set forth in § 1.1 when it was officially submitted.
The MPEP further clarifies: Similarly, correspondence submitted via the USPTO electronic filing system (EFS-Web) will be accorded a receipt date on the date the correspondence is received at the correspondence address for the Office set forth in 37 CFR 1.1 (i.e., local time in Alexandria, VA), without regard to whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia.
Electronically filed patent applications receive special treatment for date-stamping at the USPTO. According to MPEP 505, Correspondence submitted to the Office by way of the Office electronic filing system will be accorded a receipt date, which is the date the correspondence is received at the correspondence address for the Office set forth in § 1.1 when it was officially submitted.
Key points about electronic filing date-stamping:
- The receipt date is based on the time in Alexandria, VA (USPTO’s location)
- Electronic submissions can receive a date stamp on any day, including weekends and holidays
- The electronic filing system (EFS-Web) must be used in accordance with USPTO requirements
For more details on electronic filing, refer to MPEP § 502.05.
For more information on EFS-Web, visit: EFS-Web.
For more information on electronic filing, visit: electronic filing.
For more information on USPTO, visit: USPTO.
Application numbers for patent applications are assigned by the Office of Patent Application Processing (OPAP) as follows:
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- Nonprovisional applications are assigned numbers beginning with the series code ’15’ or ’16’.
- Design applications are assigned numbers beginning with the series code ’29’.
- Plant applications are assigned numbers beginning with the series code ’16’.
- Provisional applications are assigned numbers beginning with the series code ’62’.
- Reexamination proceedings are assigned numbers beginning with the series code ’90’.
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As stated in the MPEP 503, “The application number includes a two-digit series code and a six-digit serial number.” This system allows for efficient categorization and tracking of different types of patent applications.
For more information on application number, visit: application number.
For more information on patent application types, visit: patent application types.
For more information on series code, visit: series code.
For PCT applications entering the national stage in the United States, the application number assignment process is slightly different. The MPEP states:
‘For PCT applications entering the national stage under 35 U.S.C. 371, the USPTO assigns the national stage application a U.S. application number.’
This means that when an international PCT application transitions to the national stage in the U.S., it receives a new U.S. application number distinct from its international application number. This U.S. application number is used for all subsequent processing and correspondence related to the national stage application.
It’s important to note that this U.S. application number is different from the international application number (PCT/XX/YYYY/######) that was used during the international phase of the PCT application.
For more information on application number, visit: application number.
The USPTO assigns application numbers to patent applications immediately after mail has been opened. According to MPEP 503, application numbers consist of a series code and a serial number. The series codes are assigned based on the type of application and the time period in which it was filed. For example:
- 01/ – 16/ for nonprovisional applications (utility, plant, and reissue), with different ranges for specific time periods
- 29/ for design applications
- 35/ for international design applications
- 60/, 61/, and 62/ for provisional applications
- 90/ for ex parte reexamination proceedings
- 95/ for inter partes reexamination proceedings
- 96/ for supplemental examination proceedings and resulting ex parte reexamination proceedings
The MPEP notes: “If an application is filed using the USPTO patent electronic filing system, EFS-Web provides an Acknowledgement Receipt that contains a time and date stamp, an application number and a confirmation number.”
It’s important to note that the application number on a filing receipt is the official number, which may differ from any preliminary number provided on a postcard receipt.
For more information on application number, visit: application number.
For more information on patent application types, visit: patent application types.
For more information on serial number, visit: serial number.
For more information on series code, visit: series code.
No, the United States Patent and Trademark Office (USPTO) does not provide advisory opinions on whether an individual or organization qualifies for small entity status. The MPEP 509.03(a) clearly states: “The U.S. Patent and Trademark Office does not give advisory opinions as to whether or not a specific individual or organization qualifies as a small entity.” This policy is based on Congressional intent that the USPTO rely exclusively on self-certification for small entity status. Applicants are responsible for determining their status and making the appropriate self-certification.
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The Certificate of Mailing procedure does not apply to papers mailed from a foreign country. However, the Certificate of Transmission procedure can be used for correspondence transmitted to the USPTO from a foreign country, with some conditions. The MPEP states:
The Certificate of Transmission procedure for both facsimile transmissions and transmissions via EFS-Web, however, also applies to papers transmitted to the Office from a foreign country provided that the correspondence being transmitted is not prohibited from being transmitted by facsimile or via EFS-Web and is not otherwise precluded from receiving the benefits under 37 CFR 1.8.
This means that while you can’t use a Certificate of Mailing for papers sent by postal mail from outside the United States, you can use a Certificate of Transmission for faxes or EFS-Web submissions from foreign countries, as long as the specific type of correspondence is eligible for the certificate procedure.
Yes, submitting a deficiency payment for micro entity fee errors affects your micro entity status. According to 37 CFR 1.29(k)(4):
Any deficiency payment (based on a previous erroneous payment of a micro entity fee) submitted under this paragraph will be treated as a notification of a loss of entitlement to micro entity status under paragraph (i) of this section.
This means that by submitting a deficiency payment, you are effectively notifying the USPTO that you are no longer entitled to micro entity status. After making the deficiency payment, you will need to pay fees at the small entity or non-small entity rate, as applicable, unless you file a new certification of micro entity status.
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No, paying a fee in a non-micro entity amount does not automatically change your entity status. According to MPEP 509.04(e):
Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate.
To properly notify the USPTO of a change in entity status, you must file a separate notification in the application or patent. This notification must be filed prior to or at the time of paying any fee after the date on which micro entity status is no longer appropriate.
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No, you do not need to provide copies of U.S. patent documents when responding to an unlocatable file notice. The MPEP clearly states:
Since the Office can obtain copies of U.S. patent documents (U.S. patent application publications and patents) from its internal databases, the Office is not requiring applicants or patentees to provide copies of U.S. patent application publications and patents that are among the applicant’s or patentee’s record of the correspondence between the Office and the applicant or patentee for the application, patent, or other proceeding.
However, you must provide copies of all other correspondence and documents, including any appendix or information disclosure statement submitted with the application, unless specifically exempted in the notice.
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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.”
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Yes, video conferencing tools can be used for examiner interviews in patent applications, but there are specific requirements. According to MPEP 502.03:
‘USPTO video conferencing tools may be used to conduct examiner interviews in both published and unpublished applications under the Patent Internet Usage Policy.’
However, several conditions must be met:
- Authorization by the practitioner is required prior to sending a meeting invite.
- All video conferencing communications must be hosted by USPTO personnel.
- Interviews must originate from USPTO links provided by the examiner.
- Links from non-USPTO video conferencing tools are not acceptable.
The MPEP also states:
‘The practitioner’s participation in the interview is considered consent to the use of the video conferencing tool for the interview.’
It’s important to note that personal devices or non-USPTO tools cannot be used by USPTO employees for official communications.
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Yes, the USPTO has the authority to extend deadlines during a postal service emergency. This is based on the provisions outlined in MPEP 511 and 35 U.S.C. 21(a).
Specifically, MPEP 511 states:
The Director may designate the interruption or emergency as a ‘postal service interruption or emergency’ under 35 U.S.C. 21(a) and provide for ‘tolling’ of the time for filing correspondence, fees, or other papers for a limited time.
This means that:
- The USPTO Director can officially recognize the emergency
- Time limits for filing various patent-related documents can be extended
- The extension is typically for a specific, limited period
- Applicants may need to provide evidence that their delay was due to the recognized emergency
It’s important to note that while the USPTO has this authority, each situation is evaluated individually, and extensions are not automatically granted.
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Yes, for applications filed on or after September 16, 2012 (except reissue applications), the inventor’s oath or declaration can be postponed until the application is in condition for allowance, provided certain conditions are met:
- An application data sheet (ADS) in compliance with 37 CFR 1.76 must be filed identifying each inventor by their legal name, mailing address, and residence (if different from mailing address)
- The inventor’s oath or declaration must be filed no later than the date on which the issue fee is paid
The MPEP states: For applications filed on or after September 16, 2012 (except reissue applications), applicant may postpone filing the inventor’s oath or declaration until the application is in condition for allowance if an application data sheet (ADS) in compliance with 37 CFR 1.76 is filed identifying: (1) each inventor by their legal name; and (2) for each inventor, a mailing address where the inventor customarily receives mail, and residence, if the inventor lives at a location which is different from where the inventor customarily receives mail. See 37 CFR 1.53(f)(3).
This provision allows applicants more flexibility in completing the application requirements, but it’s important to ensure the oath or declaration is filed before paying the issue fee to avoid abandonment.
For more information on declaration, visit: declaration.
For more information on inventor’s oath, visit: inventor’s oath.
For more information on patent application requirements, visit: patent application requirements.
Yes, for applications filed on or after September 16, 2012 (except reissue applications), the filing of an inventor’s oath or declaration can be postponed. The MPEP states:
For applications filed on or after September 16, 2012 (except reissue applications), applicant may postpone filing the inventor’s oath or declaration until the application is in condition for allowance if an application data sheet (ADS) in compliance with 37 CFR 1.76 is filed identifying: (1) each inventor by their legal name; and (2) for each inventor, a mailing address where the inventor customarily receives mail, and residence, if the inventor lives at a location which is different from where the inventor customarily receives mail.
However, the inventor’s oath or declaration must be filed no later than the date on which the issue fee is paid.
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.
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Can small entity status be changed during the life of a patent?
Yes, small entity status can change during the life of a patent. 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.
Key points to remember:
- Status can change due to mergers, acquisitions, or licensing agreements.
- The USPTO must be notified of any change before paying the issue fee or maintenance fees.
- If status changes from small to large entity, future fees must be paid at the higher rate.
- Conversely, if an entity becomes eligible for small entity status, they can claim it for future fee payments.
It’s important to regularly review your entity status and update the USPTO as necessary to ensure compliance and proper fee payment.
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Can international applicants claim micro entity status based on gross income?
Yes, international applicants can claim micro entity status based on gross income, provided they meet the eligibility criteria. The MPEP 509.04(a) clarifies:
“For purposes of micro entity status, the gross income (instead of median household income) is used to determine entitlement to reduced patent fees.”
International applicants must:
- Calculate their gross income in U.S. dollars
- Meet the same income threshold as U.S. applicants
- Certify their eligibility under oath
The USPTO uses the World Bank’s gross national income (GNI) per capita figures for the applicant’s country of residence to determine the income threshold. Applicants should refer to the most recent World Bank data when assessing their eligibility.
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No, you should not use the “Hold for Pickup” service option when sending Priority Mail Express® to the USPTO. The reasons for this are:
- The USPTO does not have resources for picking up mail
- Mail sent using the “Hold for Pickup” service will not reach the Office
Always use the standard Priority Mail Express® Post Office to Addressee service when sending correspondence to the USPTO.
As stated in MPEP 511: “The Office does not have resources for picking up any mail. Therefore mail should NOT be sent using the ‘Hold for Pickup’ service option (whereby the mail is retained at the destination postal facility for retrieval by the addressee). Mail sent using the ‘Hold for pickup’ service will not reach the Office.”
Can I use my USPTO deposit account for international patent applications?
Yes, you can use your USPTO deposit account for certain fees associated with international patent applications. The MPEP states: “Deposit accounts can be used for payment of any patent process fee except for international phase fees paid to the International Bureau.” (MPEP 509.01)
This means you can use your deposit account for:
- PCT fees payable to the USPTO as a Receiving Office
- National stage entry fees for U.S. national applications
- Other USPTO-related fees for international applications
However, it’s important to note that fees payable directly to the International Bureau of WIPO cannot be charged to your USPTO deposit account. For those fees, you’ll need to use alternative payment methods specified by WIPO.
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Can I use hole-punched paper for my patent application?
No, you should not use hole-punched paper for your patent application. The USPTO has specific requirements regarding the paper used for patent applications, and hole-punched paper is explicitly prohibited.
As stated in MPEP 501: Holes should not be punched in the paper.
This requirement is in place to ensure that all documents can be properly scanned, stored, and processed by the USPTO without any loss of information or potential damage to the application papers. Using standard, unmarked paper without holes helps maintain the integrity of the document throughout the application process.
Yes, you can use email to respond to Office actions from the USPTO, but certain conditions must be met:
- You must have a written authorization on file for Internet communication.
- The response must be submitted through the USPTO’s secure email system or the Electronic Filing System (EFS-Web).
- The email must include all necessary information and attachments as required for the response.
MPEP 502.03 states: “Replies to Office actions may NOT be submitted by email unless specifically authorized.” This means that without proper authorization, email responses to Office actions will not be accepted.
It’s important to note that while email can be used, the USPTO recommends using EFS-Web for most communications, including responses to Office actions, as it provides a more secure and efficient method of submission.
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Yes, you can use a handwritten signature for electronically filed patent documents. The USPTO accepts a graphic representation of a handwritten signature when submitted via the USPTO patent electronic filing system.
According to 37 CFR 1.4(d)(3): “A graphic representation of a handwritten signature as provided for in 37 CFR 1.4(d)(1) will be accepted when submitted via the USPTO patent electronic filing system.”
This allows for the use of traditional handwritten signatures in electronic filings, providing flexibility for applicants and practitioners.
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The use of a Certificate of Mailing or Transmission for international patent applications is limited and depends on the specific type of correspondence. According to the MPEP and 37 CFR 1.8(a)(2)(i)(D)-(F), the certificate procedure does not apply to:
- The filing of an international application for patent
- The filing of correspondence in an international application before the U.S. Receiving Office, the U.S. International Searching Authority, or the U.S. International Preliminary Examining Authority
- The filing of a copy of the international application and the basic national fee necessary to enter the national stage
However, the Certificate of Transmission procedure can be used for some correspondence related to international applications if it’s being transmitted to the USPTO and is not otherwise prohibited. The MPEP states:
The Certificate of Transmission procedure for both facsimile transmissions and transmissions via EFS-Web, however, also applies to papers transmitted to the Office from a foreign country provided that the correspondence being transmitted is not prohibited from being transmitted by facsimile or via EFS-Web and is not otherwise precluded from receiving the benefits under 37 CFR 1.8.
It’s crucial to carefully review the specific requirements and limitations for international application correspondence to ensure proper and timely filing.
Yes, you can use a Certificate of Transmission for documents filed electronically through the USPTO’s Electronic Filing System (EFS-Web). The MPEP provides a suggested format for a Certificate of EFS-Web Transmission:
I hereby certify that this correspondence is being transmitted via the U.S. Patent and Trademark Office electronic filing system (EFS-Web) to the USPTO on [Date].
However, it’s important to note that EFS-Web submissions have their own timestamp system. According to 37 CFR 1.6(a)(4):
Correspondence submitted to the Office by way of the Office electronic filing system will be accorded a receipt date, which is the date the correspondence is received at the correspondence address for the Office set forth in § 1.1 when it was officially submitted.
This date can be a Saturday, Sunday, or federal holiday within the District of Columbia. The certificate can provide an additional layer of documentation for your submission date, but the EFS-Web timestamp is generally considered authoritative for determining the receipt date of electronic submissions.
The use of a Certificate of Mailing or Transmission for correspondence from outside the United States depends on the method of transmission. The MPEP clarifies:
“The Certificate of Mailing procedure does not apply to papers mailed in a foreign country. The Certificate of Transmission procedure for both facsimile transmissions and transmissions via EFS-Web, however, also applies to papers transmitted to the Office from a foreign country provided that the correspondence being transmitted is not prohibited from being transmitted by facsimile or via EFS-Web and is not otherwise precluded from receiving the benefits under 37 CFR 1.8.”
Therefore:
- You cannot use a Certificate of Mailing for papers mailed from outside the U.S.
- You can use a Certificate of Transmission for facsimile or EFS-Web transmissions from outside the U.S., as long as the correspondence is eligible for this procedure.
It’s important to verify that your specific type of correspondence is eligible for the Certificate of Transmission procedure before using it from outside the United States.
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No, the Certificate of Mailing or Transmission cannot be used for all USPTO correspondence. The MPEP 512 specifies certain types of correspondence that are excluded from the certificate practice:
“The Certificate of Mailing or Transmission procedure does not apply to: (A) Relative to Patents and Patent Applications— (1) The filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date…”
The MPEP lists several other exclusions, including certain international application filings, trademark-related filings, and correspondence filed in interference or trial proceedings. It’s crucial to review the full list in MPEP 512 to ensure compliance with USPTO rules.
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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.
Can I use a certificate of mailing for all USPTO correspondence?
While the certificate of mailing or transmission is a useful tool, it cannot be used for all types of USPTO correspondence. The MPEP 502 provides specific exceptions:
“The certification procedure under 37 CFR 1.8 is not available for: (A) Applications for patent under 35 U.S.C. 111(a), including reissue applications; (B) International applications for patent; (C) International design applications; (D) Requests for reexamination under 35 U.S.C. 302…”
This list continues with several other exceptions. It’s crucial to note that:
- New patent applications cannot use the certificate of mailing.
- International applications are excluded from this procedure.
- Certain time-sensitive documents require different filing methods.
For these excluded items, consider using Priority Mail Express® or electronic filing to ensure timely receipt by the USPTO. Always check the current regulations or consult with a patent professional to determine the appropriate filing method for your specific correspondence.
For more information on Certificate of Mailing, visit: Certificate of Mailing.
For more information on patent applications, visit: patent applications.
For more information on USPTO correspondence, visit: USPTO correspondence.
While certificates of mailing are widely applicable, they cannot be used for all types of patent-related correspondence. MPEP 512 outlines specific exceptions:
The Certificate of Mailing or Transmission procedure does not apply to the filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date.
Additionally, you cannot use a certificate of mailing for:
- Filing of an international application for patent
- Filing correspondence in an international application before the U.S. Receiving Office
- Filing a copy of the international application and the basic national fee to enter the national stage under 35 U.S.C. 371
Always check the current USPTO guidelines to ensure you’re using the correct filing method for your specific correspondence.
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According to MPEP 508.02, submitting additional information after a patent application has been abandoned is generally not possible. The section states:
“After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender.”
This means that once an application is abandoned, the USPTO will typically return any new submissions related to that application. However, there are some exceptions:
- Petitions to revive the abandoned application
- Requests for continued examination (RCE) in certain circumstances
- Appeals to the Patent Trial and Appeal Board, if filed within the appropriate timeframe
If you wish to submit additional information after abandonment, you should consult with a patent attorney to determine if any of these options are available in your specific case.
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Can I retroactively claim micro entity status for previously paid fees?
No, you cannot retroactively claim micro entity status for fees that have already been paid. The MPEP clearly states:
“A fee may be paid in the micro entity amount only if it is submitted with, or subsequent to, the submission of a certification of entitlement to micro entity status.” (MPEP 509.04(f))
This means:
- Micro entity status must be established before or at the time of paying fees at the micro entity rate
- You cannot request a refund for the difference between standard fees and micro entity fees for payments made before establishing micro entity status
- Future fees can be paid at the micro entity rate once status is properly established
To benefit from micro entity status, ensure you file the certification before paying any fees you wish to pay at the reduced rate.
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Can I pay patent fees in foreign currency?
No, the USPTO does not accept foreign currency for patent fee payments. According to MPEP 509: ‘All payments of money required for USPTO fees or services must be made in U.S. dollars and in the form of a cashier’s or certified check, Treasury note, national bank notes, or United States Postal Service money order.’
If you’re an international applicant, you’ll need to arrange for payment in U.S. dollars. Options include:
- Using an international credit card that can process payments in USD
- Establishing a U.S. bank account
- Using a registered U.S. attorney who can make payments on your behalf
It’s advisable to plan ahead for currency conversion to ensure timely payment of USPTO fees.
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Yes, you can hand-carry certain documents to the USPTO, but there are specific guidelines and limitations. According to MPEP 501:
Patent-related papers may be hand-carried to the Office in Alexandria, VA. Correspondence cannot be hand-carried to the Regional Offices. If the correspondence is hand-carried to the Office, with limited exceptions (see MPEP § 502, subsection III) it must be delivered to:
United States Patent and Trademark Office
Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
For trademark-related papers, there is a separate location:
Trademark-related papers may be filed at the “walk-up” window located in the Trademark Assistance Center, Madison East, Concourse Level, Room C55, 600 Dulany Street, Alexandria, VA 22314.
It’s important to note that while hand-carrying documents is possible, electronic filing is often faster and more efficient for most types of correspondence with the USPTO.
For more information on patent office procedures, visit: patent office procedures.
For more information on USPTO submission, visit: USPTO submission.
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.”
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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.”
Can I correct micro entity status errors retroactively?
Yes, you can correct micro entity status errors retroactively, but there are specific rules and time limitations to consider. According to MPEP 509.04(f):
“Errors in micro entity status may be rectified by filing a notification of a change in status … and paying the required fee deficiency.”
However, the ability to make retroactive corrections is subject to time constraints:
- For underpayments: You can correct the error at any time by paying the fee deficiency.
- For overpayments: You must file a micro entity certification and request a refund within the time period set in 37 CFR 1.29(k), which is generally within three months of the fee payment.
It’s crucial to address any status errors promptly to maintain the validity of your patent application or granted patent and to ensure compliance with USPTO regulations.
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No, you cannot correct micro entity status errors for multiple applications or patents in a single submission. The MPEP, citing 37 CFR 1.29(k)(1), states:
Any paper submitted under this paragraph must be limited to the deficiency payment (all fees paid in error) required for a single application or patent. Where more than one application or patent is involved, separate submissions of deficiency payments are required for each application or patent (see § 1.4(b)).
This means you must submit separate deficiency payments and itemizations for each application or patent where micro entity fees were erroneously paid. This requirement ensures clear and accurate processing of fee corrections for each individual case.
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Can I change my entity status during the patent application process?
Yes, you can change your entity status during the patent application process. The MPEP 509.03 states:
“Small entity status may be claimed in a pending application at any time before, or concurrently with, the payment of an issue fee.”
This means you can:
- Change from standard to small entity status
- Change from small entity to standard status
- Claim micro entity status if you qualify
To change your status, you must file a new written assertion of the desired status. Keep in mind that if you change to a higher fee status (e.g., from small to standard), you may need to pay any fee deficiencies for previously paid fees at the lower rate.
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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.
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Yes, foreign applicants can qualify for micro entity status if they meet all the requirements. The USPTO states in MPEP 509.04(a):
Small entities may claim reduced fees regardless of the country in which they are located. There is no restriction requiring that the person, small business concern, or nonprofit organization be located in the United States.
For applicants with income in foreign currency, 37 CFR 1.29(c) specifies: ‘If an applicant’s, inventor’s, joint inventor’s, or entity’s gross income in the preceding calendar year is not in United States dollars, the average currency exchange rate, as reported by the Internal Revenue Service, during that calendar year shall be used to determine whether the applicant’s, inventor’s, joint inventor’s, or entity’s gross income exceeds the threshold specified in paragraph (a)(3) or (4) of this section.’
No, for-profit universities do not qualify as ‘institutions of higher education’ for the purpose of establishing micro entity status. One of the requirements for an institution of higher education under the Higher Education Act of 1965 is that it must be non-profit.
MPEP 509.04(b) states: “One of the requirements for an ‘institution of higher education’ under section 101(a) of the Higher Education Act of 1965 is that the institution be non-profit. Therefore, for-profit universities and colleges do not qualify as an ‘institution of higher education’ for purposes of establishing micro entity status.”
This means that employees or those who have assigned rights to for-profit universities cannot claim micro entity status on this basis.
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Yes, filing unnecessary duplicate copies of patent correspondence can potentially cause processing delays at the USPTO. The MPEP 502.04 explicitly states:
When the Office does not require duplicate copies of a paper, the filing of multiple copies may cause a delay in processing by the Office.
This is one of the reasons why the USPTO discourages the submission of duplicate copies unless specifically required. To ensure efficient processing of your patent application or correspondence, it’s best to avoid submitting unnecessary duplicates.
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Yes, drawing corrections can be made after the application has been allowed. However, such corrections must be approved by the examiner before the application can be processed for issue. If extensive corrections are required, the examiner may require that the corrections be filed with a Request for Continued Examination (RCE) under 37 CFR 1.114.
No, color drawings cannot be submitted by facsimile to the USPTO. This is explicitly stated in MPEP 502.01 and 37 CFR 1.6(d)(4):
Facsimile transmissions are not permitted and, if submitted, will not be accorded a date of receipt in the following situations: … (4) Color drawings submitted under §§ 1.81, 1.83 through 1.85, 1.152, 1.165, 1.173, 1.437, or 1.1026;
The prohibition on faxing color drawings is due to the limitations of facsimile technology in accurately reproducing colors. Submitting color drawings via fax could result in loss of quality or details that are crucial for the proper examination and understanding of the invention.
If you need to submit color drawings for your patent application, you should use other approved methods, such as mailing or electronic filing through the USPTO’s electronic filing system (EFS-Web or Patent Center). Always refer to the most current USPTO guidelines for submitting color drawings to ensure compliance with their requirements.
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No, an officer of an assignee corporation is not authorized to sign a certification of micro entity status. According to MPEP 509.04(c):
“If any applicant is an assignee or other party under 37 CFR 1.46, and the assignee or other party is a corporation or organization rather than a person, a registered practitioner must sign the certification of micro entity status. An officer of the assignee corporation, for example, is not authorized to sign a certification of micro entity status.”
This means that for corporate assignees, only a registered patent practitioner can sign the micro entity certification.
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No, an institution of higher education cannot itself claim micro entity status. The micro entity status based on an institution of higher education is intended for inventors who are employees of such institutions or who have assigned rights to them, not for the institutions themselves.
MPEP 509.04(b) clarifies: “Although the 37 CFR 1.29(d) basis for qualifying for micro entity status is referred to as the ‘institution of higher education’ basis, it is not the institution of higher education that can qualify for micro entity status, but rather inventors who are employees of an institution of higher education (see 37 CFR 1.29(d)(2)(i)) or inventors or applicants who have conveyed ownership rights to an institution of higher education (see 37 CFR 1.29(d)(2)(ii)).”
The institution itself cannot logically make the certifications required under the regulations, such as certifying that its employer is an institution of higher education or that it has assigned rights to itself.
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Yes, an applicant can withdraw their authorization for email communication with the USPTO. According to MPEP 502.03:
‘A written authorization may be withdrawn by filing a signed paper clearly identifying the original authorization.’
The USPTO provides a sample form for withdrawing authorization:
‘The authorization given on______, to the USPTO to communicate with any practitioner of record or acting in a representative capacity in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application via video conferencing, instant messaging, or electronic mail is hereby withdrawn.’
To facilitate processing, the USPTO recommends using Form PTO/SB/439, available at www.uspto.gov/patent/patents-forms. This form can be filed via EFS-Web using the document description ‘Internet Communications Authorization Withdrawn’.
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Can an applicant with a license agreement qualify for micro entity status?
Yes, an applicant with a license agreement can potentially qualify for micro entity status, but there are specific conditions that must be met. The MPEP provides guidance on this:
“An applicant is not considered to have been named on a previously filed application if the applicant has assigned, or is under an obligation to assign, all ownership rights in the application as the result of the applicant’s previous employment.” (MPEP 509.04(a))
However, it’s important to note that:
- The license agreement must not transfer all substantial rights in the invention to a non-micro entity.
- If the licensee is not a micro entity, the applicant may lose their micro entity status.
- The applicant must still meet all other micro entity criteria, including income limitations and the four-application limit.
Applicants with license agreements should carefully review the terms of their agreements and consult with a patent attorney to determine if they still qualify for micro entity status.
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Yes, an applicant can submit missing parts of an application after the filing date, but this may affect the application’s effective filing date. The MPEP 506 states:
Such portion must be filed within the time period set by the Office in the notification by the Office of the omitted portion, or the application will be regarded as abandoned.
It’s important to note that submitting missing parts may result in a later effective filing date for the application, which could have implications for patent term and prior art considerations. Applicants should strive to submit complete applications initially to avoid potential complications.
For more information on effective filing date, visit: effective filing date.
For more information on missing parts, visit: missing parts.
Can an applicant claim micro entity status based on income from a foreign country?
Yes, an applicant can claim micro entity status based on income from a foreign country. The MPEP clarifies:
“For purposes of qualifying for micro entity status based on the gross income limit, the gross income in the foreign currency must be converted into United States dollars at the exchange rate in effect on the date the micro entity certification is filed.”
This means that if you’re an applicant from a foreign country, you can still qualify for micro entity status if your income, when converted to U.S. dollars, does not exceed the gross income limit. It’s important to use the correct exchange rate on the date of filing your micro entity certification to ensure accurate calculation.
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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.
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Can a small business qualify for micro entity status?
Yes, a small business can potentially qualify for micro entity status, but there are specific requirements to meet. The MPEP outlines two main paths for small businesses:
- Income-based qualification: If the small business’s income does not exceed three times the median household income in the preceding calendar year, it may qualify.
- Institution of higher education qualification: If the small business has assigned, granted, conveyed, or is under obligation to assign, grant, or convey a license or other ownership interest in the application to an institution of higher education.
The MPEP states:
“An applicant that qualifies as a micro entity under either the gross income basis or the institution of higher education basis can file a certification of micro entity status on either basis (but not both).”
It’s important to note that all parties involved (applicants, inventors, and joint inventors) must meet the requirements. For more details, refer to MPEP 509.04.
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No, patent applications that are entitled to a filing date will not be returned to the applicant, even if requested. This applies to applications filed by regular mail, Priority Mail Express, hand-delivery, or through the USPTO patent electronic filing system.
The MPEP clearly states: ‘Applications which are entitled to a filing date, whether filed by regular mail, by Priority Mail Express® under 37 CFR 1.10, by hand-delivery, by the USPTO patent electronic filing system, or otherwise, will not be returned to applicant even if requested.’ (MPEP 503)
Applicants should be careful not to file duplicate applications or applications not intended for filing, as fees paid for such applications are generally not refundable due to a change of purpose.
Once a patent application is filed and given a filing date, it generally cannot be returned or withdrawn. According to MPEP 503:
“Applications which are entitled to a filing date, whether filed by regular mail, by Priority Mail Express® under 37 CFR 1.10, by hand-delivery, by the USPTO patent electronic filing system, or otherwise, will not be returned to applicant even if requested.”
This policy is in place to maintain the integrity of the filing process and prevent potential abuse. Applicants should be careful not to file applications that are not intended to be filed, such as duplicates of already filed applications.
Furthermore, the MPEP cites 37 CFR 1.26(a), which states that a change of purpose after payment of a fee, such as when a party desires to withdraw a patent application for which a fee was paid, does not entitle the party to a refund of such fee.
If an applicant realizes they have filed an application in error or no longer wish to pursue it, they may choose to abandon the application. However, the application will remain on file with the USPTO and any fees paid will not be refunded.
For more information on application abandonment, visit: application abandonment.
For more information on application return, visit: application return.
Yes, nonprofit organizations can qualify for small entity status under certain conditions. According to 37 CFR 1.27(a)(3), a nonprofit organization that qualifies for small entity status is one that:
- Has not assigned, granted, conveyed, or licensed any rights in the invention to a non-small entity
- Is either:
- A university or other institution of higher education
- An organization described in section 501(c)(3) of the Internal Revenue Code and exempt from taxation under 501(a)
- A nonprofit scientific or educational organization qualified under a nonprofit organization statute of a state
- A foreign organization that would qualify under the above if it were located in the U.S.
It’s important to note that government organizations, whether domestic or foreign, cannot qualify as nonprofit organizations for small entity status purposes.
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Yes, a legal entity can sign patent correspondence, but there are specific requirements. According to MPEP 502.02:
When a document is to be signed by a corporation or another juristic entity, the signature must comply with 37 CFR 1.33(b)(3).
The requirements for a legal entity’s signature include:
- The name of the person signing
- Their capacity (e.g., President, CEO, General Counsel)
- The name of the legal entity
For example, a valid signature for a corporation might look like:
/John Smith, President, XYZ Corporation/
It’s important to note that the person signing must have the authority to bind the legal entity in matters before the USPTO. This ensures that the correspondence is legally binding and properly authorized.
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Can a legal assistant or secretary sign correspondence on behalf of a patent practitioner?
No, a legal assistant or secretary cannot sign correspondence on behalf of a patent practitioner. The MPEP 502.02 clearly states:
‘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 requirement ensures that the practitioner takes personal responsibility for the content of the correspondence. Delegating this responsibility to support staff is not permitted and could lead to the correspondence being considered unsigned or improperly signed.
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USPTO employees are generally not permitted to initiate email communications with patent applicants unless there is a written authorization on record. According to MPEP 502.03:
‘USPTO employees are NOT permitted to initiate communications with applicants via Internet email unless there is a written authorization of record in the patent application by the applicant.’
However, if an applicant has provided written authorization for Internet communications:
‘USPTO employees may respond to Internet email and initiate communications with applicants via Internet email.’
It’s important to note that this policy applies to regular patent applications. For reissue applications and reexamination proceedings, which are open to public inspection, additional restrictions apply:
‘USPTO employees are NOT permitted to initiate communications with applicant in a reissue application or a patentee of a reexamination proceeding via Internet email unless written authorization is given by the applicant or patentee.’
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Are there any restrictions on paying USPTO fees by credit card?
Yes, there are some restrictions when paying USPTO fees by credit card:
- There’s a daily limit on credit card transactions.
- Some types of fees may not be eligible for credit card payment.
- Only certain credit cards are accepted.
The MPEP 509 states, “The Office will not accept a general authorization to charge all fees, or all fees in a specific case, to a credit card.” Additionally, “Credit Card Payment Form PTO-2038 should be used when paying a patent or trademark fee (or related service fee) by credit card, unless the payment is being made via EFS-Web.” It’s important to check the current USPTO guidelines for any updates to credit card payment policies.
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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.
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No, provisional patent applications are not examined. The MPEP 504 clearly states: “Provisional applications will not be examined.” Provisional applications serve as a placeholder to establish a priority date and are not subject to substantive examination by the USPTO.
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No, provisional patent applications are not assigned to examiners for examination. MPEP 504 explicitly states: “Provisional applications will not be examined.” This is because provisional applications are primarily used to establish a priority date and are not subject to substantive examination.
Photographs can be included in patent applications, but there are specific requirements and limitations. According to MPEP 507:
“OPAP may object to and require corrected drawings within a set time period, if the drawings: (F) include photographs of the claimed invention which are capable of illustration by other medium such as ink drawings, and which are illegible after scanning. See 37 CFR 1.84(b)“
This means that while photographs are acceptable, they should only be used when the subject matter cannot be accurately depicted in a drawing. Additionally, the photographs must be of sufficient quality to be legible after scanning. If a photograph can be replaced by a clear ink drawing, the USPTO may require such a replacement.
For more information on drawing requirements, visit: drawing requirements.
For more information on patent drawings, visit: patent drawings.
Are handwritten patent applications accepted by the USPTO?
While it is strongly recommended to submit typed or printed applications, the USPTO does accept handwritten patent applications under certain conditions:
- The handwriting must be legible and in permanent dark ink or its equivalent.
- The text must be clearly readable and suitable for reproduction.
- All other formatting requirements (margins, spacing, etc.) must still be followed.
As stated in MPEP 501: All papers that are to become a part of the permanent records of the United States Patent and Trademark Office should be legibly written either by a typewriter or mechanical printer in permanent dark ink or its equivalent in portrait orientation on flexible, strong, smooth, non-shiny, durable, and white paper.
While handwritten applications are technically accepted, it’s important to note that typed or printed applications are preferred for clarity and ease of processing. Handwritten applications may face additional scrutiny and potential delays in processing due to legibility concerns.
Color drawings or photographs are generally not allowed in patent applications without special permission. MPEP 507 states:
OPAP may object to and require corrected drawings within a set time period, if the drawings: … (G) contain color drawings or color photographs, but not a petition to accept color drawings/photographs.
If an applicant wishes to include color drawings or photographs, they must file a petition to accept them. It’s important to note that the requirement for a black and white photocopy of color drawings/photographs has been eliminated. Applicants should be prepared to justify the need for color in their drawings or photographs when filing such a petition.
MPEP 501 - Filing Papers With the U.S. Patent and Trademark Office (24)
The USPTO requires that different matters be submitted in separate papers to ensure efficient processing. This requirement is outlined in MPEP 501, which cites 37 CFR 1.4(c):
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.
This means that if you have multiple requests or inquiries for the USPTO, each should be submitted on its own separate document. For example, a petition and an information disclosure statement should not be combined into a single paper.
If an applicant submits a single paper containing distinct subjects, the USPTO may use the following form paragraph to notify them:
The [1] submitted [2] should have been submitted as a separate paper as required by 37 CFR 1.4(c). The paper has been entered. However, all future correspondence must comply with 37 CFR 1.4.
Adhering to this requirement helps ensure that your correspondence is processed efficiently and reaches the appropriate department within the USPTO.
For more information on patent office procedures, visit: patent office procedures.
For more information on USPTO correspondence, visit: USPTO correspondence.
The mailing address for trademark-related correspondence is:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
This address should be used for all trademark-related documents filed on paper, except for certain specific documents as outlined in the regulations.
According to 37 CFR 2.190: In general, trademark documents to be delivered by the USPS must be addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
It’s important to note that many trademark documents can and should be filed electronically through the Trademark Electronic Application System (TEAS).
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The mailing address for trademark applications and trademark-related papers filed on paper is:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
This address should be used for all trademark-related documents filed on paper, except for:
- Documents sent to the Assignment Recordation Branch for recordation
- Requests for copies of trademark documents
- Certain documents filed under the Madrid Protocol as specified in 37 CFR 2.190(e)
According to 37 CFR 2.190(a): “In general, trademark documents to be delivered by the USPS must be addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.”
The general mailing address for patent-related correspondence is:
Commissioner for Patents
P.O. Box 1450
Alexandria, Virginia 22313-1450
This address should be used for patent applications, replies to notices of informality, requests for extension of time, notices of appeal, and other patent-related matters processed by organizations reporting to the Commissioner for Patents.
As stated in the MPEP: Correspondence in patent-related matters under the direction of the Commissioner for Patents should be addressed to: Commissioner for Patents P.O. Box 1450 Alexandria, Virginia 22313-1450
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The general mailing address for patent-related correspondence is:
Commissioner for Patents
P.O. Box 1450
Alexandria, Virginia 22313-1450
This address is used for various patent-related documents, including:
- Patent applications
- Replies to notices of informality
- Requests for extension of time
- Notices of appeal to the Patent Trial and Appeal Board
- Requests for reexamination
- Petitions to the Commissioner for Patents
As stated in MPEP 501: “Correspondence in patent-related matters under the direction of the Commissioner for Patents should be addressed to: Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.”
For more information on patent application filing, visit: patent application filing.
For more information on patent correspondence, visit: patent correspondence.
The general mailing address for patent applications and patent-related papers is:
Commissioner for Patents
P.O. Box 1450
Alexandria, Virginia 22313-1450
This address should be used for correspondence including patent applications, replies to notices of informality, requests for extension of time, notices of appeal, briefs, requests for oral hearings, applications for patent term extensions, reexamination requests, statutory disclaimers, certificates of correction, petitions, and other patent-related correspondence processed by organizations reporting to the Commissioner for Patents.
As stated in MPEP 501: “Correspondence in patent-related matters under the direction of the Commissioner for Patents should be addressed to: Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450”
What is the Certificate of Mailing procedure for USPTO filings?
The Certificate of Mailing procedure is a method that allows applicants to establish the date of filing for correspondence sent to the USPTO. As explained in MPEP 501:
‘Under the procedure, correspondence is considered as being timely filed if (A) the correspondence is mailed or transmitted prior to expiration of the set period for response by being: (1) Addressed as set out in 37 CFR 1.1(a) and deposited with the U.S. Postal Service with sufficient postage as first class mail; or (2) Transmitted by facsimile to the Patent and Trademark Office in accordance with 37 CFR 1.6(d); or (3) Transmitted via the Office electronic filing system in accordance with 37 CFR 1.6(a)(4); and (B) the correspondence includes a certificate for each piece of correspondence stating the date of deposit or transmission.’
This procedure is particularly useful for ensuring timely filing when using postal services. It’s important to note that the certificate must be signed by the person depositing or transmitting the correspondence.
For more information on Certificate of Mailing, visit: Certificate of Mailing.
For more information on electronic filing, visit: electronic filing.
An S-signature is a type of electronic signature used in USPTO correspondence. According to MPEP 501, which cites 37 CFR 1.4(d)(2):
An S-signature is a signature inserted between forward slash marks, but not a handwritten signature as defined by paragraph (d)(1) of this section. An S-signature includes any signature made by electronic or mechanical means, and any other mode of making or applying a signature other than a handwritten signature.
Key requirements for an S-signature include:
- It must consist only of letters, Arabic numerals, or both, with appropriate punctuation.
- The signer must insert their own S-signature with a single forward slash mark before and after the signature.
- For patent practitioners, their registration number must be included with or near the S-signature.
- The signer’s name must be presented in printed or typed form near the S-signature.
Example of a proper S-signature: /John D. Smith/
S-signatures can be used for most USPTO correspondence filed electronically or by facsimile.
For more information on USPTO correspondence, visit: USPTO correspondence.
The USPTO accepts different types of signatures on correspondence, including:
- Handwritten signatures: Original signatures in permanent dark ink or equivalent.
- S-signatures: A signature inserted between forward slash marks, which can be used for correspondence filed in paper, by fax, or via the electronic filing system.
- Electronic signatures: For correspondence submitted via the electronic filing system, a graphic representation of a handwritten signature or an S-signature is acceptable.
According to 37 CFR 1.4(d): Each piece of correspondence, except as provided in paragraphs (d)(2), (d)(3), (d)(4), (e) and (f) of this section, filed in an application, patent file, or other proceeding in the Office which requires a person’s signature, must: (i) Be an original, that is, have an original handwritten signature personally signed, in permanent dark ink or its equivalent, by that person; or (ii) Be a direct or indirect copy, such as a photocopy or facsimile transmission (§ 1.6(d)), of an original.
For S-signatures, the signer must personally insert their own signature, and patent practitioners must include their registration number. The signer’s name must be presented in printed or typed form immediately below or adjacent to the S-signature.
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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.
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What are the requirements for filing papers with the USPTO?
When filing papers with the United States Patent and Trademark Office (USPTO), it’s important to adhere to specific requirements:
- Papers must be legibly written either by hand or printed in permanent dark ink or its equivalent.
- They should be presented on flexible, strong, smooth, non-shiny, durable, and white paper.
- All papers must be presented in a form having sufficient clarity and contrast between the paper and the writing to permit electronic reproduction by use of digital imaging and optical character recognition.
As stated in MPEP 501: All papers that are to become a part of the permanent records of the United States Patent and Trademark Office should be legibly written either by a typewriter or mechanical printer in permanent dark ink or its equivalent in portrait orientation on flexible, strong, smooth, non-shiny, durable, and white paper.
These requirements ensure that all documents can be properly processed and stored by the USPTO.
For more information on document legibility, visit: document legibility.
What are the margin requirements for patent application documents?
When preparing documents for a patent application, it’s crucial to adhere to specific margin requirements set by the USPTO:
- The top margin of the first page should be at least 2 cm (3/4 inch).
- All other margins (left, right, and bottom) must be at least 2 cm (3/4 inch).
- The margins can be slightly larger but should not exceed 4 cm (1-1/2 inches).
According to MPEP 501: All of the application papers must have margins which are at least 2 cm. (3/4 inch) … on the sides, top and bottom. Margins should not exceed 4 cm. (1-1/2 inches). … The top margin of the first page should be at least 2 cm. (3/4 inch).
These margin requirements ensure that all information is visible and can be properly scanned and processed by the USPTO.
What are the line spacing requirements for patent application text?
When preparing the text for your patent application, it’s important to follow the USPTO’s line spacing requirements:
- The text should be written in a nonscript type font (e.g., Arial, Times Roman, or Courier).
- The lettering style should be at least 0.32 cm (1/8 inch) high.
- The lines of text should be 1.5 or double spaced.
According to MPEP 501: The text must be written in a nonscript type font (e.g., Arial, Times Roman, or Courier, preferably a font size of 12) lettering style having capital letters which should be at least 0.32 cm. (1/8 inch) high, but may be no smaller than 0.21 cm. (3/32 inch) high (e.g., a font size of 6). The lines of the specification may be 1 1/2 or double spaced.
These requirements ensure that the text is easily readable and can be properly scanned and processed by the USPTO’s systems.
The USPTO has specific certification requirements for signatures in correspondence. According to MPEP 501, which cites 37 CFR 1.4(d)(4):
The person inserting a signature under paragraph (d)(2) or (d)(3) of this section in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature. A person submitting a document signed by another under paragraph (d)(2) or (d)(3) of this section is obligated to have a reasonable basis to believe that the person whose signature is present on the document was actually inserted by that person, and should retain evidence of authenticity of the signature.
Key points about signature certifications:
- The person inserting an S-signature certifies it as their own.
- When submitting a document signed by another, you must have a reasonable belief that the signature is authentic.
- Evidence of signature authenticity should be retained.
- Violations of certification rules may result in sanctions.
These requirements apply to both handwritten and S-signatures. They ensure the integrity and authenticity of documents submitted to the USPTO.
For more information on USPTO correspondence, visit: USPTO correspondence.
What are the acceptable methods for filing papers with the USPTO?
The USPTO accepts several methods for filing papers:
- Hand-delivery to the USPTO office in Alexandria, Virginia
- First-class mail through the United States Postal Service (USPS)
- Express Mail service of the USPS
- Electronic filing through the USPTO’s Electronic Filing System (EFS-Web)
As stated in MPEP 501: ‘Papers may be filed using first class mail through the United States Postal Service.’ The MPEP also notes that ‘Correspondence may be hand-carried to the Office.’ For electronic filing, it’s important to note that ‘EFS-Web can be used to file new applications, enter the national stage under 35 U.S.C. 371, and submit most follow-on documents in patent applications.’
For more information on EFS-Web, visit: EFS-Web.
For more information on electronic filing, visit: electronic filing.
For more information on Express Mail, visit: Express Mail.
For more information on first-class mail, visit: first-class mail.
For more information on hand-delivery, visit: hand-delivery.
Patent maintenance fee payments can be submitted in two ways:
- Electronically: This is the preferred method. Payments can be made through the USPTO’s Patent Maintenance Fees Storefront.
- By mail: If not submitted electronically, maintenance fee payments and related correspondence should be addressed to:
Mail Stop Maintenance Fee
Director of the United States Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
The MPEP states: Maintenance fee payments not electronically submitted over the Internet and correspondence related to maintenance fees may be addressed to: Mail Stop Maintenance Fee, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450
It’s important to note that electronic submission is faster, more secure, and provides immediate confirmation of payment.
To learn more:
Maintenance fee payments have a specific mailing address if not submitted electronically. According to MPEP 501, which cites 37 CFR 1.1(d):
Maintenance fee payments that are not submitted electronically and correspondence related to maintenance fees may be addressed to: Mail Stop Maintenance Fee, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
However, it’s important to note that the USPTO strongly encourages electronic submission of maintenance fee payments. The Electronic Maintenance Fee Form is the preferred method for these transactions.
If you must submit a paper payment, ensure it’s properly addressed to avoid delays in processing. Include all necessary information, such as the patent number and the fee amount being paid.
For more information on USPTO correspondence, visit: USPTO correspondence.
For correspondence that requires immediate attention from the USPTO, such as certain petitions or time-sensitive documents, the following methods are recommended:
- Use the USPTO patent electronic filing system (EFS-Web or Patent Center). This is the preferred method for most immediate correspondence.
- Where permitted, use facsimile transmission to the appropriate area of the Office.
- Hand-carry the documents to the USPTO in Alexandria, VA.
The MPEP states: Applicants are encouraged to transmit these types of correspondence by the USPTO patent electronic filing system (see MPEP § 502.05). Where permitted, patent-related correspondence that requires immediate Office attention may also be submitted to the appropriate area of the Office for processing by facsimile transmission (see MPEP § 502.01, subsections I.B and II) or hand-carried (see MPEP § 502), subsection III).
Examples of correspondence requiring immediate attention include:
- Petitions for express abandonment to avoid publication
- Petitions to withdraw an application from issue
- Requests for expedited examination of a design application
- Certain papers required by the Office of Data Management
To learn more:
For trademark-related documents filed on paper, except for certain specific cases, the address is:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
According to MPEP 501, which cites 37 CFR 2.190: “All trademark-related documents filed on paper, except documents sent to the Assignment Recordation Branch for recordation; requests for copies of trademark documents; and certain documents filed under the Madrid Protocol as specified in 37 CFR 2.190(e), should be addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.”
It’s important to note that many trademark documents can and should be filed electronically through the Trademark Electronic Application System (TEAS).
For more information on trademark correspondence, visit: trademark correspondence.
For correspondence that is not specific to patents or trademarks, such as requests for certified copies or assignment recordation, the general mailing address is:
Director of the United States Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
This address should be used for:
- Patent and trademark documents sent to the Assignment Division for recordation (Mail Stop Assignment Recordation Services)
- Requests for certified or uncertified copies of patent and trademark documents (Mail Stop Patent and Trademark Copy Fulfillment Branch)
- Correspondence for which an address is not otherwise specified in 37 CFR 1.1 or 2.190
MPEP 501 states: “For correspondence for which an address is not otherwise specified in 37 CFR 1.1 or 2.190, should be addressed to: Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450”
How does the USPTO handle correspondence submitted in violation of the rules?
The USPTO has specific procedures for handling correspondence submitted in violation of the rules. According to MPEP 501:
‘Correspondence submitted to the U.S. Patent and Trademark Office in violation of the rules as to paying fees, manner of presenting papers, or other formal matters will not be filed.’
However, the USPTO does provide a grace period and notification process:
- The Office may notify the submitter of the violation and set a period for correction.
- If the violation is corrected within the set period, the document will be considered as having been filed on the date of receipt of the correction.
It’s crucial for applicants to adhere to USPTO rules to avoid potential delays or non-filing of their correspondence. If a violation occurs, prompt correction based on USPTO notification is essential to maintain the original filing date.
Can I use hole-punched paper for my patent application?
No, you should not use hole-punched paper for your patent application. The USPTO has specific requirements regarding the paper used for patent applications, and hole-punched paper is explicitly prohibited.
As stated in MPEP 501: Holes should not be punched in the paper.
This requirement is in place to ensure that all documents can be properly scanned, stored, and processed by the USPTO without any loss of information or potential damage to the application papers. Using standard, unmarked paper without holes helps maintain the integrity of the document throughout the application process.
Yes, you can hand-carry certain documents to the USPTO, but there are specific guidelines and limitations. According to MPEP 501:
Patent-related papers may be hand-carried to the Office in Alexandria, VA. Correspondence cannot be hand-carried to the Regional Offices. If the correspondence is hand-carried to the Office, with limited exceptions (see MPEP § 502, subsection III) it must be delivered to:
United States Patent and Trademark Office
Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
For trademark-related papers, there is a separate location:
Trademark-related papers may be filed at the “walk-up” window located in the Trademark Assistance Center, Madison East, Concourse Level, Room C55, 600 Dulany Street, Alexandria, VA 22314.
It’s important to note that while hand-carrying documents is possible, electronic filing is often faster and more efficient for most types of correspondence with the USPTO.
For more information on patent office procedures, visit: patent office procedures.
For more information on USPTO submission, visit: USPTO submission.
Are handwritten patent applications accepted by the USPTO?
While it is strongly recommended to submit typed or printed applications, the USPTO does accept handwritten patent applications under certain conditions:
- The handwriting must be legible and in permanent dark ink or its equivalent.
- The text must be clearly readable and suitable for reproduction.
- All other formatting requirements (margins, spacing, etc.) must still be followed.
As stated in MPEP 501: All papers that are to become a part of the permanent records of the United States Patent and Trademark Office should be legibly written either by a typewriter or mechanical printer in permanent dark ink or its equivalent in portrait orientation on flexible, strong, smooth, non-shiny, durable, and white paper.
While handwritten applications are technically accepted, it’s important to note that typed or printed applications are preferred for clarity and ease of processing. Handwritten applications may face additional scrutiny and potential delays in processing due to legibility concerns.
MPEP 502 - Depositing Correspondence (11)
The following types of patent applications and documents can be filed via EFS-Web:
- Provisional patent applications under 35 U.S.C. 111(b)
- Nonprovisional utility patent applications under 35 U.S.C. 111(a)
- Nonprovisional design patent applications under 35 U.S.C. 111(a)
- International applications filed under the PCT in the United States Receiving Office
- National stage submissions under 35 U.S.C. 371
- International design applications filed under the Hague Agreement
- Requests for ex parte reexamination for utility or design patents
- Requests for supplemental examination for utility, design, or plant patents
- Third-party preissuance submissions under 35 U.S.C. 122(e)
- Citation of prior art and written statements in patent files under 37 CFR 1.501
Follow-on documents can also be filed via EFS-Web for existing applications by registered users.
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.
What are the USPTO’s guidelines for hand-carrying documents?
The USPTO has specific guidelines for hand-carrying documents to their office. According to MPEP 502:
“Any paper which relates to a pending application may be personally delivered to the Office. The attorney, agent, or applicant should specifically instruct the person making the delivery to hand-carry the paper to the Customer Service Window…”
Key points to remember when hand-carrying documents to the USPTO:
- Deliver to the Customer Service Window at the Randolph Building, 401 Dulany Street, Alexandria, VA 22314
- The delivery must be made during official business hours (8:30 AM to 5:00 PM, Monday through Friday, excluding federal holidays)
- A receipt will be issued for the delivered papers
- The receipt date is considered the filing date for the documents
It’s important to follow these guidelines to ensure proper handling and timely processing of your documents.
For more information on USPTO, visit: USPTO.
What are the requirements for certificate of mailing or transmission?
The certificate of mailing or transmission is an important tool for securing a filing date with the USPTO. According to MPEP 502, the requirements are:
“The certification requires a signature. Specifically, if the certification is filed by a registered practitioner, it must be signed by that practitioner personally. 37 CFR 1.8(a)(2). If the certification is filed by an applicant, it must be signed by the applicant (except where an oath or declaration is not required, in which case the certification may be signed by a registered practitioner). 37 CFR 1.8(a)(2).”
Key points to remember:
- The certificate must include the date of deposit or transmission.
- It must be signed by the person mailing or transmitting the correspondence.
- For registered practitioners, personal signature is required.
- For applicants, their signature is required unless an oath/declaration is not needed.
Proper use of this certificate can help ensure your documents are considered timely filed, even if there are postal or transmission delays.
For more information on Certificate of Mailing, visit: Certificate of Mailing.
For more information on Certificate of Transmission, visit: Certificate of Transmission.
For more information on USPTO correspondence, visit: USPTO correspondence.
What are the official USPTO mailing addresses for patent-related correspondence?
The United States Patent and Trademark Office (USPTO) has specific mailing addresses for different types of patent-related correspondence. According to the MPEP 502:
For regular mail:
- Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
For hand-carried or EXPRESS MAIL:
- U.S. Patent and Trademark Office
Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
It’s important to use the correct address to ensure timely processing of your correspondence.
For more information on patent correspondence, visit: patent correspondence.
How does the USPTO handle correspondence sent by Priority Mail Express®?
The USPTO treats correspondence sent by Priority Mail Express® (formerly Express Mail) with special consideration. According to MPEP 502:
“Any correspondence received by Priority Mail Express® will be considered filed with the USPTO on the date of deposit with the United States Postal Service.”
This means that the date of deposit with USPS is considered the filing date at the USPTO, which can be crucial for meeting deadlines. However, it’s important to note that:
- The Priority Mail Express® label number must be placed on the correspondence.
- The filing date accorded to Priority Mail Express® is only applicable to the specific items deposited with USPS.
Always keep your Priority Mail Express® mailing receipt as proof of the deposit date.
For more information on Priority Mail Express, visit: Priority Mail Express.
For more information on USPS, visit: USPS.
For more information on USPTO correspondence, visit: USPTO correspondence.
How does the USPTO handle correspondence received after official hours?
The USPTO has specific procedures for handling correspondence received outside of official business hours:
- Correspondence delivered to the USPTO after business hours is considered filed on the next business day.
- There are exceptions for certain types of time-sensitive filings.
MPEP 502 states: ‘Correspondence placed in the USPTO’s night box before midnight on weekdays (except federal holidays) will receive a filing date of the succeeding business day.’ This means that documents deposited in the night box after business hours but before midnight will be treated as if they were received on the next business day.
For electronic filings, the USPTO’s Electronic Filing System (EFS-Web) is generally available 24/7, allowing for submissions outside of regular business hours. However, the actual filing date may still be affected by the time of submission.
How does the USPTO handle correspondence during emergency situations?
The USPTO has provisions for handling correspondence during emergency situations, such as severe weather or other unforeseen circumstances:
- The USPTO may designate certain days as ‘Federal holidays within the District of Columbia’ under specific conditions.
- This designation affects filing dates and deadlines.
MPEP 502 states: ‘When the entire USPTO is officially closed for business for an entire day due to an emergency situation, the Office will consider each such day a ‘Federal holiday within the District of Columbia’ under 35 U.S.C. 21.’ This means that deadlines falling on such days will be extended to the next business day, similar to federal holidays.
During emergencies, the USPTO typically issues public notices and updates its website to inform stakeholders about any changes to operations or filing procedures. It’s crucial for patent applicants and attorneys to stay informed about such announcements to ensure compliance with modified deadlines and procedures.
How does the USPTO handle correspondence delivered by EXPRESS MAIL?
The USPTO has specific procedures for handling correspondence delivered by EXPRESS MAIL. According to MPEP 502:
“Any correspondence delivered by the ‘Express Mail Post Office to Addressee’ service of the United States Postal Service (USPS) is considered filed or received in the Office on the date of deposit with the USPS.”
This means that the date of deposit with the USPS is considered the filing date at the USPTO, provided that:
- The correspondence is properly addressed to the USPTO
- The proper address is on the EXPRESS MAIL mailing label
- The EXPRESS MAIL mailing label number is placed on the correspondence
It’s important to note that this applies only to the USPS EXPRESS MAIL service and not to similar services provided by private courier companies.
For more information on Express Mail, visit: Express Mail.
For more information on USPTO correspondence, visit: USPTO correspondence.
When filing patent correspondence, you should include the following identifying information:
- Application number (checked for accuracy, including series code and serial number)
- Art Unit number (copied from most recent Office communication)
- Filing date
- Name of the examiner who prepared the most recent Office action
- Title of invention
- Confirmation number
As stated in 37 CFR 1.5(a): ‘When correspondence directed to the Patent and Trademark Office concerns a previously filed application for a patent, it must identify on the top page in a conspicuous location, the application number (consisting of the series code and the serial number; e.g., 07/123,456), or the serial number and filing date assigned to that application by the Patent and Trademark Office, or the international application number of the international application, or the international registration number of an international design application.’
Can I use a certificate of mailing for all USPTO correspondence?
While the certificate of mailing or transmission is a useful tool, it cannot be used for all types of USPTO correspondence. The MPEP 502 provides specific exceptions:
“The certification procedure under 37 CFR 1.8 is not available for: (A) Applications for patent under 35 U.S.C. 111(a), including reissue applications; (B) International applications for patent; (C) International design applications; (D) Requests for reexamination under 35 U.S.C. 302…”
This list continues with several other exceptions. It’s crucial to note that:
- New patent applications cannot use the certificate of mailing.
- International applications are excluded from this procedure.
- Certain time-sensitive documents require different filing methods.
For these excluded items, consider using Priority Mail Express® or electronic filing to ensure timely receipt by the USPTO. Always check the current regulations or consult with a patent professional to determine the appropriate filing method for your specific correspondence.
For more information on Certificate of Mailing, visit: Certificate of Mailing.
For more information on patent applications, visit: patent applications.
For more information on USPTO correspondence, visit: USPTO correspondence.
MPEP 503 - Application Number and Filing Receipt (20)
An attorney docket number is used by law firms and companies to internally track and manage patent applications. While it’s not required by the USPTO, it can be included on application documents for reference. However, there are limitations:
- Must be limited to a maximum of 25 characters
- Spaces, slashes, and hyphens are not included in the entered docket number on the official filing receipt
- For docket numbers beginning with ‘CASE’ or ‘NAVY-CASE’, only characters after these prefixes are entered
The MPEP states: ‘Attorney docket numbers must be limited to a maximum of 25 characters to prevent truncation. The USPTO system data base allows a maximum of 25 characters for the attorney docket numbers.’ (MPEP 503)
A self-addressed postcard serves as a receipt and provides evidence of the items submitted to the USPTO with a patent application. According to MPEP 503, the postcard should itemize all components of the application, including:
- Inventor’s name(s)
- Title of invention
- Number of pages of specification, claims, and sheets of drawing
- Whether the inventor’s oath or declaration is included
- List of additional forms included
- Amount and manner of paying the fee
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.”
It’s important to note that the postcard must be properly itemized to serve as evidence of receipt. Simply listing “a complete application” is not sufficient. Each component should be specifically listed on the postcard.
For applications filed via EFS-Web, an Electronic Acknowledgment Receipt serves as the electronic equivalent of a postcard receipt.
For more information on patent application filing, visit: patent application filing.
For more information on USPTO submission, visit: USPTO submission.
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)
An application number consists of a series code and a serial number. It is assigned by the Office of Patent Application Processing (OPAP) immediately after mail has been opened. For applications filed using the USPTO patent electronic filing system, EFS-Web provides an Acknowledgement Receipt containing a time and date stamp, application number, and confirmation number.
The MPEP states: ‘Application numbers consisting of a series code and a serial number are assigned by the Office of Patent Application Processing (OPAP) immediately after mail has been opened.’ (MPEP 503)
A filing receipt is an official document issued by the USPTO that contains important information about a patent application. According to MPEP 503, the filing receipt includes:
- Application number
- Filing date
- Confirmation number
- Suggested U.S. Patent Classification class
- Art unit where the application is likely to be examined
- Continuing data (if applicable)
- National stage data (if applicable)
- Foreign priority data (if applicable)
- Foreign filing license data (if applicable)
- Entity status information
- Anticipated publication date under 35 U.S.C. 122(b)
The MPEP states: “The filing receipt represents the official assignment by the USPTO of a specific application number and confirmation number to a particular application.” It’s important to review the filing receipt for accuracy, especially regarding inventor and applicant names, benefit and priority claims, and any nonpublication requests.
For more information on application number, visit: application number.
For more information on confirmation number, visit: confirmation number.
For more information on filing receipt, visit: filing receipt.
A confirmation number is a four-digit number assigned to each newly filed patent application. It is used in combination with the application number to verify the accuracy of the application number on correspondence filed with the USPTO. This helps avoid misidentification due to transposition errors.
The MPEP states: ‘The confirmation number is a four-digit number that is assigned to each newly filed application. The confirmation number, in combination with the application number, is used to verify the accuracy of the application number placed on correspondence filed with the Office to avoid misidentification of an application due to a transposition error in the application number.’ (MPEP 503)
A confirmation number is a four-digit number assigned by the USPTO to each newly filed patent application. According to MPEP 503, the confirmation number serves several important purposes:
- It is used in combination with the application number to verify the accuracy of the application number on correspondence filed with the Office.
- It helps avoid misidentification of an application due to transposition errors in the application number.
- It is included on the filing receipt, Office actions, and other USPTO communications.
- It is required when submitting an electronic copy of the application for publication to verify the correct application.
The MPEP recommends: “The Office also recommends that applicants include the application’s confirmation number (in addition to the application number) on all correspondence submitted to the Office concerning the application.”
The confirmation number can be found in the upper left-hand corner of the filing receipt and is also available through the Patent Application Information Retrieval (PAIR) system.
For more information on application number, visit: application number.
For more information on confirmation number, visit: confirmation number.
For more information on USPTO correspondence, visit: USPTO correspondence.
A patent filing receipt includes:
- Application number
- Filing date
- Confirmation number
- Suggested class in the U.S. Patent Classification System
- Art unit number where the application is likely to be examined
- Continuing data (if applicable)
- National stage data (if applicable)
- Foreign priority data (if applicable)
- Foreign filing license data (if applicable)
- Entity status information
- Anticipated publication date under 35 U.S.C. 122(b)
The MPEP states: ‘The filing receipt includes the application number, filing date, a confirmation number, a suggested class in the U.S. Patent Classification System (see MPEP § 902.01), and the number of an art unit where the application is likely to be examined.’ (MPEP 503)
A patent application filing receipt contains crucial information about the application. According to the MPEP:
‘A filing receipt is mailed to the attorney or agent, if any, otherwise to the applicant, for each application filed.’
The filing receipt typically includes:
- The application number
- Filing date
- Title of the invention
- Names of the applicants
- Name and registration number of the attorney or agent (if applicable)
- Entity status for fee purposes
- Correspondence address
- List of documents submitted with the application
It’s important to review the filing receipt carefully for accuracy, as it serves as official confirmation of the application’s details and can be used to identify any discrepancies or issues that need to be addressed promptly.
For more information on filing receipt, visit: filing receipt.
What happens if there’s an error in my application number?
If you notice an error in your application number, it’s crucial to contact the USPTO immediately. The MPEP states, Any error in the identification of the application number will result in processing delays.
(MPEP 503) To avoid such delays:
- Double-check the application number on your filing receipt
- If you find an error, contact the Application Assistance Unit at (571) 272-4000
- Provide the correct application number and any supporting documentation
Prompt action can help ensure your application is processed correctly and efficiently.
For more information on application number, visit: application number.
For more information on error correction, visit: error correction.
If an applicant does not receive an application number within one month of filing, they should contact the Application Assistance Unit. The MPEP states:
‘If an application number is not received within one month of the filing date, applicant should contact the Application Assistance Unit at (571) 272-4000 or (888) 786-0101.’
This contact information is provided to ensure applicants can follow up on their application status in a timely manner. It’s important to note that this one-month period is a guideline for when applicants should take action if they haven’t received their application number.
For more information on Application Assistance Unit, visit: Application Assistance Unit.
For more information on application number, visit: application number.
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 an application is filed with missing parts, the USPTO follows these procedures:
- If the application meets minimum requirements for a filing date, it will be assigned one.
- A Notice to File Missing Parts will be issued, detailing the missing items.
- Applicants must submit missing items along with any required surcharges within the specified time period.
- For applications filed on or after September 16, 2012, the inventor’s oath or declaration can be postponed until payment of the issue fee if a compliant application data sheet is filed.
- For applications filed on or after December 18, 2013, filing of claims can be postponed until the expiration of the time period set in the Notice to File Missing Parts.
The MPEP states: ‘The inventor’s oath or declaration, basic filing fee, and search fee and examination fee as set forth in 37 CFR 1.16, may be filed later than the remaining application papers, but if so, they must be accompanied by the required surcharge (if appropriate, see MPEP § 506).’ (MPEP 503)
How does the USPTO assign application numbers to continuation or divisional applications?
The USPTO assigns application numbers to continuation or divisional applications in the same manner as new applications. According to MPEP 503:
A continuation or divisional application (including a continued prosecution application) filed under 37 CFR 1.53(b) is assigned a new application number.
This means:
- Each continuation or divisional application receives a unique number
- The number is assigned in the same sequence as other new applications
- The application number does not indicate its relationship to the parent application
It’s important to reference the parent application in the appropriate sections of the new application to establish the continuity.
For more information on continuation application, visit: continuation application.
For more information on Divisional application, visit: Divisional application.
For more information on USPTO procedures, visit: USPTO procedures.
There are two main ways to obtain a receipt for items filed with the USPTO:
- 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.
- 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)
Application numbers for patent applications are assigned by the Office of Patent Application Processing (OPAP) as follows:
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- Nonprovisional applications are assigned numbers beginning with the series code ’15’ or ’16’.
- Design applications are assigned numbers beginning with the series code ’29’.
- Plant applications are assigned numbers beginning with the series code ’16’.
- Provisional applications are assigned numbers beginning with the series code ’62’.
- Reexamination proceedings are assigned numbers beginning with the series code ’90’.
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As stated in the MPEP 503, “The application number includes a two-digit series code and a six-digit serial number.” This system allows for efficient categorization and tracking of different types of patent applications.
For more information on application number, visit: application number.
For more information on patent application types, visit: patent application types.
For more information on series code, visit: series code.
For PCT applications entering the national stage in the United States, the application number assignment process is slightly different. The MPEP states:
‘For PCT applications entering the national stage under 35 U.S.C. 371, the USPTO assigns the national stage application a U.S. application number.’
This means that when an international PCT application transitions to the national stage in the U.S., it receives a new U.S. application number distinct from its international application number. This U.S. application number is used for all subsequent processing and correspondence related to the national stage application.
It’s important to note that this U.S. application number is different from the international application number (PCT/XX/YYYY/######) that was used during the international phase of the PCT application.
For more information on application number, visit: application number.
The USPTO assigns application numbers to patent applications immediately after mail has been opened. According to MPEP 503, application numbers consist of a series code and a serial number. The series codes are assigned based on the type of application and the time period in which it was filed. For example:
- 01/ – 16/ for nonprovisional applications (utility, plant, and reissue), with different ranges for specific time periods
- 29/ for design applications
- 35/ for international design applications
- 60/, 61/, and 62/ for provisional applications
- 90/ for ex parte reexamination proceedings
- 95/ for inter partes reexamination proceedings
- 96/ for supplemental examination proceedings and resulting ex parte reexamination proceedings
The MPEP notes: “If an application is filed using the USPTO patent electronic filing system, EFS-Web provides an Acknowledgement Receipt that contains a time and date stamp, an application number and a confirmation number.”
It’s important to note that the application number on a filing receipt is the official number, which may differ from any preliminary number provided on a postcard receipt.
For more information on application number, visit: application number.
For more information on patent application types, visit: patent application types.
For more information on serial number, visit: serial number.
For more information on series code, visit: series code.
No, patent applications that are entitled to a filing date will not be returned to the applicant, even if requested. This applies to applications filed by regular mail, Priority Mail Express, hand-delivery, or through the USPTO patent electronic filing system.
The MPEP clearly states: ‘Applications which are entitled to a filing date, whether filed by regular mail, by Priority Mail Express® under 37 CFR 1.10, by hand-delivery, by the USPTO patent electronic filing system, or otherwise, will not be returned to applicant even if requested.’ (MPEP 503)
Applicants should be careful not to file duplicate applications or applications not intended for filing, as fees paid for such applications are generally not refundable due to a change of purpose.
Once a patent application is filed and given a filing date, it generally cannot be returned or withdrawn. According to MPEP 503:
“Applications which are entitled to a filing date, whether filed by regular mail, by Priority Mail Express® under 37 CFR 1.10, by hand-delivery, by the USPTO patent electronic filing system, or otherwise, will not be returned to applicant even if requested.”
This policy is in place to maintain the integrity of the filing process and prevent potential abuse. Applicants should be careful not to file applications that are not intended to be filed, such as duplicates of already filed applications.
Furthermore, the MPEP cites 37 CFR 1.26(a), which states that a change of purpose after payment of a fee, such as when a party desires to withdraw a patent application for which a fee was paid, does not entitle the party to a refund of such fee.
If an applicant realizes they have filed an application in error or no longer wish to pursue it, they may choose to abandon the application. However, the application will remain on file with the USPTO and any fees paid will not be refunded.
For more information on application abandonment, visit: application abandonment.
For more information on application return, visit: application return.
MPEP 504 - Assignment of Application for Examination (4)
PSTAR stands for Patents Service for Time and Application Routing. According to MPEP 504, PSTAR is “the program [that] assigns each nonprovisional application to an examiner.” This system is used by the United States Patent and Trademark Office (USPTO) to efficiently distribute patent applications to the appropriate examiners for review.
To learn more:
Nonprovisional patent applications are assigned for examination through the Patents Service for Time and Application Routing (PSTAR) program. According to MPEP 504, “The Patents Service for Time and Application Routing (PSTAR) program assigns each nonprovisional application to an examiner.” This system ensures that each application is routed to an appropriate examiner based on factors such as the application’s subject matter and the examiner’s expertise.
To learn more:
No, provisional patent applications are not examined. The MPEP 504 clearly states: “Provisional applications will not be examined.” Provisional applications serve as a placeholder to establish a priority date and are not subject to substantive examination by the USPTO.
To learn more:
No, provisional patent applications are not assigned to examiners for examination. MPEP 504 explicitly states: “Provisional applications will not be examined.” This is because provisional applications are primarily used to establish a priority date and are not subject to substantive examination.
MPEP 505 - Date of Receipt Stamp (14)
The United States Patent and Trademark Office (USPTO) stamps correspondence received with the date of receipt, known as the ‘Office Date’ stamp. This applies to papers and fees received through various methods:
- Mail (except Priority Mail Express®)
- Facsimile
- EFS-Web
- Hand-carried to the Customer Service Window
As stated in the MPEP: The United States Patent and Trademark Office (Office) stamps papers and fees received through the mail (other than those submitted by Priority Mail Express® in accordance with 37 CFR 1.10), by facsimile, or via EFS-Web with the date of their receipt in the Office.
The ‘Office Date’ stamp is used by the USPTO to mark the receipt date of papers and fees. According to MPEP 505, The United States Patent and Trademark Office (Office) stamps papers and fees received through the mail (other than those submitted by Priority Mail Express® in accordance with 37 CFR 1.10), by facsimile, or via EFS-Web with the date of their receipt in the Office.
The ‘Office Date’ stamp is crucial because:
- It establishes the filing date for new patent applications that include the necessary components (see 37 CFR 1.53(b)-(d))
- It determines the timeliness of actions and fee payments
For hand-carried papers, date stamping occurs at the Customer Service Window.
For more information on Office Date stamp, visit: Office Date stamp.
For more information on USPTO, visit: USPTO.
If there’s a discrepancy between the USPTO’s date stamp and the date on the correspondence, the USPTO’s date stamp is generally considered the official receipt date. However, if an applicant can provide clear evidence that the correspondence was received earlier than the date indicated by the USPTO’s stamp, the earlier date may be recognized as the official receipt date. This situation might occur due to clerical errors or delays in processing incoming mail.
If the USPTO receives a document without a date of receipt stamp, the Office will assign the document a date of receipt based on other evidence. This may include:
- The date of receipt indicated on an Express Mail label
- The date of deposit indicated on a certificate of mailing
- The date of transmission indicated on a certificate of transmission
- Other corroborating evidence, such as a postmark on an envelope
In cases where no other evidence is available, the USPTO may assign the date of receipt as the date the document was matched with the file wrapper.
If the date of receipt stamp is illegible or missing, the USPTO will make every effort to determine the correct date of receipt. This may involve examining other evidence, such as postmarks, electronic filing receipts, or other documentation. If the correct date cannot be determined, the USPTO may use the date it was discovered that the document was received as the date of receipt. Applicants should always ensure that their submissions are properly dated and stamped to avoid potential issues with filing dates.
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.
The filing date of a patent application is determined by the ‘Office Date’ stamp, provided the application includes all necessary components for a filing date. The MPEP states:
If an application as originally filed includes the necessary components for a filing date (see 37 CFR 1.53(b)-(d) and MPEP § 506), the ‘Office Date’ stamp establishes the ‘filing date.’
This means that the date stamped on the application by the USPTO becomes the official filing date, as long as all required elements are present. It’s crucial for applicants to ensure their submissions are complete to secure the earliest possible filing date.
Priority Mail Express® submissions to the USPTO are handled differently from regular mail. According to MPEP 505, New patent applications filed in accordance with 37 CFR 1.10 will be stamped by the Office with the date of deposit as Priority Mail Express® with the United States Postal Service.
This means:
- The date of deposit with USPS is used as the receipt date, not the date it arrives at the USPTO
- This applies even on weekends and holidays when the USPTO is closed
For example, if a new patent application is deposited in Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date.
For more information on Priority Mail Express, visit: Priority Mail Express.
For more information on USPTO, visit: USPTO.
The USPTO does not officially receive mail on weekends or federal holidays when the office is closed. Any correspondence received on these days is typically stamped with the next business day’s date. For example, if mail is delivered to the USPTO on a Saturday, it will be stamped with the following Monday’s date (or Tuesday if Monday is a holiday). This practice ensures consistency in dating received documents and aligns with the USPTO’s official business hours.
The USPTO has specific rules for dating facsimile transmissions. According to 37 CFR 1.6(a)(3):
Correspondence transmitted by facsimile to the Patent and Trademark Office will be stamped with the date on which the complete transmission is received in the Patent and Trademark Office unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the date stamped will be the next succeeding day which is not a Saturday, Sunday, or Federal holiday within the District of Columbia.
This means that faxed correspondence is generally dated on the day of complete transmission, except for weekends and holidays, where it’s dated the next business day.
The USPTO does not receive or process correspondence on Saturdays, Sundays, or Federal holidays within the District of Columbia, with some exceptions. According to 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. Except for correspondence transmitted by facsimile under paragraph (a)(3) of this section, or filed electronically under paragraph (a)(4) of this section, no correspondence is received in the Office on Saturdays, Sundays, or Federal holidays within the District of Columbia.
When the last day for taking action or paying a fee falls on a weekend or holiday, it’s considered timely if done on the next business day: 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.
Priority Mail Express® submissions to the USPTO are treated differently in terms of dating. According to 37 CFR 1.6(a)(2):
Correspondence filed in accordance with § 1.10 will be stamped with the date of deposit as Priority Mail Express® with the United States Postal Service.
This means that new patent applications filed using Priority Mail Express® will be stamped with the date they were deposited with USPS, even if that date is a Saturday, Sunday, or federal holiday. The MPEP provides an example:
For example, if a new patent application is deposited in Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date.
The USPTO has specific rules for dating electronically filed submissions. According to 37 CFR 1.6(a)(4):
Correspondence may be submitted using the Office electronic filing system only in accordance with the Office electronic filing system requirements. Correspondence submitted to the Office by way of the Office electronic filing system will be accorded a receipt date, which is the date the correspondence is received at the correspondence address for the Office set forth in § 1.1 when it was officially submitted.
The MPEP further clarifies: Similarly, correspondence submitted via the USPTO electronic filing system (EFS-Web) will be accorded a receipt date on the date the correspondence is received at the correspondence address for the Office set forth in 37 CFR 1.1 (i.e., local time in Alexandria, VA), without regard to whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia.
Electronically filed patent applications receive special treatment for date-stamping at the USPTO. According to MPEP 505, Correspondence submitted to the Office by way of the Office electronic filing system will be accorded a receipt date, which is the date the correspondence is received at the correspondence address for the Office set forth in § 1.1 when it was officially submitted.
Key points about electronic filing date-stamping:
- The receipt date is based on the time in Alexandria, VA (USPTO’s location)
- Electronic submissions can receive a date stamp on any day, including weekends and holidays
- The electronic filing system (EFS-Web) must be used in accordance with USPTO requirements
For more details on electronic filing, refer to MPEP § 502.05.
For more information on EFS-Web, visit: EFS-Web.
For more information on electronic filing, visit: electronic filing.
For more information on USPTO, visit: USPTO.
MPEP 506 - Completeness of Original Application (16)
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.
What is the filing date for applications properly filed under 37 CFR 1.10 (Priority Mail Express)?
For applications properly filed under 37 CFR 1.10 using Priority Mail Express, the filing date is the date the application was deposited with the U.S. Postal Service. The MPEP states:
For applications properly filed under 37 CFR 1.10, the filing date is the date that the application was deposited as Priority Mail Express® in the U.S. Postal Service. For example, if a new patent application is deposited in Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date.
If the proper procedures were not followed, the application will receive a filing date as of the date it was received in the USPTO.
The application size fee is an additional fee that applies to patent applications with specifications and drawings exceeding 100 sheets of paper. The MPEP states:
37 CFR 1.16(s) sets forth the application size fee for any application (including any reissue applications) filed under 35 U.S.C. 111, the specification and drawings of which exceed 100 sheets of paper. The calculation of the number of sheets excludes any “Sequence Listing”, computer readable form (CRF) of a “Sequence Listing”, or a “Computer Program Listing Appendix” filed in an American Standard Code for Information Interchange (ASCII) plain text file or any “Sequence Listing XML” filed in an eXtensible Markup Language (XML) file on a read-only optical disc or via the USPTO patent electronic filing system in compliance with the rules.
The fee applies for each additional 50 sheets or fraction thereof over 100 sheets. This fee must be paid within the time period set by the USPTO to avoid abandonment of the application.
What is a provisional patent application and how does it differ from a nonprovisional application?
A provisional patent application is a type of patent application that allows inventors to establish an early filing date for their invention. Key differences between provisional and nonprovisional applications include:
- Provisional applications are not examined and automatically expire after 12 months
- Provisional applications require fewer formal components than nonprovisional applications
- Provisional applications cannot directly result in a granted patent
The MPEP states: A provisional application will not be examined. However, a provisional application which does not include a cover sheet (37 CFR 1.51(c)(1)), which may be an application data sheet (37 CFR 1.76) or a cover letter, identifying the application as a provisional application, will be treated as a nonprovisional application filed under 37 CFR 1.53(b).
To obtain a filing date, a provisional application must include:
- A specification as prescribed by 35 U.S.C. 112(a)
- Any necessary drawings
- The appropriate filing fee
Inventors often use provisional applications to secure an early filing date while allowing additional time to prepare a more comprehensive nonprovisional application.
For more information on nonprovisional application, visit: nonprovisional application.
For more information on patent application types, visit: patent application types.
For more information on provisional application, visit: provisional application.
If a patent application is missing essential parts, such as the specification, drawings, or claims, the USPTO will notify the applicant of the missing elements. According to MPEP 506:
‘Applicant will be notified of the incomplete application and the time period set for submitting the omitted parts.’
The applicant will then have an opportunity to submit the missing parts within the specified time period to complete the application.
For more information on incomplete application, visit: incomplete application.
For more information on missing parts, visit: missing parts.
For more information on patent application requirements, visit: patent application requirements.
If a patent application is filed without all the pages of the specification, the USPTO will notify the applicant of the missing parts. The MPEP refers to this situation:
See MPEP § 601.01(d)-(g) where the application is filed without all the pages of the specification, without at least one claim (nonprovisional design application), without drawings, or without all the figures of the drawings.
For applications filed before September 16, 2012, a supplemental oath or declaration by the inventor may be required to identify the missing item and indicate that it accurately describes the invention. For applications filed on or after September 16, 2012, an additional oath or declaration is generally not required.
The applicant will be given a time period to submit the missing pages. If the missing pages are not submitted within the specified time, the application may be deemed incomplete and not accorded a filing date until the missing parts are received.
If a patent application is filed with informal papers (e.g., typed on both sides of the paper, not permanent, legible, or reproducible), the USPTO will still accord a filing date if the application otherwise meets the requirements. The MPEP states:
OPAP accords a filing date, as of the date indicated by the “Office Date” stamp (see MPEP § 505), to application papers which include a specification containing a description and at least one claim (nonprovisional applications filed under 37 CFR 1.53(b) prior to March 18, 2013 and design applications), and a drawing, if necessary under 35 U.S.C. 113 (first sentence) and 37 CFR 1.53(b), but are informal because they do not comply with the rules or notices.
The USPTO will send a Notice requiring correction of the informality. Failure to correct the informality within the specified time will result in abandonment of the application.
If a nonprovisional patent application is filed without all required fees, the USPTO will send a notice to the applicant. According to the MPEP:
Filing dates are accorded to nonprovisional applications filed under 37 CFR 1.53(b) submitted without the… required fees (basic filing fee, and search and examination fees (for applications filed on or after December 8, 2004))… In such cases, a notice is mailed by OPAP requiring the appropriate fees… accompanied by a surcharge (37 CFR 1.16(f)).
The applicant will be given a time period (usually two months) to pay the missing fees and surcharge to avoid abandonment of the application.
To obtain a filing date for a nonprovisional patent application filed under 37 CFR 1.53(b), the application must include:
- A specification containing a description as prescribed by 35 U.S.C. 112(a)
- At least one claim (for applications filed on or after December 13, 2013)
- Any drawings necessary under 35 U.S.C. 113 (first sentence)
As stated in the MPEP: Filing dates are accorded to nonprovisional applications filed under 37 CFR 1.53(b) submitted without the names of all the inventors, the required fees (basic filing fee, and search and examination fees (for applications filed on or after December 8, 2004)), at least one claim (for applications filed on or after December 13, 2013) and/or the inventor’s oath or declaration.
If any required items are missing, the applicant will be notified and given a time period to submit the missing elements. The filing date will be the date the missing items are received.
For more information on nonprovisional application, visit: nonprovisional application.
For more information on patent application requirements, visit: patent application requirements.
Applications properly filed via Priority Mail Express® (formerly Express Mail) have special filing date rules:
- The filing date is the date the application was deposited with the U.S. Postal Service as Priority Mail Express®
- This applies even if the deposit date is a Saturday, Sunday, or federal holiday
- The application must comply with the requirements of 37 CFR 1.10 to receive this benefit
The MPEP states: For applications properly filed under 37 CFR 1.10, the filing date is the date that the application was deposited as Priority Mail Express® in the U.S. Postal Service. For example, if a new patent application is deposited in Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date. 37 CFR 1.6(a)(2).
If the proper procedures were not followed, the application will receive a filing date as of the date it was received in the USPTO. Any review of these matters would be by way of petition, accompanied by the petition fee.
For more information on Priority Mail Express, visit: Priority Mail Express.
The USPTO treats applications with omitted drawings similarly to those with missing specification pages. According to MPEP 506:
In the event that a page of the specification, or a portion thereof, or a page of the drawings, or a portion thereof, is inadvertently omitted from an application as filed, the application will be not be considered complete and the applicant will be notified to file the omitted portion.
If drawings are omitted, the applicant will be notified and given a time period to submit the missing drawings. However, adding new drawings after the filing date may affect the application’s effective filing date if they introduce new matter. It’s crucial to include all necessary drawings with the initial application to avoid potential issues.
For more information on new matter, visit: new matter.
An applicant can request review of a refusal to accord a filing date by filing a petition. 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.
The petition should be marked to the attention of the Office of Petitions. If the applicant believes no defect exists, they may include a request for refund of the petition fee in the petition.
If a patent application is missing a required part, the applicant can correct the deficiency as follows:
- The USPTO will send a Notice of Missing Parts identifying the deficiency
- The applicant must submit the missing part within the time period specified in the notice (usually two months)
- A surcharge fee may be required along with the submission of the missing part
- For certain missing parts, like claims or drawings, a supplemental oath or declaration may be required for applications filed before September 16, 2012
The MPEP states: In such cases where the basic filing fee, the search fee, the examination fee, and the application size fee are paid, but additional fees are required, under 37 CFR 1.16, a notice is mailed by OPAP or the Technology Center (TC), requiring that the balance of the prescribed fee be paid.
It’s important to respond promptly to any Notice of Missing Parts to avoid abandonment of the application. If the applicant believes the part was not actually missing, they can file a petition for review of the Notice.
For more information on missing parts, visit: missing parts.
Yes, for applications filed on or after September 16, 2012 (except reissue applications), the inventor’s oath or declaration can be postponed until the application is in condition for allowance, provided certain conditions are met:
- An application data sheet (ADS) in compliance with 37 CFR 1.76 must be filed identifying each inventor by their legal name, mailing address, and residence (if different from mailing address)
- The inventor’s oath or declaration must be filed no later than the date on which the issue fee is paid
The MPEP states: For applications filed on or after September 16, 2012 (except reissue applications), applicant may postpone filing the inventor’s oath or declaration until the application is in condition for allowance if an application data sheet (ADS) in compliance with 37 CFR 1.76 is filed identifying: (1) each inventor by their legal name; and (2) for each inventor, a mailing address where the inventor customarily receives mail, and residence, if the inventor lives at a location which is different from where the inventor customarily receives mail. See 37 CFR 1.53(f)(3).
This provision allows applicants more flexibility in completing the application requirements, but it’s important to ensure the oath or declaration is filed before paying the issue fee to avoid abandonment.
For more information on declaration, visit: declaration.
For more information on inventor’s oath, visit: inventor’s oath.
For more information on patent application requirements, visit: patent application requirements.
Yes, for applications filed on or after September 16, 2012 (except reissue applications), the filing of an inventor’s oath or declaration can be postponed. The MPEP states:
For applications filed on or after September 16, 2012 (except reissue applications), applicant may postpone filing the inventor’s oath or declaration until the application is in condition for allowance if an application data sheet (ADS) in compliance with 37 CFR 1.76 is filed identifying: (1) each inventor by their legal name; and (2) for each inventor, a mailing address where the inventor customarily receives mail, and residence, if the inventor lives at a location which is different from where the inventor customarily receives mail.
However, the inventor’s oath or declaration must be filed no later than the date on which the issue fee is paid.
Yes, an applicant can submit missing parts of an application after the filing date, but this may affect the application’s effective filing date. The MPEP 506 states:
Such portion must be filed within the time period set by the Office in the notification by the Office of the omitted portion, or the application will be regarded as abandoned.
It’s important to note that submitting missing parts may result in a later effective filing date for the application, which could have implications for patent term and prior art considerations. Applicants should strive to submit complete applications initially to avoid potential complications.
For more information on effective filing date, visit: effective filing date.
For more information on missing parts, visit: missing parts.
MPEP 507 - Drawing Review in the Office of Patent Application Processing (20)
OPAP may object to and require corrected drawings within a set time period for several issues. According to the MPEP, these include:
- Line quality that is too light to be reproduced
- Illegible text
- Missing lead lines
- Excessive text or non-English text
- Incorrect margins or paper size
- Improper figure labeling
- Illegible photographs that could be illustrated by ink drawings
- Color drawings or photographs without a proper petition
For example, regarding line quality, MPEP 507 states:
“OPAP may object to and require corrected drawings within a set time period, if the drawings: (A) have a line quality that is too light to be reproduced (weight of all lines and letters must be heavy enough to permit adequate reproduction) or text that is illegible (reference characters, sheet numbers, and view numbers must be plain and legible). See 37 CFR 1.84(l) and (p)(1)“
For more information on drawing requirements, visit: drawing requirements.
For more information on OPAP, visit: OPAP.
For more information on patent drawings, visit: patent drawings.
The PTO-948 form, also known as the ‘Drawing Informalities’ form, serves the following purposes in patent applications:
- It is used by the Office of Patent Application Processing (OPAP) to indicate that the drawings submitted with the application are informal but acceptable for publication purposes.
- It notifies the examiner that the drawings may need to be corrected or replaced with formal drawings during examination.
- It provides a record in the file wrapper that the drawings have been provisionally accepted.
As stated in MPEP 507: ‘If the drawings are informal but otherwise in compliance with 37 CFR 1.121(d), the OPAP will accept the application for purposes of publication and place a ‘Drawing Informalities’ form PTO-948 in the file wrapper.’
This form helps streamline the application process by allowing examination to proceed while flagging the need for potential drawing improvements later in the process.
For more information on OPAP, visit: OPAP.
The Office of Patent Application Processing (OPAP) performs an initial review of drawings in new utility and plant patent applications to determine whether the drawings can be effectively scanned for publication purposes. As stated in the MPEP:
“OPAP inspects the drawings to see if they can be effectively scanned and adequately reproduced.”
This review ensures that the drawings meet the necessary quality standards for publication and reproduction.
For more information on drawing review, visit: drawing review.
For more information on OPAP, visit: OPAP.
The primary purpose of drawing review in OPAP is to determine whether the drawings in new utility and plant patent applications can be effectively scanned for publication purposes. As stated in MPEP 507:
The Office of Patent Application Processing (OPAP) performs an initial review of drawings in new utility and plant patent applications to determine whether the drawings can be effectively scanned for publication purposes.
It’s important to note that design applications are not subject to this review as they are not published.
If OPAP objects to the drawings in a patent application, there is a specific process for submitting corrected drawings. The MPEP states:
“If OPAP objects to the drawings and sends applicant a Notice requiring submission of corrected drawings within a set time period (usually two months), corrected drawings must be filed, in paper, to the mailing address set forth in the Notice, along with any other items required by OPAP, to avoid abandonment of the application. No fee will be necessary for filing corrected drawings which are required by OPAP.”
It’s important to note that the corrected drawings must be submitted in paper form to the specific mailing address provided in the Notice. Applicants should ensure they meet the deadline (typically two months) to avoid potential abandonment of their application.
For more information on corrected drawings, visit: corrected drawings.
For more information on OPAP, visit: OPAP.
For more information on patent procedure, visit: patent procedure.
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.
If OPAP objects to the drawings in a patent application, the following process occurs:
- OPAP sends a Notice to the applicant requiring submission of corrected drawings.
- The Notice typically sets a time period of two months for response.
- Corrected drawings must be filed in paper form to the mailing address specified in the Notice.
- No fee is required for filing the corrected drawings requested by OPAP.
MPEP 507 states:
If OPAP objects to the drawings and sends applicant a Notice requiring submission of corrected drawings within a set time period (usually two months), corrected drawings must be filed, in paper, to the mailing address set forth in the Notice, along with any other items required by OPAP, to avoid abandonment of the application. No fee will be necessary for filing corrected drawings which are required by OPAP.
It’s crucial to respond within the set time period to avoid potential abandonment of the application.
If drawings are not received with a patent application, the following process occurs:
- The application is assigned a filing date if it meets the minimum requirements under 37 CFR 1.53(b) or 1.53(d).
- The Office of Patent Application Processing (OPAP) will send a Notice of Omitted Items giving the applicant a time period to file the missing drawings and a petition under 37 CFR 1.182 with the petition fee to have the filing date changed to the date of such filing.
- If the applicant does not respond to the Notice of Omitted Items, the application will be processed without the drawings.
As stated in the MPEP 507: ‘If drawings are not received with the application, the application is assigned a filing date and the applicant is notified to file drawings within a set time period.’
For more information on drawings, visit: drawings.
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 a drawing is not included with the application but is required for a complete disclosure of the invention, the Office of Patent Application Processing (OPAP) will send a Notice to File Missing Parts giving the applicant a time period of two months from the mailing date of the Notice to file the missing drawing(s). The time period may be extended under 37 CFR 1.136(a).
If a drawing is not acceptable for publication, the Office of Patent Application Processing (OPAP) will object to the drawing and notify the applicant. The applicant will be given a time period of two months from the mail date of the Notice to file acceptable drawings. This period is extendable under 37 CFR 1.136(a) or (b) for patent applications filed under 35 U.S.C. 111, but not for design applications filed under 35 U.S.C. 171. Failure to comply with the Notice within the time period will result in abandonment of the application.
MPEP 507 outlines specific requirements for margins and paper size in patent drawings:
Each sheet must include a top margin of at least 2.5 cm. (1 inch), a left size margin of at least 2.5 cm. (1 inch), a right size margin of at least 1.5 cm. (5/8 inch), and a bottom margin of at least 1.0 cm. (3/8 inch). The size of the sheets on which drawings are made must be either 21.0 cm. by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8-1/2 by 11 inches);
These requirements are based on 37 CFR 1.84(f) and (g). Adhering to these specifications ensures that the drawings can be properly scanned and reproduced in the patent publication process.
What are the consequences of submitting color drawings in a utility patent application?
Submitting color drawings in a utility patent application has specific consequences and requirements:
- Color drawings are not ordinarily permitted in utility patent applications.
- As stated in MPEP 507: “Color drawings are permitted in design applications. For utility patent applications, color drawings are not permitted without a grantable petition.”
- If color drawings are submitted without an approved petition, OPAP will send a Notice to File Corrected Application Papers.
- The applicant must either:
- Replace the color drawings with black and white drawings, or
- File a grantable petition under 37 CFR 1.84(a)(2) to accept the color drawings.
- The petition must explain why color drawings are necessary and be accompanied by the fee set forth in 37 CFR 1.17(h).
It’s important to consider whether color drawings are truly necessary for your utility patent application, as they require additional steps and fees in the application process.
For more information on application papers, visit: application papers.
For more information on color drawings, visit: color drawings.
OPAP may object to patent drawings for several reasons, including:
- Line quality issues
- Missing lead lines
- Excessive or non-English text
- Incorrect margins or paper size
- Improper figure labeling
- Illegible photographs
- Unauthorized color drawings or photographs
For example, regarding line quality, MPEP 507 states:
OPAP may object to and require corrected drawings within a set time period, if the drawings: (A) have a line quality that is too light to be reproduced (weight of all lines and letters must be heavy enough to permit adequate reproduction) or text that is illegible (reference characters, sheet numbers, and view numbers must be plain and legible). See 37 CFR 1.84(l) and (p)(1);
According to MPEP 507, figures in patent drawings should be labeled as follows:
Each figure must be labeled ‘Fig.’ with a consecutive Arabic numeral (1, 2, etc.) or an Arabic numeral and capital letter in the English alphabet (A, B, etc.). See 37 CFR 1.84(u)(1);
This labeling convention ensures clarity and consistency in referencing figures throughout the patent application and publication. Improper labeling may result in an objection from OPAP and require correction.
The USPTO handles informal drawings in patent applications as follows:
- If the drawings are informal but otherwise sufficient for examination, the USPTO will accept them provisionally.
- The drawings will be approved by the Office of Patent Application Processing (OPAP) for publication purposes.
- Formal drawings will be required if the application is allowed.
According to MPEP 507: ‘If the drawings are informal but otherwise in compliance with 37 CFR 1.121(d), the OPAP will accept the application for purposes of publication and place a ‘Drawing Informalities’ form PTO-948 in the file wrapper.’
The examiner may require formal drawings or corrections in a subsequent office action if necessary for a proper examination or if the application is allowed.
For more information on drawing review, visit: drawing review.
For more information on informal drawings, visit: informal drawings.
For more information on OPAP, visit: OPAP.
When an application is filed with informal drawings, the Office of Patent Application Processing (OPAP) will review the drawings to determine if they can be used for publication purposes. If the drawings are not acceptable for publication purposes, OPAP will object to the drawings and require corrected drawings within a set time period, usually two months. This objection does not affect the filing date of the application, and applicants can correct the drawings later in the examination process if needed.
Yes, drawing corrections can be made after the application has been allowed. However, such corrections must be approved by the examiner before the application can be processed for issue. If extensive corrections are required, the examiner may require that the corrections be filed with a Request for Continued Examination (RCE) under 37 CFR 1.114.
Photographs can be included in patent applications, but there are specific requirements and limitations. According to MPEP 507:
“OPAP may object to and require corrected drawings within a set time period, if the drawings: (F) include photographs of the claimed invention which are capable of illustration by other medium such as ink drawings, and which are illegible after scanning. See 37 CFR 1.84(b)“
This means that while photographs are acceptable, they should only be used when the subject matter cannot be accurately depicted in a drawing. Additionally, the photographs must be of sufficient quality to be legible after scanning. If a photograph can be replaced by a clear ink drawing, the USPTO may require such a replacement.
For more information on drawing requirements, visit: drawing requirements.
For more information on patent drawings, visit: patent drawings.
Color drawings or photographs are generally not allowed in patent applications without special permission. MPEP 507 states:
OPAP may object to and require corrected drawings within a set time period, if the drawings: … (G) contain color drawings or color photographs, but not a petition to accept color drawings/photographs.
If an applicant wishes to include color drawings or photographs, they must file a petition to accept them. It’s important to note that the requirement for a black and white photocopy of color drawings/photographs has been eliminated. Applicants should be prepared to justify the need for color in their drawings or photographs when filing such a petition.
MPEP 508 - Distribution (11)
When the USPTO cannot locate a patent or application file after a reasonable search, they follow the procedure outlined in 37 CFR 1.251. The key steps are:
- The Office notifies the applicant or patentee about the unlocatable file.
- A time period is set for the applicant or patentee to comply with the notice.
- The applicant or patentee must respond by either:
- Providing a copy of their record of all correspondence with the Office (except U.S. patent documents)
- Producing their record for the Office to copy
- Stating that they do not possess any record of the correspondence
As stated in MPEP 508.04, “37 CFR 1.251 sets forth a procedure for the reconstruction of the file of a patent application, patent, or any other patent-related proceeding that cannot be located after a reasonable search.”
When a patent or application file cannot be located after a reasonable search, the USPTO has a specific procedure outlined in 37 CFR 1.251. The Office will notify the applicant or patentee and set a time period for compliance with one of the following options:
- Provide a copy of all correspondence records between the Office and the applicant/patentee, along with a list and a statement of completeness.
- Produce the applicant’s/patentee’s records for the Office to copy, along with a statement of completeness.
- If no records are possessed, provide a statement to that effect.
The MPEP states, 37 CFR 1.251 sets forth a procedure for the reconstruction of the file of a patent application, patent, or any other patent-related proceeding that cannot be located after a reasonable search.
For pending applications, failure to comply within the set time period will result in abandonment of the application.
For more information on file reconstruction, visit: file reconstruction.
For more information on USPTO procedures, visit: USPTO procedures.
According to MPEP 508.02, “After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender. 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 any documents received after a patent is granted or an application is abandoned will not be added to the official record. Instead, they will be either physically returned to the sender or, if already scanned into the Image File Wrapper (IFW) system, electronically closed within the system.
After a patent is granted or an application is abandoned, the USPTO has specific procedures for handling incoming communications. According to the MPEP, After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender.
In the case of digital documents, the MPEP states, 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 the document will be marked as closed in the digital system, effectively removing it from active consideration.
For more information on post-grant communications, visit: post-grant communications.
For more information on USPTO procedures, visit: USPTO procedures.
The time limits for responding to a notice under 37 CFR 1.251 vary depending on whether it’s for an application or a patent:
- For applications: The Office sets a three-month period for reply, which is extendable under 37 CFR 1.136(a) by up to three additional months, for a maximum of six months.
- For patents: The Office sets a six-month period for reply, which is not extendable.
MPEP 508.04 states: “The Office will set a time period of three months for reply in a notice under 37 CFR 1.251 in an application. The time period will be extendable under 37 CFR 1.136(a) (unless the notice indicates otherwise) by three months up to a maximum period for reply of six months in an application.” It also notes: “The Office will set a time period of six months for reply in a notice under 37 CFR 1.251 in a patent. The time period will not be extendable under 37 CFR 1.136(a) in a patent.”
The USPTO sets specific time limits for responding to notices about unlocatable files, which differ for applications and patents:
For applications, the MPEP states: The Office will set a time period of three months for reply in a notice under 37 CFR 1.251 in an application. The time period will be extendable under 37 CFR 1.136(a) (unless the notice indicates otherwise) by three months up to a maximum period for reply of six months in an application.
For patents, the time limit is longer: The Office will set a time period of six months for reply in a notice under 37 CFR 1.251 in a patent. The time period will not be extendable under 37 CFR 1.136(a) in a patent because 35 U.S.C. 41(a)(8) only authorizes the Office to charge fees for extensions of time in proceedings involving an application.
It’s important to note that failing to reply within these time limits can have serious consequences, including abandonment of pending applications.
For more information on patent applications, visit: patent applications.
For more information on Time Limits, visit: Time Limits.
When responding to a notice about an unlocatable file, applicants or patentees must provide copies of correspondence, but there are some exceptions. The MPEP states:
Any appendix or information disclosure statement submitted with an application is not contained in the Office’s database. Therefore, the applicant or patentee must also provide a copy of any appendix or information disclosure statement (except in the limited circumstance discussed below) submitted with the application.
However, there’s an important exception for U.S. patent documents:
Since the Office can obtain copies of U.S. patent documents (U.S. patent application publications and patents) from its internal databases, the Office is not requiring applicants or patentees to provide copies of U.S. patent application publications and patents that are among the applicant’s or patentee’s record of the correspondence between the Office and the applicant or patentee for the application, patent, or other proceeding.
This means that while most documents need to be resubmitted, U.S. patent documents can be omitted from the response.
The consequences of failing to respond to a 37 CFR 1.251 notice differ for pending applications and granted patents:
- For pending applications: Failure to reply within the set time period will result in abandonment of the application. MPEP 508.04 cites 37 CFR 1.251(b): “With regard to a pending application, failure to comply with one of paragraphs (a)(1), (a)(2), or (a)(3) of this section within the time period set in the notice will result in abandonment of the application.”
- For granted patents: While the patent won’t expire, there may be limitations on the certified copy of the patent file that the Office can produce. MPEP 508.04 states: “While abandonment (or expiration) of a patent is not an issue if a patentee fails to timely comply with a notice under 37 CFR 1.251, in such a situation the only certified copy of the patent file that the Office will be able to produce will be a copy of the patent and a copy of the application-as-filed (which may have an adverse impact during attempts to enforce the patent).”
Additionally, for patents involved in proceedings before the Office, action may be taken under 37 CFR 41.128 or 37 CFR 11.18.
The USPTO has specific rules regarding patent term adjustments when dealing with notices about unlocatable files. According to the MPEP:
If, however, an applicant fails to reply to a notice under 37 CFR 1.251 within three months of its mailing date, any patent term adjustment under 35 U.S.C. 154(b) will be reduced by a period equal to the number of days (if any) beginning on the day after the date that is three months after the mailing date of the notice under 37 CFR 1.251 and ending on the date the reply to the notice under 37 CFR 1.251 was filed.
This reduction in patent term adjustment is based on 35 U.S.C. 154(b)(2)(C)(ii) and 37 CFR 1.704(b). It’s important to note that this reduction applies even if the applicant responds within the overall six-month period allowed for reply (including extensions).
This policy underscores the importance of prompt action in response to such notices, as delays can directly impact the duration of patent protection.
For more information on patent term adjustment, visit: patent term adjustment.
Patent applications are initially processed by the USPTO through electronic scanning and loading into the Image File Wrapper (IFW) system. According to MPEP 508, “All applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing. Once documents are loaded into the IFW system, examiners, technical support staff, and other Office personnel will perform further processing and examination using the IFW system.”
Patent applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing. As stated in the MPEP, All applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing.
This digital system allows examiners, technical support staff, and other Office personnel to perform further processing and examination efficiently.
For physical items such as models, exhibits, and specimens, special handling procedures are in place. The MPEP directs readers to MPEP § 608.03 and 608.03(a) for more information on these items.
For more information on image file wrapper, visit: image file wrapper.
For more information on patent application filing, visit: patent application filing.
For more information on USPTO procedures, visit: USPTO procedures.
MPEP 509 - Payment of Fees (28)
The institution of higher education basis allows applicants to qualify for micro entity status if:
- The applicant’s employer, from which the applicant obtains the majority of their income, is an institution of higher education as defined in the Higher Education Act of 1965, or
- The applicant has assigned, granted, conveyed, or is obligated to assign, grant or convey, a license or ownership interest in the application to such an institution of higher education.
The applicant must also qualify as a small entity. This basis is implemented in 37 CFR 1.29(d).
The USPTO requires a security code for credit card payments made through its website. According to MPEP 509:
Credit card payment submissions made on the USPTO website at www.uspto.gov must include the 3-digit or 4-digit security code associated with the credit card in addition to the credit card number. The security code will not be required when the paper Credit Card Payment Form (PTO-2038) or other written authorization is submitted.
Key points about the security code requirement:
- It’s part of an authentication procedure to reduce fraudulent or unauthorized credit card use.
- The code verifies that the physical card is in the cardholder’s possession.
- For DISCOVER®, MASTERCARD®, and VISA®, it’s a 3-digit code on the back of the card.
- For AMERICAN EXPRESS®, it’s a 4-digit code on the front of the card.
- If you can’t read the security code, contact your card issuer.
This requirement enhances security for online transactions but doesn’t apply to paper submissions using Form PTO-2038.
To learn more:
The Credit Card Payment Form (PTO-2038) is a specific form provided by the USPTO for making credit card payments for patent and trademark process fees. According to MPEP 509:
Credit Card Payment Form (PTO-2038) should be used when paying a patent process or trademark process fee (or the fee for an information product) by credit card, unless the payment is being made using the USPTO patent electronic filing system.
Key points about the form:
- It can be downloaded from the USPTO website at www.uspto.gov/PatentForms.
- It’s not required (and should not be used) when making credit card payments via EFS-Web or other electronic filing systems.
- Using this form helps keep credit card information confidential, as the USPTO does not include it among records open to public inspection.
Failure to use this form when submitting a paper credit card payment may result in the credit card information becoming part of the public record.
To learn more:
What is a USPTO deposit account and how does it work?
A USPTO deposit account is a pre-established account that allows for convenient payment of fees to the United States Patent and Trademark Office. According to MPEP 509:
“A deposit account is a convenient method for individuals or firms to establish a pre-paid account with the USPTO to facilitate the payment of fees.”
Here’s how USPTO deposit accounts work:
- You deposit funds into the account in advance
- Fees can be automatically deducted from the account when filing applications or paying other fees
- Minimum balance requirements apply (currently $1,000 for individuals, $5,000 for law firms)
- Account holders receive monthly statements
- Useful for frequent filers or those managing multiple applications
To open a deposit account, you need to complete Form PTO-2232 and submit it to the USPTO with an initial deposit. This method can streamline fee payments and reduce the risk of insufficient fee issues.
To learn more:
To learn more:
What happens if there are insufficient funds when paying USPTO fees?
If there are insufficient funds when paying USPTO fees, several consequences may occur:
- The fee payment will be considered incomplete.
- Your application or request may not be processed.
- You may incur additional fees or penalties.
- In some cases, you might lose filing date benefits.
The MPEP 509 warns, “If the Office receives a check drawn on a deposit account with insufficient funds, the fee will be considered unpaid.” For electronic payments, “If the electronic fund transfer is refused, or if the credit card is declined or invalid, the fee will be considered unpaid.” It’s crucial to ensure sufficient funds are available to avoid these issues and potential delays in your patent or trademark process.
To learn more:
If an applicant pays an insufficient fee to the USPTO, the Office will notify the applicant and provide an opportunity to submit the remaining balance. According to MPEP 509:
If the fee paid by the applicant is insufficient, either because the notice specified an incorrect dollar amount for the fee or because of a fee increase effective after the mailing of the notice and before payment of the fee by the applicant, the applicant should be notified in writing by the Office of the fee insufficiency and given a new time period in which to submit the remaining balance.
The notification will include:
- The reason for the additional fee requirement
- An explanation of why the original fee was incorrect or insufficient
- A new time period for submitting the remaining balance
This process helps ensure that applicants have a fair opportunity to complete their fee payments and avoid abandonment of their applications due to fee issues.
To learn more:
What happens if I overpay a patent fee to the USPTO?
If you overpay a patent fee to the USPTO, you may be eligible for a refund. The MPEP 509 states: ‘In the event that an amount is paid by mistake or in excess of that required, a refund may be made only if a petition for refund is filed within 2 years after the date the fee was paid.’
To request a refund:
- File a petition for refund within 2 years of the payment date
- Clearly explain the reason for the overpayment
- Provide evidence of the overpayment
It’s important to note that not all overpayments are automatically refunded, so proactive action is necessary to recover excess fees.
To learn more:
If you lose entitlement to micro entity status, you must:
- File a notification of loss of entitlement to micro entity status in the application or patent
- Pay the required fee in the small entity or undiscounted amount, as appropriate
The notification must be filed prior to or at the time of paying the earliest fee after the date on which status as a micro entity is no longer appropriate. As stated in 37 CFR 1.29(i): ‘Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate.’
Micro entities receive a 75% reduction on many USPTO fees, including:
- Filing fees (nonprovisional and provisional)
- Search fees
- Examination fees
- Issue fees
- Appeal fees
- Maintenance fees
- Patent Trial and Appeal Board fees
The micro entity discount applies to most fees ‘for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents.’
Improperly claiming micro entity status can have serious consequences:
- It may be considered fraud on the USPTO if done knowingly
- It can result in the patent being held unenforceable
- Improperly paid fees will need to be corrected, which may include late fees
MPEP 509.04 warns: ‘Any attempt to fraudulently establish status as a micro entity, or pay fees as a micro entity, shall be considered as a fraud practiced or attempted on the Office. Improperly, and with intent to deceive, establishing status as a micro entity, or paying fees as a micro entity, shall be considered as a fraud practiced or attempted on the Office.’
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.
What are the consequences of submitting insufficient fees for a patent application?
Submitting insufficient fees for a patent application can have significant consequences. According to MPEP 509:
“An application filed with insufficient basic filing fee, search fee, examination fee, or oath or declaration will be treated as an incomplete application under 37 CFR 1.53(f) and will not be given a filing date until the filing fee is received.”
This means:
- Your application won’t receive a filing date until the correct fees are paid
- This delay could affect your priority date
- If not corrected promptly, the application may be considered abandoned
It’s crucial to ensure all required fees are paid in full when submitting a patent application to avoid these issues.
To learn more:
What are the consequences of bounced checks or insufficient funds for USPTO fee payments?
Submitting a check that bounces or having insufficient funds for USPTO fee payments can have serious consequences. The MPEP 509 states: ‘If any fee is paid by a check which is uncollectible or is returned unpaid, or if any payment is made in an amount less than the required amount, the fee payment shall be regarded as incomplete and the processing of the application or other filing shall be held in abeyance until the full fee payment is made.’
Consequences may include:
- Suspension of application processing
- Potential loss of filing date
- Additional fees or penalties
- Possible disciplinary action for repeated occurrences
To avoid these issues, ensure sufficient funds are available and consider using more reliable payment methods like electronic funds transfer or credit cards.
To learn more:
What are the accepted payment methods for patent fees?
The USPTO accepts various payment methods for patent fees:
- Credit or debit card
- Electronic funds transfer (EFT)
- Deposit account
- Check or money order
As stated in MPEP 509: ‘Fees may be paid by U.S. credit card, electronic funds transfer (EFT), deposit account, check or money order.’ Electronic payment methods are preferred for their efficiency and speed.
To learn more:
The USPTO accepts various methods of payment for patent and trademark process fees. According to MPEP 509, the primary methods include:
- Credit cards (AMERICAN EXPRESS®, DISCOVER®, MASTER CARD®, and VISA®)
- Deposit accounts
- Electronic funds transfer (EFT)
- Other forms of payment accepted by the Office
It’s important to note that credit card payments are subject to a transaction maximum. As stated in the MPEP: Effective June 1, 2015, the credit card transaction maximum is $24,999.99 as specified in section 7045 of the ‘Treasury Financial Manual.’
This limit does not apply to other payment methods.
To learn more:
The USPTO requires clear itemization of fees to ensure proper accounting. According to MPEP 509:
37 CFR 1.22(b) sets forth that fees must be itemized in such a manner that it is clear for which purpose fees are paid. The Office may return fees that are not itemized.
However, the MPEP clarifies that the itemization requirement is not meant to create problems when the purpose is clear:
- A reference to ‘filing fee(s)’ is sufficient to cover all types of filing fees.
- In later submissions, ‘filing fee(s)’ would also cover surcharges.
- A reference to ‘any corresponding fee under 37 CFR 1.16’ covers any fee under that section.
The key is to provide enough information for the USPTO to understand the purpose of the payment.
To learn more:
Micro entity status, once properly established, generally remains in effect until:
- A fee is paid in the small entity or undiscounted amount
- A notification of loss of entitlement to micro entity status is filed
- The issue fee or a maintenance fee is due
However, the applicant has a continued obligation to verify eligibility for micro entity status each time a fee is paid. As stated in 37 CFR 1.29(g): ‘a fee may be paid in the micro entity amount only if status as a micro entity as defined in paragraph (a) or (d) of this section is appropriate on the date the fee is being paid.’
For micro entity status, gross income is determined as follows:
- Based on the calendar year preceding the year a fee is paid
- Uses the definition of gross income in section 61(a) of the Internal Revenue Code
- Compared to three times the median household income as reported by the Bureau of the Census
- For non-US income, converted using the average currency exchange rate for the relevant calendar year
The USPTO website provides the current maximum qualifying gross income limit.
The USPTO has specific procedures for handling refunds of fees paid by credit card. According to MPEP 509:
35 U.S.C. 42(d) and 37 CFR 1.26 (which concern refund of patent and trademark fees) also apply to requests for refund of fees paid by credit card. Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged. See 37 CFR 1.26(a).
Key points about USPTO refunds for credit card payments:
- Refunds are processed as credits to the original credit card account used for payment.
- The same laws and regulations governing refunds of patent and trademark fees apply to credit card payments.
- For information on which fees are refundable, refer to MPEP § 607.02 regarding returnability of fees.
It’s important to note that refund requests are subject to specific criteria and time limitations, so applicants should review the relevant regulations when seeking a refund.
To learn more:
The application filing limit for micro entity status works as follows:
- An applicant must not have been named as an inventor on more than 4 previously filed patent applications
- This limit excludes provisional applications, foreign applications, and PCT applications where the basic national fee was not paid
- Applications filed as a result of previous employment where rights were assigned don’t count towards the limit
MPEP 509.04(a) clarifies: ‘It does not matter how long ago the previous applications were filed or whether the previously filed applications are pending, patented, or abandoned; they are still included when counting to determine whether the application filing limit has been reached.’
How do I set up a deposit account with the USPTO?
To set up a deposit account with the USPTO:
- Visit the USPTO Deposit Accounts page
- Download and complete the Deposit Account Application Form
- Submit the form with an initial deposit (minimum $1,000)
- 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:
To certify micro entity status, you must file a certification form with the USPTO. The USPTO provides two forms:
- Form PTO/SB/15A for certifying under the gross income basis
- Form PTO/SB/15B for certifying under the institution of higher education basis
The certification must be signed by an authorized party as defined in 37 CFR 1.33(b). It should be filed prior to or at the time of paying the first fee as a micro entity.
How can I pay patent fees to the USPTO?
The USPTO offers several methods for paying patent fees. According to MPEP 509:
“Fees can be paid: (A) by credit card, (B) by electronic funds transfer (EFT), (C) by check, (D) by money order, (E) by deposit account, or (F) in cash (for hand-carried applications only).”
Here’s a breakdown of these payment methods:
- Credit Card: Accepted online or by mail/fax using Form PTO-2038
- Electronic Funds Transfer (EFT): Available through the USPTO’s Electronic Filing System (EFS-Web)
- Check or Money Order: Made payable to the Director of the USPTO
- Deposit Account: A pre-established account with the USPTO
- Cash: Only for in-person payments at the USPTO office
For most applicants, online payment methods (credit card or EFT) are the most convenient and efficient options.
To learn more:
How can I pay fees to the USPTO electronically?
The USPTO offers several electronic payment options for paying fees:
- Credit or Debit Card: You can pay using major credit or debit cards through the USPTO’s secure online system.
- Electronic Funds Transfer (EFT): This allows for direct transfer from your bank account to the USPTO.
- USPTO Deposit Account: Maintain a pre-funded account with the USPTO for easy fee payments.
According to MPEP 509, “The Office accepts the following forms of payment: […] by credit card, by electronic funds transfer (EFT), or by a USPTO deposit account.” Electronic payments are convenient and often processed more quickly than other methods.
To learn more:
Can I pay patent fees in foreign currency?
No, the USPTO does not accept foreign currency for patent fee payments. According to MPEP 509: ‘All payments of money required for USPTO fees or services must be made in U.S. dollars and in the form of a cashier’s or certified check, Treasury note, national bank notes, or United States Postal Service money order.’
If you’re an international applicant, you’ll need to arrange for payment in U.S. dollars. Options include:
- Using an international credit card that can process payments in USD
- Establishing a U.S. bank account
- Using a registered U.S. attorney who can make payments on your behalf
It’s advisable to plan ahead for currency conversion to ensure timely payment of USPTO fees.
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Yes, foreign applicants can qualify for micro entity status if they meet all the requirements. The USPTO states in MPEP 509.04(a):
Small entities may claim reduced fees regardless of the country in which they are located. There is no restriction requiring that the person, small business concern, or nonprofit organization be located in the United States.
For applicants with income in foreign currency, 37 CFR 1.29(c) specifies: ‘If an applicant’s, inventor’s, joint inventor’s, or entity’s gross income in the preceding calendar year is not in United States dollars, the average currency exchange rate, as reported by the Internal Revenue Service, during that calendar year shall be used to determine whether the applicant’s, inventor’s, joint inventor’s, or entity’s gross income exceeds the threshold specified in paragraph (a)(3) or (4) of this section.’
Are there any restrictions on paying USPTO fees by credit card?
Yes, there are some restrictions when paying USPTO fees by credit card:
- There’s a daily limit on credit card transactions.
- Some types of fees may not be eligible for credit card payment.
- Only certain credit cards are accepted.
The MPEP 509 states, “The Office will not accept a general authorization to charge all fees, or all fees in a specific case, to a credit card.” Additionally, “Credit Card Payment Form PTO-2038 should be used when paying a patent or trademark fee (or related service fee) by credit card, unless the payment is being made via EFS-Web.” It’s important to check the current USPTO guidelines for any updates to credit card payment policies.
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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:
MPEP 510 - U.S. Patent and Trademark Office Business Hours (6)
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 official business hours of the U.S. Patent and Trademark Office (USPTO) are:
- 8:30 a.m. to 5:00 p.m., Monday through Friday
- Excluding federal holidays in the District of Columbia
As stated in MPEP 510: “The U.S. Patent and Trademark Office (USPTO or Office) working hours are 8:30 a.m. to 5:00 p.m., Monday through Friday, excluding federal holidays in the District of Columbia.”
The Public Search Facility in Alexandria has extended hours compared to the regular USPTO business hours:
- 8:00 a.m. to 8:00 p.m., Monday through Friday
- Excluding federal holidays in the District of Columbia
As stated in MPEP 510: “The hours for the Public Search Facility in Alexandria are 8:00 a.m. to 8:00 p.m., Monday through Friday, excluding federal holidays in the District of Columbia.”
To find out if the USPTO is officially closed on any particular day, you can:
- Call 1-800-PTO(786)-9199
- Call (571) 272-1000
These phone numbers are provided in MPEP 510 for obtaining information about USPTO closures.
When the entire USPTO is officially closed for business for an entire day due to adverse weather or other causes:
- The day is considered a “Federal holiday within the District of Columbia” under 35 U.S.C. 21
- Any action or fee due on such a day may be taken or paid on the next succeeding business day the Office is open
MPEP 510 states: “When the entire USPTO is officially closed for business for an entire day, for reasons due to adverse weather or other causes, the Office will consider each such day a ‘Federal holiday within the District of Columbia’ under 35 U.S.C. 21. Any action or fee due on such a day may be taken, or fee paid, on the next succeeding business day the Office is open.”
To learn more:
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.”
MPEP 511 - Postal Service Interruptions and Emergencies (14)
If you cannot file your patent application electronically or by Priority Mail Express® due to an emergency, consider the following options:
- Use first-class mail with a Certificate of Mailing under 37 CFR 1.8
- Hand-deliver the application to the USPTO, if possible
- If the emergency is a designated postal service interruption, follow the specific instructions provided by the USPTO on their website or in the Official Gazette
Remember that the provisions for postal emergencies only apply to actual USPS service interruptions, not other circumstances like computer failures or office inaccessibility.
As stated in MPEP 511: “Applicants are cautioned that the provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) to (i) only apply to postal interruptions and emergencies. The provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) to (i) do not provide for granting of a filing date to correspondence as of the date on which it would have been filed but for other exigencies, such as the unavailability of a computer or word processing equipment, or the inaccessibility of an office or building other than a USPS facility.”
As of July 28, 2013, the United States Postal Service (USPS) renamed ‘Express Mail’ to ‘Priority Mail Express’. According to MPEP 511:
“Effective July 28, 2013, the United States Postal Service (USPS) changed the name of ‘Express Mail’ to ‘Priority Mail Express.’ All characteristics of the ‘Priority Mail Express’ service are the same as those of the former ‘Express Mail’ service (although the mailing labels differ).”
This change is important for patent applicants to note, as the USPTO’s rules and procedures now refer to ‘Priority Mail Express’ instead of ‘Express Mail’. However, the service characteristics and benefits for patent filings remain the same. When using this service for USPTO correspondence, ensure you use the correct addresses as specified in 37 CFR 1.1 and avoid using the ‘Hold for Pickup’ option, as the USPTO does not pick up mail.
To learn more:
In the event of a postal interruption or emergency, the USPTO will take the following actions:
- Place an announcement on the USPTO website at www.uspto.gov
- Publish a notice in the Official Gazette
These communications will provide instructions about filing patent applications and other patent-related papers. As stated in MPEP 511:
“In the event of a postal interruption or emergency, an announcement will be placed on the USPTO website at www.uspto.gov and a notice will be published in the Official Gazette, providing instructions about the filing of patent applications, and other papers related to patent applications and patents.”
This ensures that applicants have clear guidance on how to proceed during such circumstances.
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In the event of a postal interruption or emergency:
- An announcement will be placed on the USPTO website at www.uspto.gov
- A notice will be published in the Official Gazette
- These communications will provide instructions about filing patent applications and other papers related to patent applications and patents
The USPTO Director may prescribe rules considering papers or fees filed on the date they would have been deposited with the USPS, but for postal service interruptions or emergencies.
As stated in MPEP 511: “In the event of a postal interruption or emergency, an announcement will be placed on the USPTO website at www.uspto.gov and a notice will be published in the Official Gazette, providing instructions about the filing of patent applications, and other papers related to patent applications and patents.”
To prove a filing delay due to a postal emergency, applicants must provide sufficient evidence. According to MPEP 511:
The nature of the evidence required by the Office to establish that the paper was timely filed will depend upon the circumstances of the particular emergency and the nature of the filing.
This evidence may include:
- Documentation of the postal service interruption or emergency
- Proof of attempted mailing during the affected period
- Explanation of how the emergency directly impacted the filing
- Any official notices or bulletins related to the postal disruption
The USPTO will evaluate each case individually to determine if the delay was indeed caused by the designated emergency.
To learn more:
The USPTO recommends several methods for filing new patent applications, with some being more advantageous than others. According to MPEP 511, the recommended methods are:
- Electronic Filing System (EFS-Web or Patent Center): This is the most recommended method. As stated in MPEP 511: “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.”
- Priority Mail Express®: If not filing electronically, this is the next best option. MPEP 511 notes: “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.”
- Hand-delivery: Applications can be hand-delivered to the USPTO.
- First-class mail: While possible, this method carries risks of delay and is not recommended for new applications.
It’s important to note that new applications cannot be filed by facsimile. For more details on electronic filing, refer to the Legal Framework for Patent Electronic System on the USPTO website.
To learn more:
The USPTO strongly recommends the following methods for filing new patent applications:
- Electronic Filing System (EFS-Web or Patent Center): This is the preferred method whenever permitted.
- 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.
- 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.”
The provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) to (i) have specific limitations when it comes to petitions for filing dates. According to MPEP 511:
“Applicants are cautioned that the provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) to (i) only apply to postal interruptions and emergencies. The provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) to (i) do not provide for granting of a filing date to correspondence as of the date on which it would have been filed but for other exigencies, such as the unavailability of a computer or word processing equipment, or the inaccessibility of an office or building other than a USPS facility.”
This means that these provisions are strictly limited to postal service interruptions or emergencies. They cannot be used for other circumstances that may have prevented timely filing, such as:
- Computer or equipment failures
- Office or building inaccessibility (unless it’s a USPS facility)
- Personal emergencies or other non-postal related issues
Additionally, the statute requires that the correspondence was complete and ready to be deposited with the USPS on the requested filing date, and that the sole reason for non-deposit was the unavailability of postal service due to the designated interruption or emergency.
To learn more:
The USPTO has established procedures to notify the public about postal service interruptions that may affect patent filings. According to MPEP 511:
When the Director designates a postal service interruption or emergency, a notice will be published in the Official Gazette, and will be posted on the USPTO website at www.uspto.gov.
The USPTO’s notification process includes:
- Publishing a notice in the Official Gazette
- Posting information on the USPTO website
- Possibly issuing press releases or other public communications
These notifications typically include:
- Details about the nature and scope of the interruption
- Any special procedures or accommodations being made
- Instructions for applicants affected by the interruption
- Contact information for further inquiries
It’s crucial for patent applicants and attorneys to regularly check these official sources during potential postal disruptions to stay informed about any changes in filing procedures or deadlines.
To learn more:
During postal service emergencies, the USPTO takes special measures to ensure patent applications are handled appropriately:
- The USPTO Director may designate the interruption or emergency as a ‘postal service interruption or emergency’ under 35 U.S.C. 21(a).
- This designation allows for the acceptance of filings that would have been timely filed if not for the postal service interruption or emergency.
- The USPTO may publish a notice in the Official Gazette and on its website about the designation and any special procedures to be followed.
As stated in MPEP 511: The USPTO will consider on a case-by-case basis whether to waive the date indicated on any certificate of mailing or transmission accompanied by a showing which establishes to the satisfaction of the Director that the delay was due to the emergency.
To learn more:
You can petition the USPTO Director to consider correspondence as filed on a particular date if it was returned or refused by the USPS due to a Priority Mail Express® interruption or emergency. The petition process is outlined in 37 CFR 1.10(g) and (h):
- File the petition promptly after becoming aware of the return or refusal
- Include the original correspondence or a copy showing the Priority Mail Express® mailing label number
- Provide a copy of the Priority Mail Express® mailing label showing the “date accepted” (for returned mail)
- Include a statement establishing the original deposit attempt and that the correspondence is the original or a true copy
- The USPTO may require additional evidence to verify the interruption or emergency
As stated in MPEP 511: “37 CFR 1.10(g) provides a procedure under which applicant may petition the Director to have correspondence that was returned by the USPS due to an interruption or emergency in Priority Mail Express® service considered as filed on a particular date in the Office.”
If your correspondence is affected by a postal emergency, you can petition the Director to consider it filed on a particular date under certain conditions. The process depends on whether your mail was returned, refused, or unable to be deposited. Here’s a summary of the petition requirements based on MPEP 511:
- For returned correspondence (37 CFR 1.10(g)):
- File promptly after becoming aware of the return
- Include the original or copy of correspondence with Priority Mail Express® label
- Provide a statement establishing the original deposit
- For refused correspondence (37 CFR 1.10(h)):
- File promptly after becoming aware of the refusal
- Include the original or copy of correspondence with Priority Mail Express® label
- Provide a statement establishing the original attempt to deposit
- For correspondence unable to be deposited (37 CFR 1.10(i)):
- File promptly in a manner designated by the Director
- Include the original or copy of correspondence
- Provide a statement establishing that the correspondence would have been deposited but for the emergency
For more detailed information on filing these petitions, refer to MPEP § 513, subsections IX-XI.
To learn more:
Yes, the USPTO has the authority to extend deadlines during a postal service emergency. This is based on the provisions outlined in MPEP 511 and 35 U.S.C. 21(a).
Specifically, MPEP 511 states:
The Director may designate the interruption or emergency as a ‘postal service interruption or emergency’ under 35 U.S.C. 21(a) and provide for ‘tolling’ of the time for filing correspondence, fees, or other papers for a limited time.
This means that:
- The USPTO Director can officially recognize the emergency
- Time limits for filing various patent-related documents can be extended
- The extension is typically for a specific, limited period
- Applicants may need to provide evidence that their delay was due to the recognized emergency
It’s important to note that while the USPTO has this authority, each situation is evaluated individually, and extensions are not automatically granted.
To learn more:
No, you should not use the “Hold for Pickup” service option when sending Priority Mail Express® to the USPTO. The reasons for this are:
- The USPTO does not have resources for picking up mail
- Mail sent using the “Hold for Pickup” service will not reach the Office
Always use the standard Priority Mail Express® Post Office to Addressee service when sending correspondence to the USPTO.
As stated in MPEP 511: “The Office does not have resources for picking up any mail. Therefore mail should NOT be sent using the ‘Hold for Pickup’ service option (whereby the mail is retained at the destination postal facility for retrieval by the addressee). Mail sent using the ‘Hold for pickup’ service will not reach the Office.”
MPEP 512 - Certificate of Mailing or Transmission (22)
While the Certificate of Mailing or Transmission procedure is useful for many types of USPTO correspondence, there are several exceptions. According to 37 CFR 1.8(a)(2), the procedure does not apply to:
- Filing of national patent application specifications and drawings for the purpose of obtaining an application filing date
- Filing of correspondence in an international application before the U.S. Receiving Office, U.S. International Searching Authority, or U.S. International Preliminary Examining Authority
- Filing of an international design application
- Filing a copy of an international application and the basic national fee to enter the national stage
- Filing a written declaration of abandonment under 37 CFR 1.138
It’s crucial to note that these exceptions exist to ensure certain critical documents are actually received by the USPTO before they are considered filed.
To learn more:
If you have filed correspondence with a proper Certificate of Mailing or Transmission, but the USPTO has not received it after a reasonable amount of time, you can take action under 37 CFR 1.8(b). The MPEP states:
“37 CFR 1.8(b) permits a party to notify the Office of a previous mailing through the U.S. Postal Service, or transmission by facsimile or EFS-Web, of correspondence when a reasonable amount of time has elapsed from the time of mailing or transmission of the correspondence.”
To rectify this situation:
- Promptly notify the Office of the previous mailing or transmission
- Supply a duplicate copy of the previously mailed or transmitted correspondence
- Provide a statement attesting to the previous timely mailing or transmission
It’s important to act quickly once you become aware that the Office has not received your correspondence, rather than waiting until the end of the reply period.
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If you’ve misused a Certificate of Mailing or Transmission, it’s important to address the issue promptly and honestly. The USPTO takes the integrity of these certificates seriously. The MPEP states:
Misuse of a Certificate of Mailing under 37 CFR 1.8 or improperly claiming the benefit of 37 CFR 1.10 which appears to be more than a one-time, inadvertent error should be brought to the attention of the Office of Enrollment and Discipline.
If the misuse was a one-time, inadvertent error, you should:
- Notify the USPTO as soon as you become aware of the error.
- Provide a full explanation of the circumstances.
- If possible, submit the correct documentation or information.
- Be prepared for the possibility that your submission may be considered late, which could have consequences for your application or proceeding.
For repeated or intentional misuse, the matter may be referred to the Office of Enrollment and Discipline, which could result in more serious consequences. It’s always best to use Certificates of Mailing or Transmission carefully and honestly to maintain the integrity of the patent application process.
The purpose of a certificate of mailing or transmission in patent applications is to provide evidence of timely filing when correspondence is not received by the USPTO or is received late. As stated in MPEP 512:
The Certificate of Mailing or Transmission procedure does not apply to papers mailed in a foreign country.
This procedure allows applicants to prove that they submitted their correspondence on time, even if it’s delayed or lost in transit.
To learn more:
While both the Certificate of Mailing (37 CFR 1.8) and Priority Mail Express (37 CFR 1.10) procedures can be used to establish timely filing of USPTO correspondence, they have some key differences:
- Certificate of Mailing can be used with any class of mail, while Priority Mail Express is a specific USPS service.
- Certificate of Mailing uses the date of deposit with USPS as the filing date, while Priority Mail Express uses the date of deposit as shown by the “date accepted” on the mailing label.
- Certificate of Mailing cannot be used for new patent applications, while Priority Mail Express can establish a filing date for new applications.
- Certificate of Mailing requires a signed certificate, while Priority Mail Express requires the mailing label to be affixed to the correspondence.
The MPEP notes: “New patent applications filed in accordance with 37 CFR 1.10 will be stamped by the Office with the date of deposit as Priority Mail Express® with the United States Postal Service.”
Both procedures have specific requirements and limitations, so it’s important to consult the full text of 37 CFR 1.8 and 37 CFR 1.10 when deciding which to use.
A Certificate of Mailing or Transmission is a procedure under 37 CFR 1.8 that allows correspondence to be considered timely filed with the USPTO if it meets certain conditions. As stated in the MPEP:
“Under 37 CFR 1.8, a person may state on certain papers directed to the Office (some exceptions are stated in 37 CFR 1.8), the date on which the paper will be deposited in the United States Postal Service, transmitted by facsimile or transmitted via the USPTO electronic filing system (EFS-Web). If the date stated is within the period for reply, the reply in most instances will be considered to be timely.”
This procedure can be crucial for meeting deadlines, even if the actual receipt of the correspondence by the USPTO occurs after the deadline.
To learn more:
A certificate of mailing for USPTO correspondence must include specific information to be valid. According to MPEP 512, the following information is required:
- The date of deposit or transmission
- The application number (for patent applications)
- A statement that the correspondence is being deposited with the USPS or transmitted to the USPTO
- The signature of the person depositing or transmitting the correspondence
The MPEP states:
The certificate must state that the correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail, or transmitted to the Office on the date of the certificate.
Ensure all these elements are included to make your certificate of mailing valid and effective.
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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.
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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.
The USPTO has specific procedures for handling papers that include a Certificate of Mailing or Transmission. According to the MPEP:
“The Mail Center of the Office of Patent Application Processing (OPAP) will continue to date stamp the actual date of receipt of all papers received by mail in the Office. No attempt will be made to retain the envelopes in which the papers are received or to indicate on the papers the postal cancellation date (postmark).”
Key points in the USPTO’s handling process include:
- The actual receipt date is stamped on all papers
- The date on the Certificate is used to determine if the paper was filed within the period for reply
- If the paper is received after the period for reply, but the Certificate date is within the period, the paper is considered timely filed
- A notation (e.g., “C of Mail 11/10/97”) is made next to the Office Date Stamp to indicate the Certificate date
It’s important to note that while the Certificate date is used to determine timeliness, the actual receipt date is used for all other purposes, including calculating subsequent deadlines.
To learn more:
The USPTO has specific procedures for handling correspondence with a Certificate of Mailing or Transmission:
- All papers received by mail are date stamped with the actual date of receipt, regardless of any Certificate of Mailing.
- For papers with a Certificate of Mailing or Transmission, the date on the certificate is used to determine if the paper was filed within the period for reply.
- If the paper is received within the period for reply, the actual receipt date is used for all purposes.
- If the paper is received after the period for reply, but the certificate date is within the period, the paper is considered timely filed. In this case, a notation is made next to the ‘Office Date’ stamp indicating the certificate date (e.g., ‘C of Mail 11/10/97’).
- For facsimile transmissions, the date stamped is the date the complete transmission is received, 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 business day.
- For EFS-Web submissions, the receipt date is the date the correspondence is received at the USPTO’s correspondence address when it was officially submitted, which can include weekends and holidays.
The MPEP states: “The date indicated on the Certificate of Mailing or of Transmission will be used by the Office only to determine if the paper was deposited in the United States Postal Service, transmitted by facsimile or transmitted via EFS-Web within the period for reply.”
The Certificate of Mailing or Transmission can significantly affect the timeliness of USPTO submissions. According to MPEP 512:
“The date indicated on the Certificate of Mailing or Transmission will be used by the Office as the date of receipt of the paper or fee.”
This means that even if there are delays in postal or electronic transmission, your submission will be considered timely if the certificate date is within the required deadline. However, it’s important to note that the actual mailing or transmission must occur on or before the certificate date. False certificates can lead to serious consequences, including invalidation of the submission and potential disciplinary action.
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The Certificate of Mailing or Transmission can affect filing date calculations in several ways:
- For timely filing: If a paper with a certificate is received after a deadline but the certificate date is within the deadline, the paper is considered timely filed. The MPEP states: “If the date stated is within the period for reply, the reply in most instances will be considered to be timely.”
- For actual receipt date: The USPTO will continue to stamp the actual date of receipt on all papers. According to the MPEP: “The receipt date stamped on all papers will also be the date which is entered on Office records and from which any subsequent periods are calculated.”
- For subsequent deadlines: If a paper starts a new period for reply, that period is calculated from the actual receipt date, not the certificate date. For example: “If the last day to reply to a final Office action was November 10, 2014, and applicant deposited a Notice of Appeal with fee in the U.S. mail on November 10, 2014, and so certified, that appeal is timely even if it was not received in the U.S. Patent and Trademark Office until November 12, 2014. Since the date of receipt of the notice of appeal will be used to calculate the time at which the brief is due, the brief was due on January 12, 2015.”
It’s important to note that while the certificate can establish timely filing, it doesn’t change the actual receipt date for other USPTO processing purposes.
To use a Certificate of Mailing or Transmission, you must include a signed certification with your correspondence. The MPEP provides suggested formats for these certificates:
“The following are suggested formats for either a Certificate of Mailing or Certificate of Transmission under 37 CFR 1.8(a). The certification may be included with all correspondence concerning this application or proceeding to establish a date of mailing or transmission under 37 CFR 1.8(a).”
The certificate should include:
- A statement certifying the date of mailing or transmission
- The signature of the person making the certification
- The application number (if known)
It’s important to note that the certificate must be signed by someone with a reasonable basis to expect the correspondence would be mailed or transmitted on or before the date indicated.
To learn more:
To properly use a certificate of mailing for patent correspondence, follow these steps:
- Prepare your correspondence.
- Attach a certificate of mailing to each piece of correspondence.
- Include the required information on the certificate.
- Sign and date the certificate.
- Mail the correspondence with the attached certificate.
According to MPEP 512:
Each piece of correspondence for which a certificate is filed must include a signed and dated certificate which sets forth the date of deposit or transmission.
Ensure that you follow these guidelines to properly use the certificate of mailing procedure.
To learn more:
The Certificate of Mailing procedure does not apply to papers mailed from a foreign country. However, the Certificate of Transmission procedure can be used for correspondence transmitted to the USPTO from a foreign country, with some conditions. The MPEP states:
The Certificate of Transmission procedure for both facsimile transmissions and transmissions via EFS-Web, however, also applies to papers transmitted to the Office from a foreign country provided that the correspondence being transmitted is not prohibited from being transmitted by facsimile or via EFS-Web and is not otherwise precluded from receiving the benefits under 37 CFR 1.8.
This means that while you can’t use a Certificate of Mailing for papers sent by postal mail from outside the United States, you can use a Certificate of Transmission for faxes or EFS-Web submissions from foreign countries, as long as the specific type of correspondence is eligible for the certificate procedure.
The use of a Certificate of Mailing or Transmission for international patent applications is limited and depends on the specific type of correspondence. According to the MPEP and 37 CFR 1.8(a)(2)(i)(D)-(F), the certificate procedure does not apply to:
- The filing of an international application for patent
- The filing of correspondence in an international application before the U.S. Receiving Office, the U.S. International Searching Authority, or the U.S. International Preliminary Examining Authority
- The filing of a copy of the international application and the basic national fee necessary to enter the national stage
However, the Certificate of Transmission procedure can be used for some correspondence related to international applications if it’s being transmitted to the USPTO and is not otherwise prohibited. The MPEP states:
The Certificate of Transmission procedure for both facsimile transmissions and transmissions via EFS-Web, however, also applies to papers transmitted to the Office from a foreign country provided that the correspondence being transmitted is not prohibited from being transmitted by facsimile or via EFS-Web and is not otherwise precluded from receiving the benefits under 37 CFR 1.8.
It’s crucial to carefully review the specific requirements and limitations for international application correspondence to ensure proper and timely filing.
Yes, you can use a Certificate of Transmission for documents filed electronically through the USPTO’s Electronic Filing System (EFS-Web). The MPEP provides a suggested format for a Certificate of EFS-Web Transmission:
I hereby certify that this correspondence is being transmitted via the U.S. Patent and Trademark Office electronic filing system (EFS-Web) to the USPTO on [Date].
However, it’s important to note that EFS-Web submissions have their own timestamp system. According to 37 CFR 1.6(a)(4):
Correspondence submitted to the Office by way of the Office electronic filing system will be accorded a receipt date, which is the date the correspondence is received at the correspondence address for the Office set forth in § 1.1 when it was officially submitted.
This date can be a Saturday, Sunday, or federal holiday within the District of Columbia. The certificate can provide an additional layer of documentation for your submission date, but the EFS-Web timestamp is generally considered authoritative for determining the receipt date of electronic submissions.
The use of a Certificate of Mailing or Transmission for correspondence from outside the United States depends on the method of transmission. The MPEP clarifies:
“The Certificate of Mailing procedure does not apply to papers mailed in a foreign country. The Certificate of Transmission procedure for both facsimile transmissions and transmissions via EFS-Web, however, also applies to papers transmitted to the Office from a foreign country provided that the correspondence being transmitted is not prohibited from being transmitted by facsimile or via EFS-Web and is not otherwise precluded from receiving the benefits under 37 CFR 1.8.”
Therefore:
- You cannot use a Certificate of Mailing for papers mailed from outside the U.S.
- You can use a Certificate of Transmission for facsimile or EFS-Web transmissions from outside the U.S., as long as the correspondence is eligible for this procedure.
It’s important to verify that your specific type of correspondence is eligible for the Certificate of Transmission procedure before using it from outside the United States.
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No, the Certificate of Mailing or Transmission cannot be used for all USPTO correspondence. The MPEP 512 specifies certain types of correspondence that are excluded from the certificate practice:
“The Certificate of Mailing or Transmission procedure does not apply to: (A) Relative to Patents and Patent Applications— (1) The filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date…”
The MPEP lists several other exclusions, including certain international application filings, trademark-related filings, and correspondence filed in interference or trial proceedings. It’s crucial to review the full list in MPEP 512 to ensure compliance with USPTO rules.
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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.
While certificates of mailing are widely applicable, they cannot be used for all types of patent-related correspondence. MPEP 512 outlines specific exceptions:
The Certificate of Mailing or Transmission procedure does not apply to the filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date.
Additionally, you cannot use a certificate of mailing for:
- Filing of an international application for patent
- Filing correspondence in an international application before the U.S. Receiving Office
- Filing a copy of the international application and the basic national fee to enter the national stage under 35 U.S.C. 371
Always check the current USPTO guidelines to ensure you’re using the correct filing method for your specific correspondence.
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MPEP 513 - Deposit as Priority Mail Express® with U.S. Postal Service (3)
If there’s a discrepancy between the filing date accorded by the USPTO and the “date accepted” on the Priority Mail Express® mailing label, you can file a petition under 37 CFR 1.10(c). MPEP 513 states that such a petition should:
- Be filed promptly after becoming aware of the discrepancy
- Include evidence that the Priority Mail Express® number was placed on the correspondence before mailing
- Include a true copy of the Priority Mail Express® mailing label showing the “date accepted”
The petition should be filed as soon as the discrepancy is noticed to ensure timely correction of the filing date.
Priority Mail Express® is a service offered by the United States Postal Service (USPS) that can be used to establish a filing date for patent applications and other correspondence with the USPTO. As stated in MPEP 513:
The statutory authority for the granting of a filing date based on the date of deposit for correspondence sent by Priority Mail Express® and received by the Office is found in section 21(a) of Title 35 of the United States Code.
Using Priority Mail Express® allows applicants to receive a filing date as of the date the correspondence was deposited with USPS, rather than the date it was received by the USPTO.
The filing date for Priority Mail Express® submissions is typically determined by the “date accepted” on the Priority Mail Express® mailing label. According to MPEP 513:
Office personnel will routinely look to the Priority Mail Express® mailing label, and stamp the “date accepted” or other official USPS notation as the filing date of the correspondence.
If the USPS deposit date cannot be determined, the correspondence will be accorded the date of receipt in the Office as the filing date. It’s important to note that the “date accepted” must be completed by the USPS, not by the applicant.
Patent Law (333)
For applications filed on or after September 16, 2012, the following parties can sign a written assertion of small entity status:
- The applicant
- A patent practitioner of record or acting in a representative capacity
- The inventor or a joint inventor, if the inventor is the applicant
- The assignee
According to 37 CFR 1.27(c)(2): “The written assertion can be signed by: (i) The applicant (§ 1.42 or § 1.421); (ii) A patent practitioner of record or a practitioner acting in a representative capacity under § 1.34; (iii) The inventor or a joint inventor, if the inventor is the applicant; or (iv) The assignee.”
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According to MPEP 509.04(c), a certification of micro entity status can be signed only by an authorized party as set forth in 37 CFR 1.33(b), which includes:
- A patent practitioner of record
- A patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34
- The applicant (37 CFR 1.42)
It’s important to note that “Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.”
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Small entity status should only be claimed after a thorough investigation has been completed and there is certainty about the entitlement. The MPEP 509.03(a) states: “Where entitlement to small entity status is uncertain, it should not be claimed.” It’s important to note that even paying the small entity basic filing fee constitutes an assertion of small entity status. Therefore, applicants should be certain of their status before making any payments or claims related to small entity status.
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While the USPTO generally discourages filing duplicate copies, there are situations where separate copies are necessary. According to MPEP 502.04:
Since each file must be complete in itself, a separate copy of every paper to be filed in a patent, patent file, or other proceeding must be furnished for each file to which the paper pertains, even though the contents of the papers filed in two or more files may be identical.
This means that if a document relates to multiple patent applications or proceedings, a separate copy must be submitted for each relevant file, even if the content is identical across all copies.
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According to MPEP 502.01, various types of patent-related correspondence can be transmitted by facsimile to the USPTO, including:
- Continued Prosecution Applications (CPAs) filed under 37 CFR 1.53(d) (for design applications only)
- Amendments
- Declarations
- Petitions
- Information Disclosure Statements (IDS)
- Terminal disclaimers
- Notices of appeal and appeal briefs
- Requests for Continued Examination (RCEs) under 37 CFR 1.114
- Assignment documents
- Issue fee transmittals
- Authorizations to charge deposit accounts
The MPEP states: “37 CFR 1.6(d) specifies the types of correspondence which may be transmitted by facsimile.” However, it’s important to note that certain types of correspondence are prohibited from being sent by fax, as outlined in 37 CFR 1.6(d)(2)-(7).
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According to MPEP 502.01, certain types of patent-related correspondence are prohibited from being sent by facsimile to the USPTO. These include:
- Documents required by statute to be certified (37 CFR 1.4(f))
- National patent application specifications and drawings for obtaining a filing date (except for CPAs under 37 CFR 1.53(d))
- International patent applications
- International design applications
- Documents for entering the national stage of an international application (37 CFR 1.495(b))
- Third-party submissions under 37 CFR 1.290
- Correspondence related to registration to practice before the USPTO in patent cases
- Color drawings (37 CFR 1.81, 1.83-1.85, 1.152, 1.165, 1.173, 1.437, or 1.1026)
- Requests for reexamination (37 CFR 1.510 or 37 CFR 1.913)
- Requests for supplemental examination (37 CFR 1.610)
- Correspondence for patent applications under secrecy orders (37 CFR 5.1-5.5)
- Most correspondence for contested cases or trials before the Patent Trial and Appeal Board
The MPEP states: “As a courtesy, the Office will attempt to notify senders whenever correspondence is sent to the Office by facsimile transmission that falls within one of the prohibitions.” However, it’s crucial to avoid submitting prohibited correspondence by fax, as it will not be accorded a receipt date.
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For the purpose of micro entity status, the following types of patent applications count towards the application filing limit:
- Previously filed U.S. nonprovisional applications (utility, design, plant, continuation, and divisional)
- Previously filed U.S. reissue applications
- Previously filed U.S. national stage applications under the Patent Cooperation Treaty (PCT)
- Previously filed international design applications under the Hague agreement that designate the U.S.
The MPEP states: “All such applications naming the inventor or a joint inventor are counted toward the application filing limit, whether the applications were filed before, on, or after March 19, 2013.“
Applications that do not count towards the limit include:
- Foreign applications
- International (PCT) applications for which the basic U.S. national stage filing fee was not paid
- Provisional applications
To learn more:
The following types of patent applications and documents can be filed via EFS-Web:
- Provisional patent applications under 35 U.S.C. 111(b)
- Nonprovisional utility patent applications under 35 U.S.C. 111(a)
- Nonprovisional design patent applications under 35 U.S.C. 111(a)
- International applications filed under the PCT in the United States Receiving Office
- National stage submissions under 35 U.S.C. 371
- International design applications filed under the Hague Agreement
- Requests for ex parte reexamination for utility or design patents
- Requests for supplemental examination for utility, design, or plant patents
- Third-party preissuance submissions under 35 U.S.C. 122(e)
- Citation of prior art and written statements in patent files under 37 CFR 1.501
Follow-on documents can also be filed via EFS-Web for existing applications by registered users.
OPAP may object to and require corrected drawings within a set time period for several issues. According to the MPEP, these include:
- Line quality that is too light to be reproduced
- Illegible text
- Missing lead lines
- Excessive text or non-English text
- Incorrect margins or paper size
- Improper figure labeling
- Illegible photographs that could be illustrated by ink drawings
- Color drawings or photographs without a proper petition
For example, regarding line quality, MPEP 507 states:
“OPAP may object to and require corrected drawings within a set time period, if the drawings: (A) have a line quality that is too light to be reproduced (weight of all lines and letters must be heavy enough to permit adequate reproduction) or text that is illegible (reference characters, sheet numbers, and view numbers must be plain and legible). See 37 CFR 1.84(l) and (p)(1)“
For more information on drawing requirements, visit: drawing requirements.
For more information on OPAP, visit: OPAP.
For more information on patent drawings, visit: patent drawings.
While the Certificate of Mailing or Transmission procedure is useful for many types of USPTO correspondence, there are several exceptions. According to 37 CFR 1.8(a)(2), the procedure does not apply to:
- Filing of national patent application specifications and drawings for the purpose of obtaining an application filing date
- Filing of correspondence in an international application before the U.S. Receiving Office, U.S. International Searching Authority, or U.S. International Preliminary Examining Authority
- Filing of an international design application
- Filing a copy of an international application and the basic national fee to enter the national stage
- Filing a written declaration of abandonment under 37 CFR 1.138
It’s crucial to note that these exceptions exist to ensure certain critical documents are actually received by the USPTO before they are considered filed.
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While MPEP 508.02 doesn’t specify the types of communications that might be received after a patent is granted, it does indicate that some communications may still be relevant to the record. The section states:
“After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender.”
This implies that certain communications might still become part of the record. These could include:
- Maintenance fee payments
- Requests for correction of errors in the patent
- Reissue applications
- Supplemental examination requests
However, any communication not related to these or other official post-grant procedures would likely be returned.
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To determine small entity status for a business, several steps should be taken:
- Review whether the business meets the definition of a small business concern under section 3 of the Small Business Act.
- Check if the business meets the size standards in 13 CFR 121.801 through 121.805 for eligibility for reduced patent fees.
- Investigate if the business has assigned, granted, conveyed, or licensed any rights in the invention to others.
- If rights have been transferred, conduct the same review for each other entity involved.
The MPEP 509.03(a) emphasizes: “If small entity status is desired on the basis that the entity is a small business concern, the investigation should include a review of whether the business is a small business concern as defined by section 3 of the Small Business Act.”
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If there’s a discrepancy between the filing date accorded by the USPTO and the “date accepted” on the Priority Mail Express® mailing label, you can file a petition under 37 CFR 1.10(c). MPEP 513 states that such a petition should:
- Be filed promptly after becoming aware of the discrepancy
- Include evidence that the Priority Mail Express® number was placed on the correspondence before mailing
- Include a true copy of the Priority Mail Express® mailing label showing the “date accepted”
The petition should be filed as soon as the discrepancy is noticed to ensure timely correction of the filing date.
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.
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If you have filed correspondence with a proper Certificate of Mailing or Transmission, but the USPTO has not received it after a reasonable amount of time, you can take action under 37 CFR 1.8(b). The MPEP states:
“37 CFR 1.8(b) permits a party to notify the Office of a previous mailing through the U.S. Postal Service, or transmission by facsimile or EFS-Web, of correspondence when a reasonable amount of time has elapsed from the time of mailing or transmission of the correspondence.”
To rectify this situation:
- Promptly notify the Office of the previous mailing or transmission
- Supply a duplicate copy of the previously mailed or transmitted correspondence
- Provide a statement attesting to the previous timely mailing or transmission
It’s important to act quickly once you become aware that the Office has not received your correspondence, rather than waiting until the end of the reply period.
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If you’ve misused a Certificate of Mailing or Transmission, it’s important to address the issue promptly and honestly. The USPTO takes the integrity of these certificates seriously. The MPEP states:
Misuse of a Certificate of Mailing under 37 CFR 1.8 or improperly claiming the benefit of 37 CFR 1.10 which appears to be more than a one-time, inadvertent error should be brought to the attention of the Office of Enrollment and Discipline.
If the misuse was a one-time, inadvertent error, you should:
- Notify the USPTO as soon as you become aware of the error.
- Provide a full explanation of the circumstances.
- If possible, submit the correct documentation or information.
- Be prepared for the possibility that your submission may be considered late, which could have consequences for your application or proceeding.
For repeated or intentional misuse, the matter may be referred to the Office of Enrollment and Discipline, which could result in more serious consequences. It’s always best to use Certificates of Mailing or Transmission carefully and honestly to maintain the integrity of the patent application process.
If you lose entitlement to small entity status, you must notify the USPTO before or at the time of paying the earliest of the issue fee or any maintenance fee due after the change. According to 37 CFR 1.27(g)(2): ‘notification of any change in status resulting in loss of entitlement to small entity status be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity is no longer appropriate.’
This notification should be a specific written assertion, not just payment of a non-small entity fee. For example, when paying the issue fee, you should:
- Check the appropriate box on Part B of the PTOL-85 form to indicate the change in entity status
- Pay the fee amount for a non-small entity
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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.
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If you cannot file your patent application electronically or by Priority Mail Express® due to an emergency, consider the following options:
- Use first-class mail with a Certificate of Mailing under 37 CFR 1.8
- Hand-deliver the application to the USPTO, if possible
- If the emergency is a designated postal service interruption, follow the specific instructions provided by the USPTO on their website or in the Official Gazette
Remember that the provisions for postal emergencies only apply to actual USPS service interruptions, not other circumstances like computer failures or office inaccessibility.
As stated in MPEP 511: “Applicants are cautioned that the provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) to (i) only apply to postal interruptions and emergencies. The provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) to (i) do not provide for granting of a filing date to correspondence as of the date on which it would have been filed but for other exigencies, such as the unavailability of a computer or word processing equipment, or the inaccessibility of an office or building other than a USPS facility.”
A small entity for purposes of paying reduced patent fees is defined in 37 CFR 1.27(a) as:
- A person
- A small business concern
- A nonprofit organization
Each of these categories has specific criteria that must be met to qualify for small entity status. For example, a person must not have assigned, granted, conveyed, or licensed any rights in the invention to a non-small entity.
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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 has established a Patent Internet Usage Policy that governs email communications with patent applicants. According to MPEP 502.03, ‘Communications via Internet email are at the discretion of the applicant.’ However, there are specific requirements and limitations:
- A written authorization from the applicant is required for USPTO employees to communicate via email.
- All Internet communications must be made using USPTO tools.
- Without written authorization, the USPTO will not respond to Internet correspondence containing confidential information.
It’s important to note that ‘A reply to an Office action or a paper requiring a signature may NOT be communicated by applicant to the USPTO via Internet email even if written authorization is on record.’
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The United States Patent and Trademark Office (USPTO) generally discourages the filing of duplicate copies of correspondence in patent applications, patents, or other proceedings. According to MPEP 502.04:
The filing of duplicate copies of correspondence in the file of an application, patent, or other proceeding should be avoided, except in situations in which the Office requires the filing of duplicate copies.
The USPTO may dispose of duplicate copies to streamline processing. However, it’s important to note that separate copies are required for different files, even if the content is identical.
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To qualify for micro entity status based on an institution of higher education, the applicant must first meet the small entity requirement. This means that every party holding rights in the application must qualify as a small entity under 37 CFR 1.27.
MPEP 509.04(b) states: “In order to meet the small entity requirement, every party holding rights in the application must qualify as a small entity under 37 CFR 1.27. If any rights in the application are assigned, granted, conveyed, or licensed to a party that does not qualify as a small entity under 37 CFR 1.27, the applicant cannot qualify for any patent fee discount.”
This requirement ensures that only truly small entities benefit from the micro entity status, even when associated with an institution of higher education.
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A patent practitioner plays a crucial role in signing micro entity certifications. According to MPEP 509.04(c), a patent practitioner can sign a micro entity certification in two capacities:
- As a patent practitioner of record
- As a patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34
Moreover, for juristic entities, “Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.” This includes micro entity certifications for corporate assignees or other organizational parties under 37 CFR 1.46.
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The USPTO requires that different matters be submitted in separate papers to ensure efficient processing. This requirement is outlined in MPEP 501, which cites 37 CFR 1.4(c):
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.
This means that if you have multiple requests or inquiries for the USPTO, each should be submitted on its own separate document. For example, a petition and an information disclosure statement should not be combined into a single paper.
If an applicant submits a single paper containing distinct subjects, the USPTO may use the following form paragraph to notify them:
The [1] submitted [2] should have been submitted as a separate paper as required by 37 CFR 1.4(c). The paper has been entered. However, all future correspondence must comply with 37 CFR 1.4.
Adhering to this requirement helps ensure that your correspondence is processed efficiently and reaches the appropriate department within the USPTO.
For more information on patent office procedures, visit: patent office procedures.
For more information on USPTO correspondence, visit: USPTO correspondence.
The receipt date for facsimile transmissions to the USPTO is determined according to specific rules outlined in MPEP 502.01:
The date of receipt accorded to any correspondence permitted to be sent by facsimile transmission, including a continued prosecution application (CPA) filed under 37 CFR 1.53(d), (available for design applications only) is the date the complete transmission is received by an Office facsimile unit, unless the transmission is completed on a Saturday, Sunday, or Federal holiday within the District of Columbia.
If the transmission is completed on a weekend or federal holiday in DC, the receipt date will be the next business day. For example, if a fax is completed at 9:05 p.m. Pacific time on a Friday, it would be received around 12:05 a.m. Eastern time on Saturday. The receipt date would then be the following Monday (assuming it’s not a federal holiday).
It’s important to note that the Certificate of Transmission under 37 CFR 1.8 can be used for certain documents to consider them timely filed on the date of transmission, even if received later by the USPTO.
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The PTO-948 form, also known as the ‘Drawing Informalities’ form, serves the following purposes in patent applications:
- It is used by the Office of Patent Application Processing (OPAP) to indicate that the drawings submitted with the application are informal but acceptable for publication purposes.
- It notifies the examiner that the drawings may need to be corrected or replaced with formal drawings during examination.
- It provides a record in the file wrapper that the drawings have been provisionally accepted.
As stated in MPEP 507: ‘If the drawings are informal but otherwise in compliance with 37 CFR 1.121(d), the OPAP will accept the application for purposes of publication and place a ‘Drawing Informalities’ form PTO-948 in the file wrapper.’
This form helps streamline the application process by allowing examination to proceed while flagging the need for potential drawing improvements later in the process.
For more information on OPAP, visit: OPAP.
The USPTO requires separate copies of correspondence for different patent files to ensure that each file is complete and self-contained. According to MPEP 502.04:
Since each file must be complete in itself, a separate copy of every paper to be filed in a patent, patent file, or other proceeding must be furnished for each file to which the paper pertains, even though the contents of the papers filed in two or more files may be identical.
This requirement serves several purposes:
- It ensures that each file contains all relevant documents without relying on cross-referencing between files.
- It facilitates independent processing and review of each application or proceeding.
- It maintains the integrity and completeness of individual patent files, which is crucial for legal and administrative purposes.
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The Office of Patent Application Processing (OPAP) performs an initial review of drawings in new utility and plant patent applications to determine whether the drawings can be effectively scanned for publication purposes. As stated in the MPEP:
“OPAP inspects the drawings to see if they can be effectively scanned and adequately reproduced.”
This review ensures that the drawings meet the necessary quality standards for publication and reproduction.
For more information on drawing review, visit: drawing review.
For more information on OPAP, visit: OPAP.
The primary purpose of drawing review in OPAP is to determine whether the drawings in new utility and plant patent applications can be effectively scanned for publication purposes. As stated in MPEP 507:
The Office of Patent Application Processing (OPAP) performs an initial review of drawings in new utility and plant patent applications to determine whether the drawings can be effectively scanned for publication purposes.
It’s important to note that design applications are not subject to this review as they are not published.
An attorney docket number is used by law firms and companies to internally track and manage patent applications. While it’s not required by the USPTO, it can be included on application documents for reference. However, there are limitations:
- Must be limited to a maximum of 25 characters
- Spaces, slashes, and hyphens are not included in the entered docket number on the official filing receipt
- For docket numbers beginning with ‘CASE’ or ‘NAVY-CASE’, only characters after these prefixes are entered
The MPEP states: ‘Attorney docket numbers must be limited to a maximum of 25 characters to prevent truncation. The USPTO system data base allows a maximum of 25 characters for the attorney docket numbers.’ (MPEP 503)
A self-addressed postcard serves as a receipt and provides evidence of the items submitted to the USPTO with a patent application. According to MPEP 503, the postcard should itemize all components of the application, including:
- Inventor’s name(s)
- Title of invention
- Number of pages of specification, claims, and sheets of drawing
- Whether the inventor’s oath or declaration is included
- List of additional forms included
- Amount and manner of paying the fee
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.”
It’s important to note that the postcard must be properly itemized to serve as evidence of receipt. Simply listing “a complete application” is not sufficient. Each component should be specifically listed on the postcard.
For applications filed via EFS-Web, an Electronic Acknowledgment Receipt serves as the electronic equivalent of a postcard receipt.
For more information on patent application filing, visit: patent application filing.
For more information on USPTO submission, visit: USPTO submission.
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)
The purpose of a certificate of mailing or transmission in patent applications is to provide evidence of timely filing when correspondence is not received by the USPTO or is received late. As stated in MPEP 512:
The Certificate of Mailing or Transmission procedure does not apply to papers mailed in a foreign country.
This procedure allows applicants to prove that they submitted their correspondence on time, even if it’s delayed or lost in transit.
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If OPAP objects to the drawings in a patent application, there is a specific process for submitting corrected drawings. The MPEP states:
“If OPAP objects to the drawings and sends applicant a Notice requiring submission of corrected drawings within a set time period (usually two months), corrected drawings must be filed, in paper, to the mailing address set forth in the Notice, along with any other items required by OPAP, to avoid abandonment of the application. No fee will be necessary for filing corrected drawings which are required by OPAP.”
It’s important to note that the corrected drawings must be submitted in paper form to the specific mailing address provided in the Notice. Applicants should ensure they meet the deadline (typically two months) to avoid potential abandonment of their application.
For more information on corrected drawings, visit: corrected drawings.
For more information on OPAP, visit: OPAP.
For more information on patent procedure, visit: patent procedure.
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.
When the USPTO cannot locate a patent or application file after a reasonable search, they follow the procedure outlined in 37 CFR 1.251. The key steps are:
- The Office notifies the applicant or patentee about the unlocatable file.
- A time period is set for the applicant or patentee to comply with the notice.
- The applicant or patentee must respond by either:
- Providing a copy of their record of all correspondence with the Office (except U.S. patent documents)
- Producing their record for the Office to copy
- Stating that they do not possess any record of the correspondence
As stated in MPEP 508.04, “37 CFR 1.251 sets forth a procedure for the reconstruction of the file of a patent application, patent, or any other patent-related proceeding that cannot be located after a reasonable search.”
When a patent or application file cannot be located after a reasonable search, the USPTO has a specific procedure outlined in 37 CFR 1.251. The Office will notify the applicant or patentee and set a time period for compliance with one of the following options:
- Provide a copy of all correspondence records between the Office and the applicant/patentee, along with a list and a statement of completeness.
- Produce the applicant’s/patentee’s records for the Office to copy, along with a statement of completeness.
- If no records are possessed, provide a statement to that effect.
The MPEP states, 37 CFR 1.251 sets forth a procedure for the reconstruction of the file of a patent application, patent, or any other patent-related proceeding that cannot be located after a reasonable search.
For pending applications, failure to comply within the set time period will result in abandonment of the application.
For more information on file reconstruction, visit: file reconstruction.
For more information on USPTO procedures, visit: USPTO procedures.
What is the minimum deposit amount required to open a USPTO deposit account?
The minimum deposit amount required to open a USPTO deposit account is $1,000. According to MPEP 509.01, “A minimum deposit of $1,000 is required when an account is opened, and a minimum balance of $1,000 is required to be maintained in the account.” This initial deposit ensures that the account has sufficient funds to cover potential fees and charges.
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What is the limit on the number of previously filed patent applications for micro entity status?
For micro entity status, an applicant must not have been named as an inventor on more than four previously filed patent applications. The MPEP states:
“The applicant has not been named as an inventor on more than 4 previously filed patent applications, other than applications filed in another country, provisional applications under 35 U.S.C. 111(b), or international applications for which the basic national fee under 35 U.S.C. 41(a) was not paid.”
This limit helps ensure that micro entity status is reserved for truly small-scale inventors or businesses. It’s important to note that certain types of applications, such as provisional applications and international applications where the basic national fee wasn’t paid, don’t count towards this limit.
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The institution of higher education basis allows applicants to qualify for micro entity status if:
- The applicant’s employer, from which the applicant obtains the majority of their income, is an institution of higher education as defined in the Higher Education Act of 1965, or
- The applicant has assigned, granted, conveyed, or is obligated to assign, grant or convey, a license or ownership interest in the application to such an institution of higher education.
The applicant must also qualify as a small entity. This basis is implemented in 37 CFR 1.29(d).
The general mailing address for patent-related correspondence is:
Commissioner for Patents
P.O. Box 1450
Alexandria, Virginia 22313-1450
This address should be used for patent applications, replies to notices of informality, requests for extension of time, notices of appeal, and other patent-related matters processed by organizations reporting to the Commissioner for Patents.
As stated in the MPEP: Correspondence in patent-related matters under the direction of the Commissioner for Patents should be addressed to: Commissioner for Patents P.O. Box 1450 Alexandria, Virginia 22313-1450
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The general mailing address for patent-related correspondence is:
Commissioner for Patents
P.O. Box 1450
Alexandria, Virginia 22313-1450
This address is used for various patent-related documents, including:
- Patent applications
- Replies to notices of informality
- Requests for extension of time
- Notices of appeal to the Patent Trial and Appeal Board
- Requests for reexamination
- Petitions to the Commissioner for Patents
As stated in MPEP 501: “Correspondence in patent-related matters under the direction of the Commissioner for Patents should be addressed to: Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.”
For more information on patent application filing, visit: patent application filing.
For more information on patent correspondence, visit: patent correspondence.
The general mailing address for patent applications and patent-related papers is:
Commissioner for Patents
P.O. Box 1450
Alexandria, Virginia 22313-1450
This address should be used for correspondence including patent applications, replies to notices of informality, requests for extension of time, notices of appeal, briefs, requests for oral hearings, applications for patent term extensions, reexamination requests, statutory disclaimers, certificates of correction, petitions, and other patent-related correspondence processed by organizations reporting to the Commissioner for Patents.
As stated in MPEP 501: “Correspondence in patent-related matters under the direction of the Commissioner for Patents should be addressed to: Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450”
What is the filing date for applications properly filed under 37 CFR 1.10 (Priority Mail Express)?
For applications properly filed under 37 CFR 1.10 using Priority Mail Express, the filing date is the date the application was deposited with the U.S. Postal Service. The MPEP states:
For applications properly filed under 37 CFR 1.10, the filing date is the date that the application was deposited as Priority Mail Express® in the U.S. Postal Service. For example, if a new patent application is deposited in Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date.
If the proper procedures were not followed, the application will receive a filing date as of the date it was received in the USPTO.
For applications properly filed using Priority Mail Express® (formerly Express Mail) through the U.S. Postal Service, the filing date is the date of deposit with the postal service. The MPEP states:
“For applications properly filed under 37 CFR 1.10, the filing date is the date that the application was deposited as Priority Mail Express® in the U.S. Postal Service.”
This means that even if the application is deposited on a Saturday, and the U.S. Postal Service marks it with a Saturday date, the USPTO will accord and stamp the correspondence with the Saturday date.
However, if the proper procedures for using Priority Mail Express® were not followed, the application will receive a filing date as of the date it was received in the USPTO. Any dispute regarding the filing date in such cases would require a petition, as explained in the MPEP:
“Any review of these matters would be by way of petition, accompanied by the petition fee (37 CFR 1.17(f)), providing whatever arguments and evidence petitioner has that the application is entitled to a filing date as of the date it was deposited as Priority Mail Express®.”
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The duty to investigate entitlement to claim small entity status refers to the obligation of patent applicants to thoroughly investigate all facts and circumstances before determining their actual entitlement to small entity status. According to MPEP 509.03(a), “applicants need to do a complete and thorough investigation of all facts and circumstances before making a determination of actual entitlement to small entity status.” This investigation is crucial to ensure that small entity status is claimed only when appropriate.
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While both the Certificate of Mailing (37 CFR 1.8) and Priority Mail Express (37 CFR 1.10) procedures can be used to establish timely filing of USPTO correspondence, they have some key differences:
- Certificate of Mailing can be used with any class of mail, while Priority Mail Express is a specific USPS service.
- Certificate of Mailing uses the date of deposit with USPS as the filing date, while Priority Mail Express uses the date of deposit as shown by the “date accepted” on the mailing label.
- Certificate of Mailing cannot be used for new patent applications, while Priority Mail Express can establish a filing date for new applications.
- Certificate of Mailing requires a signed certificate, while Priority Mail Express requires the mailing label to be affixed to the correspondence.
The MPEP notes: “New patent applications filed in accordance with 37 CFR 1.10 will be stamped by the Office with the date of deposit as Priority Mail Express® with the United States Postal Service.”
Both procedures have specific requirements and limitations, so it’s important to consult the full text of 37 CFR 1.8 and 37 CFR 1.10 when deciding which to use.
What is the difference between small entity and micro entity status?
While both small entity and micro entity statuses offer reduced patent fees, they have distinct eligibility criteria:
- Small Entity Status:
- Available to individuals, small businesses (fewer than 500 employees), and non-profit organizations
- Offers a 50% reduction in most patent fees
- Micro Entity Status:
- More stringent requirements, including income limitations and limits on the number of previously filed patent applications
- Offers a 75% reduction in most patent fees
As per MPEP 509.03, “Small entity status entitles applicants to a fifty-percent reduction in a number of patent fees.” Micro entity status, while not explicitly covered in this section, provides even greater fee reductions for those who qualify.
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MPEP 509.04(c) mentions two types of micro entity certifications:
- Micro entity certification on the gross income basis
- Micro entity certification on the institution of higher education basis
While the specific requirements for each basis are not detailed in this section, it’s important to note that the signing requirements are the same for both types. The certification “can be signed only by an authorized party as set forth in 37 CFR 1.33(b).” This includes patent practitioners and applicants, as detailed in other FAQs.
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As of July 28, 2013, the United States Postal Service (USPS) renamed ‘Express Mail’ to ‘Priority Mail Express’. According to MPEP 511:
“Effective July 28, 2013, the United States Postal Service (USPS) changed the name of ‘Express Mail’ to ‘Priority Mail Express.’ All characteristics of the ‘Priority Mail Express’ service are the same as those of the former ‘Express Mail’ service (although the mailing labels differ).”
This change is important for patent applicants to note, as the USPTO’s rules and procedures now refer to ‘Priority Mail Express’ instead of ‘Express Mail’. However, the service characteristics and benefits for patent filings remain the same. When using this service for USPTO correspondence, ensure you use the correct addresses as specified in 37 CFR 1.1 and avoid using the ‘Hold for Pickup’ option, as the USPTO does not pick up mail.
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A small business concern, for the purpose of paying reduced patent fees, is defined as follows:
A small business concern as used in this paragraph means any business concern that:
- Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify for small entity status as a person, small business concern, or nonprofit organization.
- Meets the size standards set forth in 13 CFR 121.801 through 121.805 to be eligible for reduced patent fees.
The size standards vary by industry and are based on factors such as average annual receipts or number of employees. It’s important to consult the specific SBA guidelines for your industry to determine if your business qualifies as a small entity.
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What is the definition of a ‘small business concern’ for small entity status?
According to MPEP 509.02, a small business concern is defined as follows:
“A small business concern, as used in this chapter, means any business concern that:
- (i) Has not assigned, granted, conveyed, or licensed (and is under no obligation to do so) any rights in the invention to any person who made it and could not be classified as an independent inventor, or to any concern which would not qualify as a non-profit organization or a small business concern under this section, and
- (ii) Does not have as a party to the patent application any individual who has assigned, granted, conveyed, or licensed (or is under an obligation to do so) any rights in the invention to any person who made it and could not be classified as an independent inventor, or to any concern which would not qualify as a non-profit organization or a small business concern under this section.”
This definition ensures that the small business concern maintains control over the invention rights and has not transferred them to entities that do not qualify for small entity status.
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The United States Patent and Trademark Office (USPTO) stamps correspondence received with the date of receipt, known as the ‘Office Date’ stamp. This applies to papers and fees received through various methods:
- Mail (except Priority Mail Express®)
- Facsimile
- EFS-Web
- Hand-carried to the Customer Service Window
As stated in the MPEP: The United States Patent and Trademark Office (Office) stamps papers and fees received through the mail (other than those submitted by Priority Mail Express® in accordance with 37 CFR 1.10), by facsimile, or via EFS-Web with the date of their receipt in the Office.
The USPTO requires a security code for credit card payments made through its website. According to MPEP 509:
Credit card payment submissions made on the USPTO website at www.uspto.gov must include the 3-digit or 4-digit security code associated with the credit card in addition to the credit card number. The security code will not be required when the paper Credit Card Payment Form (PTO-2038) or other written authorization is submitted.
Key points about the security code requirement:
- It’s part of an authentication procedure to reduce fraudulent or unauthorized credit card use.
- The code verifies that the physical card is in the cardholder’s possession.
- For DISCOVER®, MASTERCARD®, and VISA®, it’s a 3-digit code on the back of the card.
- For AMERICAN EXPRESS®, it’s a 4-digit code on the front of the card.
- If you can’t read the security code, contact your card issuer.
This requirement enhances security for online transactions but doesn’t apply to paper submissions using Form PTO-2038.
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The Credit Card Payment Form (PTO-2038) is a specific form provided by the USPTO for making credit card payments for patent and trademark process fees. According to MPEP 509:
Credit Card Payment Form (PTO-2038) should be used when paying a patent process or trademark process fee (or the fee for an information product) by credit card, unless the payment is being made using the USPTO patent electronic filing system.
Key points about the form:
- It can be downloaded from the USPTO website at www.uspto.gov/PatentForms.
- It’s not required (and should not be used) when making credit card payments via EFS-Web or other electronic filing systems.
- Using this form helps keep credit card information confidential, as the USPTO does not include it among records open to public inspection.
Failure to use this form when submitting a paper credit card payment may result in the credit card information becoming part of the public record.
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What is the Certificate of Mailing procedure for USPTO filings?
The Certificate of Mailing procedure is a method that allows applicants to establish the date of filing for correspondence sent to the USPTO. As explained in MPEP 501:
‘Under the procedure, correspondence is considered as being timely filed if (A) the correspondence is mailed or transmitted prior to expiration of the set period for response by being: (1) Addressed as set out in 37 CFR 1.1(a) and deposited with the U.S. Postal Service with sufficient postage as first class mail; or (2) Transmitted by facsimile to the Patent and Trademark Office in accordance with 37 CFR 1.6(d); or (3) Transmitted via the Office electronic filing system in accordance with 37 CFR 1.6(a)(4); and (B) the correspondence includes a certificate for each piece of correspondence stating the date of deposit or transmission.’
This procedure is particularly useful for ensuring timely filing when using postal services. It’s important to note that the certificate must be signed by the person depositing or transmitting the correspondence.
For more information on Certificate of Mailing, visit: Certificate of Mailing.
For more information on electronic filing, visit: electronic filing.
The central facsimile number for patent application-related correspondence at the USPTO is (571) 273-8300. According to MPEP 502.01:
All patent application related correspondence transmitted by facsimile must be directed to the central facsimile number, with a few exceptions below. The central facsimile number is (571) 273-8300.
This central number should be used for most patent-related correspondence, including replies to Office actions and after-final amendments. However, there are specific exceptions for certain types of correspondence that should be sent to other facsimile numbers, as outlined in the MPEP.
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The application size fee is an additional fee that applies to patent applications with specifications and drawings exceeding 100 sheets of paper. The MPEP states:
37 CFR 1.16(s) sets forth the application size fee for any application (including any reissue applications) filed under 35 U.S.C. 111, the specification and drawings of which exceed 100 sheets of paper. The calculation of the number of sheets excludes any “Sequence Listing”, computer readable form (CRF) of a “Sequence Listing”, or a “Computer Program Listing Appendix” filed in an American Standard Code for Information Interchange (ASCII) plain text file or any “Sequence Listing XML” filed in an eXtensible Markup Language (XML) file on a read-only optical disc or via the USPTO patent electronic filing system in compliance with the rules.
The fee applies for each additional 50 sheets or fraction thereof over 100 sheets. This fee must be paid within the time period set by the USPTO to avoid abandonment of the application.
The USPTO offers an additional fee reduction for small entities that file patent applications electronically. According to MPEP 509.02:
The Consolidated Appropriations Act, 2005, provides that the filing fee charged under 35 U.S.C. 41(a)(1)(A) shall be reduced by 75 percent with respect to its application to any small entity ‘if the application is filed by electronic means as prescribed by the Director’ (35 U.S.C. 41(h)(3)).
This 75% reduction applies specifically to the filing fee for nonprovisional original utility applications filed electronically by small entities on or after December 8, 2004. It’s important to note that this enhanced reduction does not apply to design applications, plant applications, reissue applications, or provisional applications.
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The ‘Office Date’ stamp is used by the USPTO to mark the receipt date of papers and fees. According to MPEP 505, The United States Patent and Trademark Office (Office) stamps papers and fees received through the mail (other than those submitted by Priority Mail Express® in accordance with 37 CFR 1.10), by facsimile, or via EFS-Web with the date of their receipt in the Office.
The ‘Office Date’ stamp is crucial because:
- It establishes the filing date for new patent applications that include the necessary components (see 37 CFR 1.53(b)-(d))
- It determines the timeliness of actions and fee payments
For hand-carried papers, date stamping occurs at the Customer Service Window.
For more information on Office Date stamp, visit: Office Date stamp.
For more information on USPTO, visit: USPTO.
Small entity status allows certain applicants to pay reduced patent fees. To claim small entity status, you must make an assertion of entitlement in one of two ways:
- Submit a written assertion signed by the applicant, a patent practitioner, an inventor, or an assignee
- Pay the exact small entity basic filing fee, basic national fee, or individual designation fee
As stated in 37 CFR 1.27(c): “Any party (person, small business concern or nonprofit organization) should make a determination, pursuant to paragraph (f) of this section, of entitlement to be accorded small entity status based on the definitions set forth in paragraph (a) of this section, and must, in order to establish small entity status for the purpose of paying small entity fees, actually make an assertion of entitlement to small entity status, in the manner set forth in paragraphs (c)(1) or (c)(3) of this section, in the application or patent in which such small entity fees are to be paid.”
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When notifying the USPTO of a loss of micro entity status, the following requirements must be met:
- The notification must be filed in the application or patent prior to paying, or at the time of paying, any fee after the date on which micro entity status is no longer appropriate.
- The notification must be signed by a party identified in 37 CFR 1.33(b).
- A simple statement that the applicant is no longer eligible for micro entity status is sufficient, without identifying specific reasons.
As stated in MPEP 509.04(e): Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate.
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PSTAR stands for Patents Service for Time and Application Routing. According to MPEP 504, PSTAR is “the program [that] assigns each nonprovisional application to an examiner.” This system is used by the United States Patent and Trademark Office (USPTO) to efficiently distribute patent applications to the appropriate examiners for review.
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Priority Mail Express® is a service offered by the United States Postal Service (USPS) that can be used to establish a filing date for patent applications and other correspondence with the USPTO. As stated in MPEP 513:
The statutory authority for the granting of a filing date based on the date of deposit for correspondence sent by Priority Mail Express® and received by the Office is found in section 21(a) of Title 35 of the United States Code.
Using Priority Mail Express® allows applicants to receive a filing date as of the date the correspondence was deposited with USPS, rather than the date it was received by the USPTO.
What is an S-signature in USPTO correspondence and how is it formatted?
An S-signature is an electronic signature used in correspondence with the USPTO. According to MPEP 502.02, an S-signature must be formatted as follows:
- Inserted between forward slash marks: /John Doe/
- Include the signer’s name
- For registered practitioners, include their registration number
- The signer’s name can be printed or typed
- The signature must comply with 37 CFR 1.4(d)(2)
For example, a proper S-signature for a registered patent attorney might look like this:
/John Q. Attorney, Reg. No. 12345/
This format allows for efficient electronic filing while maintaining the legal weight of a signature.
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An S-signature is an electronically created signature used in patent correspondence. According to MPEP 502.02:
An S-signature is a signature inserted between forward slash marks, but not a handwritten signature as defined by 37 CFR 1.4(d)(1). An S-signature includes any signature made by electronic or mechanical means, and any other mode of making or applying a signature other than a handwritten signature as provided for in 37 CFR 1.4(d)(1).
S-signatures must meet specific requirements to be considered valid:
- They must be between two forward slash marks
- They can include letters, numbers, and punctuation marks
- They must be personally inserted by the signer
- They must be reasonably specific to the signer
S-signatures provide a convenient way for applicants and practitioners to sign documents electronically while maintaining the legal weight of a handwritten signature.
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An S-signature is a type of electronic signature used in USPTO correspondence. According to MPEP 501, which cites 37 CFR 1.4(d)(2):
An S-signature is a signature inserted between forward slash marks, but not a handwritten signature as defined by paragraph (d)(1) of this section. An S-signature includes any signature made by electronic or mechanical means, and any other mode of making or applying a signature other than a handwritten signature.
Key requirements for an S-signature include:
- It must consist only of letters, Arabic numerals, or both, with appropriate punctuation.
- The signer must insert their own S-signature with a single forward slash mark before and after the signature.
- For patent practitioners, their registration number must be included with or near the S-signature.
- The signer’s name must be presented in printed or typed form near the S-signature.
Example of a proper S-signature: /John D. Smith/
S-signatures can be used for most USPTO correspondence filed electronically or by facsimile.
For more information on USPTO correspondence, visit: USPTO correspondence.
An application number consists of a series code and a serial number. It is assigned by the Office of Patent Application Processing (OPAP) immediately after mail has been opened. For applications filed using the USPTO patent electronic filing system, EFS-Web provides an Acknowledgement Receipt containing a time and date stamp, application number, and confirmation number.
The MPEP states: ‘Application numbers consisting of a series code and a serial number are assigned by the Office of Patent Application Processing (OPAP) immediately after mail has been opened.’ (MPEP 503)
What is a USPTO deposit account and how does it work?
A USPTO deposit account is a pre-established account that allows for convenient payment of fees to the United States Patent and Trademark Office. According to MPEP 509:
“A deposit account is a convenient method for individuals or firms to establish a pre-paid account with the USPTO to facilitate the payment of fees.”
Here’s how USPTO deposit accounts work:
- You deposit funds into the account in advance
- Fees can be automatically deducted from the account when filing applications or paying other fees
- Minimum balance requirements apply (currently $1,000 for individuals, $5,000 for law firms)
- Account holders receive monthly statements
- Useful for frequent filers or those managing multiple applications
To open a deposit account, you need to complete Form PTO-2232 and submit it to the USPTO with an initial deposit. This method can streamline fee payments and reduce the risk of insufficient fee issues.
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A USPTO deposit account is a convenient method for attorneys and the general public to pay fees and order services from the U.S. Patent and Trademark Office. To establish a deposit account:
- Pay the fee for establishing a deposit account as per 37 CFR 1.21(b)(1)
- Make a minimum deposit of $1,000 for general use
- Alternatively, make a minimum deposit of $300 for a restricted subscription deposit account used exclusively for subscription orders of patent copies
As stated in the MPEP: For the convenience of attorneys, and the general public in paying any fees due, in ordering services offered by the Office, copies of records, etc., deposit accounts may be established in the Patent and Trademark Office upon payment of the fee for establishing a deposit account § 1.21(b)(1).
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What is a provisional patent application and how does it differ from a nonprovisional application?
A provisional patent application is a type of patent application that allows inventors to establish an early filing date for their invention. Key differences between provisional and nonprovisional applications include:
- Provisional applications are not examined and automatically expire after 12 months
- Provisional applications require fewer formal components than nonprovisional applications
- Provisional applications cannot directly result in a granted patent
The MPEP states: A provisional application will not be examined. However, a provisional application which does not include a cover sheet (37 CFR 1.51(c)(1)), which may be an application data sheet (37 CFR 1.76) or a cover letter, identifying the application as a provisional application, will be treated as a nonprovisional application filed under 37 CFR 1.53(b).
To obtain a filing date, a provisional application must include:
- A specification as prescribed by 35 U.S.C. 112(a)
- Any necessary drawings
- The appropriate filing fee
Inventors often use provisional applications to secure an early filing date while allowing additional time to prepare a more comprehensive nonprovisional application.
For more information on nonprovisional application, visit: nonprovisional application.
For more information on patent application types, visit: patent application types.
For more information on provisional application, visit: provisional application.
A filing receipt is an official document issued by the USPTO that contains important information about a patent application. According to MPEP 503, the filing receipt includes:
- Application number
- Filing date
- Confirmation number
- Suggested U.S. Patent Classification class
- Art unit where the application is likely to be examined
- Continuing data (if applicable)
- National stage data (if applicable)
- Foreign priority data (if applicable)
- Foreign filing license data (if applicable)
- Entity status information
- Anticipated publication date under 35 U.S.C. 122(b)
The MPEP states: “The filing receipt represents the official assignment by the USPTO of a specific application number and confirmation number to a particular application.” It’s important to review the filing receipt for accuracy, especially regarding inventor and applicant names, benefit and priority claims, and any nonpublication requests.
For more information on application number, visit: application number.
For more information on confirmation number, visit: confirmation number.
For more information on filing receipt, visit: filing receipt.
A confirmation number is a four-digit number assigned to each newly filed patent application. It is used in combination with the application number to verify the accuracy of the application number on correspondence filed with the USPTO. This helps avoid misidentification due to transposition errors.
The MPEP states: ‘The confirmation number is a four-digit number that is assigned to each newly filed application. The confirmation number, in combination with the application number, is used to verify the accuracy of the application number placed on correspondence filed with the Office to avoid misidentification of an application due to a transposition error in the application number.’ (MPEP 503)
A confirmation number is a four-digit number assigned by the USPTO to each newly filed patent application. According to MPEP 503, the confirmation number serves several important purposes:
- It is used in combination with the application number to verify the accuracy of the application number on correspondence filed with the Office.
- It helps avoid misidentification of an application due to transposition errors in the application number.
- It is included on the filing receipt, Office actions, and other USPTO communications.
- It is required when submitting an electronic copy of the application for publication to verify the correct application.
The MPEP recommends: “The Office also recommends that applicants include the application’s confirmation number (in addition to the application number) on all correspondence submitted to the Office concerning the application.”
The confirmation number can be found in the upper left-hand corner of the filing receipt and is also available through the Patent Application Information Retrieval (PAIR) system.
For more information on application number, visit: application number.
For more information on confirmation number, visit: confirmation number.
For more information on USPTO correspondence, visit: USPTO correspondence.
A Certificate of Mailing or Transmission is a procedure under 37 CFR 1.8 that allows correspondence to be considered timely filed with the USPTO if it meets certain conditions. As stated in the MPEP:
“Under 37 CFR 1.8, a person may state on certain papers directed to the Office (some exceptions are stated in 37 CFR 1.8), the date on which the paper will be deposited in the United States Postal Service, transmitted by facsimile or transmitted via the USPTO electronic filing system (EFS-Web). If the date stated is within the period for reply, the reply in most instances will be considered to be timely.”
This procedure can be crucial for meeting deadlines, even if the actual receipt of the correspondence by the USPTO occurs after the deadline.
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According to 37 CFR 1.29(k)(1), the itemization for a micro entity fee deficiency payment must include:
- Each type of fee erroneously paid as a micro entity
- The current fee amount for a small or non-small entity
- The micro entity fee actually paid and the date of payment
- The deficiency owed amount for each fee
- The total deficiency payment owed
The MPEP specifies: The paper must contain an itemization of the total deficiency payment and include the following information: (1) each particular type of fee that was erroneously paid as a micro entity, (e.g., basic statutory filing fee, two-month extension of time fee) along with the current fee amount for a small or non-small entity; (2) the micro entity fee actually paid, and the date on which it was paid; (3) the deficiency owed amount (for each fee erroneously paid); and (4) the total deficiency payment owed, which is the sum or total of the individual deficiency owed amounts.
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A certificate of mailing for USPTO correspondence must include specific information to be valid. According to MPEP 512, the following information is required:
- The date of deposit or transmission
- The application number (for patent applications)
- A statement that the correspondence is being deposited with the USPS or transmitted to the USPTO
- The signature of the person depositing or transmitting the correspondence
The MPEP states:
The certificate must state that the correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail, or transmitted to the Office on the date of the certificate.
Ensure all these elements are included to make your certificate of mailing valid and effective.
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A patent filing receipt includes:
- Application number
- Filing date
- Confirmation number
- Suggested class in the U.S. Patent Classification System
- Art unit number where the application is likely to be examined
- Continuing data (if applicable)
- National stage data (if applicable)
- Foreign priority data (if applicable)
- Foreign filing license data (if applicable)
- Entity status information
- Anticipated publication date under 35 U.S.C. 122(b)
The MPEP states: ‘The filing receipt includes the application number, filing date, a confirmation number, a suggested class in the U.S. Patent Classification System (see MPEP § 902.01), and the number of an art unit where the application is likely to be examined.’ (MPEP 503)
A patent application filing receipt contains crucial information about the application. According to the MPEP:
‘A filing receipt is mailed to the attorney or agent, if any, otherwise to the applicant, for each application filed.’
The filing receipt typically includes:
- The application number
- Filing date
- Title of the invention
- Names of the applicants
- Name and registration number of the attorney or agent (if applicable)
- Entity status for fee purposes
- Correspondence address
- List of documents submitted with the application
It’s important to review the filing receipt carefully for accuracy, as it serves as official confirmation of the application’s details and can be used to identify any discrepancies or issues that need to be addressed promptly.
For more information on filing receipt, visit: filing receipt.
According to MPEP 508.02, “After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender. 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 any documents received after a patent is granted or an application is abandoned will not be added to the official record. Instead, they will be either physically returned to the sender or, if already scanned into the Image File Wrapper (IFW) system, electronically closed within the system.
According to MPEP 508.02, after a patent application is either patented or abandoned, any incoming communication that is not intended to become part of the official record will be returned to the sender. The MPEP states:
“After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender.”
This procedure ensures that the official patent file remains accurate and contains only relevant information after the application process has concluded.
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When you notify the USPTO of a loss of micro entity status, you are automatically treated as a small entity by default, unless specified otherwise. As stated in MPEP 509.04(e):
A notification that micro entity status is no longer appropriate will not be treated as a notification that small entity status is also no longer appropriate unless it also contains a notification of loss of entitlement to small entity status under § 1.27(f)(2) [§ 1.27(g)(2)].
To change to regular (unreduced) fee status, you must either:
- File a notification of loss of entitlement to micro entity status along with regular unreduced fees or an indication of loss of entitlement to small entity status, or
- File a separate notification of loss of entitlement to small entity status.
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After a patent is granted or an application is abandoned, the USPTO has specific procedures for handling incoming communications. According to the MPEP, After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender.
In the case of digital documents, the MPEP states, 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 the document will be marked as closed in the digital system, effectively removing it from active consideration.
For more information on post-grant communications, visit: post-grant communications.
For more information on USPTO procedures, visit: USPTO procedures.
What happens if there’s an error in my application number?
If you notice an error in your application number, it’s crucial to contact the USPTO immediately. The MPEP states, Any error in the identification of the application number will result in processing delays.
(MPEP 503) To avoid such delays:
- Double-check the application number on your filing receipt
- If you find an error, contact the Application Assistance Unit at (571) 272-4000
- Provide the correct application number and any supporting documentation
Prompt action can help ensure your application is processed correctly and efficiently.
For more information on application number, visit: application number.
For more information on error correction, visit: error correction.
In the event of a postal interruption or emergency, the USPTO will take the following actions:
- Place an announcement on the USPTO website at www.uspto.gov
- Publish a notice in the Official Gazette
These communications will provide instructions about filing patent applications and other patent-related papers. As stated in MPEP 511:
“In the event of a postal interruption or emergency, an announcement will be placed on the USPTO website at www.uspto.gov and a notice will be published in the Official Gazette, providing instructions about the filing of patent applications, and other papers related to patent applications and patents.”
This ensures that applicants have clear guidance on how to proceed during such circumstances.
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In the event of a postal interruption or emergency:
- An announcement will be placed on the USPTO website at www.uspto.gov
- A notice will be published in the Official Gazette
- These communications will provide instructions about filing patent applications and other papers related to patent applications and patents
The USPTO Director may prescribe rules considering papers or fees filed on the date they would have been deposited with the USPS, but for postal service interruptions or emergencies.
As stated in MPEP 511: “In the event of a postal interruption or emergency, an announcement will be placed on the USPTO website at www.uspto.gov and a notice will be published in the Official Gazette, providing instructions about the filing of patent applications, and other papers related to patent applications and patents.”
If there’s a discrepancy between the USPTO’s date stamp and the date on the correspondence, the USPTO’s date stamp is generally considered the official receipt date. However, if an applicant can provide clear evidence that the correspondence was received earlier than the date indicated by the USPTO’s stamp, the earlier date may be recognized as the official receipt date. This situation might occur due to clerical errors or delays in processing incoming mail.
What happens if there are insufficient funds when paying USPTO fees?
If there are insufficient funds when paying USPTO fees, several consequences may occur:
- The fee payment will be considered incomplete.
- Your application or request may not be processed.
- You may incur additional fees or penalties.
- In some cases, you might lose filing date benefits.
The MPEP 509 warns, “If the Office receives a check drawn on a deposit account with insufficient funds, the fee will be considered unpaid.” For electronic payments, “If the electronic fund transfer is refused, or if the credit card is declined or invalid, the fee will be considered unpaid.” It’s crucial to ensure sufficient funds are available to avoid these issues and potential delays in your patent or trademark process.
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What happens if there are insufficient funds in my USPTO deposit account?
If there are insufficient funds in your USPTO deposit account to cover a fee, the following occurs:
- The USPTO will treat the fee as unpaid
- Any associated filing may be considered incomplete
- You may receive a notice of insufficient funds
The MPEP clearly states: “An overdrawn account will be immediately suspended and no charges will be accepted against it until the balance is restored.” (MPEP 509.01)
To avoid this situation, it’s crucial to maintain sufficient funds in your account and regularly monitor your balance. If your account becomes overdrawn, you’ll need to restore the balance before any further charges can be processed.
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If the USPTO receives a document without a date of receipt stamp, the Office will assign the document a date of receipt based on other evidence. This may include:
- The date of receipt indicated on an Express Mail label
- The date of deposit indicated on a certificate of mailing
- The date of transmission indicated on a certificate of transmission
- Other corroborating evidence, such as a postmark on an envelope
In cases where no other evidence is available, the USPTO may assign the date of receipt as the date the document was matched with the file wrapper.
If the USPTO cannot locate a file after a reasonable search, they will notify the applicant or patentee and set a time period for compliance. According to 37 CFR 1.251(a), the applicant or patentee must respond by:
- Providing a copy of their record of correspondence with the USPTO
- Producing their record for the USPTO to copy
- Stating that they do not possess any record of correspondence
The specific requirements are outlined in the notice and must be followed to avoid potential consequences.
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If an applicant pays an insufficient fee to the USPTO, the Office will notify the applicant and provide an opportunity to submit the remaining balance. According to MPEP 509:
If the fee paid by the applicant is insufficient, either because the notice specified an incorrect dollar amount for the fee or because of a fee increase effective after the mailing of the notice and before payment of the fee by the applicant, the applicant should be notified in writing by the Office of the fee insufficiency and given a new time period in which to submit the remaining balance.
The notification will include:
- The reason for the additional fee requirement
- An explanation of why the original fee was incorrect or insufficient
- A new time period for submitting the remaining balance
This process helps ensure that applicants have a fair opportunity to complete their fee payments and avoid abandonment of their applications due to fee issues.
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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.
If the date of receipt stamp is illegible or missing, the USPTO will make every effort to determine the correct date of receipt. This may involve examining other evidence, such as postmarks, electronic filing receipts, or other documentation. If the correct date cannot be determined, the USPTO may use the date it was discovered that the document was received as the date of receipt. Applicants should always ensure that their submissions are properly dated and stamped to avoid potential issues with filing dates.
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.
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If OPAP objects to the drawings in a patent application, the following process occurs:
- OPAP sends a Notice to the applicant requiring submission of corrected drawings.
- The Notice typically sets a time period of two months for response.
- Corrected drawings must be filed in paper form to the mailing address specified in the Notice.
- No fee is required for filing the corrected drawings requested by OPAP.
MPEP 507 states:
If OPAP objects to the drawings and sends applicant a Notice requiring submission of corrected drawings within a set time period (usually two months), corrected drawings must be filed, in paper, to the mailing address set forth in the Notice, along with any other items required by OPAP, to avoid abandonment of the application. No fee will be necessary for filing corrected drawings which are required by OPAP.
It’s crucial to respond within the set time period to avoid potential abandonment of the application.
If your USPTO deposit account becomes overdrawn, several consequences may occur:
- Account Suspension: The MPEP states,
An overdrawn account will be immediately suspended and no charges will be accepted against it until a proper balance is restored, together with a payment of $10 (37 CFR 1.21(b)(1)) to cover the work done by the U.S. Patent and Trademark Office incident to suspending and reinstating the account and dealing with charges which may have been made in the meantime.
- Additional Surcharges: If there’s an authorization to charge a basic filing fee to an overdrawn account, a surcharge under 37 CFR 1.16(f) is required in addition to the basic filing fee.
- Potential Abandonment: The MPEP warns,
Failure to timely pay the filing fee and surcharge will result in abandonment of the application.
- Account Closure: Repeated overdrafts may lead to account closure.
If an account is suspended repeatedly it will be closed.
To avoid these issues, always maintain sufficient funds in your deposit account and monitor your account balance regularly.
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What happens if my USPTO deposit account balance falls below the minimum?
If your USPTO deposit account balance falls below the minimum required balance of $1,000, there are consequences. According to MPEP 509.01, “An account holder who does not maintain the minimum balance will be notified and given a reasonable time to restore the account to the minimum balance.” If the account is not replenished:
- The USPTO may close the account.
- Any fees charged against the account may be treated as unpaid.
- This could potentially affect the status of your patent applications or other USPTO services.
It’s crucial to monitor your account balance regularly and replenish it promptly when it approaches the minimum to avoid any disruptions in service or potential issues with your patent applications.
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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.
What happens if I wrongly claim small entity status?
Wrongly claiming small entity status can have serious consequences. According to MPEP 509.03:
“Improperly and with intent to deceive establishing status as a small entity, or paying fees as a small entity, shall be considered as a fraud practiced or attempted on the Office.”
The consequences of fraudulently claiming small entity status may include:
- Requirement to pay all fee deficiencies
- Possible invalidation of the patent
- Potential legal action for fraud
If you discover an error in your small entity claim, it’s crucial to promptly notify the USPTO and pay any fee deficiencies. Honest mistakes, if corrected in good faith, are generally not considered fraud.
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What happens if I overpay a patent fee to the USPTO?
If you overpay a patent fee to the USPTO, you may be eligible for a refund. The MPEP 509 states: ‘In the event that an amount is paid by mistake or in excess of that required, a refund may be made only if a petition for refund is filed within 2 years after the date the fee was paid.’
To request a refund:
- File a petition for refund within 2 years of the payment date
- Clearly explain the reason for the overpayment
- Provide evidence of the overpayment
It’s important to note that not all overpayments are automatically refunded, so proactive action is necessary to recover excess fees.
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What happens if I overpaid fees due to incorrect micro entity status?
If you paid fees as a non-micro entity when you were actually entitled to micro entity status, resulting in an overpayment, you may be eligible for a refund. The MPEP 509.04(f) states:
“A refund based upon establishment of micro entity status may only be obtained if an assertion of micro entity status, in compliance with 37 CFR 1.29(a), is filed within the time period set forth in 37 CFR 1.29(k) … The time period set forth in 37 CFR 1.29(k) is: the later of 1) three months from the date of the fee payment claimed to be in error; or 2) the processing of a request for refund.”
To request a refund:
- File a compliant micro entity certification
- Submit a timely refund request
- Ensure you meet the time constraints specified in 37 CFR 1.29(k)
It’s important to act promptly if you believe you’ve overpaid due to an incorrect entity status.
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What happens if I lose micro entity status during the patent process?
If you lose micro entity status during the patent process, you must notify the USPTO promptly. The MPEP states:
“A micro entity that no longer meets the requirements for micro entity status at a point in time when a fee is due is treated as a small entity for purposes of paying the fee if the applicant or patentee is otherwise eligible for small entity status.”
This means:
- You must file a notification of loss of entitlement to micro entity status.
- If you still qualify as a small entity, you can pay fees at the small entity rate.
- If you no longer qualify as a small entity, you must pay fees at the standard (large entity) rate.
It’s important to note that continuing to pay fees at the micro entity rate when you no longer qualify can result in the patent being held unenforceable. For more details, refer to MPEP 509.04(e).
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If you lose entitlement to micro entity status, you must:
- File a notification of loss of entitlement to micro entity status in the application or patent
- Pay the required fee in the small entity or undiscounted amount, as appropriate
The notification must be filed prior to or at the time of paying the earliest fee after the date on which status as a micro entity is no longer appropriate. As stated in 37 CFR 1.29(i): ‘Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate.’
What happens if I fail to notify the USPTO about loss of micro entity status?
Failing to notify the USPTO about the loss of micro entity status can have serious consequences. The MPEP warns:
“Fraudulent assertion of micro entity status is considered a fraud practiced or attempted on the Office.” (MPEP 509.04(f))
Consequences may include:
- Invalidation of the patent application or granted patent
- Disciplinary action against registered practitioners
- Criminal penalties under 18 U.S.C. 1001
It’s crucial to promptly notify the USPTO if you lose eligibility for micro entity status to avoid these severe consequences.
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If you erroneously pay small entity fees in good faith, you can correct the error by:
- Submitting a separate deficiency payment for each application or patent
- Itemizing the deficiency payment with specific details
- Paying the full deficiency amount owed
As stated in 37 CFR 1.28(c): “If status as a small entity is established in good faith, and fees as a small entity are paid in good faith, in any application or patent, and it is later discovered that such status as a small entity was established in error, or that through error the Office was not notified of a loss of entitlement to small entity status as required by § 1.27(g)(2), the error will be excused upon: compliance with the separate submission and itemization requirements of paragraphs (c)(1) and (c)(2) of this section, and the deficiency payment requirement of paragraph (c)(2) of this section.”
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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:
- Treat it as an authorization to process the deficiency payment and charge a processing fee
- 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.
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If drawings are not received with a patent application, the following process occurs:
- The application is assigned a filing date if it meets the minimum requirements under 37 CFR 1.53(b) or 1.53(d).
- The Office of Patent Application Processing (OPAP) will send a Notice of Omitted Items giving the applicant a time period to file the missing drawings and a petition under 37 CFR 1.182 with the petition fee to have the filing date changed to the date of such filing.
- If the applicant does not respond to the Notice of Omitted Items, the application will be processed without the drawings.
As stated in the MPEP 507: ‘If drawings are not received with the application, the application is assigned a filing date and the applicant is notified to file drawings within a set time period.’
For more information on drawings, visit: drawings.
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 an applicant does not receive an application number within one month of filing, they should contact the Application Assistance Unit. The MPEP states:
‘If an application number is not received within one month of the filing date, applicant should contact the Application Assistance Unit at (571) 272-4000 or (888) 786-0101.’
This contact information is provided to ensure applicants can follow up on their application status in a timely manner. It’s important to note that this one-month period is a guideline for when applicants should take action if they haven’t received their application number.
For more information on Application Assistance Unit, visit: Application Assistance Unit.
For more information on application number, visit: application number.
What happens if an applicant’s income exceeds the micro entity threshold during pendency?
If an applicant’s income exceeds the micro entity threshold during the pendency of an application, they must notify the USPTO and change their status. The MPEP 509.04(a) states:
“A micro entity certification in an application will remain in effect until the applicant submits a notification of loss of entitlement to micro entity status under 37 CFR 1.29(i).”
Applicants are required to notify the USPTO of any change in status before paying any fee after the change. Failure to do so may result in:
- Underpayment of fees
- Loss of micro entity status
- Potential invalidation of the patent if issued
It’s crucial to monitor income and update the USPTO promptly if the micro entity threshold is exceeded.
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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 a patent application is missing essential parts, such as the specification, drawings, or claims, the USPTO will notify the applicant of the missing elements. According to MPEP 506:
‘Applicant will be notified of the incomplete application and the time period set for submitting the omitted parts.’
The applicant will then have an opportunity to submit the missing parts within the specified time period to complete the application.
For more information on incomplete application, visit: incomplete application.
For more information on missing parts, visit: missing parts.
For more information on patent application requirements, visit: patent application requirements.
If a patent application is filed without all the pages of the specification, the USPTO will notify the applicant of the missing parts. The MPEP refers to this situation:
See MPEP § 601.01(d)-(g) where the application is filed without all the pages of the specification, without at least one claim (nonprovisional design application), without drawings, or without all the figures of the drawings.
For applications filed before September 16, 2012, a supplemental oath or declaration by the inventor may be required to identify the missing item and indicate that it accurately describes the invention. For applications filed on or after September 16, 2012, an additional oath or declaration is generally not required.
The applicant will be given a time period to submit the missing pages. If the missing pages are not submitted within the specified time, the application may be deemed incomplete and not accorded a filing date until the missing parts are received.
If a patent application is filed with informal papers (e.g., typed on both sides of the paper, not permanent, legible, or reproducible), the USPTO will still accord a filing date if the application otherwise meets the requirements. The MPEP states:
OPAP accords a filing date, as of the date indicated by the “Office Date” stamp (see MPEP § 505), to application papers which include a specification containing a description and at least one claim (nonprovisional applications filed under 37 CFR 1.53(b) prior to March 18, 2013 and design applications), and a drawing, if necessary under 35 U.S.C. 113 (first sentence) and 37 CFR 1.53(b), but are informal because they do not comply with the rules or notices.
The USPTO will send a Notice requiring correction of the informality. Failure to correct the informality within the specified time will result in abandonment of the application.
If a nonprovisional patent application is filed without all required fees, the USPTO will send a notice to the applicant. According to the MPEP:
Filing dates are accorded to nonprovisional applications filed under 37 CFR 1.53(b) submitted without the… required fees (basic filing fee, and search and examination fees (for applications filed on or after December 8, 2004))… In such cases, a notice is mailed by OPAP requiring the appropriate fees… accompanied by a surcharge (37 CFR 1.16(f)).
The applicant will be given a time period (usually two months) to pay the missing fees and surcharge to avoid abandonment of the application.
If a drawing is not included with the application but is required for a complete disclosure of the invention, the Office of Patent Application Processing (OPAP) will send a Notice to File Missing Parts giving the applicant a time period of two months from the mailing date of the Notice to file the missing drawing(s). The time period may be extended under 37 CFR 1.136(a).
If a drawing is not acceptable for publication, the Office of Patent Application Processing (OPAP) will object to the drawing and notify the applicant. The applicant will be given a time period of two months from the mail date of the Notice to file acceptable drawings. This period is extendable under 37 CFR 1.136(a) or (b) for patent applications filed under 35 U.S.C. 111, but not for design applications filed under 35 U.S.C. 171. Failure to comply with the Notice within the time period will result in abandonment of the application.
The U.S. Patent and Trademark Office provides a specific form for certifying micro entity status based on an institution of higher education. This form is PTO/SB/15B.
MPEP 509.04(b) states: “The Office’s form PTO/SB/15B contains the certifications under 37 CFR 1.29(d) that are required to establish micro entity status on the institution of higher education basis.”
The form includes two signature blocks corresponding to the two alternative requirements under 37 CFR 1.29(d)(2):
- Certifying that the applicant’s employer, from which they obtain the majority of their income, is an institution of higher education.
- Certifying that the applicant has assigned, granted, or conveyed a license or other ownership interest in the application to an institution of higher education (or is obligated to do so).
Applicants should use this form to properly certify their micro entity status based on an institution of higher education.
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A USPTO deposit account can be used to pay various fees related to patent applications and services. According to the MPEP:
Filing, issue, appeal, international-type search report, international application processing, international design application fees, petition, and post-issuance fees may be charged against these accounts if sufficient funds are on deposit to cover such fees.
Specifically, fees that can be charged include:
- Filing fees (37 CFR 1.16)
- Processing fees (37 CFR 1.17)
- Issue fees (37 CFR 1.18, subject to certain conditions)
- Appeal fees
- International application fees
- Petition fees
However, fees under 37 CFR 1.19 (document supply fees), 1.20 (post-issuance fees), and 1.21 (miscellaneous fees) generally cannot be charged through a general authorization, with some exceptions.
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Micro entities receive a 75% reduction on many USPTO fees, including:
- Filing fees (nonprovisional and provisional)
- Search fees
- Examination fees
- Issue fees
- Appeal fees
- Maintenance fees
- Patent Trial and Appeal Board fees
The micro entity discount applies to most fees ‘for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents.’
To prove a filing delay due to a postal emergency, applicants must provide sufficient evidence. According to MPEP 511:
The nature of the evidence required by the Office to establish that the paper was timely filed will depend upon the circumstances of the particular emergency and the nature of the filing.
This evidence may include:
- Documentation of the postal service interruption or emergency
- Proof of attempted mailing during the affected period
- Explanation of how the emergency directly impacted the filing
- Any official notices or bulletins related to the postal disruption
The USPTO will evaluate each case individually to determine if the delay was indeed caused by the designated emergency.
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When filing entity status notifications in EFS-Web, it is strongly recommended to use the following document descriptions as appropriate:
- Notification of loss of entitlement to small entity status
- Notification of loss of entitlement to micro entity status
Using these specific document descriptions helps ensure that your notifications are properly categorized and processed by the USPTO. This recommendation is provided in MPEP 509.04(e) to facilitate efficient handling of entity status changes.
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The filing date of a patent application is determined by the ‘Office Date’ stamp, provided the application includes all necessary components for a filing date. The MPEP states:
If an application as originally filed includes the necessary components for a filing date (see 37 CFR 1.53(b)-(d) and MPEP § 506), the ‘Office Date’ stamp establishes the ‘filing date.’
This means that the date stamped on the application by the USPTO becomes the official filing date, as long as all required elements are present. It’s crucial for applicants to ensure their submissions are complete to secure the earliest possible filing date.
A complete patent application for filing date purposes must include:
- A specification containing a description as per 37 CFR 1.71
- At least one claim (for nonprovisional design applications only) as per 37 CFR 1.75
- Any drawings required by 37 CFR 1.81(a)
As stated in the MPEP: “The filing date of the provisional or nonprovisional application is the date of receipt in the Office of the application which includes a specification containing description pursuant to 37 CFR 1.71 and at least one claim (required for nonprovisional design applications only) pursuant to 37 CFR 1.75, and any drawings required by 37 CFR 1.81(a).”
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When signing patent correspondence, the signer is making certain certifications, including:
- The presentation of any paper to the USPTO constitutes a certification under 37 CFR 11.18(b).
- For S-signatures, the person inserting the signature certifies that the inserted signature is their own.
- When submitting a document signed by another person, the submitter certifies they have a reasonable basis to believe the signature is appropriate.
As stated in 37 CFR 1.4(d)(4)(i): “The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any paper by a party, whether a practitioner or non-practitioner, constitutes a certification under 37 CFR 11.18(b) of this chapter.”
Violations of these certifications may result in sanctions under 37 CFR 11.18(c) and (d).
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What are the USPTO’s guidelines for hand-carrying documents?
The USPTO has specific guidelines for hand-carrying documents to their office. According to MPEP 502:
“Any paper which relates to a pending application may be personally delivered to the Office. The attorney, agent, or applicant should specifically instruct the person making the delivery to hand-carry the paper to the Customer Service Window…”
Key points to remember when hand-carrying documents to the USPTO:
- Deliver to the Customer Service Window at the Randolph Building, 401 Dulany Street, Alexandria, VA 22314
- The delivery must be made during official business hours (8:30 AM to 5:00 PM, Monday through Friday, excluding federal holidays)
- A receipt will be issued for the delivered papers
- The receipt date is considered the filing date for the documents
It’s important to follow these guidelines to ensure proper handling and timely processing of your documents.
For more information on USPTO, visit: USPTO.
The USPTO accepts two types of signatures for patent correspondence:
- Handwritten signature: An original signature personally signed in permanent dark ink or its equivalent.
- S-signature: A signature inserted between forward slash marks, which can include electronic or mechanical signatures.
As stated in 37 CFR 1.4(d): “Correspondence filed in the Office, which requires a person’s signature, may be filed with one of two types of signatures: (A) handwritten signature; and (B) ‘S-signature.'”
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The time limits for responding to a notice under 37 CFR 1.251 vary depending on whether it’s for an application or a patent:
- For applications: The Office sets a three-month period for reply, which is extendable under 37 CFR 1.136(a) by up to three additional months, for a maximum of six months.
- For patents: The Office sets a six-month period for reply, which is not extendable.
MPEP 508.04 states: “The Office will set a time period of three months for reply in a notice under 37 CFR 1.251 in an application. The time period will be extendable under 37 CFR 1.136(a) (unless the notice indicates otherwise) by three months up to a maximum period for reply of six months in an application.” It also notes: “The Office will set a time period of six months for reply in a notice under 37 CFR 1.251 in a patent. The time period will not be extendable under 37 CFR 1.136(a) in a patent.”
The USPTO sets specific time limits for responding to notices about unlocatable files, which differ for applications and patents:
For applications, the MPEP states: The Office will set a time period of three months for reply in a notice under 37 CFR 1.251 in an application. The time period will be extendable under 37 CFR 1.136(a) (unless the notice indicates otherwise) by three months up to a maximum period for reply of six months in an application.
For patents, the time limit is longer: The Office will set a time period of six months for reply in a notice under 37 CFR 1.251 in a patent. The time period will not be extendable under 37 CFR 1.136(a) in a patent because 35 U.S.C. 41(a)(8) only authorizes the Office to charge fees for extensions of time in proceedings involving an application.
It’s important to note that failing to reply within these time limits can have serious consequences, including abandonment of pending applications.
For more information on patent applications, visit: patent applications.
For more information on Time Limits, visit: Time Limits.
The USPTO has designated specific facsimile numbers for various offices to handle different types of correspondence. According to MPEP 502.01, some key facsimile numbers include:
- Central Facsimile Number (for most patent-related correspondence): (571) 273-8300
- International Patent Legal Administration (for responses to Decisions on Petition): (571) 273-0459
- Office of Data Management (for issue fee payments and drawings): (571) 273-2885
- Electronic Business Center (for Customer Number requests): (571) 273-0177
- Assignment Branch (for assignment documents): (571) 273-0140
- Central Reexamination Unit (for ex parte and inter partes reexamination correspondence): (571) 273-9900
- Patent Trial and Appeal Board (for contested cases and trials, where expressly authorized): (571) 273-0042
- Office of Petitions (for petitions to withdraw from issue): (571) 273-0025
The MPEP states: “For each Office location listed below, only the particular type of correspondence indicated may be transmitted to the specific facsimile number at that Office location. All other types of facsimile transmitted correspondence must be sent to the central facsimile number ((571) 273-8300).”
It’s crucial to use the correct facsimile number for your specific type of correspondence to ensure proper handling and processing by the USPTO.
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What are the size standards for a small business concern in patent applications?
The size standards for a small business concern in patent applications are determined by the Small Business Administration (SBA). According to MPEP 509.02:
“For the purpose of paying reduced patent fees, a small business concern is one:
- (i) Whose number of employees, including affiliates, does not exceed 500 persons; and
- (ii) Which has not assigned, granted, conveyed, or licensed (and is under no obligation to do so) any rights in the invention to any person who made it and could not be classified as an independent inventor, or to any concern which would not qualify as a small business concern or a nonprofit organization under this section.”
It’s important to note that these size standards are specific to patent applications and may differ from SBA size standards used for other purposes. Businesses must meet both the employee count criterion and the rights assignment criterion to qualify as a small business concern for patent fee purposes.
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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.
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The signature requirements for correspondence in patent applications are outlined in MPEP 502.02. The section states:
37 CFR 1.4(d) sets forth the signature requirements for correspondence filed in the Office. Specifically, 37 CFR 1.4(d) provides that:
The signature requirements vary depending on the type of correspondence and the method of submission. Generally, they include:
- Handwritten signatures
- S-signatures (electronically created signatures)
- EFS-Web signatures for documents submitted via the Electronic Filing System
Each type of signature has specific requirements to ensure its validity and authenticity.
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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)
Using unsecured email for USPTO communications poses several risks:
- Confidentiality breaches: Sensitive information could be intercepted by unauthorized parties.
- Legal issues: Transmitting confidential information without proper security measures may violate patent laws and regulations.
- Loss of patent rights: Inadvertent public disclosure through unsecured email could jeopardize patent rights.
- Rejection of communications: The USPTO may not accept or acknowledge communications sent through unsecured channels.
MPEP 502.03 warns: “Internet e-mail shall NOT be used to conduct an exchange or communications similar to those exchanged during telephone or personal interviews unless a written authorization has been given.” This emphasizes the importance of using secure, authorized channels for all USPTO communications.
To mitigate these risks, always use the USPTO’s secure email system or the Electronic Filing System (EFS-Web) for official communications.
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Improperly claiming micro entity status can have serious consequences:
- It may be considered fraud on the USPTO if done knowingly
- It can result in the patent being held unenforceable
- Improperly paid fees will need to be corrected, which may include late fees
MPEP 509.04 warns: ‘Any attempt to fraudulently establish status as a micro entity, or pay fees as a micro entity, shall be considered as a fraud practiced or attempted on the Office. Improperly, and with intent to deceive, establishing status as a micro entity, or paying fees as a micro entity, shall be considered as a fraud practiced or attempted on the Office.’
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.
When responding to a notice about an unlocatable file, applicants or patentees must provide copies of correspondence, but there are some exceptions. The MPEP states:
Any appendix or information disclosure statement submitted with an application is not contained in the Office’s database. Therefore, the applicant or patentee must also provide a copy of any appendix or information disclosure statement (except in the limited circumstance discussed below) submitted with the application.
However, there’s an important exception for U.S. patent documents:
Since the Office can obtain copies of U.S. patent documents (U.S. patent application publications and patents) from its internal databases, the Office is not requiring applicants or patentees to provide copies of U.S. patent application publications and patents that are among the applicant’s or patentee’s record of the correspondence between the Office and the applicant or patentee for the application, patent, or other proceeding.
This means that while most documents need to be resubmitted, U.S. patent documents can be omitted from the response.
The USPTO accepts different types of signatures on correspondence, including:
- Handwritten signatures: Original signatures in permanent dark ink or equivalent.
- S-signatures: A signature inserted between forward slash marks, which can be used for correspondence filed in paper, by fax, or via the electronic filing system.
- Electronic signatures: For correspondence submitted via the electronic filing system, a graphic representation of a handwritten signature or an S-signature is acceptable.
According to 37 CFR 1.4(d): Each piece of correspondence, except as provided in paragraphs (d)(2), (d)(3), (d)(4), (e) and (f) of this section, filed in an application, patent file, or other proceeding in the Office which requires a person’s signature, must: (i) Be an original, that is, have an original handwritten signature personally signed, in permanent dark ink or its equivalent, by that person; or (ii) Be a direct or indirect copy, such as a photocopy or facsimile transmission (§ 1.6(d)), of an original.
For S-signatures, the signer must personally insert their own signature, and patent practitioners must include their registration number. The signer’s name must be presented in printed or typed form immediately below or adjacent to the S-signature.
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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.
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When sending confidential information via email to the USPTO, specific requirements must be met:
- Use of the Electronic Filing System (EFS-Web) is strongly recommended for submitting confidential information.
- If email must be used, it should be through the USPTO’s secure email system.
- An authorization from the applicant is required before sending confidential information via email.
- The email must include a statement that the email correspondence is being submitted using the procedures set forth in 37 CFR 1.33(d).
As stated in MPEP 502.03: “Internet email shall NOT be used to conduct an exchange of communications similar to those exchanged during telephone or personal interviews unless a written authorization has been given.”
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To obtain a filing date for a nonprovisional patent application filed under 37 CFR 1.53(b), the application must include:
- A specification containing a description as prescribed by 35 U.S.C. 112(a)
- At least one claim (for applications filed on or after December 13, 2013)
- Any drawings necessary under 35 U.S.C. 113 (first sentence)
As stated in the MPEP: Filing dates are accorded to nonprovisional applications filed under 37 CFR 1.53(b) submitted without the names of all the inventors, the required fees (basic filing fee, and search and examination fees (for applications filed on or after December 8, 2004)), at least one claim (for applications filed on or after December 13, 2013) and/or the inventor’s oath or declaration.
If any required items are missing, the applicant will be notified and given a time period to submit the missing elements. The filing date will be the date the missing items are received.
For more information on nonprovisional application, visit: nonprovisional application.
For more information on patent application requirements, visit: patent application requirements.
To establish micro entity status on the gross income basis, an applicant must meet the following requirements as outlined in 37 CFR 1.29(a)(1)-(4):
- Qualify as a small entity
- Not have been named as an inventor on more than four previously filed patent applications
- Not have a gross income exceeding three times the median household income in the preceding calendar year
- Not have assigned, granted, or conveyed, and not be under an obligation to do so, a license or ownership interest to an entity exceeding the gross income limit
The MPEP states: “Because each inventor and each non-inventor applicant (e.g., assignee-applicant) must separately meet the requirements under 37 CFR 1.29(a)(1)-(4), it would not be appropriate to file a micro entity certification under 37 CFR 1.29(a) for the application if there were more than one applicant or inventor and not all of the applicants and inventors qualified as micro entities under 35 U.S.C. 123(a).“
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To establish micro entity status based on an institution of higher education, an applicant must meet two main requirements:
- Qualify as a small entity as defined in 37 CFR 1.27
- Meet one of the following criteria:
- The applicant’s employer, from which they obtain the majority of their income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965, or
- The applicant has assigned, granted, conveyed, or is under an obligation to assign, grant, or convey, a license or other ownership interest in the application to such an institution of higher education.
As stated in MPEP 509.04(b): “An applicant for micro entity status under the ‘institution of higher education’ basis set forth in 37 CFR 1.29(d) must satisfy two requirements.”
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What are the requirements for filing papers with the USPTO?
When filing papers with the United States Patent and Trademark Office (USPTO), it’s important to adhere to specific requirements:
- Papers must be legibly written either by hand or printed in permanent dark ink or its equivalent.
- They should be presented on flexible, strong, smooth, non-shiny, durable, and white paper.
- All papers must be presented in a form having sufficient clarity and contrast between the paper and the writing to permit electronic reproduction by use of digital imaging and optical character recognition.
As stated in MPEP 501: All papers that are to become a part of the permanent records of the United States Patent and Trademark Office should be legibly written either by a typewriter or mechanical printer in permanent dark ink or its equivalent in portrait orientation on flexible, strong, smooth, non-shiny, durable, and white paper.
These requirements ensure that all documents can be properly processed and stored by the USPTO.
For more information on document legibility, visit: document legibility.
What are the requirements for certificate of mailing or transmission?
The certificate of mailing or transmission is an important tool for securing a filing date with the USPTO. According to MPEP 502, the requirements are:
“The certification requires a signature. Specifically, if the certification is filed by a registered practitioner, it must be signed by that practitioner personally. 37 CFR 1.8(a)(2). If the certification is filed by an applicant, it must be signed by the applicant (except where an oath or declaration is not required, in which case the certification may be signed by a registered practitioner). 37 CFR 1.8(a)(2).”
Key points to remember:
- The certificate must include the date of deposit or transmission.
- It must be signed by the person mailing or transmitting the correspondence.
- For registered practitioners, personal signature is required.
- For applicants, their signature is required unless an oath/declaration is not needed.
Proper use of this certificate can help ensure your documents are considered timely filed, even if there are postal or transmission delays.
For more information on Certificate of Mailing, visit: Certificate of Mailing.
For more information on Certificate of Transmission, visit: Certificate of Transmission.
For more information on USPTO correspondence, visit: USPTO correspondence.
An S-signature must meet the following requirements:
- It must be inserted between two forward slash marks.
- It can only consist of letters, Arabic numerals, or both, with appropriate spaces and punctuation.
- The signer must insert their own S-signature.
- For patent practitioners, the registration number must be included as part of or adjacent to the S-signature.
- The signer’s name must be presented in printed or typed form, preferably immediately below or adjacent to the S-signature.
As stated in 37 CFR 1.4(d)(2)(i): “The S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature.”
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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 recommends several methods for filing new patent applications, with some being more advantageous than others. According to MPEP 511, the recommended methods are:
- Electronic Filing System (EFS-Web or Patent Center): This is the most recommended method. As stated in MPEP 511: “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.”
- Priority Mail Express®: If not filing electronically, this is the next best option. MPEP 511 notes: “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.”
- Hand-delivery: Applications can be hand-delivered to the USPTO.
- First-class mail: While possible, this method carries risks of delay and is not recommended for new applications.
It’s important to note that new applications cannot be filed by facsimile. For more details on electronic filing, refer to the Legal Framework for Patent Electronic System on the USPTO website.
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The USPTO strongly recommends the following methods for filing new patent applications:
- Electronic Filing System (EFS-Web or Patent Center): This is the preferred method whenever permitted.
- 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.
- 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.”
What are the official USPTO mailing addresses for patent-related correspondence?
The United States Patent and Trademark Office (USPTO) has specific mailing addresses for different types of patent-related correspondence. According to the MPEP 502:
For regular mail:
- Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
For hand-carried or EXPRESS MAIL:
- U.S. Patent and Trademark Office
Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
It’s important to use the correct address to ensure timely processing of your correspondence.
For more information on patent correspondence, visit: patent correspondence.
The official business hours of the U.S. Patent and Trademark Office (USPTO) are:
- 8:30 a.m. to 5:00 p.m., Monday through Friday
- Excluding federal holidays in the District of Columbia
As stated in MPEP 510: “The U.S. Patent and Trademark Office (USPTO or Office) working hours are 8:30 a.m. to 5:00 p.m., Monday through Friday, excluding federal holidays in the District of Columbia.”
What are the margin requirements for patent application documents?
When preparing documents for a patent application, it’s crucial to adhere to specific margin requirements set by the USPTO:
- The top margin of the first page should be at least 2 cm (3/4 inch).
- All other margins (left, right, and bottom) must be at least 2 cm (3/4 inch).
- The margins can be slightly larger but should not exceed 4 cm (1-1/2 inches).
According to MPEP 501: All of the application papers must have margins which are at least 2 cm. (3/4 inch) … on the sides, top and bottom. Margins should not exceed 4 cm. (1-1/2 inches). … The top margin of the first page should be at least 2 cm. (3/4 inch).
These margin requirements ensure that all information is visible and can be properly scanned and processed by the USPTO.
MPEP 507 outlines specific requirements for margins and paper size in patent drawings:
Each sheet must include a top margin of at least 2.5 cm. (1 inch), a left size margin of at least 2.5 cm. (1 inch), a right size margin of at least 1.5 cm. (5/8 inch), and a bottom margin of at least 1.0 cm. (3/8 inch). The size of the sheets on which drawings are made must be either 21.0 cm. by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8-1/2 by 11 inches);
These requirements are based on 37 CFR 1.84(f) and (g). Adhering to these specifications ensures that the drawings can be properly scanned and reproduced in the patent publication process.
What are the line spacing requirements for patent application text?
When preparing the text for your patent application, it’s important to follow the USPTO’s line spacing requirements:
- The text should be written in a nonscript type font (e.g., Arial, Times Roman, or Courier).
- The lettering style should be at least 0.32 cm (1/8 inch) high.
- The lines of text should be 1.5 or double spaced.
According to MPEP 501: The text must be written in a nonscript type font (e.g., Arial, Times Roman, or Courier, preferably a font size of 12) lettering style having capital letters which should be at least 0.32 cm. (1/8 inch) high, but may be no smaller than 0.21 cm. (3/32 inch) high (e.g., a font size of 6). The lines of the specification may be 1 1/2 or double spaced.
These requirements ensure that the text is easily readable and can be properly scanned and processed by the USPTO’s systems.
The provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) to (i) have specific limitations when it comes to petitions for filing dates. According to MPEP 511:
“Applicants are cautioned that the provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) to (i) only apply to postal interruptions and emergencies. The provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) to (i) do not provide for granting of a filing date to correspondence as of the date on which it would have been filed but for other exigencies, such as the unavailability of a computer or word processing equipment, or the inaccessibility of an office or building other than a USPS facility.”
This means that these provisions are strictly limited to postal service interruptions or emergencies. They cannot be used for other circumstances that may have prevented timely filing, such as:
- Computer or equipment failures
- Office or building inaccessibility (unless it’s a USPS facility)
- Personal emergencies or other non-postal related issues
Additionally, the statute requires that the correspondence was complete and ready to be deposited with the USPS on the requested filing date, and that the sole reason for non-deposit was the unavailability of postal service due to the designated interruption or emergency.
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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.
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What are the income limitations for micro entity status?
To qualify for micro entity status, an applicant’s income must not exceed three times the median household income as reported by the Bureau of the Census. According to USPTO’s 2022 notice, the income limit is $206,109. The MPEP states:
“[A]n applicant qualifies as a micro entity if the applicant’s gross income in the previous calendar year does not exceed the ‘maximum qualifying gross income’ which is set to three times the median household income as reported by the Bureau of the Census.” (MPEP 509.04(a))
It’s important to note that this limit is subject to change, and applicants should check the latest USPTO notices for the most current information.
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The Public Search Facility in Alexandria has extended hours compared to the regular USPTO business hours:
- 8:00 a.m. to 8:00 p.m., Monday through Friday
- Excluding federal holidays in the District of Columbia
As stated in MPEP 510: “The hours for the Public Search Facility in Alexandria are 8:00 a.m. to 8:00 p.m., Monday through Friday, excluding federal holidays in the District of Columbia.”
Applications properly filed via Priority Mail Express® (formerly Express Mail) have special filing date rules:
- The filing date is the date the application was deposited with the U.S. Postal Service as Priority Mail Express®
- This applies even if the deposit date is a Saturday, Sunday, or federal holiday
- The application must comply with the requirements of 37 CFR 1.10 to receive this benefit
The MPEP states: For applications properly filed under 37 CFR 1.10, the filing date is the date that the application was deposited as Priority Mail Express® in the U.S. Postal Service. For example, if a new patent application is deposited in Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date. 37 CFR 1.6(a)(2).
If the proper procedures were not followed, the application will receive a filing date as of the date it was received in the USPTO. Any review of these matters would be by way of petition, accompanied by the petition fee.
For more information on Priority Mail Express, visit: Priority Mail Express.
What are the consequences of submitting insufficient fees for a patent application?
Submitting insufficient fees for a patent application can have significant consequences. According to MPEP 509:
“An application filed with insufficient basic filing fee, search fee, examination fee, or oath or declaration will be treated as an incomplete application under 37 CFR 1.53(f) and will not be given a filing date until the filing fee is received.”
This means:
- Your application won’t receive a filing date until the correct fees are paid
- This delay could affect your priority date
- If not corrected promptly, the application may be considered abandoned
It’s crucial to ensure all required fees are paid in full when submitting a patent application to avoid these issues.
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What are the consequences of submitting color drawings in a utility patent application?
Submitting color drawings in a utility patent application has specific consequences and requirements:
- Color drawings are not ordinarily permitted in utility patent applications.
- As stated in MPEP 507: “Color drawings are permitted in design applications. For utility patent applications, color drawings are not permitted without a grantable petition.”
- If color drawings are submitted without an approved petition, OPAP will send a Notice to File Corrected Application Papers.
- The applicant must either:
- Replace the color drawings with black and white drawings, or
- File a grantable petition under 37 CFR 1.84(a)(2) to accept the color drawings.
- The petition must explain why color drawings are necessary and be accompanied by the fee set forth in 37 CFR 1.17(h).
It’s important to consider whether color drawings are truly necessary for your utility patent application, as they require additional steps and fees in the application process.
For more information on application papers, visit: application papers.
For more information on color drawings, visit: color drawings.
The consequences of not responding to a notice about an unlocatable file differ for pending applications and granted patents:
- For pending applications: According to 37 CFR 1.251(b),
failure to comply with one of paragraphs (a)(1), (a)(2), or (a)(3) of this section within the time period set in the notice will result in abandonment of the application.
- For granted patents: While the patent won’t expire, the MPEP states that
the only certified copy of the patent file that the Office will be able to produce will be a copy of the patent and a copy of the application-as-filed (which may have an adverse impact during attempts to enforce the patent).
Additionally, for patents involved in USPTO proceedings, the Office may take action under 37 CFR 41.128 or 37 CFR 11.18.
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What are the consequences of improperly claiming small entity status?
Improperly claiming small entity status can have serious consequences. The MPEP 509.03 states: “Improperly and with intent to deceive establishing status as a small entity, or paying fees as a small entity, shall be considered as a fraud practiced or attempted on the Office.” This means that intentionally falsely claiming small entity status is considered fraud. Consequences may include:
- Invalidation of the patent
- Requirement to pay back all fee differences
- Potential legal action for fraud
It’s crucial to verify eligibility carefully before claiming small entity status and to update the USPTO if your status changes.
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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.
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The consequences of failing to respond to a 37 CFR 1.251 notice differ for pending applications and granted patents:
- For pending applications: Failure to reply within the set time period will result in abandonment of the application. MPEP 508.04 cites 37 CFR 1.251(b): “With regard to a pending application, failure to comply with one of paragraphs (a)(1), (a)(2), or (a)(3) of this section within the time period set in the notice will result in abandonment of the application.”
- For granted patents: While the patent won’t expire, there may be limitations on the certified copy of the patent file that the Office can produce. MPEP 508.04 states: “While abandonment (or expiration) of a patent is not an issue if a patentee fails to timely comply with a notice under 37 CFR 1.251, in such a situation the only certified copy of the patent file that the Office will be able to produce will be a copy of the patent and a copy of the application-as-filed (which may have an adverse impact during attempts to enforce the patent).”
Additionally, for patents involved in proceedings before the Office, action may be taken under 37 CFR 41.128 or 37 CFR 11.18.
What are the consequences of bounced checks or insufficient funds for USPTO fee payments?
Submitting a check that bounces or having insufficient funds for USPTO fee payments can have serious consequences. The MPEP 509 states: ‘If any fee is paid by a check which is uncollectible or is returned unpaid, or if any payment is made in an amount less than the required amount, the fee payment shall be regarded as incomplete and the processing of the application or other filing shall be held in abeyance until the full fee payment is made.’
Consequences may include:
- Suspension of application processing
- Potential loss of filing date
- Additional fees or penalties
- Possible disciplinary action for repeated occurrences
To avoid these issues, ensure sufficient funds are available and consider using more reliable payment methods like electronic funds transfer or credit cards.
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Improper signatures on patent correspondence can have serious consequences. While the MPEP 502.02 doesn’t explicitly list all consequences, it emphasizes the importance of proper signatures:
Correspondence filed in the Office by applicants and other parties must be signed by the applicants or other party, or by a registered patent attorney or agent of record in the patent application or patent.
The potential consequences of an improper signature include:
- Rejection or return of the correspondence
- Delays in processing the application or request
- Potential loss of rights or missed deadlines
- Requirement for ratification or confirmation of the signature
- In severe cases, charges of fraud or inequitable conduct
To avoid these issues, it’s crucial to ensure all signatures comply with USPTO requirements as outlined in 37 CFR 1.4 and MPEP 502.02. When in doubt, consult with a registered patent attorney or agent to verify proper signature practices.
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OPAP may object to patent drawings for several reasons, including:
- Line quality issues
- Missing lead lines
- Excessive or non-English text
- Incorrect margins or paper size
- Improper figure labeling
- Illegible photographs
- Unauthorized color drawings or photographs
For example, regarding line quality, MPEP 507 states:
OPAP may object to and require corrected drawings within a set time period, if the drawings: (A) have a line quality that is too light to be reproduced (weight of all lines and letters must be heavy enough to permit adequate reproduction) or text that is illegible (reference characters, sheet numbers, and view numbers must be plain and legible). See 37 CFR 1.84(l) and (p)(1);
The USPTO has specific certification requirements for signatures in correspondence. According to MPEP 501, which cites 37 CFR 1.4(d)(4):
The person inserting a signature under paragraph (d)(2) or (d)(3) of this section in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature. A person submitting a document signed by another under paragraph (d)(2) or (d)(3) of this section is obligated to have a reasonable basis to believe that the person whose signature is present on the document was actually inserted by that person, and should retain evidence of authenticity of the signature.
Key points about signature certifications:
- The person inserting an S-signature certifies it as their own.
- When submitting a document signed by another, you must have a reasonable belief that the signature is authentic.
- Evidence of signature authenticity should be retained.
- Violations of certification rules may result in sanctions.
These requirements apply to both handwritten and S-signatures. They ensure the integrity and authenticity of documents submitted to the USPTO.
For more information on USPTO correspondence, visit: USPTO correspondence.
What are the accepted payment methods for patent fees?
The USPTO accepts various payment methods for patent fees:
- Credit or debit card
- Electronic funds transfer (EFT)
- Deposit account
- Check or money order
As stated in MPEP 509: ‘Fees may be paid by U.S. credit card, electronic funds transfer (EFT), deposit account, check or money order.’ Electronic payment methods are preferred for their efficiency and speed.
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The USPTO accepts various methods of payment for patent and trademark process fees. According to MPEP 509, the primary methods include:
- Credit cards (AMERICAN EXPRESS®, DISCOVER®, MASTER CARD®, and VISA®)
- Deposit accounts
- Electronic funds transfer (EFT)
- Other forms of payment accepted by the Office
It’s important to note that credit card payments are subject to a transaction maximum. As stated in the MPEP: Effective June 1, 2015, the credit card transaction maximum is $24,999.99 as specified in section 7045 of the ‘Treasury Financial Manual.’
This limit does not apply to other payment methods.
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What are the acceptable methods for filing papers with the USPTO?
The USPTO accepts several methods for filing papers:
- Hand-delivery to the USPTO office in Alexandria, Virginia
- First-class mail through the United States Postal Service (USPS)
- Express Mail service of the USPS
- Electronic filing through the USPTO’s Electronic Filing System (EFS-Web)
As stated in MPEP 501: ‘Papers may be filed using first class mail through the United States Postal Service.’ The MPEP also notes that ‘Correspondence may be hand-carried to the Office.’ For electronic filing, it’s important to note that ‘EFS-Web can be used to file new applications, enter the national stage under 35 U.S.C. 371, and submit most follow-on documents in patent applications.’
For more information on EFS-Web, visit: EFS-Web.
For more information on electronic filing, visit: electronic filing.
For more information on Express Mail, visit: Express Mail.
For more information on first-class mail, visit: first-class mail.
For more information on hand-delivery, visit: hand-delivery.
All relevant information from MPEP 502.05 – Correspondence Transmitted by EFS-Web has been thoroughly covered in the previously generated FAQs. No additional meaningful questions can be created without substantial repetition of existing content.
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USPTO employees are required to verify the identity of email senders in patent communications to prevent misrepresentation or spoofing. According to MPEP 502.03:
‘Email must be initiated by a registered practitioner, or an applicant in a pro se application, and sufficient information must be provided to show representative capacity in compliance with 37 CFR 1.34.’
The MPEP provides examples of information that can be used for verification:
- Attorney registration number
- Attorney docket number
- Patent application number
Additionally, the MPEP advises:
‘Similar to the policy set forth in MPEP 100 for handling telephone calls, when responding to an email, no information should be disclosed until the identity of the requester can be adequately verified.’
Examiners are instructed to verify the identity by checking Patent Data Portal or the application file, such as confirming the email address previously provided in Patent Data Portal or the application.
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For joint inventor applicants, MPEP 509.04(c) states that “each joint inventor should sign a separate copy of the relevant micro entity certification form.” However, there is an exception:
“If one joint inventor is appointed to prosecute the application on behalf of all the other joint inventors, then only that one joint inventor need sign the micro entity certification form.”
This appointment can be made using USPTO form PTO/AIA/81, titled “Power Of Attorney To One Or More Of The Joint Inventors And Change Of Correspondence Address”, available on the USPTO forms Web page.
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Patent maintenance fee payments can be submitted in two ways:
- Electronically: This is the preferred method. Payments can be made through the USPTO’s Patent Maintenance Fees Storefront.
- By mail: If not submitted electronically, maintenance fee payments and related correspondence should be addressed to:
Mail Stop Maintenance Fee
Director of the United States Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
The MPEP states: Maintenance fee payments not electronically submitted over the Internet and correspondence related to maintenance fees may be addressed to: Mail Stop Maintenance Fee, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450
It’s important to note that electronic submission is faster, more secure, and provides immediate confirmation of payment.
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Maintenance fee payments have a specific mailing address if not submitted electronically. According to MPEP 501, which cites 37 CFR 1.1(d):
Maintenance fee payments that are not submitted electronically and correspondence related to maintenance fees may be addressed to: Mail Stop Maintenance Fee, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
However, it’s important to note that the USPTO strongly encourages electronic submission of maintenance fee payments. The Electronic Maintenance Fee Form is the preferred method for these transactions.
If you must submit a paper payment, ensure it’s properly addressed to avoid delays in processing. Include all necessary information, such as the patent number and the fee amount being paid.
For more information on USPTO correspondence, visit: USPTO correspondence.
For correspondence that requires immediate attention from the USPTO, such as certain petitions or time-sensitive documents, the following methods are recommended:
- Use the USPTO patent electronic filing system (EFS-Web or Patent Center). This is the preferred method for most immediate correspondence.
- Where permitted, use facsimile transmission to the appropriate area of the Office.
- Hand-carry the documents to the USPTO in Alexandria, VA.
The MPEP states: Applicants are encouraged to transmit these types of correspondence by the USPTO patent electronic filing system (see MPEP § 502.05). Where permitted, patent-related correspondence that requires immediate Office attention may also be submitted to the appropriate area of the Office for processing by facsimile transmission (see MPEP § 502.01, subsections I.B and II) or hand-carried (see MPEP § 502), subsection III).
Examples of correspondence requiring immediate attention include:
- Petitions for express abandonment to avoid publication
- Petitions to withdraw an application from issue
- Requests for expedited examination of a design application
- Certain papers required by the Office of Data Management
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According to MPEP 507, figures in patent drawings should be labeled as follows:
Each figure must be labeled ‘Fig.’ with a consecutive Arabic numeral (1, 2, etc.) or an Arabic numeral and capital letter in the English alphabet (A, B, etc.). See 37 CFR 1.84(u)(1);
This labeling convention ensures clarity and consistency in referencing figures throughout the patent application and publication. Improper labeling may result in an objection from OPAP and require correction.
The USPTO requires clear itemization of fees to ensure proper accounting. According to MPEP 509:
37 CFR 1.22(b) sets forth that fees must be itemized in such a manner that it is clear for which purpose fees are paid. The Office may return fees that are not itemized.
However, the MPEP clarifies that the itemization requirement is not meant to create problems when the purpose is clear:
- A reference to ‘filing fee(s)’ is sufficient to cover all types of filing fees.
- In later submissions, ‘filing fee(s)’ would also cover surcharges.
- A reference to ‘any corresponding fee under 37 CFR 1.16’ covers any fee under that section.
The key is to provide enough information for the USPTO to understand the purpose of the payment.
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For correspondence that is not specific to patents or trademarks, such as requests for certified copies or assignment recordation, the general mailing address is:
Director of the United States Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
This address should be used for:
- Patent and trademark documents sent to the Assignment Division for recordation (Mail Stop Assignment Recordation Services)
- Requests for certified or uncertified copies of patent and trademark documents (Mail Stop Patent and Trademark Copy Fulfillment Branch)
- Correspondence for which an address is not otherwise specified in 37 CFR 1.1 or 2.190
MPEP 501 states: “For correspondence for which an address is not otherwise specified in 37 CFR 1.1 or 2.190, should be addressed to: Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450”
Filing a Continued Prosecution Application (CPA) by facsimile requires specific procedures, as outlined in MPEP 502.01:
- CPAs are only available for design applications.
- The CPA must be sent to the central facsimile number: (571) 273-8300.
- An authorization to charge the basic filing fee to a deposit account or credit card must be included, or the application will be treated as filed without the basic filing fee.
- There is a special receipt procedure for CPA filings by fax:
There is a special receipt procedure for filing a CPA by fax, whereby the Office will fax back a receipt of the CPA filing if applicant submits the Office receipt form along with the CPA filing.
It’s important to note that if the USPTO has no evidence of receiving a CPA transmitted by fax, the applicant may need to file a petition under 37 CFR 1.6(f) to request a filing date. This petition must include:
- Information about the previous transmission
- An additional copy of the CPA
- A statement attesting to the previous transmission
- Evidence of the transmission, such as a sending unit’s report or other evidence created within one business day of the transmission
Always ensure that you follow these procedures carefully when filing a CPA by facsimile to avoid any issues with the filing date or processing of your application.
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According to MPEP 509.02, fees for small entities are reduced by 50% for most patent-related fees. The MPEP states:
The fees which are reduced by 50% for small entities include patent application filing fees including the basic filing fee, search fee, examination fee, application size fee, and excess claims fees (37 CFR 1.16), extension of time, revival, and appeal fees (37 CFR 1.17), patent issue fees (37 CFR 1.18), and maintenance fees on patents (37 CFR 1.20).
Additionally, certain PCT international stage fees are also eligible for the 50% reduction for small entities.
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Once small entity status is established in an application or patent, it remains in effect until:
- The issue fee is due, or
- Any maintenance fee is due
At these points, a new determination of entitlement to small entity status is required. As stated in 37 CFR 1.27(g)(1): “Once small entity status is 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.”
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Micro entity status, once properly established, generally remains in effect until:
- A fee is paid in the small entity or undiscounted amount
- A notification of loss of entitlement to micro entity status is filed
- The issue fee or a maintenance fee is due
However, the applicant has a continued obligation to verify eligibility for micro entity status each time a fee is paid. As stated in 37 CFR 1.29(g): ‘a fee may be paid in the micro entity amount only if status as a micro entity as defined in paragraph (a) or (d) of this section is appropriate on the date the fee is being paid.’
The time period for responding to a notice about an unlocatable file depends on whether it’s for an application or a patent:
- For applications: The USPTO typically sets a three-month period, which is extendable under 37 CFR 1.136(a) by up to three additional months, for a maximum of six months.
- For patents: A six-month non-extendable period is set.
It’s important to note that for applications, as stated in the MPEP, If, however, an applicant fails to reply to a notice under 37 CFR 1.251 within three months of its mailing date, any patent term adjustment under 35 U.S.C. 154(b) will be reduced by a period equal to the number of days (if any) beginning on the day after the date that is three months after the mailing date of the notice under 37 CFR 1.251 and ending on the date the reply to the notice under 37 CFR 1.251 was filed.
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Once small entity status is established in an application or patent, you can continue to pay fees as a small entity until the issue fee is due or any maintenance fee is due. This is stated in 37 CFR 1.27(g)(1): ‘Once small entity status is 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.’
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The gross income limit for micro entity status is determined as follows:
- It is set at three times the median household income for the preceding calendar year, as reported by the Bureau of the Census.
- The USPTO publishes the current maximum qualifying gross income on their website.
- This limit applies to each applicant, inventor, and joint inventor individually.
The MPEP clarifies: “At the time any fee is to be paid in the micro entity amount, it is required that no inventor and no non-inventor applicant (if any) have a preceding calendar year’s gross income exceeding the ‘maximum qualifying gross income’ posted on the USPTO website.“
It’s important to note that gross income means total income, not adjusted gross income. The MPEP states: “‘Gross income’ and ‘adjusted gross income’ are not the same thing. Adjusted gross income is defined as gross income minus adjustments to income. For purposes of micro entity status it is ‘gross income’ – not ‘adjusted gross income’ that matters.“
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The filing date for Priority Mail Express® submissions is typically determined by the “date accepted” on the Priority Mail Express® mailing label. According to MPEP 513:
Office personnel will routinely look to the Priority Mail Express® mailing label, and stamp the “date accepted” or other official USPS notation as the filing date of the correspondence.
If the USPS deposit date cannot be determined, the correspondence will be accorded the date of receipt in the Office as the filing date. It’s important to note that the “date accepted” must be completed by the USPS, not by the applicant.
The deficiency owed for micro entity fee errors is calculated according to 37 CFR 1.29(k)(2). The MPEP states:
The deficiency owed for each previous fee erroneously paid as a micro entity is the difference between the current fee amount for a small entity or non-small entity, as applicable, on the date the deficiency is paid in full and the amount of the previous erroneous micro entity fee payment.
To calculate the total deficiency payment:
- Determine the current fee amount for each erroneously paid fee (small or non-small entity rate)
- Subtract the micro entity fee amount previously paid
- Sum up all individual deficiency amounts
This calculation ensures that the correct fee amount is paid based on the entity status and current fee schedule.
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For micro entity status, gross income is determined as follows:
- Based on the calendar year preceding the year a fee is paid
- Uses the definition of gross income in section 61(a) of the Internal Revenue Code
- Compared to three times the median household income as reported by the Bureau of the Census
- For non-US income, converted using the average currency exchange rate for the relevant calendar year
The USPTO website provides the current maximum qualifying gross income limit.
When calculating gross income for micro entity status involving foreign currency, the USPTO provides specific guidelines:
- If an applicant’s, inventor’s, or entity’s gross income in the preceding calendar year is not in U.S. dollars, the average currency exchange rate reported by the Internal Revenue Service (IRS) for that calendar year must be used for conversion.
- For income received partially in U.S. dollars and partially in foreign currency, the foreign portion must be converted to U.S. dollars and added to the U.S. dollar amount.
The MPEP states: “If an applicant’s, inventor’s, joint inventor’s, or entity’s gross income in the preceding calendar year is not in United States dollars, the average currency exchange rate, as reported by the Internal Revenue Service, during that calendar year shall be used to determine whether the applicant’s, inventor’s, joint inventor’s, or entity’s gross income exceeds the threshold specified in 37 CFR 1.29(a)(3) or (a)(4).“
The IRS provides yearly average currency exchange rates on its website, which should be used for these calculations.
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An ‘institution of higher education’ for micro entity status purposes is defined according to Section 101(a) of the Higher Education Act of 1965. The key criteria include:
- Located in any U.S. state or territory
- Admits students with secondary education or equivalent
- Authorized to provide post-secondary education
- Offers bachelor’s degrees or at least 2-year programs toward such degrees
- Is a public or non-profit institution
- Is accredited or pre-accredited by a recognized agency
As stated in MPEP 509.04(b): “Section 101(a) of the Higher Education Act of 1965 defines what is meant by ‘institution of higher education’ in the context of 37 CFR 1.29(d).”
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How does USPTO verify gross income for micro entity status?
The USPTO generally does not independently verify the gross income of applicants claiming micro entity status. According to MPEP 509.04(a):
“The Office does not generally question certification of micro entity status but may require additional information on a case-by-case basis.”
However, applicants are required to certify their eligibility for micro entity status under oath. Providing false information can lead to severe consequences, including invalidation of the patent and potential criminal charges for fraud.
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Transferring rights in an invention can affect small entity status. According to MPEP 509.02:
If the individual inventor, small business concern, or nonprofit organization assigned, granted, conveyed, or licensed, or came under an obligation to assign, grant, convey, or license, any rights to the invention to any individual, small business concern, or nonprofit organization which would not qualify as a small entity (37 CFR 1.27(a)), then the inventor, small business concern, or nonprofit organization would no longer qualify for small entity status.
However, transferring partial rights to another small entity does not disqualify the original entity from small entity status. It’s important to note that rights in question are those in the United States. Transferring rights to a foreign patent does not affect small entity status if no U.S. rights are transferred.
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The USPTO has established procedures to notify the public about postal service interruptions that may affect patent filings. According to MPEP 511:
When the Director designates a postal service interruption or emergency, a notice will be published in the Official Gazette, and will be posted on the USPTO website at www.uspto.gov.
The USPTO’s notification process includes:
- Publishing a notice in the Official Gazette
- Posting information on the USPTO website
- Possibly issuing press releases or other public communications
These notifications typically include:
- Details about the nature and scope of the interruption
- Any special procedures or accommodations being made
- Instructions for applicants affected by the interruption
- Contact information for further inquiries
It’s crucial for patent applicants and attorneys to regularly check these official sources during potential postal disruptions to stay informed about any changes in filing procedures or deadlines.
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The USPTO has a specific policy for handling unnecessary duplicate copies of correspondence. According to MPEP 502.04:
The Office may dispose of duplicate copies of correspondence in the file of an application, patent, or other proceeding.
Furthermore, the MPEP states:
When the Office does not require duplicate copies of a paper, the filing of multiple copies may cause a delay in processing by the Office. Accordingly, the Office may discard duplicate copies of correspondence filed in an application or patent file.
This means that if you submit unnecessary duplicate copies, the USPTO may discard them to streamline processing and prevent delays. It’s important to only submit duplicate copies when specifically required by the Office.
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The USPTO has specific procedures for handling refunds of fees paid by credit card. According to MPEP 509:
35 U.S.C. 42(d) and 37 CFR 1.26 (which concern refund of patent and trademark fees) also apply to requests for refund of fees paid by credit card. Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged. See 37 CFR 1.26(a).
Key points about USPTO refunds for credit card payments:
- Refunds are processed as credits to the original credit card account used for payment.
- The same laws and regulations governing refunds of patent and trademark fees apply to credit card payments.
- For information on which fees are refundable, refer to MPEP § 607.02 regarding returnability of fees.
It’s important to note that refund requests are subject to specific criteria and time limitations, so applicants should review the relevant regulations when seeking a refund.
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Priority Mail Express® submissions to the USPTO are handled differently from regular mail. According to MPEP 505, New patent applications filed in accordance with 37 CFR 1.10 will be stamped by the Office with the date of deposit as Priority Mail Express® with the United States Postal Service.
This means:
- The date of deposit with USPS is used as the receipt date, not the date it arrives at the USPTO
- This applies even on weekends and holidays when the USPTO is closed
For example, if a new patent application is deposited in Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date.
For more information on Priority Mail Express, visit: Priority Mail Express.
For more information on USPTO, visit: USPTO.
The USPTO has specific rules regarding patent term adjustments when dealing with notices about unlocatable files. According to the MPEP:
If, however, an applicant fails to reply to a notice under 37 CFR 1.251 within three months of its mailing date, any patent term adjustment under 35 U.S.C. 154(b) will be reduced by a period equal to the number of days (if any) beginning on the day after the date that is three months after the mailing date of the notice under 37 CFR 1.251 and ending on the date the reply to the notice under 37 CFR 1.251 was filed.
This reduction in patent term adjustment is based on 35 U.S.C. 154(b)(2)(C)(ii) and 37 CFR 1.704(b). It’s important to note that this reduction applies even if the applicant responds within the overall six-month period allowed for reply (including extensions).
This policy underscores the importance of prompt action in response to such notices, as delays can directly impact the duration of patent protection.
For more information on patent term adjustment, visit: patent term adjustment.
During postal service emergencies, the USPTO takes special measures to ensure patent applications are handled appropriately:
- The USPTO Director may designate the interruption or emergency as a ‘postal service interruption or emergency’ under 35 U.S.C. 21(a).
- This designation allows for the acceptance of filings that would have been timely filed if not for the postal service interruption or emergency.
- The USPTO may publish a notice in the Official Gazette and on its website about the designation and any special procedures to be followed.
As stated in MPEP 511: The USPTO will consider on a case-by-case basis whether to waive the date indicated on any certificate of mailing or transmission accompanied by a showing which establishes to the satisfaction of the Director that the delay was due to the emergency.
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The USPTO has specific procedures for handling papers that include a Certificate of Mailing or Transmission. According to the MPEP:
“The Mail Center of the Office of Patent Application Processing (OPAP) will continue to date stamp the actual date of receipt of all papers received by mail in the Office. No attempt will be made to retain the envelopes in which the papers are received or to indicate on the papers the postal cancellation date (postmark).”
Key points in the USPTO’s handling process include:
- The actual receipt date is stamped on all papers
- The date on the Certificate is used to determine if the paper was filed within the period for reply
- If the paper is received after the period for reply, but the Certificate date is within the period, the paper is considered timely filed
- A notation (e.g., “C of Mail 11/10/97”) is made next to the Office Date Stamp to indicate the Certificate date
It’s important to note that while the Certificate date is used to determine timeliness, the actual receipt date is used for all other purposes, including calculating subsequent deadlines.
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The USPTO has a specific procedure for handling missing documents from an application file. According to the MPEP:
When a document is missing from an application, Office practice is to call the applicant’s representative and request submission (generally by facsimile) of a copy of the missing document.
This informal approach is the primary method used by the USPTO to address missing documents. However, if this informal method is unsuccessful, the Office may resort to more formal measures:
While the Office will generally treat missing documents in this relatively informal manner (rather than issuing a notice under 37 CFR 1.251), the Office may issue a notice under 37 CFR 1.251 to obtain a copy of a missing document if the Office’s informal attempts to obtain a copy of the document are unsuccessful.
It’s important for applicants and their representatives to promptly respond to such informal requests to avoid more formal procedures and potential delays in application processing.
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The USPTO does not officially receive mail on weekends or federal holidays when the office is closed. Any correspondence received on these days is typically stamped with the next business day’s date. For example, if mail is delivered to the USPTO on a Saturday, it will be stamped with the following Monday’s date (or Tuesday if Monday is a holiday). This practice ensures consistency in dating received documents and aligns with the USPTO’s official business hours.
The USPTO handles informal drawings in patent applications as follows:
- If the drawings are informal but otherwise sufficient for examination, the USPTO will accept them provisionally.
- The drawings will be approved by the Office of Patent Application Processing (OPAP) for publication purposes.
- Formal drawings will be required if the application is allowed.
According to MPEP 507: ‘If the drawings are informal but otherwise in compliance with 37 CFR 1.121(d), the OPAP will accept the application for purposes of publication and place a ‘Drawing Informalities’ form PTO-948 in the file wrapper.’
The examiner may require formal drawings or corrections in a subsequent office action if necessary for a proper examination or if the application is allowed.
For more information on drawing review, visit: drawing review.
For more information on informal drawings, visit: informal drawings.
For more information on OPAP, visit: OPAP.
The USPTO has specific rules for handling facsimile transmissions received outside of business hours, as outlined in MPEP 502.01:
Correspondence for which transmission was completed on a Saturday, Sunday, or Federal holiday within the District of Columbia, will be accorded a receipt date of the next succeeding day which is not a Saturday, Sunday, or Federal holiday within the District of Columbia.
This means that if a facsimile transmission is completed during non-business hours, weekends, or federal holidays, the USPTO will assign it a receipt date of the next business day. For example:
- A fax completed on Friday at 9:05 p.m. Pacific time (12:05 a.m. Saturday Eastern time) would be accorded a receipt date of the following Monday (assuming Monday is not a federal holiday).
- A fax completed on a federal holiday would be accorded a receipt date of the next business day.
It’s important to note that while the actual transmission may occur outside of business hours, the official receipt date will always be a business day. This can be crucial for meeting deadlines and calculating time-sensitive patent-related actions.
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The USPTO has specific rules for dating facsimile transmissions. According to 37 CFR 1.6(a)(3):
Correspondence transmitted by facsimile to the Patent and Trademark Office will be stamped with the date on which the complete transmission is received in the Patent and Trademark Office unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the date stamped will be the next succeeding day which is not a Saturday, Sunday, or Federal holiday within the District of Columbia.
This means that faxed correspondence is generally dated on the day of complete transmission, except for weekends and holidays, where it’s dated the next business day.
The USPTO has specific procedures for handling correspondence with a Certificate of Mailing or Transmission:
- All papers received by mail are date stamped with the actual date of receipt, regardless of any Certificate of Mailing.
- For papers with a Certificate of Mailing or Transmission, the date on the certificate is used to determine if the paper was filed within the period for reply.
- If the paper is received within the period for reply, the actual receipt date is used for all purposes.
- If the paper is received after the period for reply, but the certificate date is within the period, the paper is considered timely filed. In this case, a notation is made next to the ‘Office Date’ stamp indicating the certificate date (e.g., ‘C of Mail 11/10/97’).
- For facsimile transmissions, the date stamped is the date the complete transmission is received, 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 business day.
- For EFS-Web submissions, the receipt date is the date the correspondence is received at the USPTO’s correspondence address when it was officially submitted, which can include weekends and holidays.
The MPEP states: “The date indicated on the Certificate of Mailing or of Transmission will be used by the Office only to determine if the paper was deposited in the United States Postal Service, transmitted by facsimile or transmitted via EFS-Web within the period for reply.”
How does the USPTO handle correspondence submitted in violation of the rules?
The USPTO has specific procedures for handling correspondence submitted in violation of the rules. According to MPEP 501:
‘Correspondence submitted to the U.S. Patent and Trademark Office in violation of the rules as to paying fees, manner of presenting papers, or other formal matters will not be filed.’
However, the USPTO does provide a grace period and notification process:
- The Office may notify the submitter of the violation and set a period for correction.
- If the violation is corrected within the set period, the document will be considered as having been filed on the date of receipt of the correction.
It’s crucial for applicants to adhere to USPTO rules to avoid potential delays or non-filing of their correspondence. If a violation occurs, prompt correction based on USPTO notification is essential to maintain the original filing date.
How does the USPTO handle correspondence sent by Priority Mail Express®?
The USPTO treats correspondence sent by Priority Mail Express® (formerly Express Mail) with special consideration. According to MPEP 502:
“Any correspondence received by Priority Mail Express® will be considered filed with the USPTO on the date of deposit with the United States Postal Service.”
This means that the date of deposit with USPS is considered the filing date at the USPTO, which can be crucial for meeting deadlines. However, it’s important to note that:
- The Priority Mail Express® label number must be placed on the correspondence.
- The filing date accorded to Priority Mail Express® is only applicable to the specific items deposited with USPS.
Always keep your Priority Mail Express® mailing receipt as proof of the deposit date.
For more information on Priority Mail Express, visit: Priority Mail Express.
For more information on USPS, visit: USPS.
For more information on USPTO correspondence, visit: USPTO correspondence.
The USPTO does not receive or process correspondence on Saturdays, Sundays, or Federal holidays within the District of Columbia, with some exceptions. According to 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. Except for correspondence transmitted by facsimile under paragraph (a)(3) of this section, or filed electronically under paragraph (a)(4) of this section, no correspondence is received in the Office on Saturdays, Sundays, or Federal holidays within the District of Columbia.
When the last day for taking action or paying a fee falls on a weekend or holiday, it’s considered timely if done on the next business day: 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.
How does the USPTO handle correspondence received after official hours?
The USPTO has specific procedures for handling correspondence received outside of official business hours:
- Correspondence delivered to the USPTO after business hours is considered filed on the next business day.
- There are exceptions for certain types of time-sensitive filings.
MPEP 502 states: ‘Correspondence placed in the USPTO’s night box before midnight on weekdays (except federal holidays) will receive a filing date of the succeeding business day.’ This means that documents deposited in the night box after business hours but before midnight will be treated as if they were received on the next business day.
For electronic filings, the USPTO’s Electronic Filing System (EFS-Web) is generally available 24/7, allowing for submissions outside of regular business hours. However, the actual filing date may still be affected by the time of submission.
How does the USPTO handle correspondence during emergency situations?
The USPTO has provisions for handling correspondence during emergency situations, such as severe weather or other unforeseen circumstances:
- The USPTO may designate certain days as ‘Federal holidays within the District of Columbia’ under specific conditions.
- This designation affects filing dates and deadlines.
MPEP 502 states: ‘When the entire USPTO is officially closed for business for an entire day due to an emergency situation, the Office will consider each such day a ‘Federal holiday within the District of Columbia’ under 35 U.S.C. 21.’ This means that deadlines falling on such days will be extended to the next business day, similar to federal holidays.
During emergencies, the USPTO typically issues public notices and updates its website to inform stakeholders about any changes to operations or filing procedures. It’s crucial for patent applicants and attorneys to stay informed about such announcements to ensure compliance with modified deadlines and procedures.
How does the USPTO handle correspondence delivered by EXPRESS MAIL?
The USPTO has specific procedures for handling correspondence delivered by EXPRESS MAIL. According to MPEP 502:
“Any correspondence delivered by the ‘Express Mail Post Office to Addressee’ service of the United States Postal Service (USPS) is considered filed or received in the Office on the date of deposit with the USPS.”
This means that the date of deposit with the USPS is considered the filing date at the USPTO, provided that:
- The correspondence is properly addressed to the USPTO
- The proper address is on the EXPRESS MAIL mailing label
- The EXPRESS MAIL mailing label number is placed on the correspondence
It’s important to note that this applies only to the USPS EXPRESS MAIL service and not to similar services provided by private courier companies.
For more information on Express Mail, visit: Express Mail.
For more information on USPTO correspondence, visit: USPTO correspondence.
The USPTO treats applications with omitted drawings similarly to those with missing specification pages. According to MPEP 506:
In the event that a page of the specification, or a portion thereof, or a page of the drawings, or a portion thereof, is inadvertently omitted from an application as filed, the application will be not be considered complete and the applicant will be notified to file the omitted portion.
If drawings are omitted, the applicant will be notified and given a time period to submit the missing drawings. However, adding new drawings after the filing date may affect the application’s effective filing date if they introduce new matter. It’s crucial to include all necessary drawings with the initial application to avoid potential issues.
For more information on new matter, visit: new matter.
When an application is filed with missing parts, the USPTO follows these procedures:
- If the application meets minimum requirements for a filing date, it will be assigned one.
- A Notice to File Missing Parts will be issued, detailing the missing items.
- Applicants must submit missing items along with any required surcharges within the specified time period.
- For applications filed on or after September 16, 2012, the inventor’s oath or declaration can be postponed until payment of the issue fee if a compliant application data sheet is filed.
- For applications filed on or after December 18, 2013, filing of claims can be postponed until the expiration of the time period set in the Notice to File Missing Parts.
The MPEP states: ‘The inventor’s oath or declaration, basic filing fee, and search fee and examination fee as set forth in 37 CFR 1.16, may be filed later than the remaining application papers, but if so, they must be accompanied by the required surcharge (if appropriate, see MPEP § 506).’ (MPEP 503)
How does the USPTO assign application numbers to continuation or divisional applications?
The USPTO assigns application numbers to continuation or divisional applications in the same manner as new applications. According to MPEP 503:
A continuation or divisional application (including a continued prosecution application) filed under 37 CFR 1.53(b) is assigned a new application number.
This means:
- Each continuation or divisional application receives a unique number
- The number is assigned in the same sequence as other new applications
- The application number does not indicate its relationship to the parent application
It’s important to reference the parent application in the appropriate sections of the new application to establish the continuity.
For more information on continuation application, visit: continuation application.
For more information on Divisional application, visit: Divisional application.
For more information on USPTO procedures, visit: USPTO procedures.
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.
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The Certificate of Mailing or Transmission can significantly affect the timeliness of USPTO submissions. According to MPEP 512:
“The date indicated on the Certificate of Mailing or Transmission will be used by the Office as the date of receipt of the paper or fee.”
This means that even if there are delays in postal or electronic transmission, your submission will be considered timely if the certificate date is within the required deadline. However, it’s important to note that the actual mailing or transmission must occur on or before the certificate date. False certificates can lead to serious consequences, including invalidation of the submission and potential disciplinary action.
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The Certificate of Mailing or Transmission can affect filing date calculations in several ways:
- For timely filing: If a paper with a certificate is received after a deadline but the certificate date is within the deadline, the paper is considered timely filed. The MPEP states: “If the date stated is within the period for reply, the reply in most instances will be considered to be timely.”
- For actual receipt date: The USPTO will continue to stamp the actual date of receipt on all papers. According to the MPEP: “The receipt date stamped on all papers will also be the date which is entered on Office records and from which any subsequent periods are calculated.”
- For subsequent deadlines: If a paper starts a new period for reply, that period is calculated from the actual receipt date, not the certificate date. For example: “If the last day to reply to a final Office action was November 10, 2014, and applicant deposited a Notice of Appeal with fee in the U.S. mail on November 10, 2014, and so certified, that appeal is timely even if it was not received in the U.S. Patent and Trademark Office until November 12, 2014. Since the date of receipt of the notice of appeal will be used to calculate the time at which the brief is due, the brief was due on January 12, 2015.”
It’s important to note that while the certificate can establish timely filing, it doesn’t change the actual receipt date for other USPTO processing purposes.
The application filing limit for micro entity status works as follows:
- An applicant must not have been named as an inventor on more than 4 previously filed patent applications
- This limit excludes provisional applications, foreign applications, and PCT applications where the basic national fee was not paid
- Applications filed as a result of previous employment where rights were assigned don’t count towards the limit
MPEP 509.04(a) clarifies: ‘It does not matter how long ago the previous applications were filed or whether the previously filed applications are pending, patented, or abandoned; they are still included when counting to determine whether the application filing limit has been reached.’
Paying a small entity fee has significant implications for certifying small entity status. According to MPEP 509.03(a), “Consistent with 37 CFR 1.4(d)(4), the payment of a small entity basic filing or national fee constitutes a certification under 37 CFR 11.18(b).” This means that simply paying the small entity fee, even without a specific written assertion, activates the self-certification requirement. Applicants should be aware that this payment invokes the certification provisions, regardless of whether they are a practitioner or non-practitioner.
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When an application is filed with informal drawings, the Office of Patent Application Processing (OPAP) will review the drawings to determine if they can be used for publication purposes. If the drawings are not acceptable for publication purposes, OPAP will object to the drawings and require corrected drawings within a set time period, usually two months. This objection does not affect the filing date of the application, and applicants can correct the drawings later in the examination process if needed.
How does licensing affect small entity status?
Licensing can significantly impact small entity status. According to MPEP 509.03:
An applicant or patentee is not considered a small entity if any rights in the invention have been assigned, granted, conveyed, or licensed to an entity that would not qualify for small entity status.
This means:
- If a small entity licenses rights to a large entity, small entity status is lost.
- Exclusive licenses generally result in loss of small entity status.
- Non-exclusive licenses may not affect status if they don’t convey all significant rights.
It’s crucial to review all licensing agreements before claiming small entity status. Any change in licensing that affects status must be reported to the USPTO promptly.
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Licensing can significantly impact small entity status for patent fees. The MPEP provides specific guidance on this matter:
Rights conveyed by an applicant or patentee to a Government agency are not considered to be license for purposes of this paragraph. A Government agency includes any agency of the Federal Government or military department of the Government.
This means that licensing to a government agency does not affect small entity status. However, licensing to other entities can impact your status:
- If you license rights to a large entity, you may lose your small entity status.
- Exclusive licenses to large entities typically disqualify you from small entity status.
- Non-exclusive licenses may not affect your status, depending on the terms.
It’s crucial to review any licensing agreements carefully and consult with a patent attorney to determine how they might affect your small entity status.
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How does licensing affect small entity status for a business concern?
Licensing can significantly impact a business concern’s eligibility for small entity status. According to MPEP 509.02:
“Rights to an invention are considered as assigned, granted, conveyed, or licensed when they are held by an entity other than the inventor, and they are not qualified for small entity status.”
This means that if a business concern has licensed rights to the invention to any person or entity that does not qualify as a small entity, it may lose its small entity status. Specifically:
- If the business has licensed rights to a large entity, it cannot claim small entity status.
- Exclusive licenses to large entities will disqualify the business from small entity status.
- Non-exclusive licenses may not affect small entity status if they are arms-length agreements.
It’s crucial for businesses to carefully consider the impact of licensing agreements on their small entity status before entering into such arrangements.
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How does licensing affect micro entity status eligibility?
Licensing can significantly impact an applicant’s eligibility for micro entity status. According to the MPEP:
“The applicant has not assigned, granted, or conveyed, nor is under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding 3 times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census.”
This means that if you’ve licensed or are obligated to license your application to a high-income entity (exceeding 3 times the median household income), you may not be eligible for micro entity status. It’s crucial to consider any existing or potential licensing agreements when determining your eligibility.
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How does government funding affect small entity status?
Government funding can impact small entity status, particularly for universities and small businesses. The MPEP 509.03 provides guidance:
A small business concern or nonprofit organization is not disqualified as a small entity because of a license to the Federal government pursuant to 35 U.S.C. 202(c)(4).
This means:
- Receiving government funding does not automatically disqualify an entity from small entity status.
- The government’s license rights under the Bayh-Dole Act do not negate small entity status.
- However, other types of government agreements or contracts might affect status.
It’s important to carefully review the terms of any government funding or agreements to determine if they impact small entity eligibility. When in doubt, consult with a patent attorney or the USPTO for clarification.
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How does employment at an institution of higher education affect micro entity status?
Employment at an institution of higher education can provide a pathway to micro entity status. The MPEP states:
“A micro entity shall also include an applicant who certifies that: (1) The applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or (2) The applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular application to such an institution of higher education.” (MPEP 509.04(d))
This means that if you are employed by a qualifying institution of higher education and receive the majority of your income from it, or if you have assigned or are obligated to assign your rights in the application to such an institution, you may be eligible for micro entity status. This provision can be particularly beneficial for academic researchers and inventors.
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How does employment affect micro entity status for inventors?
An inventor’s employment can significantly impact their eligibility for micro entity status. The MPEP provides specific guidelines:
“[A]n applicant is not considered to be named on more than four previously filed patent applications if the applicant has assigned, or is under an obligation to assign, all ownership rights in the applications as the result of the applicant’s previous employment.” (MPEP 509.04(a))
This means that if an inventor has previously filed patent applications as part of their job, and they have assigned or are obligated to assign the rights to their employer, these applications don’t count towards the four-application limit for micro entity status. However, it’s crucial to note that:
- The inventor must not be currently named as an inventor on more than four non-provisional patent applications.
- The inventor’s current employer must not be considered a non-micro entity.
Inventors should carefully evaluate their employment situation and patent history when determining their eligibility for micro entity status.
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How does claiming small entity status affect patent fees?
Claiming small entity status can significantly reduce patent fees. According to MPEP 509.03, “Claiming small entity status allows the payment of certain reduced patent fees pursuant to 35 U.S.C. 41(h)(1).” This means that small entities, such as independent inventors, small businesses, and nonprofit organizations, can pay reduced fees for many patent-related services, typically 50% of the standard fee. However, it’s important to ensure eligibility before claiming this status to avoid potential issues later in the patent process.
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Assigning ownership rights can significantly affect micro entity status. The MPEP provides the following guidance:
- An applicant is disqualified from micro entity status if they transfer, or are obligated to transfer, any ownership interest to an entity that exceeds the gross income limit.
- If an inventor assigns all rights to an employer that exceeds the gross income limit, micro entity status cannot be claimed.
- Even if rights are later transferred back to the inventor or to another person who doesn’t exceed the gross income limit, micro entity status cannot be regained.
The MPEP states: “Once an assignee or licensee exceeding the gross income limit receives the ownership interest, the 37 CFR 1.29(a)(4) certification requirement can no longer be met – even if the assignee or licensee retransfers rights and no longer holds any ownership interest in the application.“
It’s important to note that this applies to both actual transfers and obligations to transfer ownership rights.
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A security interest in a patent or patent application generally does not affect small entity status unless it is defaulted upon. According to 37 CFR 1.27(a)(5):
A security interest does not involve an obligation to transfer rights in the invention for the purposes of paragraphs (a)(1) through (a)(3) of this section unless the security interest is defaulted upon.
This means that an applicant or patentee can take out a loan secured by rights in a patent application or patent without losing small entity status, even if the lender is a large entity. However, if the loan is defaulted upon and the security interest is enforced, resulting in a transfer of rights to a non-small entity, the small entity status would be lost.
In such cases, the USPTO must be notified of the loss of entitlement to small entity status prior to or at the time of paying the earliest of the issue fee or any maintenance fee due after the date on which small entity status is no longer appropriate.
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A general authorization allows the USPTO to charge certain fees to your deposit account without requiring specific authorization for each fee. The MPEP states:
A general authorization to charge all fees, or only certain fees, set forth in §§ 1.16 to 1.18 to a deposit account containing sufficient funds may be filed in an individual application, either for the entire pendency of the application or with respect to a particular paper filed.
Key points about general authorizations:
- They can cover fees under 37 CFR 1.16 and 1.17
- Fees under 37 CFR 1.19, 1.20, and 1.21 are generally not covered
- Issue fees (37 CFR 1.18) require a separate authorization after the notice of allowance
- The authorization should be clear and unambiguous to avoid misinterpretation
Always ensure your deposit account has sufficient funds to cover authorized fees to avoid potential application abandonment or additional expenses.
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To use a Certificate of Mailing or Transmission, you must include a signed certification with your correspondence. The MPEP provides suggested formats for these certificates:
“The following are suggested formats for either a Certificate of Mailing or Certificate of Transmission under 37 CFR 1.8(a). The certification may be included with all correspondence concerning this application or proceeding to establish a date of mailing or transmission under 37 CFR 1.8(a).”
The certificate should include:
- A statement certifying the date of mailing or transmission
- The signature of the person making the certification
- The application number (if known)
It’s important to note that the certificate must be signed by someone with a reasonable basis to expect the correspondence would be mailed or transmitted on or before the date indicated.
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How do I set up a deposit account with the USPTO?
To set up a deposit account with the USPTO:
- Visit the USPTO Deposit Accounts page
- Download and complete the Deposit Account Application Form
- Submit the form with an initial deposit (minimum $1,000)
- 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.
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To properly use a certificate of mailing for patent correspondence, follow these steps:
- Prepare your correspondence.
- Attach a certificate of mailing to each piece of correspondence.
- Include the required information on the certificate.
- Sign and date the certificate.
- Mail the correspondence with the attached certificate.
According to MPEP 512:
Each piece of correspondence for which a certificate is filed must include a signed and dated certificate which sets forth the date of deposit or transmission.
Ensure that you follow these guidelines to properly use the certificate of mailing procedure.
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When filing patent correspondence, you should include the following identifying information:
- Application number (checked for accuracy, including series code and serial number)
- Art Unit number (copied from most recent Office communication)
- Filing date
- Name of the examiner who prepared the most recent Office action
- Title of invention
- Confirmation number
As stated in 37 CFR 1.5(a): ‘When correspondence directed to the Patent and Trademark Office concerns a previously filed application for a patent, it must identify on the top page in a conspicuous location, the application number (consisting of the series code and the serial number; e.g., 07/123,456), or the serial number and filing date assigned to that application by the Patent and Trademark Office, or the international application number of the international application, or the international registration number of an international design application.’
How do I correct an error in micro entity status if I underpaid fees?
If you erroneously paid fees as a micro entity when you were not entitled to that status, resulting in an underpayment, you need to take the following steps:
- Submit a written assertion of small entity status (if eligible) or a written assertion to establish non-small entity status.
- Pay the fee deficiency, which is the difference between the amount paid and the amount due.
As stated in MPEP 509.04(f): “A written assertion to establish non-small entity status must be accompanied by the difference between the current amount due and the amount previously paid.”
It’s important to correct the error promptly to avoid potential issues with your patent application or granted patent.
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How do I claim small entity status for a patent application?
To claim small entity status for a patent application, follow these steps:
- Determine eligibility: Ensure you meet the criteria for small entity status as defined in 37 CFR 1.27(a).
- Submit a written assertion: Provide a written assertion of entitlement to small entity status. This can be done by:
- Checking the appropriate box on a patent application transmittal form
- Submitting a separate paper specifically asserting small entity status
- Paying small entity fees (which is considered a written assertion)
- Timing: You can claim small entity status at any time during the pendency of the application or after the patent issues.
As stated in MPEP 509.03, “A small entity status assertion must be filed in each application or patent in which the small entity is desired to claim such status.”
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To certify micro entity status, you must file a certification form with the USPTO. The USPTO provides two forms:
- Form PTO/SB/15A for certifying under the gross income basis
- Form PTO/SB/15B for certifying under the institution of higher education basis
The certification must be signed by an authorized party as defined in 37 CFR 1.33(b). It should be filed prior to or at the time of paying the first fee as a micro entity.
Inventors or applicants can qualify for micro entity status through an institution of higher education in two ways:
- If the inventor is an employee of an institution of higher education and obtains the majority of their income from that institution.
- If the applicant has assigned, granted, conveyed, or is obligated to assign, grant, or convey a license or other ownership interest in the application to an institution of higher education.
MPEP 509.04(b) states: “Under 37 CFR 1.29(d)(2)(i) the applicant must certify that the applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education. … Under 37 CFR 1.29(d)(2)(ii) the applicant must certify that the applicant has assigned, granted, or conveyed a license or other ownership interest in the subject application (or is obligated to do so) to such an institution of higher education.”
In both cases, the applicant must also meet the small entity requirement.
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How can I request a refund for my USPTO deposit account?
To request a refund for your USPTO deposit account, you need to follow these steps:
- Submit a written request to the USPTO Office of Finance
- Include your deposit account number and the amount to be refunded
- Provide a detailed explanation for the refund request
The MPEP states: “A refund to a deposit account may be made on request to the Office of Finance.” (MPEP 509.01)
It’s important to note that refunds are typically processed for overpayments or erroneous charges. The USPTO will review your request and determine if a refund is warranted based on the circumstances provided in your explanation.
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How can I replenish my USPTO deposit account?
You can replenish your USPTO deposit account through various methods. According to MPEP 509.01, “Deposits to these accounts may be made by electronic funds transfer, credit card, or check.” Here are the options:
- Electronic Funds Transfer (EFT): This is the preferred method for replenishing deposit accounts.
- Credit Card: You can use a credit card to add funds to your account.
- Check: Checks can be mailed to replenish the account balance.
For detailed instructions on each method, visit the USPTO’s Receipts Accounting Policies page.
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To regain micro entity status after losing it, you must file a new certification of entitlement to micro entity status. As stated in MPEP 509.04(e):
Once a notification of a loss of entitlement to micro entity status is filed in the application or patent, a new certification of entitlement to micro entity status is required to again obtain micro entity status.
This means you must:
- Ensure you meet the criteria for micro entity status as defined in 37 CFR 1.29(a) or 1.29(d)
- File a new certification form (PTO/SB/15A or PTO/SB/15B) in the application or patent
- Meet all other requirements for micro entity status
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You can petition the USPTO Director to consider correspondence as filed on a particular date if it was returned or refused by the USPS due to a Priority Mail Express® interruption or emergency. The petition process is outlined in 37 CFR 1.10(g) and (h):
- File the petition promptly after becoming aware of the return or refusal
- Include the original correspondence or a copy showing the Priority Mail Express® mailing label number
- Provide a copy of the Priority Mail Express® mailing label showing the “date accepted” (for returned mail)
- Include a statement establishing the original deposit attempt and that the correspondence is the original or a true copy
- The USPTO may require additional evidence to verify the interruption or emergency
As stated in MPEP 511: “37 CFR 1.10(g) provides a procedure under which applicant may petition the Director to have correspondence that was returned by the USPS due to an interruption or emergency in Priority Mail Express® service considered as filed on a particular date in the Office.”
If your correspondence is affected by a postal emergency, you can petition the Director to consider it filed on a particular date under certain conditions. The process depends on whether your mail was returned, refused, or unable to be deposited. Here’s a summary of the petition requirements based on MPEP 511:
- For returned correspondence (37 CFR 1.10(g)):
- File promptly after becoming aware of the return
- Include the original or copy of correspondence with Priority Mail Express® label
- Provide a statement establishing the original deposit
- For refused correspondence (37 CFR 1.10(h)):
- File promptly after becoming aware of the refusal
- Include the original or copy of correspondence with Priority Mail Express® label
- Provide a statement establishing the original attempt to deposit
- For correspondence unable to be deposited (37 CFR 1.10(i)):
- File promptly in a manner designated by the Director
- Include the original or copy of correspondence
- Provide a statement establishing that the correspondence would have been deposited but for the emergency
For more detailed information on filing these petitions, refer to MPEP § 513, subsections IX-XI.
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How can I pay patent fees to the USPTO?
The USPTO offers several methods for paying patent fees. According to MPEP 509:
“Fees can be paid: (A) by credit card, (B) by electronic funds transfer (EFT), (C) by check, (D) by money order, (E) by deposit account, or (F) in cash (for hand-carried applications only).”
Here’s a breakdown of these payment methods:
- Credit Card: Accepted online or by mail/fax using Form PTO-2038
- Electronic Funds Transfer (EFT): Available through the USPTO’s Electronic Filing System (EFS-Web)
- Check or Money Order: Made payable to the Director of the USPTO
- Deposit Account: A pre-established account with the USPTO
- Cash: Only for in-person payments at the USPTO office
For most applicants, online payment methods (credit card or EFT) are the most convenient and efficient options.
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How can I pay fees to the USPTO electronically?
The USPTO offers several electronic payment options for paying fees:
- Credit or Debit Card: You can pay using major credit or debit cards through the USPTO’s secure online system.
- Electronic Funds Transfer (EFT): This allows for direct transfer from your bank account to the USPTO.
- USPTO Deposit Account: Maintain a pre-funded account with the USPTO for easy fee payments.
According to MPEP 509, “The Office accepts the following forms of payment: […] by credit card, by electronic funds transfer (EFT), or by a USPTO deposit account.” Electronic payments are convenient and often processed more quickly than other methods.
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There are two main ways to obtain a receipt for items filed with the USPTO:
- 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.
- 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)
To correct an error in micro entity status, you need to follow the procedure outlined in 37 CFR 1.29(k). This involves:
- Submitting a separate deficiency payment for each application or patent
- Providing an itemization of the total deficiency payment
- Paying the deficiency owed
The MPEP states: 37 CFR 1.29(k) contains provisions for a micro entity that correspond to the provisions of 37 CFR 1.28(c) for a small entity.
This means the process is similar to correcting small entity status errors.
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How can I correct an error in micro entity status if I’m no longer eligible?
If you discover that you’re no longer eligible for micro entity status, you should promptly notify the USPTO and pay the deficiency in fees. The MPEP states:
“A notification of loss of entitlement to micro entity status must be filed in the application or patent prior to paying, or at the time of paying, any fee after the date on which status as a micro entity is no longer appropriate.” (MPEP 509.04(f))
To correct the error:
- File a notification of loss of entitlement to micro entity status
- Pay the deficiency between the micro entity fees paid and the fees that should have been paid
- Include any required surcharge for the late payment of the fee deficiency
It’s crucial to address this promptly to avoid potential issues with your patent application or granted patent.
To learn more:
To find out if the USPTO is officially closed on any particular day, you can:
- Call 1-800-PTO(786)-9199
- Call (571) 272-1000
These phone numbers are provided in MPEP 510 for obtaining information about USPTO closures.
An applicant can request review of a refusal to accord a filing date by filing a petition. 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.
The petition should be marked to the attention of the Office of Petitions. If the applicant believes no defect exists, they may include a request for refund of the petition fee in the petition.
If a patent application is missing a required part, the applicant can correct the deficiency as follows:
- The USPTO will send a Notice of Missing Parts identifying the deficiency
- The applicant must submit the missing part within the time period specified in the notice (usually two months)
- A surcharge fee may be required along with the submission of the missing part
- For certain missing parts, like claims or drawings, a supplemental oath or declaration may be required for applications filed before September 16, 2012
The MPEP states: In such cases where the basic filing fee, the search fee, the examination fee, and the application size fee are paid, but additional fees are required, under 37 CFR 1.16, a notice is mailed by OPAP or the Technology Center (TC), requiring that the balance of the prescribed fee be paid.
It’s important to respond promptly to any Notice of Missing Parts to avoid abandonment of the application. If the applicant believes the part was not actually missing, they can file a petition for review of the Notice.
For more information on missing parts, visit: missing parts.
To authorize email communications with the USPTO, an applicant must provide a written authorization. According to MPEP 502.03:
‘The written authorization may be submitted via EFS-Web, mail, or fax. It cannot be submitted by email.’
The USPTO provides a sample authorization form:
‘Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.’
To facilitate processing, the USPTO recommends using Form PTO/SB/439, available at www.uspto.gov/patent/patents-forms. This form can be filed via EFS-Web using the document description ‘Internet Communications Authorized’.
To learn more:
An applicant can appeal a refusal to grant a filing date by submitting a petition. 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)).”
When submitting a petition, the applicant should:
- Provide arguments that the noted items were not missing
- Explain why a filing date should be assigned even if certain items were absent (if they believe these items were unnecessary)
- Include a request for a refund of the petition fee if they allege no defect exists
Petitions related to filing dates are decided by the Office of the Deputy Commissioner for Patent Examination Policy. The MPEP advises:
“Any petition under this section should be marked to the attention of the Office of Petitions.”
To learn more:
Priority Mail Express® submissions to the USPTO are treated differently in terms of dating. According to 37 CFR 1.6(a)(2):
Correspondence filed in accordance with § 1.10 will be stamped with the date of deposit as Priority Mail Express® with the United States Postal Service.
This means that new patent applications filed using Priority Mail Express® will be stamped with the date they were deposited with USPS, even if that date is a Saturday, Sunday, or federal holiday. The MPEP provides an example:
For example, if a new patent application is deposited in Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date.
Patent applications are initially processed by the USPTO through electronic scanning and loading into the Image File Wrapper (IFW) system. According to MPEP 508, “All applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing. Once documents are loaded into the IFW system, examiners, technical support staff, and other Office personnel will perform further processing and examination using the IFW system.”
Patent applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing. As stated in the MPEP, All applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing.
This digital system allows examiners, technical support staff, and other Office personnel to perform further processing and examination efficiently.
For physical items such as models, exhibits, and specimens, special handling procedures are in place. The MPEP directs readers to MPEP § 608.03 and 608.03(a) for more information on these items.
For more information on image file wrapper, visit: image file wrapper.
For more information on patent application filing, visit: patent application filing.
For more information on USPTO procedures, visit: USPTO procedures.
Nonprovisional patent applications are assigned for examination through the Patents Service for Time and Application Routing (PSTAR) program. According to MPEP 504, “The Patents Service for Time and Application Routing (PSTAR) program assigns each nonprovisional application to an examiner.” This system ensures that each application is routed to an appropriate examiner based on factors such as the application’s subject matter and the examiner’s expertise.
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When the entire USPTO is officially closed for business for an entire day due to adverse weather or other causes:
- The day is considered a “Federal holiday within the District of Columbia” under 35 U.S.C. 21
- Any action or fee due on such a day may be taken or paid on the next succeeding business day the Office is open
MPEP 510 states: “When the entire USPTO is officially closed for business for an entire day, for reasons due to adverse weather or other causes, the Office will consider each such day a ‘Federal holiday within the District of Columbia’ under 35 U.S.C. 21. Any action or fee due on such a day may be taken, or fee paid, on the next succeeding business day the Office is open.”
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Errors in small entity status can be excused if they were made in good faith. According to 37 CFR 1.28(c): ‘If status as a small entity is established in good faith, and fees as a small entity are paid in good faith, in any application or patent, and it is later discovered that such status as a small entity was established in error, or that through error the Office was not notified of a loss of entitlement to small entity status as required by § 1.27(g)(2), the error will be excused upon: compliance with the separate submission and itemization requirements of paragraphs (c)(1) and (c)(2) of this section, and the deficiency payment requirement of paragraph (c)(2) of this section.’
To correct the error, you must:
- Submit a separate deficiency payment for each application or patent
- Provide an itemized list of the fees paid in error
- Pay the deficiency owed (difference between the small entity fee paid and the current non-small entity fee)
To learn more:
The USPTO has specific rules for dating electronically filed submissions. According to 37 CFR 1.6(a)(4):
Correspondence may be submitted using the Office electronic filing system only in accordance with the Office electronic filing system requirements. Correspondence submitted to the Office by way of the Office electronic filing system will be accorded a receipt date, which is the date the correspondence is received at the correspondence address for the Office set forth in § 1.1 when it was officially submitted.
The MPEP further clarifies: Similarly, correspondence submitted via the USPTO electronic filing system (EFS-Web) will be accorded a receipt date on the date the correspondence is received at the correspondence address for the Office set forth in 37 CFR 1.1 (i.e., local time in Alexandria, VA), without regard to whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia.
Electronically filed patent applications receive special treatment for date-stamping at the USPTO. According to MPEP 505, Correspondence submitted to the Office by way of the Office electronic filing system will be accorded a receipt date, which is the date the correspondence is received at the correspondence address for the Office set forth in § 1.1 when it was officially submitted.
Key points about electronic filing date-stamping:
- The receipt date is based on the time in Alexandria, VA (USPTO’s location)
- Electronic submissions can receive a date stamp on any day, including weekends and holidays
- The electronic filing system (EFS-Web) must be used in accordance with USPTO requirements
For more details on electronic filing, refer to MPEP § 502.05.
For more information on EFS-Web, visit: EFS-Web.
For more information on electronic filing, visit: electronic filing.
For more information on USPTO, visit: USPTO.
Application numbers for patent applications are assigned by the Office of Patent Application Processing (OPAP) as follows:
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- Nonprovisional applications are assigned numbers beginning with the series code ’15’ or ’16’.
- Design applications are assigned numbers beginning with the series code ’29’.
- Plant applications are assigned numbers beginning with the series code ’16’.
- Provisional applications are assigned numbers beginning with the series code ’62’.
- Reexamination proceedings are assigned numbers beginning with the series code ’90’.
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As stated in the MPEP 503, “The application number includes a two-digit series code and a six-digit serial number.” This system allows for efficient categorization and tracking of different types of patent applications.
For more information on application number, visit: application number.
For more information on patent application types, visit: patent application types.
For more information on series code, visit: series code.
For PCT applications entering the national stage in the United States, the application number assignment process is slightly different. The MPEP states:
‘For PCT applications entering the national stage under 35 U.S.C. 371, the USPTO assigns the national stage application a U.S. application number.’
This means that when an international PCT application transitions to the national stage in the U.S., it receives a new U.S. application number distinct from its international application number. This U.S. application number is used for all subsequent processing and correspondence related to the national stage application.
It’s important to note that this U.S. application number is different from the international application number (PCT/XX/YYYY/######) that was used during the international phase of the PCT application.
For more information on application number, visit: application number.
The USPTO assigns application numbers to patent applications immediately after mail has been opened. According to MPEP 503, application numbers consist of a series code and a serial number. The series codes are assigned based on the type of application and the time period in which it was filed. For example:
- 01/ – 16/ for nonprovisional applications (utility, plant, and reissue), with different ranges for specific time periods
- 29/ for design applications
- 35/ for international design applications
- 60/, 61/, and 62/ for provisional applications
- 90/ for ex parte reexamination proceedings
- 95/ for inter partes reexamination proceedings
- 96/ for supplemental examination proceedings and resulting ex parte reexamination proceedings
The MPEP notes: “If an application is filed using the USPTO patent electronic filing system, EFS-Web provides an Acknowledgement Receipt that contains a time and date stamp, an application number and a confirmation number.”
It’s important to note that the application number on a filing receipt is the official number, which may differ from any preliminary number provided on a postcard receipt.
For more information on application number, visit: application number.
For more information on patent application types, visit: patent application types.
For more information on serial number, visit: serial number.
For more information on series code, visit: series code.
No, the United States Patent and Trademark Office (USPTO) does not provide advisory opinions on whether an individual or organization qualifies for small entity status. The MPEP 509.03(a) clearly states: “The U.S. Patent and Trademark Office does not give advisory opinions as to whether or not a specific individual or organization qualifies as a small entity.” This policy is based on Congressional intent that the USPTO rely exclusively on self-certification for small entity status. Applicants are responsible for determining their status and making the appropriate self-certification.
To learn more:
The Certificate of Mailing procedure does not apply to papers mailed from a foreign country. However, the Certificate of Transmission procedure can be used for correspondence transmitted to the USPTO from a foreign country, with some conditions. The MPEP states:
The Certificate of Transmission procedure for both facsimile transmissions and transmissions via EFS-Web, however, also applies to papers transmitted to the Office from a foreign country provided that the correspondence being transmitted is not prohibited from being transmitted by facsimile or via EFS-Web and is not otherwise precluded from receiving the benefits under 37 CFR 1.8.
This means that while you can’t use a Certificate of Mailing for papers sent by postal mail from outside the United States, you can use a Certificate of Transmission for faxes or EFS-Web submissions from foreign countries, as long as the specific type of correspondence is eligible for the certificate procedure.
Yes, submitting a deficiency payment for micro entity fee errors affects your micro entity status. According to 37 CFR 1.29(k)(4):
Any deficiency payment (based on a previous erroneous payment of a micro entity fee) submitted under this paragraph will be treated as a notification of a loss of entitlement to micro entity status under paragraph (i) of this section.
This means that by submitting a deficiency payment, you are effectively notifying the USPTO that you are no longer entitled to micro entity status. After making the deficiency payment, you will need to pay fees at the small entity or non-small entity rate, as applicable, unless you file a new certification of micro entity status.
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No, paying a fee in a non-micro entity amount does not automatically change your entity status. According to MPEP 509.04(e):
Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate.
To properly notify the USPTO of a change in entity status, you must file a separate notification in the application or patent. This notification must be filed prior to or at the time of paying any fee after the date on which micro entity status is no longer appropriate.
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No, you do not need to provide copies of U.S. patent documents when responding to an unlocatable file notice. The MPEP clearly states:
Since the Office can obtain copies of U.S. patent documents (U.S. patent application publications and patents) from its internal databases, the Office is not requiring applicants or patentees to provide copies of U.S. patent application publications and patents that are among the applicant’s or patentee’s record of the correspondence between the Office and the applicant or patentee for the application, patent, or other proceeding.
However, you must provide copies of all other correspondence and documents, including any appendix or information disclosure statement submitted with the application, unless specifically exempted in the notice.
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To learn more:
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.”
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Yes, video conferencing tools can be used for examiner interviews in patent applications, but there are specific requirements. According to MPEP 502.03:
‘USPTO video conferencing tools may be used to conduct examiner interviews in both published and unpublished applications under the Patent Internet Usage Policy.’
However, several conditions must be met:
- Authorization by the practitioner is required prior to sending a meeting invite.
- All video conferencing communications must be hosted by USPTO personnel.
- Interviews must originate from USPTO links provided by the examiner.
- Links from non-USPTO video conferencing tools are not acceptable.
The MPEP also states:
‘The practitioner’s participation in the interview is considered consent to the use of the video conferencing tool for the interview.’
It’s important to note that personal devices or non-USPTO tools cannot be used by USPTO employees for official communications.
To learn more:
Yes, the USPTO has the authority to extend deadlines during a postal service emergency. This is based on the provisions outlined in MPEP 511 and 35 U.S.C. 21(a).
Specifically, MPEP 511 states:
The Director may designate the interruption or emergency as a ‘postal service interruption or emergency’ under 35 U.S.C. 21(a) and provide for ‘tolling’ of the time for filing correspondence, fees, or other papers for a limited time.
This means that:
- The USPTO Director can officially recognize the emergency
- Time limits for filing various patent-related documents can be extended
- The extension is typically for a specific, limited period
- Applicants may need to provide evidence that their delay was due to the recognized emergency
It’s important to note that while the USPTO has this authority, each situation is evaluated individually, and extensions are not automatically granted.
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Yes, for applications filed on or after September 16, 2012 (except reissue applications), the inventor’s oath or declaration can be postponed until the application is in condition for allowance, provided certain conditions are met:
- An application data sheet (ADS) in compliance with 37 CFR 1.76 must be filed identifying each inventor by their legal name, mailing address, and residence (if different from mailing address)
- The inventor’s oath or declaration must be filed no later than the date on which the issue fee is paid
The MPEP states: For applications filed on or after September 16, 2012 (except reissue applications), applicant may postpone filing the inventor’s oath or declaration until the application is in condition for allowance if an application data sheet (ADS) in compliance with 37 CFR 1.76 is filed identifying: (1) each inventor by their legal name; and (2) for each inventor, a mailing address where the inventor customarily receives mail, and residence, if the inventor lives at a location which is different from where the inventor customarily receives mail. See 37 CFR 1.53(f)(3).
This provision allows applicants more flexibility in completing the application requirements, but it’s important to ensure the oath or declaration is filed before paying the issue fee to avoid abandonment.
For more information on declaration, visit: declaration.
For more information on inventor’s oath, visit: inventor’s oath.
For more information on patent application requirements, visit: patent application requirements.
Yes, for applications filed on or after September 16, 2012 (except reissue applications), the filing of an inventor’s oath or declaration can be postponed. The MPEP states:
For applications filed on or after September 16, 2012 (except reissue applications), applicant may postpone filing the inventor’s oath or declaration until the application is in condition for allowance if an application data sheet (ADS) in compliance with 37 CFR 1.76 is filed identifying: (1) each inventor by their legal name; and (2) for each inventor, a mailing address where the inventor customarily receives mail, and residence, if the inventor lives at a location which is different from where the inventor customarily receives mail.
However, the inventor’s oath or declaration must be filed no later than the date on which the issue fee is paid.
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:
Can small entity status be changed during the life of a patent?
Yes, small entity status can change during the life of a patent. 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.
Key points to remember:
- Status can change due to mergers, acquisitions, or licensing agreements.
- The USPTO must be notified of any change before paying the issue fee or maintenance fees.
- If status changes from small to large entity, future fees must be paid at the higher rate.
- Conversely, if an entity becomes eligible for small entity status, they can claim it for future fee payments.
It’s important to regularly review your entity status and update the USPTO as necessary to ensure compliance and proper fee payment.
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Can international applicants claim micro entity status based on gross income?
Yes, international applicants can claim micro entity status based on gross income, provided they meet the eligibility criteria. The MPEP 509.04(a) clarifies:
“For purposes of micro entity status, the gross income (instead of median household income) is used to determine entitlement to reduced patent fees.”
International applicants must:
- Calculate their gross income in U.S. dollars
- Meet the same income threshold as U.S. applicants
- Certify their eligibility under oath
The USPTO uses the World Bank’s gross national income (GNI) per capita figures for the applicant’s country of residence to determine the income threshold. Applicants should refer to the most recent World Bank data when assessing their eligibility.
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No, you should not use the “Hold for Pickup” service option when sending Priority Mail Express® to the USPTO. The reasons for this are:
- The USPTO does not have resources for picking up mail
- Mail sent using the “Hold for Pickup” service will not reach the Office
Always use the standard Priority Mail Express® Post Office to Addressee service when sending correspondence to the USPTO.
As stated in MPEP 511: “The Office does not have resources for picking up any mail. Therefore mail should NOT be sent using the ‘Hold for Pickup’ service option (whereby the mail is retained at the destination postal facility for retrieval by the addressee). Mail sent using the ‘Hold for pickup’ service will not reach the Office.”
Can I use my USPTO deposit account for international patent applications?
Yes, you can use your USPTO deposit account for certain fees associated with international patent applications. The MPEP states: “Deposit accounts can be used for payment of any patent process fee except for international phase fees paid to the International Bureau.” (MPEP 509.01)
This means you can use your deposit account for:
- PCT fees payable to the USPTO as a Receiving Office
- National stage entry fees for U.S. national applications
- Other USPTO-related fees for international applications
However, it’s important to note that fees payable directly to the International Bureau of WIPO cannot be charged to your USPTO deposit account. For those fees, you’ll need to use alternative payment methods specified by WIPO.
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Can I use hole-punched paper for my patent application?
No, you should not use hole-punched paper for your patent application. The USPTO has specific requirements regarding the paper used for patent applications, and hole-punched paper is explicitly prohibited.
As stated in MPEP 501: Holes should not be punched in the paper.
This requirement is in place to ensure that all documents can be properly scanned, stored, and processed by the USPTO without any loss of information or potential damage to the application papers. Using standard, unmarked paper without holes helps maintain the integrity of the document throughout the application process.
Yes, you can use email to respond to Office actions from the USPTO, but certain conditions must be met:
- You must have a written authorization on file for Internet communication.
- The response must be submitted through the USPTO’s secure email system or the Electronic Filing System (EFS-Web).
- The email must include all necessary information and attachments as required for the response.
MPEP 502.03 states: “Replies to Office actions may NOT be submitted by email unless specifically authorized.” This means that without proper authorization, email responses to Office actions will not be accepted.
It’s important to note that while email can be used, the USPTO recommends using EFS-Web for most communications, including responses to Office actions, as it provides a more secure and efficient method of submission.
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Yes, you can use a handwritten signature for electronically filed patent documents. The USPTO accepts a graphic representation of a handwritten signature when submitted via the USPTO patent electronic filing system.
According to 37 CFR 1.4(d)(3): “A graphic representation of a handwritten signature as provided for in 37 CFR 1.4(d)(1) will be accepted when submitted via the USPTO patent electronic filing system.”
This allows for the use of traditional handwritten signatures in electronic filings, providing flexibility for applicants and practitioners.
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The use of a Certificate of Mailing or Transmission for international patent applications is limited and depends on the specific type of correspondence. According to the MPEP and 37 CFR 1.8(a)(2)(i)(D)-(F), the certificate procedure does not apply to:
- The filing of an international application for patent
- The filing of correspondence in an international application before the U.S. Receiving Office, the U.S. International Searching Authority, or the U.S. International Preliminary Examining Authority
- The filing of a copy of the international application and the basic national fee necessary to enter the national stage
However, the Certificate of Transmission procedure can be used for some correspondence related to international applications if it’s being transmitted to the USPTO and is not otherwise prohibited. The MPEP states:
The Certificate of Transmission procedure for both facsimile transmissions and transmissions via EFS-Web, however, also applies to papers transmitted to the Office from a foreign country provided that the correspondence being transmitted is not prohibited from being transmitted by facsimile or via EFS-Web and is not otherwise precluded from receiving the benefits under 37 CFR 1.8.
It’s crucial to carefully review the specific requirements and limitations for international application correspondence to ensure proper and timely filing.
Yes, you can use a Certificate of Transmission for documents filed electronically through the USPTO’s Electronic Filing System (EFS-Web). The MPEP provides a suggested format for a Certificate of EFS-Web Transmission:
I hereby certify that this correspondence is being transmitted via the U.S. Patent and Trademark Office electronic filing system (EFS-Web) to the USPTO on [Date].
However, it’s important to note that EFS-Web submissions have their own timestamp system. According to 37 CFR 1.6(a)(4):
Correspondence submitted to the Office by way of the Office electronic filing system will be accorded a receipt date, which is the date the correspondence is received at the correspondence address for the Office set forth in § 1.1 when it was officially submitted.
This date can be a Saturday, Sunday, or federal holiday within the District of Columbia. The certificate can provide an additional layer of documentation for your submission date, but the EFS-Web timestamp is generally considered authoritative for determining the receipt date of electronic submissions.
The use of a Certificate of Mailing or Transmission for correspondence from outside the United States depends on the method of transmission. The MPEP clarifies:
“The Certificate of Mailing procedure does not apply to papers mailed in a foreign country. The Certificate of Transmission procedure for both facsimile transmissions and transmissions via EFS-Web, however, also applies to papers transmitted to the Office from a foreign country provided that the correspondence being transmitted is not prohibited from being transmitted by facsimile or via EFS-Web and is not otherwise precluded from receiving the benefits under 37 CFR 1.8.”
Therefore:
- You cannot use a Certificate of Mailing for papers mailed from outside the U.S.
- You can use a Certificate of Transmission for facsimile or EFS-Web transmissions from outside the U.S., as long as the correspondence is eligible for this procedure.
It’s important to verify that your specific type of correspondence is eligible for the Certificate of Transmission procedure before using it from outside the United States.
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No, the Certificate of Mailing or Transmission cannot be used for all USPTO correspondence. The MPEP 512 specifies certain types of correspondence that are excluded from the certificate practice:
“The Certificate of Mailing or Transmission procedure does not apply to: (A) Relative to Patents and Patent Applications— (1) The filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date…”
The MPEP lists several other exclusions, including certain international application filings, trademark-related filings, and correspondence filed in interference or trial proceedings. It’s crucial to review the full list in MPEP 512 to ensure compliance with USPTO rules.
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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.
Can I use a certificate of mailing for all USPTO correspondence?
While the certificate of mailing or transmission is a useful tool, it cannot be used for all types of USPTO correspondence. The MPEP 502 provides specific exceptions:
“The certification procedure under 37 CFR 1.8 is not available for: (A) Applications for patent under 35 U.S.C. 111(a), including reissue applications; (B) International applications for patent; (C) International design applications; (D) Requests for reexamination under 35 U.S.C. 302…”
This list continues with several other exceptions. It’s crucial to note that:
- New patent applications cannot use the certificate of mailing.
- International applications are excluded from this procedure.
- Certain time-sensitive documents require different filing methods.
For these excluded items, consider using Priority Mail Express® or electronic filing to ensure timely receipt by the USPTO. Always check the current regulations or consult with a patent professional to determine the appropriate filing method for your specific correspondence.
For more information on Certificate of Mailing, visit: Certificate of Mailing.
For more information on patent applications, visit: patent applications.
For more information on USPTO correspondence, visit: USPTO correspondence.
While certificates of mailing are widely applicable, they cannot be used for all types of patent-related correspondence. MPEP 512 outlines specific exceptions:
The Certificate of Mailing or Transmission procedure does not apply to the filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date.
Additionally, you cannot use a certificate of mailing for:
- Filing of an international application for patent
- Filing correspondence in an international application before the U.S. Receiving Office
- Filing a copy of the international application and the basic national fee to enter the national stage under 35 U.S.C. 371
Always check the current USPTO guidelines to ensure you’re using the correct filing method for your specific correspondence.
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According to MPEP 508.02, submitting additional information after a patent application has been abandoned is generally not possible. The section states:
“After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender.”
This means that once an application is abandoned, the USPTO will typically return any new submissions related to that application. However, there are some exceptions:
- Petitions to revive the abandoned application
- Requests for continued examination (RCE) in certain circumstances
- Appeals to the Patent Trial and Appeal Board, if filed within the appropriate timeframe
If you wish to submit additional information after abandonment, you should consult with a patent attorney to determine if any of these options are available in your specific case.
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Can I retroactively claim micro entity status for previously paid fees?
No, you cannot retroactively claim micro entity status for fees that have already been paid. The MPEP clearly states:
“A fee may be paid in the micro entity amount only if it is submitted with, or subsequent to, the submission of a certification of entitlement to micro entity status.” (MPEP 509.04(f))
This means:
- Micro entity status must be established before or at the time of paying fees at the micro entity rate
- You cannot request a refund for the difference between standard fees and micro entity fees for payments made before establishing micro entity status
- Future fees can be paid at the micro entity rate once status is properly established
To benefit from micro entity status, ensure you file the certification before paying any fees you wish to pay at the reduced rate.
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Can I pay patent fees in foreign currency?
No, the USPTO does not accept foreign currency for patent fee payments. According to MPEP 509: ‘All payments of money required for USPTO fees or services must be made in U.S. dollars and in the form of a cashier’s or certified check, Treasury note, national bank notes, or United States Postal Service money order.’
If you’re an international applicant, you’ll need to arrange for payment in U.S. dollars. Options include:
- Using an international credit card that can process payments in USD
- Establishing a U.S. bank account
- Using a registered U.S. attorney who can make payments on your behalf
It’s advisable to plan ahead for currency conversion to ensure timely payment of USPTO fees.
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Yes, you can hand-carry certain documents to the USPTO, but there are specific guidelines and limitations. According to MPEP 501:
Patent-related papers may be hand-carried to the Office in Alexandria, VA. Correspondence cannot be hand-carried to the Regional Offices. If the correspondence is hand-carried to the Office, with limited exceptions (see MPEP § 502, subsection III) it must be delivered to:
United States Patent and Trademark Office
Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
For trademark-related papers, there is a separate location:
Trademark-related papers may be filed at the “walk-up” window located in the Trademark Assistance Center, Madison East, Concourse Level, Room C55, 600 Dulany Street, Alexandria, VA 22314.
It’s important to note that while hand-carrying documents is possible, electronic filing is often faster and more efficient for most types of correspondence with the USPTO.
For more information on patent office procedures, visit: patent office procedures.
For more information on USPTO submission, visit: USPTO submission.
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.”
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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.”
Can I correct micro entity status errors retroactively?
Yes, you can correct micro entity status errors retroactively, but there are specific rules and time limitations to consider. According to MPEP 509.04(f):
“Errors in micro entity status may be rectified by filing a notification of a change in status … and paying the required fee deficiency.”
However, the ability to make retroactive corrections is subject to time constraints:
- For underpayments: You can correct the error at any time by paying the fee deficiency.
- For overpayments: You must file a micro entity certification and request a refund within the time period set in 37 CFR 1.29(k), which is generally within three months of the fee payment.
It’s crucial to address any status errors promptly to maintain the validity of your patent application or granted patent and to ensure compliance with USPTO regulations.
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No, you cannot correct micro entity status errors for multiple applications or patents in a single submission. The MPEP, citing 37 CFR 1.29(k)(1), states:
Any paper submitted under this paragraph must be limited to the deficiency payment (all fees paid in error) required for a single application or patent. Where more than one application or patent is involved, separate submissions of deficiency payments are required for each application or patent (see § 1.4(b)).
This means you must submit separate deficiency payments and itemizations for each application or patent where micro entity fees were erroneously paid. This requirement ensures clear and accurate processing of fee corrections for each individual case.
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Can I change my entity status during the patent application process?
Yes, you can change your entity status during the patent application process. The MPEP 509.03 states:
“Small entity status may be claimed in a pending application at any time before, or concurrently with, the payment of an issue fee.”
This means you can:
- Change from standard to small entity status
- Change from small entity to standard status
- Claim micro entity status if you qualify
To change your status, you must file a new written assertion of the desired status. Keep in mind that if you change to a higher fee status (e.g., from small to standard), you may need to pay any fee deficiencies for previously paid fees at the lower rate.
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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.
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Yes, foreign applicants can qualify for micro entity status if they meet all the requirements. The USPTO states in MPEP 509.04(a):
Small entities may claim reduced fees regardless of the country in which they are located. There is no restriction requiring that the person, small business concern, or nonprofit organization be located in the United States.
For applicants with income in foreign currency, 37 CFR 1.29(c) specifies: ‘If an applicant’s, inventor’s, joint inventor’s, or entity’s gross income in the preceding calendar year is not in United States dollars, the average currency exchange rate, as reported by the Internal Revenue Service, during that calendar year shall be used to determine whether the applicant’s, inventor’s, joint inventor’s, or entity’s gross income exceeds the threshold specified in paragraph (a)(3) or (4) of this section.’
No, for-profit universities do not qualify as ‘institutions of higher education’ for the purpose of establishing micro entity status. One of the requirements for an institution of higher education under the Higher Education Act of 1965 is that it must be non-profit.
MPEP 509.04(b) states: “One of the requirements for an ‘institution of higher education’ under section 101(a) of the Higher Education Act of 1965 is that the institution be non-profit. Therefore, for-profit universities and colleges do not qualify as an ‘institution of higher education’ for purposes of establishing micro entity status.”
This means that employees or those who have assigned rights to for-profit universities cannot claim micro entity status on this basis.
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Yes, filing unnecessary duplicate copies of patent correspondence can potentially cause processing delays at the USPTO. The MPEP 502.04 explicitly states:
When the Office does not require duplicate copies of a paper, the filing of multiple copies may cause a delay in processing by the Office.
This is one of the reasons why the USPTO discourages the submission of duplicate copies unless specifically required. To ensure efficient processing of your patent application or correspondence, it’s best to avoid submitting unnecessary duplicates.
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Yes, drawing corrections can be made after the application has been allowed. However, such corrections must be approved by the examiner before the application can be processed for issue. If extensive corrections are required, the examiner may require that the corrections be filed with a Request for Continued Examination (RCE) under 37 CFR 1.114.
No, color drawings cannot be submitted by facsimile to the USPTO. This is explicitly stated in MPEP 502.01 and 37 CFR 1.6(d)(4):
Facsimile transmissions are not permitted and, if submitted, will not be accorded a date of receipt in the following situations: … (4) Color drawings submitted under §§ 1.81, 1.83 through 1.85, 1.152, 1.165, 1.173, 1.437, or 1.1026;
The prohibition on faxing color drawings is due to the limitations of facsimile technology in accurately reproducing colors. Submitting color drawings via fax could result in loss of quality or details that are crucial for the proper examination and understanding of the invention.
If you need to submit color drawings for your patent application, you should use other approved methods, such as mailing or electronic filing through the USPTO’s electronic filing system (EFS-Web or Patent Center). Always refer to the most current USPTO guidelines for submitting color drawings to ensure compliance with their requirements.
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No, an officer of an assignee corporation is not authorized to sign a certification of micro entity status. According to MPEP 509.04(c):
“If any applicant is an assignee or other party under 37 CFR 1.46, and the assignee or other party is a corporation or organization rather than a person, a registered practitioner must sign the certification of micro entity status. An officer of the assignee corporation, for example, is not authorized to sign a certification of micro entity status.”
This means that for corporate assignees, only a registered patent practitioner can sign the micro entity certification.
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No, an institution of higher education cannot itself claim micro entity status. The micro entity status based on an institution of higher education is intended for inventors who are employees of such institutions or who have assigned rights to them, not for the institutions themselves.
MPEP 509.04(b) clarifies: “Although the 37 CFR 1.29(d) basis for qualifying for micro entity status is referred to as the ‘institution of higher education’ basis, it is not the institution of higher education that can qualify for micro entity status, but rather inventors who are employees of an institution of higher education (see 37 CFR 1.29(d)(2)(i)) or inventors or applicants who have conveyed ownership rights to an institution of higher education (see 37 CFR 1.29(d)(2)(ii)).”
The institution itself cannot logically make the certifications required under the regulations, such as certifying that its employer is an institution of higher education or that it has assigned rights to itself.
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Yes, an applicant can withdraw their authorization for email communication with the USPTO. According to MPEP 502.03:
‘A written authorization may be withdrawn by filing a signed paper clearly identifying the original authorization.’
The USPTO provides a sample form for withdrawing authorization:
‘The authorization given on______, to the USPTO to communicate with any practitioner of record or acting in a representative capacity in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application via video conferencing, instant messaging, or electronic mail is hereby withdrawn.’
To facilitate processing, the USPTO recommends using Form PTO/SB/439, available at www.uspto.gov/patent/patents-forms. This form can be filed via EFS-Web using the document description ‘Internet Communications Authorization Withdrawn’.
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Can an applicant with a license agreement qualify for micro entity status?
Yes, an applicant with a license agreement can potentially qualify for micro entity status, but there are specific conditions that must be met. The MPEP provides guidance on this:
“An applicant is not considered to have been named on a previously filed application if the applicant has assigned, or is under an obligation to assign, all ownership rights in the application as the result of the applicant’s previous employment.” (MPEP 509.04(a))
However, it’s important to note that:
- The license agreement must not transfer all substantial rights in the invention to a non-micro entity.
- If the licensee is not a micro entity, the applicant may lose their micro entity status.
- The applicant must still meet all other micro entity criteria, including income limitations and the four-application limit.
Applicants with license agreements should carefully review the terms of their agreements and consult with a patent attorney to determine if they still qualify for micro entity status.
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Yes, an applicant can submit missing parts of an application after the filing date, but this may affect the application’s effective filing date. The MPEP 506 states:
Such portion must be filed within the time period set by the Office in the notification by the Office of the omitted portion, or the application will be regarded as abandoned.
It’s important to note that submitting missing parts may result in a later effective filing date for the application, which could have implications for patent term and prior art considerations. Applicants should strive to submit complete applications initially to avoid potential complications.
For more information on effective filing date, visit: effective filing date.
For more information on missing parts, visit: missing parts.
Can an applicant claim micro entity status based on income from a foreign country?
Yes, an applicant can claim micro entity status based on income from a foreign country. The MPEP clarifies:
“For purposes of qualifying for micro entity status based on the gross income limit, the gross income in the foreign currency must be converted into United States dollars at the exchange rate in effect on the date the micro entity certification is filed.”
This means that if you’re an applicant from a foreign country, you can still qualify for micro entity status if your income, when converted to U.S. dollars, does not exceed the gross income limit. It’s important to use the correct exchange rate on the date of filing your micro entity certification to ensure accurate calculation.
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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.
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Can a small business qualify for micro entity status?
Yes, a small business can potentially qualify for micro entity status, but there are specific requirements to meet. The MPEP outlines two main paths for small businesses:
- Income-based qualification: If the small business’s income does not exceed three times the median household income in the preceding calendar year, it may qualify.
- Institution of higher education qualification: If the small business has assigned, granted, conveyed, or is under obligation to assign, grant, or convey a license or other ownership interest in the application to an institution of higher education.
The MPEP states:
“An applicant that qualifies as a micro entity under either the gross income basis or the institution of higher education basis can file a certification of micro entity status on either basis (but not both).”
It’s important to note that all parties involved (applicants, inventors, and joint inventors) must meet the requirements. For more details, refer to MPEP 509.04.
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No, patent applications that are entitled to a filing date will not be returned to the applicant, even if requested. This applies to applications filed by regular mail, Priority Mail Express, hand-delivery, or through the USPTO patent electronic filing system.
The MPEP clearly states: ‘Applications which are entitled to a filing date, whether filed by regular mail, by Priority Mail Express® under 37 CFR 1.10, by hand-delivery, by the USPTO patent electronic filing system, or otherwise, will not be returned to applicant even if requested.’ (MPEP 503)
Applicants should be careful not to file duplicate applications or applications not intended for filing, as fees paid for such applications are generally not refundable due to a change of purpose.
Once a patent application is filed and given a filing date, it generally cannot be returned or withdrawn. According to MPEP 503:
“Applications which are entitled to a filing date, whether filed by regular mail, by Priority Mail Express® under 37 CFR 1.10, by hand-delivery, by the USPTO patent electronic filing system, or otherwise, will not be returned to applicant even if requested.”
This policy is in place to maintain the integrity of the filing process and prevent potential abuse. Applicants should be careful not to file applications that are not intended to be filed, such as duplicates of already filed applications.
Furthermore, the MPEP cites 37 CFR 1.26(a), which states that a change of purpose after payment of a fee, such as when a party desires to withdraw a patent application for which a fee was paid, does not entitle the party to a refund of such fee.
If an applicant realizes they have filed an application in error or no longer wish to pursue it, they may choose to abandon the application. However, the application will remain on file with the USPTO and any fees paid will not be refunded.
For more information on application abandonment, visit: application abandonment.
For more information on application return, visit: application return.
Yes, nonprofit organizations can qualify for small entity status under certain conditions. According to 37 CFR 1.27(a)(3), a nonprofit organization that qualifies for small entity status is one that:
- Has not assigned, granted, conveyed, or licensed any rights in the invention to a non-small entity
- Is either:
- A university or other institution of higher education
- An organization described in section 501(c)(3) of the Internal Revenue Code and exempt from taxation under 501(a)
- A nonprofit scientific or educational organization qualified under a nonprofit organization statute of a state
- A foreign organization that would qualify under the above if it were located in the U.S.
It’s important to note that government organizations, whether domestic or foreign, cannot qualify as nonprofit organizations for small entity status purposes.
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Yes, a legal entity can sign patent correspondence, but there are specific requirements. According to MPEP 502.02:
When a document is to be signed by a corporation or another juristic entity, the signature must comply with 37 CFR 1.33(b)(3).
The requirements for a legal entity’s signature include:
- The name of the person signing
- Their capacity (e.g., President, CEO, General Counsel)
- The name of the legal entity
For example, a valid signature for a corporation might look like:
/John Smith, President, XYZ Corporation/
It’s important to note that the person signing must have the authority to bind the legal entity in matters before the USPTO. This ensures that the correspondence is legally binding and properly authorized.
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Can a legal assistant or secretary sign correspondence on behalf of a patent practitioner?
No, a legal assistant or secretary cannot sign correspondence on behalf of a patent practitioner. The MPEP 502.02 clearly states:
‘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 requirement ensures that the practitioner takes personal responsibility for the content of the correspondence. Delegating this responsibility to support staff is not permitted and could lead to the correspondence being considered unsigned or improperly signed.
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USPTO employees are generally not permitted to initiate email communications with patent applicants unless there is a written authorization on record. According to MPEP 502.03:
‘USPTO employees are NOT permitted to initiate communications with applicants via Internet email unless there is a written authorization of record in the patent application by the applicant.’
However, if an applicant has provided written authorization for Internet communications:
‘USPTO employees may respond to Internet email and initiate communications with applicants via Internet email.’
It’s important to note that this policy applies to regular patent applications. For reissue applications and reexamination proceedings, which are open to public inspection, additional restrictions apply:
‘USPTO employees are NOT permitted to initiate communications with applicant in a reissue application or a patentee of a reexamination proceeding via Internet email unless written authorization is given by the applicant or patentee.’
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Are there any restrictions on paying USPTO fees by credit card?
Yes, there are some restrictions when paying USPTO fees by credit card:
- There’s a daily limit on credit card transactions.
- Some types of fees may not be eligible for credit card payment.
- Only certain credit cards are accepted.
The MPEP 509 states, “The Office will not accept a general authorization to charge all fees, or all fees in a specific case, to a credit card.” Additionally, “Credit Card Payment Form PTO-2038 should be used when paying a patent or trademark fee (or related service fee) by credit card, unless the payment is being made via EFS-Web.” It’s important to check the current USPTO guidelines for any updates to credit card payment policies.
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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.
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No, provisional patent applications are not examined. The MPEP 504 clearly states: “Provisional applications will not be examined.” Provisional applications serve as a placeholder to establish a priority date and are not subject to substantive examination by the USPTO.
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No, provisional patent applications are not assigned to examiners for examination. MPEP 504 explicitly states: “Provisional applications will not be examined.” This is because provisional applications are primarily used to establish a priority date and are not subject to substantive examination.
Photographs can be included in patent applications, but there are specific requirements and limitations. According to MPEP 507:
“OPAP may object to and require corrected drawings within a set time period, if the drawings: (F) include photographs of the claimed invention which are capable of illustration by other medium such as ink drawings, and which are illegible after scanning. See 37 CFR 1.84(b)“
This means that while photographs are acceptable, they should only be used when the subject matter cannot be accurately depicted in a drawing. Additionally, the photographs must be of sufficient quality to be legible after scanning. If a photograph can be replaced by a clear ink drawing, the USPTO may require such a replacement.
For more information on drawing requirements, visit: drawing requirements.
For more information on patent drawings, visit: patent drawings.
Are handwritten patent applications accepted by the USPTO?
While it is strongly recommended to submit typed or printed applications, the USPTO does accept handwritten patent applications under certain conditions:
- The handwriting must be legible and in permanent dark ink or its equivalent.
- The text must be clearly readable and suitable for reproduction.
- All other formatting requirements (margins, spacing, etc.) must still be followed.
As stated in MPEP 501: All papers that are to become a part of the permanent records of the United States Patent and Trademark Office should be legibly written either by a typewriter or mechanical printer in permanent dark ink or its equivalent in portrait orientation on flexible, strong, smooth, non-shiny, durable, and white paper.
While handwritten applications are technically accepted, it’s important to note that typed or printed applications are preferred for clarity and ease of processing. Handwritten applications may face additional scrutiny and potential delays in processing due to legibility concerns.
Color drawings or photographs are generally not allowed in patent applications without special permission. MPEP 507 states:
OPAP may object to and require corrected drawings within a set time period, if the drawings: … (G) contain color drawings or color photographs, but not a petition to accept color drawings/photographs.
If an applicant wishes to include color drawings or photographs, they must file a petition to accept them. It’s important to note that the requirement for a black and white photocopy of color drawings/photographs has been eliminated. Applicants should be prepared to justify the need for color in their drawings or photographs when filing such a petition.
Patent Procedure (332)
For applications filed on or after September 16, 2012, the following parties can sign a written assertion of small entity status:
- The applicant
- A patent practitioner of record or acting in a representative capacity
- The inventor or a joint inventor, if the inventor is the applicant
- The assignee
According to 37 CFR 1.27(c)(2): “The written assertion can be signed by: (i) The applicant (§ 1.42 or § 1.421); (ii) A patent practitioner of record or a practitioner acting in a representative capacity under § 1.34; (iii) The inventor or a joint inventor, if the inventor is the applicant; or (iv) The assignee.”
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According to MPEP 509.04(c), a certification of micro entity status can be signed only by an authorized party as set forth in 37 CFR 1.33(b), which includes:
- A patent practitioner of record
- A patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34
- The applicant (37 CFR 1.42)
It’s important to note that “Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.”
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Small entity status should only be claimed after a thorough investigation has been completed and there is certainty about the entitlement. The MPEP 509.03(a) states: “Where entitlement to small entity status is uncertain, it should not be claimed.” It’s important to note that even paying the small entity basic filing fee constitutes an assertion of small entity status. Therefore, applicants should be certain of their status before making any payments or claims related to small entity status.
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While the USPTO generally discourages filing duplicate copies, there are situations where separate copies are necessary. According to MPEP 502.04:
Since each file must be complete in itself, a separate copy of every paper to be filed in a patent, patent file, or other proceeding must be furnished for each file to which the paper pertains, even though the contents of the papers filed in two or more files may be identical.
This means that if a document relates to multiple patent applications or proceedings, a separate copy must be submitted for each relevant file, even if the content is identical across all copies.
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According to MPEP 502.01, various types of patent-related correspondence can be transmitted by facsimile to the USPTO, including:
- Continued Prosecution Applications (CPAs) filed under 37 CFR 1.53(d) (for design applications only)
- Amendments
- Declarations
- Petitions
- Information Disclosure Statements (IDS)
- Terminal disclaimers
- Notices of appeal and appeal briefs
- Requests for Continued Examination (RCEs) under 37 CFR 1.114
- Assignment documents
- Issue fee transmittals
- Authorizations to charge deposit accounts
The MPEP states: “37 CFR 1.6(d) specifies the types of correspondence which may be transmitted by facsimile.” However, it’s important to note that certain types of correspondence are prohibited from being sent by fax, as outlined in 37 CFR 1.6(d)(2)-(7).
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According to MPEP 502.01, certain types of patent-related correspondence are prohibited from being sent by facsimile to the USPTO. These include:
- Documents required by statute to be certified (37 CFR 1.4(f))
- National patent application specifications and drawings for obtaining a filing date (except for CPAs under 37 CFR 1.53(d))
- International patent applications
- International design applications
- Documents for entering the national stage of an international application (37 CFR 1.495(b))
- Third-party submissions under 37 CFR 1.290
- Correspondence related to registration to practice before the USPTO in patent cases
- Color drawings (37 CFR 1.81, 1.83-1.85, 1.152, 1.165, 1.173, 1.437, or 1.1026)
- Requests for reexamination (37 CFR 1.510 or 37 CFR 1.913)
- Requests for supplemental examination (37 CFR 1.610)
- Correspondence for patent applications under secrecy orders (37 CFR 5.1-5.5)
- Most correspondence for contested cases or trials before the Patent Trial and Appeal Board
The MPEP states: “As a courtesy, the Office will attempt to notify senders whenever correspondence is sent to the Office by facsimile transmission that falls within one of the prohibitions.” However, it’s crucial to avoid submitting prohibited correspondence by fax, as it will not be accorded a receipt date.
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For the purpose of micro entity status, the following types of patent applications count towards the application filing limit:
- Previously filed U.S. nonprovisional applications (utility, design, plant, continuation, and divisional)
- Previously filed U.S. reissue applications
- Previously filed U.S. national stage applications under the Patent Cooperation Treaty (PCT)
- Previously filed international design applications under the Hague agreement that designate the U.S.
The MPEP states: “All such applications naming the inventor or a joint inventor are counted toward the application filing limit, whether the applications were filed before, on, or after March 19, 2013.“
Applications that do not count towards the limit include:
- Foreign applications
- International (PCT) applications for which the basic U.S. national stage filing fee was not paid
- Provisional applications
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The following types of patent applications and documents can be filed via EFS-Web:
- Provisional patent applications under 35 U.S.C. 111(b)
- Nonprovisional utility patent applications under 35 U.S.C. 111(a)
- Nonprovisional design patent applications under 35 U.S.C. 111(a)
- International applications filed under the PCT in the United States Receiving Office
- National stage submissions under 35 U.S.C. 371
- International design applications filed under the Hague Agreement
- Requests for ex parte reexamination for utility or design patents
- Requests for supplemental examination for utility, design, or plant patents
- Third-party preissuance submissions under 35 U.S.C. 122(e)
- Citation of prior art and written statements in patent files under 37 CFR 1.501
Follow-on documents can also be filed via EFS-Web for existing applications by registered users.
OPAP may object to and require corrected drawings within a set time period for several issues. According to the MPEP, these include:
- Line quality that is too light to be reproduced
- Illegible text
- Missing lead lines
- Excessive text or non-English text
- Incorrect margins or paper size
- Improper figure labeling
- Illegible photographs that could be illustrated by ink drawings
- Color drawings or photographs without a proper petition
For example, regarding line quality, MPEP 507 states:
“OPAP may object to and require corrected drawings within a set time period, if the drawings: (A) have a line quality that is too light to be reproduced (weight of all lines and letters must be heavy enough to permit adequate reproduction) or text that is illegible (reference characters, sheet numbers, and view numbers must be plain and legible). See 37 CFR 1.84(l) and (p)(1)“
For more information on drawing requirements, visit: drawing requirements.
For more information on OPAP, visit: OPAP.
For more information on patent drawings, visit: patent drawings.
While the Certificate of Mailing or Transmission procedure is useful for many types of USPTO correspondence, there are several exceptions. According to 37 CFR 1.8(a)(2), the procedure does not apply to:
- Filing of national patent application specifications and drawings for the purpose of obtaining an application filing date
- Filing of correspondence in an international application before the U.S. Receiving Office, U.S. International Searching Authority, or U.S. International Preliminary Examining Authority
- Filing of an international design application
- Filing a copy of an international application and the basic national fee to enter the national stage
- Filing a written declaration of abandonment under 37 CFR 1.138
It’s crucial to note that these exceptions exist to ensure certain critical documents are actually received by the USPTO before they are considered filed.
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While MPEP 508.02 doesn’t specify the types of communications that might be received after a patent is granted, it does indicate that some communications may still be relevant to the record. The section states:
“After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender.”
This implies that certain communications might still become part of the record. These could include:
- Maintenance fee payments
- Requests for correction of errors in the patent
- Reissue applications
- Supplemental examination requests
However, any communication not related to these or other official post-grant procedures would likely be returned.
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To determine small entity status for a business, several steps should be taken:
- Review whether the business meets the definition of a small business concern under section 3 of the Small Business Act.
- Check if the business meets the size standards in 13 CFR 121.801 through 121.805 for eligibility for reduced patent fees.
- Investigate if the business has assigned, granted, conveyed, or licensed any rights in the invention to others.
- If rights have been transferred, conduct the same review for each other entity involved.
The MPEP 509.03(a) emphasizes: “If small entity status is desired on the basis that the entity is a small business concern, the investigation should include a review of whether the business is a small business concern as defined by section 3 of the Small Business Act.”
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If there’s a discrepancy between the filing date accorded by the USPTO and the “date accepted” on the Priority Mail Express® mailing label, you can file a petition under 37 CFR 1.10(c). MPEP 513 states that such a petition should:
- Be filed promptly after becoming aware of the discrepancy
- Include evidence that the Priority Mail Express® number was placed on the correspondence before mailing
- Include a true copy of the Priority Mail Express® mailing label showing the “date accepted”
The petition should be filed as soon as the discrepancy is noticed to ensure timely correction of the filing date.
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.
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If you have filed correspondence with a proper Certificate of Mailing or Transmission, but the USPTO has not received it after a reasonable amount of time, you can take action under 37 CFR 1.8(b). The MPEP states:
“37 CFR 1.8(b) permits a party to notify the Office of a previous mailing through the U.S. Postal Service, or transmission by facsimile or EFS-Web, of correspondence when a reasonable amount of time has elapsed from the time of mailing or transmission of the correspondence.”
To rectify this situation:
- Promptly notify the Office of the previous mailing or transmission
- Supply a duplicate copy of the previously mailed or transmitted correspondence
- Provide a statement attesting to the previous timely mailing or transmission
It’s important to act quickly once you become aware that the Office has not received your correspondence, rather than waiting until the end of the reply period.
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If you’ve misused a Certificate of Mailing or Transmission, it’s important to address the issue promptly and honestly. The USPTO takes the integrity of these certificates seriously. The MPEP states:
Misuse of a Certificate of Mailing under 37 CFR 1.8 or improperly claiming the benefit of 37 CFR 1.10 which appears to be more than a one-time, inadvertent error should be brought to the attention of the Office of Enrollment and Discipline.
If the misuse was a one-time, inadvertent error, you should:
- Notify the USPTO as soon as you become aware of the error.
- Provide a full explanation of the circumstances.
- If possible, submit the correct documentation or information.
- Be prepared for the possibility that your submission may be considered late, which could have consequences for your application or proceeding.
For repeated or intentional misuse, the matter may be referred to the Office of Enrollment and Discipline, which could result in more serious consequences. It’s always best to use Certificates of Mailing or Transmission carefully and honestly to maintain the integrity of the patent application process.
If you lose entitlement to small entity status, you must notify the USPTO before or at the time of paying the earliest of the issue fee or any maintenance fee due after the change. According to 37 CFR 1.27(g)(2): ‘notification of any change in status resulting in loss of entitlement to small entity status be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity is no longer appropriate.’
This notification should be a specific written assertion, not just payment of a non-small entity fee. For example, when paying the issue fee, you should:
- Check the appropriate box on Part B of the PTOL-85 form to indicate the change in entity status
- Pay the fee amount for a non-small entity
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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.
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If you cannot file your patent application electronically or by Priority Mail Express® due to an emergency, consider the following options:
- Use first-class mail with a Certificate of Mailing under 37 CFR 1.8
- Hand-deliver the application to the USPTO, if possible
- If the emergency is a designated postal service interruption, follow the specific instructions provided by the USPTO on their website or in the Official Gazette
Remember that the provisions for postal emergencies only apply to actual USPS service interruptions, not other circumstances like computer failures or office inaccessibility.
As stated in MPEP 511: “Applicants are cautioned that the provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) to (i) only apply to postal interruptions and emergencies. The provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) to (i) do not provide for granting of a filing date to correspondence as of the date on which it would have been filed but for other exigencies, such as the unavailability of a computer or word processing equipment, or the inaccessibility of an office or building other than a USPS facility.”
A small entity for purposes of paying reduced patent fees is defined in 37 CFR 1.27(a) as:
- A person
- A small business concern
- A nonprofit organization
Each of these categories has specific criteria that must be met to qualify for small entity status. For example, a person must not have assigned, granted, conveyed, or licensed any rights in the invention to a non-small entity.
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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 has established a Patent Internet Usage Policy that governs email communications with patent applicants. According to MPEP 502.03, ‘Communications via Internet email are at the discretion of the applicant.’ However, there are specific requirements and limitations:
- A written authorization from the applicant is required for USPTO employees to communicate via email.
- All Internet communications must be made using USPTO tools.
- Without written authorization, the USPTO will not respond to Internet correspondence containing confidential information.
It’s important to note that ‘A reply to an Office action or a paper requiring a signature may NOT be communicated by applicant to the USPTO via Internet email even if written authorization is on record.’
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The United States Patent and Trademark Office (USPTO) generally discourages the filing of duplicate copies of correspondence in patent applications, patents, or other proceedings. According to MPEP 502.04:
The filing of duplicate copies of correspondence in the file of an application, patent, or other proceeding should be avoided, except in situations in which the Office requires the filing of duplicate copies.
The USPTO may dispose of duplicate copies to streamline processing. However, it’s important to note that separate copies are required for different files, even if the content is identical.
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To qualify for micro entity status based on an institution of higher education, the applicant must first meet the small entity requirement. This means that every party holding rights in the application must qualify as a small entity under 37 CFR 1.27.
MPEP 509.04(b) states: “In order to meet the small entity requirement, every party holding rights in the application must qualify as a small entity under 37 CFR 1.27. If any rights in the application are assigned, granted, conveyed, or licensed to a party that does not qualify as a small entity under 37 CFR 1.27, the applicant cannot qualify for any patent fee discount.”
This requirement ensures that only truly small entities benefit from the micro entity status, even when associated with an institution of higher education.
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A patent practitioner plays a crucial role in signing micro entity certifications. According to MPEP 509.04(c), a patent practitioner can sign a micro entity certification in two capacities:
- As a patent practitioner of record
- As a patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34
Moreover, for juristic entities, “Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.” This includes micro entity certifications for corporate assignees or other organizational parties under 37 CFR 1.46.
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The USPTO requires that different matters be submitted in separate papers to ensure efficient processing. This requirement is outlined in MPEP 501, which cites 37 CFR 1.4(c):
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.
This means that if you have multiple requests or inquiries for the USPTO, each should be submitted on its own separate document. For example, a petition and an information disclosure statement should not be combined into a single paper.
If an applicant submits a single paper containing distinct subjects, the USPTO may use the following form paragraph to notify them:
The [1] submitted [2] should have been submitted as a separate paper as required by 37 CFR 1.4(c). The paper has been entered. However, all future correspondence must comply with 37 CFR 1.4.
Adhering to this requirement helps ensure that your correspondence is processed efficiently and reaches the appropriate department within the USPTO.
For more information on patent office procedures, visit: patent office procedures.
For more information on USPTO correspondence, visit: USPTO correspondence.
The receipt date for facsimile transmissions to the USPTO is determined according to specific rules outlined in MPEP 502.01:
The date of receipt accorded to any correspondence permitted to be sent by facsimile transmission, including a continued prosecution application (CPA) filed under 37 CFR 1.53(d), (available for design applications only) is the date the complete transmission is received by an Office facsimile unit, unless the transmission is completed on a Saturday, Sunday, or Federal holiday within the District of Columbia.
If the transmission is completed on a weekend or federal holiday in DC, the receipt date will be the next business day. For example, if a fax is completed at 9:05 p.m. Pacific time on a Friday, it would be received around 12:05 a.m. Eastern time on Saturday. The receipt date would then be the following Monday (assuming it’s not a federal holiday).
It’s important to note that the Certificate of Transmission under 37 CFR 1.8 can be used for certain documents to consider them timely filed on the date of transmission, even if received later by the USPTO.
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The PTO-948 form, also known as the ‘Drawing Informalities’ form, serves the following purposes in patent applications:
- It is used by the Office of Patent Application Processing (OPAP) to indicate that the drawings submitted with the application are informal but acceptable for publication purposes.
- It notifies the examiner that the drawings may need to be corrected or replaced with formal drawings during examination.
- It provides a record in the file wrapper that the drawings have been provisionally accepted.
As stated in MPEP 507: ‘If the drawings are informal but otherwise in compliance with 37 CFR 1.121(d), the OPAP will accept the application for purposes of publication and place a ‘Drawing Informalities’ form PTO-948 in the file wrapper.’
This form helps streamline the application process by allowing examination to proceed while flagging the need for potential drawing improvements later in the process.
For more information on OPAP, visit: OPAP.
The USPTO requires separate copies of correspondence for different patent files to ensure that each file is complete and self-contained. According to MPEP 502.04:
Since each file must be complete in itself, a separate copy of every paper to be filed in a patent, patent file, or other proceeding must be furnished for each file to which the paper pertains, even though the contents of the papers filed in two or more files may be identical.
This requirement serves several purposes:
- It ensures that each file contains all relevant documents without relying on cross-referencing between files.
- It facilitates independent processing and review of each application or proceeding.
- It maintains the integrity and completeness of individual patent files, which is crucial for legal and administrative purposes.
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The Office of Patent Application Processing (OPAP) performs an initial review of drawings in new utility and plant patent applications to determine whether the drawings can be effectively scanned for publication purposes. As stated in the MPEP:
“OPAP inspects the drawings to see if they can be effectively scanned and adequately reproduced.”
This review ensures that the drawings meet the necessary quality standards for publication and reproduction.
For more information on drawing review, visit: drawing review.
For more information on OPAP, visit: OPAP.
The primary purpose of drawing review in OPAP is to determine whether the drawings in new utility and plant patent applications can be effectively scanned for publication purposes. As stated in MPEP 507:
The Office of Patent Application Processing (OPAP) performs an initial review of drawings in new utility and plant patent applications to determine whether the drawings can be effectively scanned for publication purposes.
It’s important to note that design applications are not subject to this review as they are not published.
An attorney docket number is used by law firms and companies to internally track and manage patent applications. While it’s not required by the USPTO, it can be included on application documents for reference. However, there are limitations:
- Must be limited to a maximum of 25 characters
- Spaces, slashes, and hyphens are not included in the entered docket number on the official filing receipt
- For docket numbers beginning with ‘CASE’ or ‘NAVY-CASE’, only characters after these prefixes are entered
The MPEP states: ‘Attorney docket numbers must be limited to a maximum of 25 characters to prevent truncation. The USPTO system data base allows a maximum of 25 characters for the attorney docket numbers.’ (MPEP 503)
A self-addressed postcard serves as a receipt and provides evidence of the items submitted to the USPTO with a patent application. According to MPEP 503, the postcard should itemize all components of the application, including:
- Inventor’s name(s)
- Title of invention
- Number of pages of specification, claims, and sheets of drawing
- Whether the inventor’s oath or declaration is included
- List of additional forms included
- Amount and manner of paying the fee
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.”
It’s important to note that the postcard must be properly itemized to serve as evidence of receipt. Simply listing “a complete application” is not sufficient. Each component should be specifically listed on the postcard.
For applications filed via EFS-Web, an Electronic Acknowledgment Receipt serves as the electronic equivalent of a postcard receipt.
For more information on patent application filing, visit: patent application filing.
For more information on USPTO submission, visit: USPTO submission.
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)
The purpose of a certificate of mailing or transmission in patent applications is to provide evidence of timely filing when correspondence is not received by the USPTO or is received late. As stated in MPEP 512:
The Certificate of Mailing or Transmission procedure does not apply to papers mailed in a foreign country.
This procedure allows applicants to prove that they submitted their correspondence on time, even if it’s delayed or lost in transit.
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If OPAP objects to the drawings in a patent application, there is a specific process for submitting corrected drawings. The MPEP states:
“If OPAP objects to the drawings and sends applicant a Notice requiring submission of corrected drawings within a set time period (usually two months), corrected drawings must be filed, in paper, to the mailing address set forth in the Notice, along with any other items required by OPAP, to avoid abandonment of the application. No fee will be necessary for filing corrected drawings which are required by OPAP.”
It’s important to note that the corrected drawings must be submitted in paper form to the specific mailing address provided in the Notice. Applicants should ensure they meet the deadline (typically two months) to avoid potential abandonment of their application.
For more information on corrected drawings, visit: corrected drawings.
For more information on OPAP, visit: OPAP.
For more information on patent procedure, visit: patent procedure.
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.
When the USPTO cannot locate a patent or application file after a reasonable search, they follow the procedure outlined in 37 CFR 1.251. The key steps are:
- The Office notifies the applicant or patentee about the unlocatable file.
- A time period is set for the applicant or patentee to comply with the notice.
- The applicant or patentee must respond by either:
- Providing a copy of their record of all correspondence with the Office (except U.S. patent documents)
- Producing their record for the Office to copy
- Stating that they do not possess any record of the correspondence
As stated in MPEP 508.04, “37 CFR 1.251 sets forth a procedure for the reconstruction of the file of a patent application, patent, or any other patent-related proceeding that cannot be located after a reasonable search.”
When a patent or application file cannot be located after a reasonable search, the USPTO has a specific procedure outlined in 37 CFR 1.251. The Office will notify the applicant or patentee and set a time period for compliance with one of the following options:
- Provide a copy of all correspondence records between the Office and the applicant/patentee, along with a list and a statement of completeness.
- Produce the applicant’s/patentee’s records for the Office to copy, along with a statement of completeness.
- If no records are possessed, provide a statement to that effect.
The MPEP states, 37 CFR 1.251 sets forth a procedure for the reconstruction of the file of a patent application, patent, or any other patent-related proceeding that cannot be located after a reasonable search.
For pending applications, failure to comply within the set time period will result in abandonment of the application.
For more information on file reconstruction, visit: file reconstruction.
For more information on USPTO procedures, visit: USPTO procedures.
What is the minimum deposit amount required to open a USPTO deposit account?
The minimum deposit amount required to open a USPTO deposit account is $1,000. According to MPEP 509.01, “A minimum deposit of $1,000 is required when an account is opened, and a minimum balance of $1,000 is required to be maintained in the account.” This initial deposit ensures that the account has sufficient funds to cover potential fees and charges.
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What is the limit on the number of previously filed patent applications for micro entity status?
For micro entity status, an applicant must not have been named as an inventor on more than four previously filed patent applications. The MPEP states:
“The applicant has not been named as an inventor on more than 4 previously filed patent applications, other than applications filed in another country, provisional applications under 35 U.S.C. 111(b), or international applications for which the basic national fee under 35 U.S.C. 41(a) was not paid.”
This limit helps ensure that micro entity status is reserved for truly small-scale inventors or businesses. It’s important to note that certain types of applications, such as provisional applications and international applications where the basic national fee wasn’t paid, don’t count towards this limit.
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The institution of higher education basis allows applicants to qualify for micro entity status if:
- The applicant’s employer, from which the applicant obtains the majority of their income, is an institution of higher education as defined in the Higher Education Act of 1965, or
- The applicant has assigned, granted, conveyed, or is obligated to assign, grant or convey, a license or ownership interest in the application to such an institution of higher education.
The applicant must also qualify as a small entity. This basis is implemented in 37 CFR 1.29(d).
The general mailing address for patent-related correspondence is:
Commissioner for Patents
P.O. Box 1450
Alexandria, Virginia 22313-1450
This address should be used for patent applications, replies to notices of informality, requests for extension of time, notices of appeal, and other patent-related matters processed by organizations reporting to the Commissioner for Patents.
As stated in the MPEP: Correspondence in patent-related matters under the direction of the Commissioner for Patents should be addressed to: Commissioner for Patents P.O. Box 1450 Alexandria, Virginia 22313-1450
To learn more:
The general mailing address for patent-related correspondence is:
Commissioner for Patents
P.O. Box 1450
Alexandria, Virginia 22313-1450
This address is used for various patent-related documents, including:
- Patent applications
- Replies to notices of informality
- Requests for extension of time
- Notices of appeal to the Patent Trial and Appeal Board
- Requests for reexamination
- Petitions to the Commissioner for Patents
As stated in MPEP 501: “Correspondence in patent-related matters under the direction of the Commissioner for Patents should be addressed to: Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.”
For more information on patent application filing, visit: patent application filing.
For more information on patent correspondence, visit: patent correspondence.
The general mailing address for patent applications and patent-related papers is:
Commissioner for Patents
P.O. Box 1450
Alexandria, Virginia 22313-1450
This address should be used for correspondence including patent applications, replies to notices of informality, requests for extension of time, notices of appeal, briefs, requests for oral hearings, applications for patent term extensions, reexamination requests, statutory disclaimers, certificates of correction, petitions, and other patent-related correspondence processed by organizations reporting to the Commissioner for Patents.
As stated in MPEP 501: “Correspondence in patent-related matters under the direction of the Commissioner for Patents should be addressed to: Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450”
What is the filing date for applications properly filed under 37 CFR 1.10 (Priority Mail Express)?
For applications properly filed under 37 CFR 1.10 using Priority Mail Express, the filing date is the date the application was deposited with the U.S. Postal Service. The MPEP states:
For applications properly filed under 37 CFR 1.10, the filing date is the date that the application was deposited as Priority Mail Express® in the U.S. Postal Service. For example, if a new patent application is deposited in Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date.
If the proper procedures were not followed, the application will receive a filing date as of the date it was received in the USPTO.
For applications properly filed using Priority Mail Express® (formerly Express Mail) through the U.S. Postal Service, the filing date is the date of deposit with the postal service. The MPEP states:
“For applications properly filed under 37 CFR 1.10, the filing date is the date that the application was deposited as Priority Mail Express® in the U.S. Postal Service.”
This means that even if the application is deposited on a Saturday, and the U.S. Postal Service marks it with a Saturday date, the USPTO will accord and stamp the correspondence with the Saturday date.
However, if the proper procedures for using Priority Mail Express® were not followed, the application will receive a filing date as of the date it was received in the USPTO. Any dispute regarding the filing date in such cases would require a petition, as explained in the MPEP:
“Any review of these matters would be by way of petition, accompanied by the petition fee (37 CFR 1.17(f)), providing whatever arguments and evidence petitioner has that the application is entitled to a filing date as of the date it was deposited as Priority Mail Express®.”
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The duty to investigate entitlement to claim small entity status refers to the obligation of patent applicants to thoroughly investigate all facts and circumstances before determining their actual entitlement to small entity status. According to MPEP 509.03(a), “applicants need to do a complete and thorough investigation of all facts and circumstances before making a determination of actual entitlement to small entity status.” This investigation is crucial to ensure that small entity status is claimed only when appropriate.
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While both the Certificate of Mailing (37 CFR 1.8) and Priority Mail Express (37 CFR 1.10) procedures can be used to establish timely filing of USPTO correspondence, they have some key differences:
- Certificate of Mailing can be used with any class of mail, while Priority Mail Express is a specific USPS service.
- Certificate of Mailing uses the date of deposit with USPS as the filing date, while Priority Mail Express uses the date of deposit as shown by the “date accepted” on the mailing label.
- Certificate of Mailing cannot be used for new patent applications, while Priority Mail Express can establish a filing date for new applications.
- Certificate of Mailing requires a signed certificate, while Priority Mail Express requires the mailing label to be affixed to the correspondence.
The MPEP notes: “New patent applications filed in accordance with 37 CFR 1.10 will be stamped by the Office with the date of deposit as Priority Mail Express® with the United States Postal Service.”
Both procedures have specific requirements and limitations, so it’s important to consult the full text of 37 CFR 1.8 and 37 CFR 1.10 when deciding which to use.
What is the difference between small entity and micro entity status?
While both small entity and micro entity statuses offer reduced patent fees, they have distinct eligibility criteria:
- Small Entity Status:
- Available to individuals, small businesses (fewer than 500 employees), and non-profit organizations
- Offers a 50% reduction in most patent fees
- Micro Entity Status:
- More stringent requirements, including income limitations and limits on the number of previously filed patent applications
- Offers a 75% reduction in most patent fees
As per MPEP 509.03, “Small entity status entitles applicants to a fifty-percent reduction in a number of patent fees.” Micro entity status, while not explicitly covered in this section, provides even greater fee reductions for those who qualify.
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MPEP 509.04(c) mentions two types of micro entity certifications:
- Micro entity certification on the gross income basis
- Micro entity certification on the institution of higher education basis
While the specific requirements for each basis are not detailed in this section, it’s important to note that the signing requirements are the same for both types. The certification “can be signed only by an authorized party as set forth in 37 CFR 1.33(b).” This includes patent practitioners and applicants, as detailed in other FAQs.
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As of July 28, 2013, the United States Postal Service (USPS) renamed ‘Express Mail’ to ‘Priority Mail Express’. According to MPEP 511:
“Effective July 28, 2013, the United States Postal Service (USPS) changed the name of ‘Express Mail’ to ‘Priority Mail Express.’ All characteristics of the ‘Priority Mail Express’ service are the same as those of the former ‘Express Mail’ service (although the mailing labels differ).”
This change is important for patent applicants to note, as the USPTO’s rules and procedures now refer to ‘Priority Mail Express’ instead of ‘Express Mail’. However, the service characteristics and benefits for patent filings remain the same. When using this service for USPTO correspondence, ensure you use the correct addresses as specified in 37 CFR 1.1 and avoid using the ‘Hold for Pickup’ option, as the USPTO does not pick up mail.
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A small business concern, for the purpose of paying reduced patent fees, is defined as follows:
A small business concern as used in this paragraph means any business concern that:
- Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify for small entity status as a person, small business concern, or nonprofit organization.
- Meets the size standards set forth in 13 CFR 121.801 through 121.805 to be eligible for reduced patent fees.
The size standards vary by industry and are based on factors such as average annual receipts or number of employees. It’s important to consult the specific SBA guidelines for your industry to determine if your business qualifies as a small entity.
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What is the definition of a ‘small business concern’ for small entity status?
According to MPEP 509.02, a small business concern is defined as follows:
“A small business concern, as used in this chapter, means any business concern that:
- (i) Has not assigned, granted, conveyed, or licensed (and is under no obligation to do so) any rights in the invention to any person who made it and could not be classified as an independent inventor, or to any concern which would not qualify as a non-profit organization or a small business concern under this section, and
- (ii) Does not have as a party to the patent application any individual who has assigned, granted, conveyed, or licensed (or is under an obligation to do so) any rights in the invention to any person who made it and could not be classified as an independent inventor, or to any concern which would not qualify as a non-profit organization or a small business concern under this section.”
This definition ensures that the small business concern maintains control over the invention rights and has not transferred them to entities that do not qualify for small entity status.
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The United States Patent and Trademark Office (USPTO) stamps correspondence received with the date of receipt, known as the ‘Office Date’ stamp. This applies to papers and fees received through various methods:
- Mail (except Priority Mail Express®)
- Facsimile
- EFS-Web
- Hand-carried to the Customer Service Window
As stated in the MPEP: The United States Patent and Trademark Office (Office) stamps papers and fees received through the mail (other than those submitted by Priority Mail Express® in accordance with 37 CFR 1.10), by facsimile, or via EFS-Web with the date of their receipt in the Office.
The USPTO requires a security code for credit card payments made through its website. According to MPEP 509:
Credit card payment submissions made on the USPTO website at www.uspto.gov must include the 3-digit or 4-digit security code associated with the credit card in addition to the credit card number. The security code will not be required when the paper Credit Card Payment Form (PTO-2038) or other written authorization is submitted.
Key points about the security code requirement:
- It’s part of an authentication procedure to reduce fraudulent or unauthorized credit card use.
- The code verifies that the physical card is in the cardholder’s possession.
- For DISCOVER®, MASTERCARD®, and VISA®, it’s a 3-digit code on the back of the card.
- For AMERICAN EXPRESS®, it’s a 4-digit code on the front of the card.
- If you can’t read the security code, contact your card issuer.
This requirement enhances security for online transactions but doesn’t apply to paper submissions using Form PTO-2038.
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The Credit Card Payment Form (PTO-2038) is a specific form provided by the USPTO for making credit card payments for patent and trademark process fees. According to MPEP 509:
Credit Card Payment Form (PTO-2038) should be used when paying a patent process or trademark process fee (or the fee for an information product) by credit card, unless the payment is being made using the USPTO patent electronic filing system.
Key points about the form:
- It can be downloaded from the USPTO website at www.uspto.gov/PatentForms.
- It’s not required (and should not be used) when making credit card payments via EFS-Web or other electronic filing systems.
- Using this form helps keep credit card information confidential, as the USPTO does not include it among records open to public inspection.
Failure to use this form when submitting a paper credit card payment may result in the credit card information becoming part of the public record.
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What is the Certificate of Mailing procedure for USPTO filings?
The Certificate of Mailing procedure is a method that allows applicants to establish the date of filing for correspondence sent to the USPTO. As explained in MPEP 501:
‘Under the procedure, correspondence is considered as being timely filed if (A) the correspondence is mailed or transmitted prior to expiration of the set period for response by being: (1) Addressed as set out in 37 CFR 1.1(a) and deposited with the U.S. Postal Service with sufficient postage as first class mail; or (2) Transmitted by facsimile to the Patent and Trademark Office in accordance with 37 CFR 1.6(d); or (3) Transmitted via the Office electronic filing system in accordance with 37 CFR 1.6(a)(4); and (B) the correspondence includes a certificate for each piece of correspondence stating the date of deposit or transmission.’
This procedure is particularly useful for ensuring timely filing when using postal services. It’s important to note that the certificate must be signed by the person depositing or transmitting the correspondence.
For more information on Certificate of Mailing, visit: Certificate of Mailing.
For more information on electronic filing, visit: electronic filing.
The central facsimile number for patent application-related correspondence at the USPTO is (571) 273-8300. According to MPEP 502.01:
All patent application related correspondence transmitted by facsimile must be directed to the central facsimile number, with a few exceptions below. The central facsimile number is (571) 273-8300.
This central number should be used for most patent-related correspondence, including replies to Office actions and after-final amendments. However, there are specific exceptions for certain types of correspondence that should be sent to other facsimile numbers, as outlined in the MPEP.
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The application size fee is an additional fee that applies to patent applications with specifications and drawings exceeding 100 sheets of paper. The MPEP states:
37 CFR 1.16(s) sets forth the application size fee for any application (including any reissue applications) filed under 35 U.S.C. 111, the specification and drawings of which exceed 100 sheets of paper. The calculation of the number of sheets excludes any “Sequence Listing”, computer readable form (CRF) of a “Sequence Listing”, or a “Computer Program Listing Appendix” filed in an American Standard Code for Information Interchange (ASCII) plain text file or any “Sequence Listing XML” filed in an eXtensible Markup Language (XML) file on a read-only optical disc or via the USPTO patent electronic filing system in compliance with the rules.
The fee applies for each additional 50 sheets or fraction thereof over 100 sheets. This fee must be paid within the time period set by the USPTO to avoid abandonment of the application.
The USPTO offers an additional fee reduction for small entities that file patent applications electronically. According to MPEP 509.02:
The Consolidated Appropriations Act, 2005, provides that the filing fee charged under 35 U.S.C. 41(a)(1)(A) shall be reduced by 75 percent with respect to its application to any small entity ‘if the application is filed by electronic means as prescribed by the Director’ (35 U.S.C. 41(h)(3)).
This 75% reduction applies specifically to the filing fee for nonprovisional original utility applications filed electronically by small entities on or after December 8, 2004. It’s important to note that this enhanced reduction does not apply to design applications, plant applications, reissue applications, or provisional applications.
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The ‘Office Date’ stamp is used by the USPTO to mark the receipt date of papers and fees. According to MPEP 505, The United States Patent and Trademark Office (Office) stamps papers and fees received through the mail (other than those submitted by Priority Mail Express® in accordance with 37 CFR 1.10), by facsimile, or via EFS-Web with the date of their receipt in the Office.
The ‘Office Date’ stamp is crucial because:
- It establishes the filing date for new patent applications that include the necessary components (see 37 CFR 1.53(b)-(d))
- It determines the timeliness of actions and fee payments
For hand-carried papers, date stamping occurs at the Customer Service Window.
For more information on Office Date stamp, visit: Office Date stamp.
For more information on USPTO, visit: USPTO.
Small entity status allows certain applicants to pay reduced patent fees. To claim small entity status, you must make an assertion of entitlement in one of two ways:
- Submit a written assertion signed by the applicant, a patent practitioner, an inventor, or an assignee
- Pay the exact small entity basic filing fee, basic national fee, or individual designation fee
As stated in 37 CFR 1.27(c): “Any party (person, small business concern or nonprofit organization) should make a determination, pursuant to paragraph (f) of this section, of entitlement to be accorded small entity status based on the definitions set forth in paragraph (a) of this section, and must, in order to establish small entity status for the purpose of paying small entity fees, actually make an assertion of entitlement to small entity status, in the manner set forth in paragraphs (c)(1) or (c)(3) of this section, in the application or patent in which such small entity fees are to be paid.”
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When notifying the USPTO of a loss of micro entity status, the following requirements must be met:
- The notification must be filed in the application or patent prior to paying, or at the time of paying, any fee after the date on which micro entity status is no longer appropriate.
- The notification must be signed by a party identified in 37 CFR 1.33(b).
- A simple statement that the applicant is no longer eligible for micro entity status is sufficient, without identifying specific reasons.
As stated in MPEP 509.04(e): Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate.
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PSTAR stands for Patents Service for Time and Application Routing. According to MPEP 504, PSTAR is “the program [that] assigns each nonprovisional application to an examiner.” This system is used by the United States Patent and Trademark Office (USPTO) to efficiently distribute patent applications to the appropriate examiners for review.
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Priority Mail Express® is a service offered by the United States Postal Service (USPS) that can be used to establish a filing date for patent applications and other correspondence with the USPTO. As stated in MPEP 513:
The statutory authority for the granting of a filing date based on the date of deposit for correspondence sent by Priority Mail Express® and received by the Office is found in section 21(a) of Title 35 of the United States Code.
Using Priority Mail Express® allows applicants to receive a filing date as of the date the correspondence was deposited with USPS, rather than the date it was received by the USPTO.
What is an S-signature in USPTO correspondence and how is it formatted?
An S-signature is an electronic signature used in correspondence with the USPTO. According to MPEP 502.02, an S-signature must be formatted as follows:
- Inserted between forward slash marks: /John Doe/
- Include the signer’s name
- For registered practitioners, include their registration number
- The signer’s name can be printed or typed
- The signature must comply with 37 CFR 1.4(d)(2)
For example, a proper S-signature for a registered patent attorney might look like this:
/John Q. Attorney, Reg. No. 12345/
This format allows for efficient electronic filing while maintaining the legal weight of a signature.
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An S-signature is an electronically created signature used in patent correspondence. According to MPEP 502.02:
An S-signature is a signature inserted between forward slash marks, but not a handwritten signature as defined by 37 CFR 1.4(d)(1). An S-signature includes any signature made by electronic or mechanical means, and any other mode of making or applying a signature other than a handwritten signature as provided for in 37 CFR 1.4(d)(1).
S-signatures must meet specific requirements to be considered valid:
- They must be between two forward slash marks
- They can include letters, numbers, and punctuation marks
- They must be personally inserted by the signer
- They must be reasonably specific to the signer
S-signatures provide a convenient way for applicants and practitioners to sign documents electronically while maintaining the legal weight of a handwritten signature.
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An S-signature is a type of electronic signature used in USPTO correspondence. According to MPEP 501, which cites 37 CFR 1.4(d)(2):
An S-signature is a signature inserted between forward slash marks, but not a handwritten signature as defined by paragraph (d)(1) of this section. An S-signature includes any signature made by electronic or mechanical means, and any other mode of making or applying a signature other than a handwritten signature.
Key requirements for an S-signature include:
- It must consist only of letters, Arabic numerals, or both, with appropriate punctuation.
- The signer must insert their own S-signature with a single forward slash mark before and after the signature.
- For patent practitioners, their registration number must be included with or near the S-signature.
- The signer’s name must be presented in printed or typed form near the S-signature.
Example of a proper S-signature: /John D. Smith/
S-signatures can be used for most USPTO correspondence filed electronically or by facsimile.
For more information on USPTO correspondence, visit: USPTO correspondence.
An application number consists of a series code and a serial number. It is assigned by the Office of Patent Application Processing (OPAP) immediately after mail has been opened. For applications filed using the USPTO patent electronic filing system, EFS-Web provides an Acknowledgement Receipt containing a time and date stamp, application number, and confirmation number.
The MPEP states: ‘Application numbers consisting of a series code and a serial number are assigned by the Office of Patent Application Processing (OPAP) immediately after mail has been opened.’ (MPEP 503)
What is a USPTO deposit account and how does it work?
A USPTO deposit account is a pre-established account that allows for convenient payment of fees to the United States Patent and Trademark Office. According to MPEP 509:
“A deposit account is a convenient method for individuals or firms to establish a pre-paid account with the USPTO to facilitate the payment of fees.”
Here’s how USPTO deposit accounts work:
- You deposit funds into the account in advance
- Fees can be automatically deducted from the account when filing applications or paying other fees
- Minimum balance requirements apply (currently $1,000 for individuals, $5,000 for law firms)
- Account holders receive monthly statements
- Useful for frequent filers or those managing multiple applications
To open a deposit account, you need to complete Form PTO-2232 and submit it to the USPTO with an initial deposit. This method can streamline fee payments and reduce the risk of insufficient fee issues.
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A USPTO deposit account is a convenient method for attorneys and the general public to pay fees and order services from the U.S. Patent and Trademark Office. To establish a deposit account:
- Pay the fee for establishing a deposit account as per 37 CFR 1.21(b)(1)
- Make a minimum deposit of $1,000 for general use
- Alternatively, make a minimum deposit of $300 for a restricted subscription deposit account used exclusively for subscription orders of patent copies
As stated in the MPEP: For the convenience of attorneys, and the general public in paying any fees due, in ordering services offered by the Office, copies of records, etc., deposit accounts may be established in the Patent and Trademark Office upon payment of the fee for establishing a deposit account § 1.21(b)(1).
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What is a provisional patent application and how does it differ from a nonprovisional application?
A provisional patent application is a type of patent application that allows inventors to establish an early filing date for their invention. Key differences between provisional and nonprovisional applications include:
- Provisional applications are not examined and automatically expire after 12 months
- Provisional applications require fewer formal components than nonprovisional applications
- Provisional applications cannot directly result in a granted patent
The MPEP states: A provisional application will not be examined. However, a provisional application which does not include a cover sheet (37 CFR 1.51(c)(1)), which may be an application data sheet (37 CFR 1.76) or a cover letter, identifying the application as a provisional application, will be treated as a nonprovisional application filed under 37 CFR 1.53(b).
To obtain a filing date, a provisional application must include:
- A specification as prescribed by 35 U.S.C. 112(a)
- Any necessary drawings
- The appropriate filing fee
Inventors often use provisional applications to secure an early filing date while allowing additional time to prepare a more comprehensive nonprovisional application.
For more information on nonprovisional application, visit: nonprovisional application.
For more information on patent application types, visit: patent application types.
For more information on provisional application, visit: provisional application.
A filing receipt is an official document issued by the USPTO that contains important information about a patent application. According to MPEP 503, the filing receipt includes:
- Application number
- Filing date
- Confirmation number
- Suggested U.S. Patent Classification class
- Art unit where the application is likely to be examined
- Continuing data (if applicable)
- National stage data (if applicable)
- Foreign priority data (if applicable)
- Foreign filing license data (if applicable)
- Entity status information
- Anticipated publication date under 35 U.S.C. 122(b)
The MPEP states: “The filing receipt represents the official assignment by the USPTO of a specific application number and confirmation number to a particular application.” It’s important to review the filing receipt for accuracy, especially regarding inventor and applicant names, benefit and priority claims, and any nonpublication requests.
For more information on application number, visit: application number.
For more information on confirmation number, visit: confirmation number.
For more information on filing receipt, visit: filing receipt.
A confirmation number is a four-digit number assigned to each newly filed patent application. It is used in combination with the application number to verify the accuracy of the application number on correspondence filed with the USPTO. This helps avoid misidentification due to transposition errors.
The MPEP states: ‘The confirmation number is a four-digit number that is assigned to each newly filed application. The confirmation number, in combination with the application number, is used to verify the accuracy of the application number placed on correspondence filed with the Office to avoid misidentification of an application due to a transposition error in the application number.’ (MPEP 503)
A confirmation number is a four-digit number assigned by the USPTO to each newly filed patent application. According to MPEP 503, the confirmation number serves several important purposes:
- It is used in combination with the application number to verify the accuracy of the application number on correspondence filed with the Office.
- It helps avoid misidentification of an application due to transposition errors in the application number.
- It is included on the filing receipt, Office actions, and other USPTO communications.
- It is required when submitting an electronic copy of the application for publication to verify the correct application.
The MPEP recommends: “The Office also recommends that applicants include the application’s confirmation number (in addition to the application number) on all correspondence submitted to the Office concerning the application.”
The confirmation number can be found in the upper left-hand corner of the filing receipt and is also available through the Patent Application Information Retrieval (PAIR) system.
For more information on application number, visit: application number.
For more information on confirmation number, visit: confirmation number.
For more information on USPTO correspondence, visit: USPTO correspondence.
A Certificate of Mailing or Transmission is a procedure under 37 CFR 1.8 that allows correspondence to be considered timely filed with the USPTO if it meets certain conditions. As stated in the MPEP:
“Under 37 CFR 1.8, a person may state on certain papers directed to the Office (some exceptions are stated in 37 CFR 1.8), the date on which the paper will be deposited in the United States Postal Service, transmitted by facsimile or transmitted via the USPTO electronic filing system (EFS-Web). If the date stated is within the period for reply, the reply in most instances will be considered to be timely.”
This procedure can be crucial for meeting deadlines, even if the actual receipt of the correspondence by the USPTO occurs after the deadline.
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According to 37 CFR 1.29(k)(1), the itemization for a micro entity fee deficiency payment must include:
- Each type of fee erroneously paid as a micro entity
- The current fee amount for a small or non-small entity
- The micro entity fee actually paid and the date of payment
- The deficiency owed amount for each fee
- The total deficiency payment owed
The MPEP specifies: The paper must contain an itemization of the total deficiency payment and include the following information: (1) each particular type of fee that was erroneously paid as a micro entity, (e.g., basic statutory filing fee, two-month extension of time fee) along with the current fee amount for a small or non-small entity; (2) the micro entity fee actually paid, and the date on which it was paid; (3) the deficiency owed amount (for each fee erroneously paid); and (4) the total deficiency payment owed, which is the sum or total of the individual deficiency owed amounts.
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A certificate of mailing for USPTO correspondence must include specific information to be valid. According to MPEP 512, the following information is required:
- The date of deposit or transmission
- The application number (for patent applications)
- A statement that the correspondence is being deposited with the USPS or transmitted to the USPTO
- The signature of the person depositing or transmitting the correspondence
The MPEP states:
The certificate must state that the correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail, or transmitted to the Office on the date of the certificate.
Ensure all these elements are included to make your certificate of mailing valid and effective.
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A patent filing receipt includes:
- Application number
- Filing date
- Confirmation number
- Suggested class in the U.S. Patent Classification System
- Art unit number where the application is likely to be examined
- Continuing data (if applicable)
- National stage data (if applicable)
- Foreign priority data (if applicable)
- Foreign filing license data (if applicable)
- Entity status information
- Anticipated publication date under 35 U.S.C. 122(b)
The MPEP states: ‘The filing receipt includes the application number, filing date, a confirmation number, a suggested class in the U.S. Patent Classification System (see MPEP § 902.01), and the number of an art unit where the application is likely to be examined.’ (MPEP 503)
A patent application filing receipt contains crucial information about the application. According to the MPEP:
‘A filing receipt is mailed to the attorney or agent, if any, otherwise to the applicant, for each application filed.’
The filing receipt typically includes:
- The application number
- Filing date
- Title of the invention
- Names of the applicants
- Name and registration number of the attorney or agent (if applicable)
- Entity status for fee purposes
- Correspondence address
- List of documents submitted with the application
It’s important to review the filing receipt carefully for accuracy, as it serves as official confirmation of the application’s details and can be used to identify any discrepancies or issues that need to be addressed promptly.
For more information on filing receipt, visit: filing receipt.
According to MPEP 508.02, “After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender. 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 any documents received after a patent is granted or an application is abandoned will not be added to the official record. Instead, they will be either physically returned to the sender or, if already scanned into the Image File Wrapper (IFW) system, electronically closed within the system.
According to MPEP 508.02, after a patent application is either patented or abandoned, any incoming communication that is not intended to become part of the official record will be returned to the sender. The MPEP states:
“After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender.”
This procedure ensures that the official patent file remains accurate and contains only relevant information after the application process has concluded.
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When you notify the USPTO of a loss of micro entity status, you are automatically treated as a small entity by default, unless specified otherwise. As stated in MPEP 509.04(e):
A notification that micro entity status is no longer appropriate will not be treated as a notification that small entity status is also no longer appropriate unless it also contains a notification of loss of entitlement to small entity status under § 1.27(f)(2) [§ 1.27(g)(2)].
To change to regular (unreduced) fee status, you must either:
- File a notification of loss of entitlement to micro entity status along with regular unreduced fees or an indication of loss of entitlement to small entity status, or
- File a separate notification of loss of entitlement to small entity status.
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After a patent is granted or an application is abandoned, the USPTO has specific procedures for handling incoming communications. According to the MPEP, After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender.
In the case of digital documents, the MPEP states, 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 the document will be marked as closed in the digital system, effectively removing it from active consideration.
For more information on post-grant communications, visit: post-grant communications.
For more information on USPTO procedures, visit: USPTO procedures.
What happens if there’s an error in my application number?
If you notice an error in your application number, it’s crucial to contact the USPTO immediately. The MPEP states, Any error in the identification of the application number will result in processing delays.
(MPEP 503) To avoid such delays:
- Double-check the application number on your filing receipt
- If you find an error, contact the Application Assistance Unit at (571) 272-4000
- Provide the correct application number and any supporting documentation
Prompt action can help ensure your application is processed correctly and efficiently.
For more information on application number, visit: application number.
For more information on error correction, visit: error correction.
In the event of a postal interruption or emergency, the USPTO will take the following actions:
- Place an announcement on the USPTO website at www.uspto.gov
- Publish a notice in the Official Gazette
These communications will provide instructions about filing patent applications and other patent-related papers. As stated in MPEP 511:
“In the event of a postal interruption or emergency, an announcement will be placed on the USPTO website at www.uspto.gov and a notice will be published in the Official Gazette, providing instructions about the filing of patent applications, and other papers related to patent applications and patents.”
This ensures that applicants have clear guidance on how to proceed during such circumstances.
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In the event of a postal interruption or emergency:
- An announcement will be placed on the USPTO website at www.uspto.gov
- A notice will be published in the Official Gazette
- These communications will provide instructions about filing patent applications and other papers related to patent applications and patents
The USPTO Director may prescribe rules considering papers or fees filed on the date they would have been deposited with the USPS, but for postal service interruptions or emergencies.
As stated in MPEP 511: “In the event of a postal interruption or emergency, an announcement will be placed on the USPTO website at www.uspto.gov and a notice will be published in the Official Gazette, providing instructions about the filing of patent applications, and other papers related to patent applications and patents.”
If there’s a discrepancy between the USPTO’s date stamp and the date on the correspondence, the USPTO’s date stamp is generally considered the official receipt date. However, if an applicant can provide clear evidence that the correspondence was received earlier than the date indicated by the USPTO’s stamp, the earlier date may be recognized as the official receipt date. This situation might occur due to clerical errors or delays in processing incoming mail.
What happens if there are insufficient funds when paying USPTO fees?
If there are insufficient funds when paying USPTO fees, several consequences may occur:
- The fee payment will be considered incomplete.
- Your application or request may not be processed.
- You may incur additional fees or penalties.
- In some cases, you might lose filing date benefits.
The MPEP 509 warns, “If the Office receives a check drawn on a deposit account with insufficient funds, the fee will be considered unpaid.” For electronic payments, “If the electronic fund transfer is refused, or if the credit card is declined or invalid, the fee will be considered unpaid.” It’s crucial to ensure sufficient funds are available to avoid these issues and potential delays in your patent or trademark process.
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What happens if there are insufficient funds in my USPTO deposit account?
If there are insufficient funds in your USPTO deposit account to cover a fee, the following occurs:
- The USPTO will treat the fee as unpaid
- Any associated filing may be considered incomplete
- You may receive a notice of insufficient funds
The MPEP clearly states: “An overdrawn account will be immediately suspended and no charges will be accepted against it until the balance is restored.” (MPEP 509.01)
To avoid this situation, it’s crucial to maintain sufficient funds in your account and regularly monitor your balance. If your account becomes overdrawn, you’ll need to restore the balance before any further charges can be processed.
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If the USPTO receives a document without a date of receipt stamp, the Office will assign the document a date of receipt based on other evidence. This may include:
- The date of receipt indicated on an Express Mail label
- The date of deposit indicated on a certificate of mailing
- The date of transmission indicated on a certificate of transmission
- Other corroborating evidence, such as a postmark on an envelope
In cases where no other evidence is available, the USPTO may assign the date of receipt as the date the document was matched with the file wrapper.
If the USPTO cannot locate a file after a reasonable search, they will notify the applicant or patentee and set a time period for compliance. According to 37 CFR 1.251(a), the applicant or patentee must respond by:
- Providing a copy of their record of correspondence with the USPTO
- Producing their record for the USPTO to copy
- Stating that they do not possess any record of correspondence
The specific requirements are outlined in the notice and must be followed to avoid potential consequences.
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If an applicant pays an insufficient fee to the USPTO, the Office will notify the applicant and provide an opportunity to submit the remaining balance. According to MPEP 509:
If the fee paid by the applicant is insufficient, either because the notice specified an incorrect dollar amount for the fee or because of a fee increase effective after the mailing of the notice and before payment of the fee by the applicant, the applicant should be notified in writing by the Office of the fee insufficiency and given a new time period in which to submit the remaining balance.
The notification will include:
- The reason for the additional fee requirement
- An explanation of why the original fee was incorrect or insufficient
- A new time period for submitting the remaining balance
This process helps ensure that applicants have a fair opportunity to complete their fee payments and avoid abandonment of their applications due to fee issues.
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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.
If the date of receipt stamp is illegible or missing, the USPTO will make every effort to determine the correct date of receipt. This may involve examining other evidence, such as postmarks, electronic filing receipts, or other documentation. If the correct date cannot be determined, the USPTO may use the date it was discovered that the document was received as the date of receipt. Applicants should always ensure that their submissions are properly dated and stamped to avoid potential issues with filing dates.
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.
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If OPAP objects to the drawings in a patent application, the following process occurs:
- OPAP sends a Notice to the applicant requiring submission of corrected drawings.
- The Notice typically sets a time period of two months for response.
- Corrected drawings must be filed in paper form to the mailing address specified in the Notice.
- No fee is required for filing the corrected drawings requested by OPAP.
MPEP 507 states:
If OPAP objects to the drawings and sends applicant a Notice requiring submission of corrected drawings within a set time period (usually two months), corrected drawings must be filed, in paper, to the mailing address set forth in the Notice, along with any other items required by OPAP, to avoid abandonment of the application. No fee will be necessary for filing corrected drawings which are required by OPAP.
It’s crucial to respond within the set time period to avoid potential abandonment of the application.
If your USPTO deposit account becomes overdrawn, several consequences may occur:
- Account Suspension: The MPEP states,
An overdrawn account will be immediately suspended and no charges will be accepted against it until a proper balance is restored, together with a payment of $10 (37 CFR 1.21(b)(1)) to cover the work done by the U.S. Patent and Trademark Office incident to suspending and reinstating the account and dealing with charges which may have been made in the meantime.
- Additional Surcharges: If there’s an authorization to charge a basic filing fee to an overdrawn account, a surcharge under 37 CFR 1.16(f) is required in addition to the basic filing fee.
- Potential Abandonment: The MPEP warns,
Failure to timely pay the filing fee and surcharge will result in abandonment of the application.
- Account Closure: Repeated overdrafts may lead to account closure.
If an account is suspended repeatedly it will be closed.
To avoid these issues, always maintain sufficient funds in your deposit account and monitor your account balance regularly.
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What happens if my USPTO deposit account balance falls below the minimum?
If your USPTO deposit account balance falls below the minimum required balance of $1,000, there are consequences. According to MPEP 509.01, “An account holder who does not maintain the minimum balance will be notified and given a reasonable time to restore the account to the minimum balance.” If the account is not replenished:
- The USPTO may close the account.
- Any fees charged against the account may be treated as unpaid.
- This could potentially affect the status of your patent applications or other USPTO services.
It’s crucial to monitor your account balance regularly and replenish it promptly when it approaches the minimum to avoid any disruptions in service or potential issues with your patent applications.
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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.
What happens if I wrongly claim small entity status?
Wrongly claiming small entity status can have serious consequences. According to MPEP 509.03:
“Improperly and with intent to deceive establishing status as a small entity, or paying fees as a small entity, shall be considered as a fraud practiced or attempted on the Office.”
The consequences of fraudulently claiming small entity status may include:
- Requirement to pay all fee deficiencies
- Possible invalidation of the patent
- Potential legal action for fraud
If you discover an error in your small entity claim, it’s crucial to promptly notify the USPTO and pay any fee deficiencies. Honest mistakes, if corrected in good faith, are generally not considered fraud.
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What happens if I overpay a patent fee to the USPTO?
If you overpay a patent fee to the USPTO, you may be eligible for a refund. The MPEP 509 states: ‘In the event that an amount is paid by mistake or in excess of that required, a refund may be made only if a petition for refund is filed within 2 years after the date the fee was paid.’
To request a refund:
- File a petition for refund within 2 years of the payment date
- Clearly explain the reason for the overpayment
- Provide evidence of the overpayment
It’s important to note that not all overpayments are automatically refunded, so proactive action is necessary to recover excess fees.
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What happens if I overpaid fees due to incorrect micro entity status?
If you paid fees as a non-micro entity when you were actually entitled to micro entity status, resulting in an overpayment, you may be eligible for a refund. The MPEP 509.04(f) states:
“A refund based upon establishment of micro entity status may only be obtained if an assertion of micro entity status, in compliance with 37 CFR 1.29(a), is filed within the time period set forth in 37 CFR 1.29(k) … The time period set forth in 37 CFR 1.29(k) is: the later of 1) three months from the date of the fee payment claimed to be in error; or 2) the processing of a request for refund.”
To request a refund:
- File a compliant micro entity certification
- Submit a timely refund request
- Ensure you meet the time constraints specified in 37 CFR 1.29(k)
It’s important to act promptly if you believe you’ve overpaid due to an incorrect entity status.
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What happens if I lose micro entity status during the patent process?
If you lose micro entity status during the patent process, you must notify the USPTO promptly. The MPEP states:
“A micro entity that no longer meets the requirements for micro entity status at a point in time when a fee is due is treated as a small entity for purposes of paying the fee if the applicant or patentee is otherwise eligible for small entity status.”
This means:
- You must file a notification of loss of entitlement to micro entity status.
- If you still qualify as a small entity, you can pay fees at the small entity rate.
- If you no longer qualify as a small entity, you must pay fees at the standard (large entity) rate.
It’s important to note that continuing to pay fees at the micro entity rate when you no longer qualify can result in the patent being held unenforceable. For more details, refer to MPEP 509.04(e).
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If you lose entitlement to micro entity status, you must:
- File a notification of loss of entitlement to micro entity status in the application or patent
- Pay the required fee in the small entity or undiscounted amount, as appropriate
The notification must be filed prior to or at the time of paying the earliest fee after the date on which status as a micro entity is no longer appropriate. As stated in 37 CFR 1.29(i): ‘Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate.’
What happens if I fail to notify the USPTO about loss of micro entity status?
Failing to notify the USPTO about the loss of micro entity status can have serious consequences. The MPEP warns:
“Fraudulent assertion of micro entity status is considered a fraud practiced or attempted on the Office.” (MPEP 509.04(f))
Consequences may include:
- Invalidation of the patent application or granted patent
- Disciplinary action against registered practitioners
- Criminal penalties under 18 U.S.C. 1001
It’s crucial to promptly notify the USPTO if you lose eligibility for micro entity status to avoid these severe consequences.
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If you erroneously pay small entity fees in good faith, you can correct the error by:
- Submitting a separate deficiency payment for each application or patent
- Itemizing the deficiency payment with specific details
- Paying the full deficiency amount owed
As stated in 37 CFR 1.28(c): “If status as a small entity is established in good faith, and fees as a small entity are paid in good faith, in any application or patent, and it is later discovered that such status as a small entity was established in error, or that through error the Office was not notified of a loss of entitlement to small entity status as required by § 1.27(g)(2), the error will be excused upon: compliance with the separate submission and itemization requirements of paragraphs (c)(1) and (c)(2) of this section, and the deficiency payment requirement of paragraph (c)(2) of this section.”
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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:
- Treat it as an authorization to process the deficiency payment and charge a processing fee
- 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.
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If drawings are not received with a patent application, the following process occurs:
- The application is assigned a filing date if it meets the minimum requirements under 37 CFR 1.53(b) or 1.53(d).
- The Office of Patent Application Processing (OPAP) will send a Notice of Omitted Items giving the applicant a time period to file the missing drawings and a petition under 37 CFR 1.182 with the petition fee to have the filing date changed to the date of such filing.
- If the applicant does not respond to the Notice of Omitted Items, the application will be processed without the drawings.
As stated in the MPEP 507: ‘If drawings are not received with the application, the application is assigned a filing date and the applicant is notified to file drawings within a set time period.’
For more information on drawings, visit: drawings.
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 an applicant does not receive an application number within one month of filing, they should contact the Application Assistance Unit. The MPEP states:
‘If an application number is not received within one month of the filing date, applicant should contact the Application Assistance Unit at (571) 272-4000 or (888) 786-0101.’
This contact information is provided to ensure applicants can follow up on their application status in a timely manner. It’s important to note that this one-month period is a guideline for when applicants should take action if they haven’t received their application number.
For more information on Application Assistance Unit, visit: Application Assistance Unit.
For more information on application number, visit: application number.
What happens if an applicant’s income exceeds the micro entity threshold during pendency?
If an applicant’s income exceeds the micro entity threshold during the pendency of an application, they must notify the USPTO and change their status. The MPEP 509.04(a) states:
“A micro entity certification in an application will remain in effect until the applicant submits a notification of loss of entitlement to micro entity status under 37 CFR 1.29(i).”
Applicants are required to notify the USPTO of any change in status before paying any fee after the change. Failure to do so may result in:
- Underpayment of fees
- Loss of micro entity status
- Potential invalidation of the patent if issued
It’s crucial to monitor income and update the USPTO promptly if the micro entity threshold is exceeded.
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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 a patent application is missing essential parts, such as the specification, drawings, or claims, the USPTO will notify the applicant of the missing elements. According to MPEP 506:
‘Applicant will be notified of the incomplete application and the time period set for submitting the omitted parts.’
The applicant will then have an opportunity to submit the missing parts within the specified time period to complete the application.
For more information on incomplete application, visit: incomplete application.
For more information on missing parts, visit: missing parts.
For more information on patent application requirements, visit: patent application requirements.
If a patent application is filed without all the pages of the specification, the USPTO will notify the applicant of the missing parts. The MPEP refers to this situation:
See MPEP § 601.01(d)-(g) where the application is filed without all the pages of the specification, without at least one claim (nonprovisional design application), without drawings, or without all the figures of the drawings.
For applications filed before September 16, 2012, a supplemental oath or declaration by the inventor may be required to identify the missing item and indicate that it accurately describes the invention. For applications filed on or after September 16, 2012, an additional oath or declaration is generally not required.
The applicant will be given a time period to submit the missing pages. If the missing pages are not submitted within the specified time, the application may be deemed incomplete and not accorded a filing date until the missing parts are received.
If a patent application is filed with informal papers (e.g., typed on both sides of the paper, not permanent, legible, or reproducible), the USPTO will still accord a filing date if the application otherwise meets the requirements. The MPEP states:
OPAP accords a filing date, as of the date indicated by the “Office Date” stamp (see MPEP § 505), to application papers which include a specification containing a description and at least one claim (nonprovisional applications filed under 37 CFR 1.53(b) prior to March 18, 2013 and design applications), and a drawing, if necessary under 35 U.S.C. 113 (first sentence) and 37 CFR 1.53(b), but are informal because they do not comply with the rules or notices.
The USPTO will send a Notice requiring correction of the informality. Failure to correct the informality within the specified time will result in abandonment of the application.
If a nonprovisional patent application is filed without all required fees, the USPTO will send a notice to the applicant. According to the MPEP:
Filing dates are accorded to nonprovisional applications filed under 37 CFR 1.53(b) submitted without the… required fees (basic filing fee, and search and examination fees (for applications filed on or after December 8, 2004))… In such cases, a notice is mailed by OPAP requiring the appropriate fees… accompanied by a surcharge (37 CFR 1.16(f)).
The applicant will be given a time period (usually two months) to pay the missing fees and surcharge to avoid abandonment of the application.
If a drawing is not included with the application but is required for a complete disclosure of the invention, the Office of Patent Application Processing (OPAP) will send a Notice to File Missing Parts giving the applicant a time period of two months from the mailing date of the Notice to file the missing drawing(s). The time period may be extended under 37 CFR 1.136(a).
If a drawing is not acceptable for publication, the Office of Patent Application Processing (OPAP) will object to the drawing and notify the applicant. The applicant will be given a time period of two months from the mail date of the Notice to file acceptable drawings. This period is extendable under 37 CFR 1.136(a) or (b) for patent applications filed under 35 U.S.C. 111, but not for design applications filed under 35 U.S.C. 171. Failure to comply with the Notice within the time period will result in abandonment of the application.
The U.S. Patent and Trademark Office provides a specific form for certifying micro entity status based on an institution of higher education. This form is PTO/SB/15B.
MPEP 509.04(b) states: “The Office’s form PTO/SB/15B contains the certifications under 37 CFR 1.29(d) that are required to establish micro entity status on the institution of higher education basis.”
The form includes two signature blocks corresponding to the two alternative requirements under 37 CFR 1.29(d)(2):
- Certifying that the applicant’s employer, from which they obtain the majority of their income, is an institution of higher education.
- Certifying that the applicant has assigned, granted, or conveyed a license or other ownership interest in the application to an institution of higher education (or is obligated to do so).
Applicants should use this form to properly certify their micro entity status based on an institution of higher education.
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A USPTO deposit account can be used to pay various fees related to patent applications and services. According to the MPEP:
Filing, issue, appeal, international-type search report, international application processing, international design application fees, petition, and post-issuance fees may be charged against these accounts if sufficient funds are on deposit to cover such fees.
Specifically, fees that can be charged include:
- Filing fees (37 CFR 1.16)
- Processing fees (37 CFR 1.17)
- Issue fees (37 CFR 1.18, subject to certain conditions)
- Appeal fees
- International application fees
- Petition fees
However, fees under 37 CFR 1.19 (document supply fees), 1.20 (post-issuance fees), and 1.21 (miscellaneous fees) generally cannot be charged through a general authorization, with some exceptions.
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Micro entities receive a 75% reduction on many USPTO fees, including:
- Filing fees (nonprovisional and provisional)
- Search fees
- Examination fees
- Issue fees
- Appeal fees
- Maintenance fees
- Patent Trial and Appeal Board fees
The micro entity discount applies to most fees ‘for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents.’
To prove a filing delay due to a postal emergency, applicants must provide sufficient evidence. According to MPEP 511:
The nature of the evidence required by the Office to establish that the paper was timely filed will depend upon the circumstances of the particular emergency and the nature of the filing.
This evidence may include:
- Documentation of the postal service interruption or emergency
- Proof of attempted mailing during the affected period
- Explanation of how the emergency directly impacted the filing
- Any official notices or bulletins related to the postal disruption
The USPTO will evaluate each case individually to determine if the delay was indeed caused by the designated emergency.
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When filing entity status notifications in EFS-Web, it is strongly recommended to use the following document descriptions as appropriate:
- Notification of loss of entitlement to small entity status
- Notification of loss of entitlement to micro entity status
Using these specific document descriptions helps ensure that your notifications are properly categorized and processed by the USPTO. This recommendation is provided in MPEP 509.04(e) to facilitate efficient handling of entity status changes.
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The filing date of a patent application is determined by the ‘Office Date’ stamp, provided the application includes all necessary components for a filing date. The MPEP states:
If an application as originally filed includes the necessary components for a filing date (see 37 CFR 1.53(b)-(d) and MPEP § 506), the ‘Office Date’ stamp establishes the ‘filing date.’
This means that the date stamped on the application by the USPTO becomes the official filing date, as long as all required elements are present. It’s crucial for applicants to ensure their submissions are complete to secure the earliest possible filing date.
A complete patent application for filing date purposes must include:
- A specification containing a description as per 37 CFR 1.71
- At least one claim (for nonprovisional design applications only) as per 37 CFR 1.75
- Any drawings required by 37 CFR 1.81(a)
As stated in the MPEP: “The filing date of the provisional or nonprovisional application is the date of receipt in the Office of the application which includes a specification containing description pursuant to 37 CFR 1.71 and at least one claim (required for nonprovisional design applications only) pursuant to 37 CFR 1.75, and any drawings required by 37 CFR 1.81(a).”
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When signing patent correspondence, the signer is making certain certifications, including:
- The presentation of any paper to the USPTO constitutes a certification under 37 CFR 11.18(b).
- For S-signatures, the person inserting the signature certifies that the inserted signature is their own.
- When submitting a document signed by another person, the submitter certifies they have a reasonable basis to believe the signature is appropriate.
As stated in 37 CFR 1.4(d)(4)(i): “The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any paper by a party, whether a practitioner or non-practitioner, constitutes a certification under 37 CFR 11.18(b) of this chapter.”
Violations of these certifications may result in sanctions under 37 CFR 11.18(c) and (d).
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What are the USPTO’s guidelines for hand-carrying documents?
The USPTO has specific guidelines for hand-carrying documents to their office. According to MPEP 502:
“Any paper which relates to a pending application may be personally delivered to the Office. The attorney, agent, or applicant should specifically instruct the person making the delivery to hand-carry the paper to the Customer Service Window…”
Key points to remember when hand-carrying documents to the USPTO:
- Deliver to the Customer Service Window at the Randolph Building, 401 Dulany Street, Alexandria, VA 22314
- The delivery must be made during official business hours (8:30 AM to 5:00 PM, Monday through Friday, excluding federal holidays)
- A receipt will be issued for the delivered papers
- The receipt date is considered the filing date for the documents
It’s important to follow these guidelines to ensure proper handling and timely processing of your documents.
For more information on USPTO, visit: USPTO.
The USPTO accepts two types of signatures for patent correspondence:
- Handwritten signature: An original signature personally signed in permanent dark ink or its equivalent.
- S-signature: A signature inserted between forward slash marks, which can include electronic or mechanical signatures.
As stated in 37 CFR 1.4(d): “Correspondence filed in the Office, which requires a person’s signature, may be filed with one of two types of signatures: (A) handwritten signature; and (B) ‘S-signature.'”
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The time limits for responding to a notice under 37 CFR 1.251 vary depending on whether it’s for an application or a patent:
- For applications: The Office sets a three-month period for reply, which is extendable under 37 CFR 1.136(a) by up to three additional months, for a maximum of six months.
- For patents: The Office sets a six-month period for reply, which is not extendable.
MPEP 508.04 states: “The Office will set a time period of three months for reply in a notice under 37 CFR 1.251 in an application. The time period will be extendable under 37 CFR 1.136(a) (unless the notice indicates otherwise) by three months up to a maximum period for reply of six months in an application.” It also notes: “The Office will set a time period of six months for reply in a notice under 37 CFR 1.251 in a patent. The time period will not be extendable under 37 CFR 1.136(a) in a patent.”
The USPTO sets specific time limits for responding to notices about unlocatable files, which differ for applications and patents:
For applications, the MPEP states: The Office will set a time period of three months for reply in a notice under 37 CFR 1.251 in an application. The time period will be extendable under 37 CFR 1.136(a) (unless the notice indicates otherwise) by three months up to a maximum period for reply of six months in an application.
For patents, the time limit is longer: The Office will set a time period of six months for reply in a notice under 37 CFR 1.251 in a patent. The time period will not be extendable under 37 CFR 1.136(a) in a patent because 35 U.S.C. 41(a)(8) only authorizes the Office to charge fees for extensions of time in proceedings involving an application.
It’s important to note that failing to reply within these time limits can have serious consequences, including abandonment of pending applications.
For more information on patent applications, visit: patent applications.
For more information on Time Limits, visit: Time Limits.
The USPTO has designated specific facsimile numbers for various offices to handle different types of correspondence. According to MPEP 502.01, some key facsimile numbers include:
- Central Facsimile Number (for most patent-related correspondence): (571) 273-8300
- International Patent Legal Administration (for responses to Decisions on Petition): (571) 273-0459
- Office of Data Management (for issue fee payments and drawings): (571) 273-2885
- Electronic Business Center (for Customer Number requests): (571) 273-0177
- Assignment Branch (for assignment documents): (571) 273-0140
- Central Reexamination Unit (for ex parte and inter partes reexamination correspondence): (571) 273-9900
- Patent Trial and Appeal Board (for contested cases and trials, where expressly authorized): (571) 273-0042
- Office of Petitions (for petitions to withdraw from issue): (571) 273-0025
The MPEP states: “For each Office location listed below, only the particular type of correspondence indicated may be transmitted to the specific facsimile number at that Office location. All other types of facsimile transmitted correspondence must be sent to the central facsimile number ((571) 273-8300).”
It’s crucial to use the correct facsimile number for your specific type of correspondence to ensure proper handling and processing by the USPTO.
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What are the size standards for a small business concern in patent applications?
The size standards for a small business concern in patent applications are determined by the Small Business Administration (SBA). According to MPEP 509.02:
“For the purpose of paying reduced patent fees, a small business concern is one:
- (i) Whose number of employees, including affiliates, does not exceed 500 persons; and
- (ii) Which has not assigned, granted, conveyed, or licensed (and is under no obligation to do so) any rights in the invention to any person who made it and could not be classified as an independent inventor, or to any concern which would not qualify as a small business concern or a nonprofit organization under this section.”
It’s important to note that these size standards are specific to patent applications and may differ from SBA size standards used for other purposes. Businesses must meet both the employee count criterion and the rights assignment criterion to qualify as a small business concern for patent fee purposes.
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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.
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The signature requirements for correspondence in patent applications are outlined in MPEP 502.02. The section states:
37 CFR 1.4(d) sets forth the signature requirements for correspondence filed in the Office. Specifically, 37 CFR 1.4(d) provides that:
The signature requirements vary depending on the type of correspondence and the method of submission. Generally, they include:
- Handwritten signatures
- S-signatures (electronically created signatures)
- EFS-Web signatures for documents submitted via the Electronic Filing System
Each type of signature has specific requirements to ensure its validity and authenticity.
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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)
Using unsecured email for USPTO communications poses several risks:
- Confidentiality breaches: Sensitive information could be intercepted by unauthorized parties.
- Legal issues: Transmitting confidential information without proper security measures may violate patent laws and regulations.
- Loss of patent rights: Inadvertent public disclosure through unsecured email could jeopardize patent rights.
- Rejection of communications: The USPTO may not accept or acknowledge communications sent through unsecured channels.
MPEP 502.03 warns: “Internet e-mail shall NOT be used to conduct an exchange or communications similar to those exchanged during telephone or personal interviews unless a written authorization has been given.” This emphasizes the importance of using secure, authorized channels for all USPTO communications.
To mitigate these risks, always use the USPTO’s secure email system or the Electronic Filing System (EFS-Web) for official communications.
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Improperly claiming micro entity status can have serious consequences:
- It may be considered fraud on the USPTO if done knowingly
- It can result in the patent being held unenforceable
- Improperly paid fees will need to be corrected, which may include late fees
MPEP 509.04 warns: ‘Any attempt to fraudulently establish status as a micro entity, or pay fees as a micro entity, shall be considered as a fraud practiced or attempted on the Office. Improperly, and with intent to deceive, establishing status as a micro entity, or paying fees as a micro entity, shall be considered as a fraud practiced or attempted on the Office.’
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.
When responding to a notice about an unlocatable file, applicants or patentees must provide copies of correspondence, but there are some exceptions. The MPEP states:
Any appendix or information disclosure statement submitted with an application is not contained in the Office’s database. Therefore, the applicant or patentee must also provide a copy of any appendix or information disclosure statement (except in the limited circumstance discussed below) submitted with the application.
However, there’s an important exception for U.S. patent documents:
Since the Office can obtain copies of U.S. patent documents (U.S. patent application publications and patents) from its internal databases, the Office is not requiring applicants or patentees to provide copies of U.S. patent application publications and patents that are among the applicant’s or patentee’s record of the correspondence between the Office and the applicant or patentee for the application, patent, or other proceeding.
This means that while most documents need to be resubmitted, U.S. patent documents can be omitted from the response.
The USPTO accepts different types of signatures on correspondence, including:
- Handwritten signatures: Original signatures in permanent dark ink or equivalent.
- S-signatures: A signature inserted between forward slash marks, which can be used for correspondence filed in paper, by fax, or via the electronic filing system.
- Electronic signatures: For correspondence submitted via the electronic filing system, a graphic representation of a handwritten signature or an S-signature is acceptable.
According to 37 CFR 1.4(d): Each piece of correspondence, except as provided in paragraphs (d)(2), (d)(3), (d)(4), (e) and (f) of this section, filed in an application, patent file, or other proceeding in the Office which requires a person’s signature, must: (i) Be an original, that is, have an original handwritten signature personally signed, in permanent dark ink or its equivalent, by that person; or (ii) Be a direct or indirect copy, such as a photocopy or facsimile transmission (§ 1.6(d)), of an original.
For S-signatures, the signer must personally insert their own signature, and patent practitioners must include their registration number. The signer’s name must be presented in printed or typed form immediately below or adjacent to the S-signature.
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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.
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When sending confidential information via email to the USPTO, specific requirements must be met:
- Use of the Electronic Filing System (EFS-Web) is strongly recommended for submitting confidential information.
- If email must be used, it should be through the USPTO’s secure email system.
- An authorization from the applicant is required before sending confidential information via email.
- The email must include a statement that the email correspondence is being submitted using the procedures set forth in 37 CFR 1.33(d).
As stated in MPEP 502.03: “Internet email shall NOT be used to conduct an exchange of communications similar to those exchanged during telephone or personal interviews unless a written authorization has been given.”
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To obtain a filing date for a nonprovisional patent application filed under 37 CFR 1.53(b), the application must include:
- A specification containing a description as prescribed by 35 U.S.C. 112(a)
- At least one claim (for applications filed on or after December 13, 2013)
- Any drawings necessary under 35 U.S.C. 113 (first sentence)
As stated in the MPEP: Filing dates are accorded to nonprovisional applications filed under 37 CFR 1.53(b) submitted without the names of all the inventors, the required fees (basic filing fee, and search and examination fees (for applications filed on or after December 8, 2004)), at least one claim (for applications filed on or after December 13, 2013) and/or the inventor’s oath or declaration.
If any required items are missing, the applicant will be notified and given a time period to submit the missing elements. The filing date will be the date the missing items are received.
For more information on nonprovisional application, visit: nonprovisional application.
For more information on patent application requirements, visit: patent application requirements.
To establish micro entity status on the gross income basis, an applicant must meet the following requirements as outlined in 37 CFR 1.29(a)(1)-(4):
- Qualify as a small entity
- Not have been named as an inventor on more than four previously filed patent applications
- Not have a gross income exceeding three times the median household income in the preceding calendar year
- Not have assigned, granted, or conveyed, and not be under an obligation to do so, a license or ownership interest to an entity exceeding the gross income limit
The MPEP states: “Because each inventor and each non-inventor applicant (e.g., assignee-applicant) must separately meet the requirements under 37 CFR 1.29(a)(1)-(4), it would not be appropriate to file a micro entity certification under 37 CFR 1.29(a) for the application if there were more than one applicant or inventor and not all of the applicants and inventors qualified as micro entities under 35 U.S.C. 123(a).“
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To establish micro entity status based on an institution of higher education, an applicant must meet two main requirements:
- Qualify as a small entity as defined in 37 CFR 1.27
- Meet one of the following criteria:
- The applicant’s employer, from which they obtain the majority of their income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965, or
- The applicant has assigned, granted, conveyed, or is under an obligation to assign, grant, or convey, a license or other ownership interest in the application to such an institution of higher education.
As stated in MPEP 509.04(b): “An applicant for micro entity status under the ‘institution of higher education’ basis set forth in 37 CFR 1.29(d) must satisfy two requirements.”
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What are the requirements for filing papers with the USPTO?
When filing papers with the United States Patent and Trademark Office (USPTO), it’s important to adhere to specific requirements:
- Papers must be legibly written either by hand or printed in permanent dark ink or its equivalent.
- They should be presented on flexible, strong, smooth, non-shiny, durable, and white paper.
- All papers must be presented in a form having sufficient clarity and contrast between the paper and the writing to permit electronic reproduction by use of digital imaging and optical character recognition.
As stated in MPEP 501: All papers that are to become a part of the permanent records of the United States Patent and Trademark Office should be legibly written either by a typewriter or mechanical printer in permanent dark ink or its equivalent in portrait orientation on flexible, strong, smooth, non-shiny, durable, and white paper.
These requirements ensure that all documents can be properly processed and stored by the USPTO.
For more information on document legibility, visit: document legibility.
What are the requirements for certificate of mailing or transmission?
The certificate of mailing or transmission is an important tool for securing a filing date with the USPTO. According to MPEP 502, the requirements are:
“The certification requires a signature. Specifically, if the certification is filed by a registered practitioner, it must be signed by that practitioner personally. 37 CFR 1.8(a)(2). If the certification is filed by an applicant, it must be signed by the applicant (except where an oath or declaration is not required, in which case the certification may be signed by a registered practitioner). 37 CFR 1.8(a)(2).”
Key points to remember:
- The certificate must include the date of deposit or transmission.
- It must be signed by the person mailing or transmitting the correspondence.
- For registered practitioners, personal signature is required.
- For applicants, their signature is required unless an oath/declaration is not needed.
Proper use of this certificate can help ensure your documents are considered timely filed, even if there are postal or transmission delays.
For more information on Certificate of Mailing, visit: Certificate of Mailing.
For more information on Certificate of Transmission, visit: Certificate of Transmission.
For more information on USPTO correspondence, visit: USPTO correspondence.
An S-signature must meet the following requirements:
- It must be inserted between two forward slash marks.
- It can only consist of letters, Arabic numerals, or both, with appropriate spaces and punctuation.
- The signer must insert their own S-signature.
- For patent practitioners, the registration number must be included as part of or adjacent to the S-signature.
- The signer’s name must be presented in printed or typed form, preferably immediately below or adjacent to the S-signature.
As stated in 37 CFR 1.4(d)(2)(i): “The S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature.”
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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 recommends several methods for filing new patent applications, with some being more advantageous than others. According to MPEP 511, the recommended methods are:
- Electronic Filing System (EFS-Web or Patent Center): This is the most recommended method. As stated in MPEP 511: “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.”
- Priority Mail Express®: If not filing electronically, this is the next best option. MPEP 511 notes: “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.”
- Hand-delivery: Applications can be hand-delivered to the USPTO.
- First-class mail: While possible, this method carries risks of delay and is not recommended for new applications.
It’s important to note that new applications cannot be filed by facsimile. For more details on electronic filing, refer to the Legal Framework for Patent Electronic System on the USPTO website.
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The USPTO strongly recommends the following methods for filing new patent applications:
- Electronic Filing System (EFS-Web or Patent Center): This is the preferred method whenever permitted.
- 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.
- 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.”
What are the official USPTO mailing addresses for patent-related correspondence?
The United States Patent and Trademark Office (USPTO) has specific mailing addresses for different types of patent-related correspondence. According to the MPEP 502:
For regular mail:
- Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
For hand-carried or EXPRESS MAIL:
- U.S. Patent and Trademark Office
Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
It’s important to use the correct address to ensure timely processing of your correspondence.
For more information on patent correspondence, visit: patent correspondence.
The official business hours of the U.S. Patent and Trademark Office (USPTO) are:
- 8:30 a.m. to 5:00 p.m., Monday through Friday
- Excluding federal holidays in the District of Columbia
As stated in MPEP 510: “The U.S. Patent and Trademark Office (USPTO or Office) working hours are 8:30 a.m. to 5:00 p.m., Monday through Friday, excluding federal holidays in the District of Columbia.”
What are the margin requirements for patent application documents?
When preparing documents for a patent application, it’s crucial to adhere to specific margin requirements set by the USPTO:
- The top margin of the first page should be at least 2 cm (3/4 inch).
- All other margins (left, right, and bottom) must be at least 2 cm (3/4 inch).
- The margins can be slightly larger but should not exceed 4 cm (1-1/2 inches).
According to MPEP 501: All of the application papers must have margins which are at least 2 cm. (3/4 inch) … on the sides, top and bottom. Margins should not exceed 4 cm. (1-1/2 inches). … The top margin of the first page should be at least 2 cm. (3/4 inch).
These margin requirements ensure that all information is visible and can be properly scanned and processed by the USPTO.
MPEP 507 outlines specific requirements for margins and paper size in patent drawings:
Each sheet must include a top margin of at least 2.5 cm. (1 inch), a left size margin of at least 2.5 cm. (1 inch), a right size margin of at least 1.5 cm. (5/8 inch), and a bottom margin of at least 1.0 cm. (3/8 inch). The size of the sheets on which drawings are made must be either 21.0 cm. by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8-1/2 by 11 inches);
These requirements are based on 37 CFR 1.84(f) and (g). Adhering to these specifications ensures that the drawings can be properly scanned and reproduced in the patent publication process.
What are the line spacing requirements for patent application text?
When preparing the text for your patent application, it’s important to follow the USPTO’s line spacing requirements:
- The text should be written in a nonscript type font (e.g., Arial, Times Roman, or Courier).
- The lettering style should be at least 0.32 cm (1/8 inch) high.
- The lines of text should be 1.5 or double spaced.
According to MPEP 501: The text must be written in a nonscript type font (e.g., Arial, Times Roman, or Courier, preferably a font size of 12) lettering style having capital letters which should be at least 0.32 cm. (1/8 inch) high, but may be no smaller than 0.21 cm. (3/32 inch) high (e.g., a font size of 6). The lines of the specification may be 1 1/2 or double spaced.
These requirements ensure that the text is easily readable and can be properly scanned and processed by the USPTO’s systems.
The provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) to (i) have specific limitations when it comes to petitions for filing dates. According to MPEP 511:
“Applicants are cautioned that the provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) to (i) only apply to postal interruptions and emergencies. The provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) to (i) do not provide for granting of a filing date to correspondence as of the date on which it would have been filed but for other exigencies, such as the unavailability of a computer or word processing equipment, or the inaccessibility of an office or building other than a USPS facility.”
This means that these provisions are strictly limited to postal service interruptions or emergencies. They cannot be used for other circumstances that may have prevented timely filing, such as:
- Computer or equipment failures
- Office or building inaccessibility (unless it’s a USPS facility)
- Personal emergencies or other non-postal related issues
Additionally, the statute requires that the correspondence was complete and ready to be deposited with the USPS on the requested filing date, and that the sole reason for non-deposit was the unavailability of postal service due to the designated interruption or emergency.
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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.
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What are the income limitations for micro entity status?
To qualify for micro entity status, an applicant’s income must not exceed three times the median household income as reported by the Bureau of the Census. According to USPTO’s 2022 notice, the income limit is $206,109. The MPEP states:
“[A]n applicant qualifies as a micro entity if the applicant’s gross income in the previous calendar year does not exceed the ‘maximum qualifying gross income’ which is set to three times the median household income as reported by the Bureau of the Census.” (MPEP 509.04(a))
It’s important to note that this limit is subject to change, and applicants should check the latest USPTO notices for the most current information.
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The Public Search Facility in Alexandria has extended hours compared to the regular USPTO business hours:
- 8:00 a.m. to 8:00 p.m., Monday through Friday
- Excluding federal holidays in the District of Columbia
As stated in MPEP 510: “The hours for the Public Search Facility in Alexandria are 8:00 a.m. to 8:00 p.m., Monday through Friday, excluding federal holidays in the District of Columbia.”
Applications properly filed via Priority Mail Express® (formerly Express Mail) have special filing date rules:
- The filing date is the date the application was deposited with the U.S. Postal Service as Priority Mail Express®
- This applies even if the deposit date is a Saturday, Sunday, or federal holiday
- The application must comply with the requirements of 37 CFR 1.10 to receive this benefit
The MPEP states: For applications properly filed under 37 CFR 1.10, the filing date is the date that the application was deposited as Priority Mail Express® in the U.S. Postal Service. For example, if a new patent application is deposited in Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date. 37 CFR 1.6(a)(2).
If the proper procedures were not followed, the application will receive a filing date as of the date it was received in the USPTO. Any review of these matters would be by way of petition, accompanied by the petition fee.
For more information on Priority Mail Express, visit: Priority Mail Express.
What are the consequences of submitting insufficient fees for a patent application?
Submitting insufficient fees for a patent application can have significant consequences. According to MPEP 509:
“An application filed with insufficient basic filing fee, search fee, examination fee, or oath or declaration will be treated as an incomplete application under 37 CFR 1.53(f) and will not be given a filing date until the filing fee is received.”
This means:
- Your application won’t receive a filing date until the correct fees are paid
- This delay could affect your priority date
- If not corrected promptly, the application may be considered abandoned
It’s crucial to ensure all required fees are paid in full when submitting a patent application to avoid these issues.
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What are the consequences of submitting color drawings in a utility patent application?
Submitting color drawings in a utility patent application has specific consequences and requirements:
- Color drawings are not ordinarily permitted in utility patent applications.
- As stated in MPEP 507: “Color drawings are permitted in design applications. For utility patent applications, color drawings are not permitted without a grantable petition.”
- If color drawings are submitted without an approved petition, OPAP will send a Notice to File Corrected Application Papers.
- The applicant must either:
- Replace the color drawings with black and white drawings, or
- File a grantable petition under 37 CFR 1.84(a)(2) to accept the color drawings.
- The petition must explain why color drawings are necessary and be accompanied by the fee set forth in 37 CFR 1.17(h).
It’s important to consider whether color drawings are truly necessary for your utility patent application, as they require additional steps and fees in the application process.
For more information on application papers, visit: application papers.
For more information on color drawings, visit: color drawings.
The consequences of not responding to a notice about an unlocatable file differ for pending applications and granted patents:
- For pending applications: According to 37 CFR 1.251(b),
failure to comply with one of paragraphs (a)(1), (a)(2), or (a)(3) of this section within the time period set in the notice will result in abandonment of the application.
- For granted patents: While the patent won’t expire, the MPEP states that
the only certified copy of the patent file that the Office will be able to produce will be a copy of the patent and a copy of the application-as-filed (which may have an adverse impact during attempts to enforce the patent).
Additionally, for patents involved in USPTO proceedings, the Office may take action under 37 CFR 41.128 or 37 CFR 11.18.
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What are the consequences of improperly claiming small entity status?
Improperly claiming small entity status can have serious consequences. The MPEP 509.03 states: “Improperly and with intent to deceive establishing status as a small entity, or paying fees as a small entity, shall be considered as a fraud practiced or attempted on the Office.” This means that intentionally falsely claiming small entity status is considered fraud. Consequences may include:
- Invalidation of the patent
- Requirement to pay back all fee differences
- Potential legal action for fraud
It’s crucial to verify eligibility carefully before claiming small entity status and to update the USPTO if your status changes.
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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.
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The consequences of failing to respond to a 37 CFR 1.251 notice differ for pending applications and granted patents:
- For pending applications: Failure to reply within the set time period will result in abandonment of the application. MPEP 508.04 cites 37 CFR 1.251(b): “With regard to a pending application, failure to comply with one of paragraphs (a)(1), (a)(2), or (a)(3) of this section within the time period set in the notice will result in abandonment of the application.”
- For granted patents: While the patent won’t expire, there may be limitations on the certified copy of the patent file that the Office can produce. MPEP 508.04 states: “While abandonment (or expiration) of a patent is not an issue if a patentee fails to timely comply with a notice under 37 CFR 1.251, in such a situation the only certified copy of the patent file that the Office will be able to produce will be a copy of the patent and a copy of the application-as-filed (which may have an adverse impact during attempts to enforce the patent).”
Additionally, for patents involved in proceedings before the Office, action may be taken under 37 CFR 41.128 or 37 CFR 11.18.
What are the consequences of bounced checks or insufficient funds for USPTO fee payments?
Submitting a check that bounces or having insufficient funds for USPTO fee payments can have serious consequences. The MPEP 509 states: ‘If any fee is paid by a check which is uncollectible or is returned unpaid, or if any payment is made in an amount less than the required amount, the fee payment shall be regarded as incomplete and the processing of the application or other filing shall be held in abeyance until the full fee payment is made.’
Consequences may include:
- Suspension of application processing
- Potential loss of filing date
- Additional fees or penalties
- Possible disciplinary action for repeated occurrences
To avoid these issues, ensure sufficient funds are available and consider using more reliable payment methods like electronic funds transfer or credit cards.
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Improper signatures on patent correspondence can have serious consequences. While the MPEP 502.02 doesn’t explicitly list all consequences, it emphasizes the importance of proper signatures:
Correspondence filed in the Office by applicants and other parties must be signed by the applicants or other party, or by a registered patent attorney or agent of record in the patent application or patent.
The potential consequences of an improper signature include:
- Rejection or return of the correspondence
- Delays in processing the application or request
- Potential loss of rights or missed deadlines
- Requirement for ratification or confirmation of the signature
- In severe cases, charges of fraud or inequitable conduct
To avoid these issues, it’s crucial to ensure all signatures comply with USPTO requirements as outlined in 37 CFR 1.4 and MPEP 502.02. When in doubt, consult with a registered patent attorney or agent to verify proper signature practices.
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OPAP may object to patent drawings for several reasons, including:
- Line quality issues
- Missing lead lines
- Excessive or non-English text
- Incorrect margins or paper size
- Improper figure labeling
- Illegible photographs
- Unauthorized color drawings or photographs
For example, regarding line quality, MPEP 507 states:
OPAP may object to and require corrected drawings within a set time period, if the drawings: (A) have a line quality that is too light to be reproduced (weight of all lines and letters must be heavy enough to permit adequate reproduction) or text that is illegible (reference characters, sheet numbers, and view numbers must be plain and legible). See 37 CFR 1.84(l) and (p)(1);
The USPTO has specific certification requirements for signatures in correspondence. According to MPEP 501, which cites 37 CFR 1.4(d)(4):
The person inserting a signature under paragraph (d)(2) or (d)(3) of this section in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature. A person submitting a document signed by another under paragraph (d)(2) or (d)(3) of this section is obligated to have a reasonable basis to believe that the person whose signature is present on the document was actually inserted by that person, and should retain evidence of authenticity of the signature.
Key points about signature certifications:
- The person inserting an S-signature certifies it as their own.
- When submitting a document signed by another, you must have a reasonable belief that the signature is authentic.
- Evidence of signature authenticity should be retained.
- Violations of certification rules may result in sanctions.
These requirements apply to both handwritten and S-signatures. They ensure the integrity and authenticity of documents submitted to the USPTO.
For more information on USPTO correspondence, visit: USPTO correspondence.
What are the accepted payment methods for patent fees?
The USPTO accepts various payment methods for patent fees:
- Credit or debit card
- Electronic funds transfer (EFT)
- Deposit account
- Check or money order
As stated in MPEP 509: ‘Fees may be paid by U.S. credit card, electronic funds transfer (EFT), deposit account, check or money order.’ Electronic payment methods are preferred for their efficiency and speed.
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The USPTO accepts various methods of payment for patent and trademark process fees. According to MPEP 509, the primary methods include:
- Credit cards (AMERICAN EXPRESS®, DISCOVER®, MASTER CARD®, and VISA®)
- Deposit accounts
- Electronic funds transfer (EFT)
- Other forms of payment accepted by the Office
It’s important to note that credit card payments are subject to a transaction maximum. As stated in the MPEP: Effective June 1, 2015, the credit card transaction maximum is $24,999.99 as specified in section 7045 of the ‘Treasury Financial Manual.’
This limit does not apply to other payment methods.
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What are the acceptable methods for filing papers with the USPTO?
The USPTO accepts several methods for filing papers:
- Hand-delivery to the USPTO office in Alexandria, Virginia
- First-class mail through the United States Postal Service (USPS)
- Express Mail service of the USPS
- Electronic filing through the USPTO’s Electronic Filing System (EFS-Web)
As stated in MPEP 501: ‘Papers may be filed using first class mail through the United States Postal Service.’ The MPEP also notes that ‘Correspondence may be hand-carried to the Office.’ For electronic filing, it’s important to note that ‘EFS-Web can be used to file new applications, enter the national stage under 35 U.S.C. 371, and submit most follow-on documents in patent applications.’
For more information on EFS-Web, visit: EFS-Web.
For more information on electronic filing, visit: electronic filing.
For more information on Express Mail, visit: Express Mail.
For more information on first-class mail, visit: first-class mail.
For more information on hand-delivery, visit: hand-delivery.
All relevant information from MPEP 502.05 – Correspondence Transmitted by EFS-Web has been thoroughly covered in the previously generated FAQs. No additional meaningful questions can be created without substantial repetition of existing content.
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USPTO employees are required to verify the identity of email senders in patent communications to prevent misrepresentation or spoofing. According to MPEP 502.03:
‘Email must be initiated by a registered practitioner, or an applicant in a pro se application, and sufficient information must be provided to show representative capacity in compliance with 37 CFR 1.34.’
The MPEP provides examples of information that can be used for verification:
- Attorney registration number
- Attorney docket number
- Patent application number
Additionally, the MPEP advises:
‘Similar to the policy set forth in MPEP 100 for handling telephone calls, when responding to an email, no information should be disclosed until the identity of the requester can be adequately verified.’
Examiners are instructed to verify the identity by checking Patent Data Portal or the application file, such as confirming the email address previously provided in Patent Data Portal or the application.
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For joint inventor applicants, MPEP 509.04(c) states that “each joint inventor should sign a separate copy of the relevant micro entity certification form.” However, there is an exception:
“If one joint inventor is appointed to prosecute the application on behalf of all the other joint inventors, then only that one joint inventor need sign the micro entity certification form.”
This appointment can be made using USPTO form PTO/AIA/81, titled “Power Of Attorney To One Or More Of The Joint Inventors And Change Of Correspondence Address”, available on the USPTO forms Web page.
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Patent maintenance fee payments can be submitted in two ways:
- Electronically: This is the preferred method. Payments can be made through the USPTO’s Patent Maintenance Fees Storefront.
- By mail: If not submitted electronically, maintenance fee payments and related correspondence should be addressed to:
Mail Stop Maintenance Fee
Director of the United States Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
The MPEP states: Maintenance fee payments not electronically submitted over the Internet and correspondence related to maintenance fees may be addressed to: Mail Stop Maintenance Fee, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450
It’s important to note that electronic submission is faster, more secure, and provides immediate confirmation of payment.
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Maintenance fee payments have a specific mailing address if not submitted electronically. According to MPEP 501, which cites 37 CFR 1.1(d):
Maintenance fee payments that are not submitted electronically and correspondence related to maintenance fees may be addressed to: Mail Stop Maintenance Fee, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
However, it’s important to note that the USPTO strongly encourages electronic submission of maintenance fee payments. The Electronic Maintenance Fee Form is the preferred method for these transactions.
If you must submit a paper payment, ensure it’s properly addressed to avoid delays in processing. Include all necessary information, such as the patent number and the fee amount being paid.
For more information on USPTO correspondence, visit: USPTO correspondence.
For correspondence that requires immediate attention from the USPTO, such as certain petitions or time-sensitive documents, the following methods are recommended:
- Use the USPTO patent electronic filing system (EFS-Web or Patent Center). This is the preferred method for most immediate correspondence.
- Where permitted, use facsimile transmission to the appropriate area of the Office.
- Hand-carry the documents to the USPTO in Alexandria, VA.
The MPEP states: Applicants are encouraged to transmit these types of correspondence by the USPTO patent electronic filing system (see MPEP § 502.05). Where permitted, patent-related correspondence that requires immediate Office attention may also be submitted to the appropriate area of the Office for processing by facsimile transmission (see MPEP § 502.01, subsections I.B and II) or hand-carried (see MPEP § 502), subsection III).
Examples of correspondence requiring immediate attention include:
- Petitions for express abandonment to avoid publication
- Petitions to withdraw an application from issue
- Requests for expedited examination of a design application
- Certain papers required by the Office of Data Management
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According to MPEP 507, figures in patent drawings should be labeled as follows:
Each figure must be labeled ‘Fig.’ with a consecutive Arabic numeral (1, 2, etc.) or an Arabic numeral and capital letter in the English alphabet (A, B, etc.). See 37 CFR 1.84(u)(1);
This labeling convention ensures clarity and consistency in referencing figures throughout the patent application and publication. Improper labeling may result in an objection from OPAP and require correction.
The USPTO requires clear itemization of fees to ensure proper accounting. According to MPEP 509:
37 CFR 1.22(b) sets forth that fees must be itemized in such a manner that it is clear for which purpose fees are paid. The Office may return fees that are not itemized.
However, the MPEP clarifies that the itemization requirement is not meant to create problems when the purpose is clear:
- A reference to ‘filing fee(s)’ is sufficient to cover all types of filing fees.
- In later submissions, ‘filing fee(s)’ would also cover surcharges.
- A reference to ‘any corresponding fee under 37 CFR 1.16’ covers any fee under that section.
The key is to provide enough information for the USPTO to understand the purpose of the payment.
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Filing a Continued Prosecution Application (CPA) by facsimile requires specific procedures, as outlined in MPEP 502.01:
- CPAs are only available for design applications.
- The CPA must be sent to the central facsimile number: (571) 273-8300.
- An authorization to charge the basic filing fee to a deposit account or credit card must be included, or the application will be treated as filed without the basic filing fee.
- There is a special receipt procedure for CPA filings by fax:
There is a special receipt procedure for filing a CPA by fax, whereby the Office will fax back a receipt of the CPA filing if applicant submits the Office receipt form along with the CPA filing.
It’s important to note that if the USPTO has no evidence of receiving a CPA transmitted by fax, the applicant may need to file a petition under 37 CFR 1.6(f) to request a filing date. This petition must include:
- Information about the previous transmission
- An additional copy of the CPA
- A statement attesting to the previous transmission
- Evidence of the transmission, such as a sending unit’s report or other evidence created within one business day of the transmission
Always ensure that you follow these procedures carefully when filing a CPA by facsimile to avoid any issues with the filing date or processing of your application.
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According to MPEP 509.02, fees for small entities are reduced by 50% for most patent-related fees. The MPEP states:
The fees which are reduced by 50% for small entities include patent application filing fees including the basic filing fee, search fee, examination fee, application size fee, and excess claims fees (37 CFR 1.16), extension of time, revival, and appeal fees (37 CFR 1.17), patent issue fees (37 CFR 1.18), and maintenance fees on patents (37 CFR 1.20).
Additionally, certain PCT international stage fees are also eligible for the 50% reduction for small entities.
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Once small entity status is established in an application or patent, it remains in effect until:
- The issue fee is due, or
- Any maintenance fee is due
At these points, a new determination of entitlement to small entity status is required. As stated in 37 CFR 1.27(g)(1): “Once small entity status is 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.”
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Micro entity status, once properly established, generally remains in effect until:
- A fee is paid in the small entity or undiscounted amount
- A notification of loss of entitlement to micro entity status is filed
- The issue fee or a maintenance fee is due
However, the applicant has a continued obligation to verify eligibility for micro entity status each time a fee is paid. As stated in 37 CFR 1.29(g): ‘a fee may be paid in the micro entity amount only if status as a micro entity as defined in paragraph (a) or (d) of this section is appropriate on the date the fee is being paid.’
The time period for responding to a notice about an unlocatable file depends on whether it’s for an application or a patent:
- For applications: The USPTO typically sets a three-month period, which is extendable under 37 CFR 1.136(a) by up to three additional months, for a maximum of six months.
- For patents: A six-month non-extendable period is set.
It’s important to note that for applications, as stated in the MPEP, If, however, an applicant fails to reply to a notice under 37 CFR 1.251 within three months of its mailing date, any patent term adjustment under 35 U.S.C. 154(b) will be reduced by a period equal to the number of days (if any) beginning on the day after the date that is three months after the mailing date of the notice under 37 CFR 1.251 and ending on the date the reply to the notice under 37 CFR 1.251 was filed.
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Once small entity status is established in an application or patent, you can continue to pay fees as a small entity until the issue fee is due or any maintenance fee is due. This is stated in 37 CFR 1.27(g)(1): ‘Once small entity status is 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.’
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The gross income limit for micro entity status is determined as follows:
- It is set at three times the median household income for the preceding calendar year, as reported by the Bureau of the Census.
- The USPTO publishes the current maximum qualifying gross income on their website.
- This limit applies to each applicant, inventor, and joint inventor individually.
The MPEP clarifies: “At the time any fee is to be paid in the micro entity amount, it is required that no inventor and no non-inventor applicant (if any) have a preceding calendar year’s gross income exceeding the ‘maximum qualifying gross income’ posted on the USPTO website.“
It’s important to note that gross income means total income, not adjusted gross income. The MPEP states: “‘Gross income’ and ‘adjusted gross income’ are not the same thing. Adjusted gross income is defined as gross income minus adjustments to income. For purposes of micro entity status it is ‘gross income’ – not ‘adjusted gross income’ that matters.“
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The filing date for Priority Mail Express® submissions is typically determined by the “date accepted” on the Priority Mail Express® mailing label. According to MPEP 513:
Office personnel will routinely look to the Priority Mail Express® mailing label, and stamp the “date accepted” or other official USPS notation as the filing date of the correspondence.
If the USPS deposit date cannot be determined, the correspondence will be accorded the date of receipt in the Office as the filing date. It’s important to note that the “date accepted” must be completed by the USPS, not by the applicant.
The deficiency owed for micro entity fee errors is calculated according to 37 CFR 1.29(k)(2). The MPEP states:
The deficiency owed for each previous fee erroneously paid as a micro entity is the difference between the current fee amount for a small entity or non-small entity, as applicable, on the date the deficiency is paid in full and the amount of the previous erroneous micro entity fee payment.
To calculate the total deficiency payment:
- Determine the current fee amount for each erroneously paid fee (small or non-small entity rate)
- Subtract the micro entity fee amount previously paid
- Sum up all individual deficiency amounts
This calculation ensures that the correct fee amount is paid based on the entity status and current fee schedule.
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For micro entity status, gross income is determined as follows:
- Based on the calendar year preceding the year a fee is paid
- Uses the definition of gross income in section 61(a) of the Internal Revenue Code
- Compared to three times the median household income as reported by the Bureau of the Census
- For non-US income, converted using the average currency exchange rate for the relevant calendar year
The USPTO website provides the current maximum qualifying gross income limit.
When calculating gross income for micro entity status involving foreign currency, the USPTO provides specific guidelines:
- If an applicant’s, inventor’s, or entity’s gross income in the preceding calendar year is not in U.S. dollars, the average currency exchange rate reported by the Internal Revenue Service (IRS) for that calendar year must be used for conversion.
- For income received partially in U.S. dollars and partially in foreign currency, the foreign portion must be converted to U.S. dollars and added to the U.S. dollar amount.
The MPEP states: “If an applicant’s, inventor’s, joint inventor’s, or entity’s gross income in the preceding calendar year is not in United States dollars, the average currency exchange rate, as reported by the Internal Revenue Service, during that calendar year shall be used to determine whether the applicant’s, inventor’s, joint inventor’s, or entity’s gross income exceeds the threshold specified in 37 CFR 1.29(a)(3) or (a)(4).“
The IRS provides yearly average currency exchange rates on its website, which should be used for these calculations.
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An ‘institution of higher education’ for micro entity status purposes is defined according to Section 101(a) of the Higher Education Act of 1965. The key criteria include:
- Located in any U.S. state or territory
- Admits students with secondary education or equivalent
- Authorized to provide post-secondary education
- Offers bachelor’s degrees or at least 2-year programs toward such degrees
- Is a public or non-profit institution
- Is accredited or pre-accredited by a recognized agency
As stated in MPEP 509.04(b): “Section 101(a) of the Higher Education Act of 1965 defines what is meant by ‘institution of higher education’ in the context of 37 CFR 1.29(d).”
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How does USPTO verify gross income for micro entity status?
The USPTO generally does not independently verify the gross income of applicants claiming micro entity status. According to MPEP 509.04(a):
“The Office does not generally question certification of micro entity status but may require additional information on a case-by-case basis.”
However, applicants are required to certify their eligibility for micro entity status under oath. Providing false information can lead to severe consequences, including invalidation of the patent and potential criminal charges for fraud.
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Transferring rights in an invention can affect small entity status. According to MPEP 509.02:
If the individual inventor, small business concern, or nonprofit organization assigned, granted, conveyed, or licensed, or came under an obligation to assign, grant, convey, or license, any rights to the invention to any individual, small business concern, or nonprofit organization which would not qualify as a small entity (37 CFR 1.27(a)), then the inventor, small business concern, or nonprofit organization would no longer qualify for small entity status.
However, transferring partial rights to another small entity does not disqualify the original entity from small entity status. It’s important to note that rights in question are those in the United States. Transferring rights to a foreign patent does not affect small entity status if no U.S. rights are transferred.
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The USPTO has established procedures to notify the public about postal service interruptions that may affect patent filings. According to MPEP 511:
When the Director designates a postal service interruption or emergency, a notice will be published in the Official Gazette, and will be posted on the USPTO website at www.uspto.gov.
The USPTO’s notification process includes:
- Publishing a notice in the Official Gazette
- Posting information on the USPTO website
- Possibly issuing press releases or other public communications
These notifications typically include:
- Details about the nature and scope of the interruption
- Any special procedures or accommodations being made
- Instructions for applicants affected by the interruption
- Contact information for further inquiries
It’s crucial for patent applicants and attorneys to regularly check these official sources during potential postal disruptions to stay informed about any changes in filing procedures or deadlines.
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The USPTO has a specific policy for handling unnecessary duplicate copies of correspondence. According to MPEP 502.04:
The Office may dispose of duplicate copies of correspondence in the file of an application, patent, or other proceeding.
Furthermore, the MPEP states:
When the Office does not require duplicate copies of a paper, the filing of multiple copies may cause a delay in processing by the Office. Accordingly, the Office may discard duplicate copies of correspondence filed in an application or patent file.
This means that if you submit unnecessary duplicate copies, the USPTO may discard them to streamline processing and prevent delays. It’s important to only submit duplicate copies when specifically required by the Office.
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The USPTO has specific procedures for handling refunds of fees paid by credit card. According to MPEP 509:
35 U.S.C. 42(d) and 37 CFR 1.26 (which concern refund of patent and trademark fees) also apply to requests for refund of fees paid by credit card. Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged. See 37 CFR 1.26(a).
Key points about USPTO refunds for credit card payments:
- Refunds are processed as credits to the original credit card account used for payment.
- The same laws and regulations governing refunds of patent and trademark fees apply to credit card payments.
- For information on which fees are refundable, refer to MPEP § 607.02 regarding returnability of fees.
It’s important to note that refund requests are subject to specific criteria and time limitations, so applicants should review the relevant regulations when seeking a refund.
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Priority Mail Express® submissions to the USPTO are handled differently from regular mail. According to MPEP 505, New patent applications filed in accordance with 37 CFR 1.10 will be stamped by the Office with the date of deposit as Priority Mail Express® with the United States Postal Service.
This means:
- The date of deposit with USPS is used as the receipt date, not the date it arrives at the USPTO
- This applies even on weekends and holidays when the USPTO is closed
For example, if a new patent application is deposited in Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date.
For more information on Priority Mail Express, visit: Priority Mail Express.
For more information on USPTO, visit: USPTO.
The USPTO has specific rules regarding patent term adjustments when dealing with notices about unlocatable files. According to the MPEP:
If, however, an applicant fails to reply to a notice under 37 CFR 1.251 within three months of its mailing date, any patent term adjustment under 35 U.S.C. 154(b) will be reduced by a period equal to the number of days (if any) beginning on the day after the date that is three months after the mailing date of the notice under 37 CFR 1.251 and ending on the date the reply to the notice under 37 CFR 1.251 was filed.
This reduction in patent term adjustment is based on 35 U.S.C. 154(b)(2)(C)(ii) and 37 CFR 1.704(b). It’s important to note that this reduction applies even if the applicant responds within the overall six-month period allowed for reply (including extensions).
This policy underscores the importance of prompt action in response to such notices, as delays can directly impact the duration of patent protection.
For more information on patent term adjustment, visit: patent term adjustment.
During postal service emergencies, the USPTO takes special measures to ensure patent applications are handled appropriately:
- The USPTO Director may designate the interruption or emergency as a ‘postal service interruption or emergency’ under 35 U.S.C. 21(a).
- This designation allows for the acceptance of filings that would have been timely filed if not for the postal service interruption or emergency.
- The USPTO may publish a notice in the Official Gazette and on its website about the designation and any special procedures to be followed.
As stated in MPEP 511: The USPTO will consider on a case-by-case basis whether to waive the date indicated on any certificate of mailing or transmission accompanied by a showing which establishes to the satisfaction of the Director that the delay was due to the emergency.
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The USPTO has specific procedures for handling papers that include a Certificate of Mailing or Transmission. According to the MPEP:
“The Mail Center of the Office of Patent Application Processing (OPAP) will continue to date stamp the actual date of receipt of all papers received by mail in the Office. No attempt will be made to retain the envelopes in which the papers are received or to indicate on the papers the postal cancellation date (postmark).”
Key points in the USPTO’s handling process include:
- The actual receipt date is stamped on all papers
- The date on the Certificate is used to determine if the paper was filed within the period for reply
- If the paper is received after the period for reply, but the Certificate date is within the period, the paper is considered timely filed
- A notation (e.g., “C of Mail 11/10/97”) is made next to the Office Date Stamp to indicate the Certificate date
It’s important to note that while the Certificate date is used to determine timeliness, the actual receipt date is used for all other purposes, including calculating subsequent deadlines.
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The USPTO has a specific procedure for handling missing documents from an application file. According to the MPEP:
When a document is missing from an application, Office practice is to call the applicant’s representative and request submission (generally by facsimile) of a copy of the missing document.
This informal approach is the primary method used by the USPTO to address missing documents. However, if this informal method is unsuccessful, the Office may resort to more formal measures:
While the Office will generally treat missing documents in this relatively informal manner (rather than issuing a notice under 37 CFR 1.251), the Office may issue a notice under 37 CFR 1.251 to obtain a copy of a missing document if the Office’s informal attempts to obtain a copy of the document are unsuccessful.
It’s important for applicants and their representatives to promptly respond to such informal requests to avoid more formal procedures and potential delays in application processing.
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The USPTO does not officially receive mail on weekends or federal holidays when the office is closed. Any correspondence received on these days is typically stamped with the next business day’s date. For example, if mail is delivered to the USPTO on a Saturday, it will be stamped with the following Monday’s date (or Tuesday if Monday is a holiday). This practice ensures consistency in dating received documents and aligns with the USPTO’s official business hours.
The USPTO handles informal drawings in patent applications as follows:
- If the drawings are informal but otherwise sufficient for examination, the USPTO will accept them provisionally.
- The drawings will be approved by the Office of Patent Application Processing (OPAP) for publication purposes.
- Formal drawings will be required if the application is allowed.
According to MPEP 507: ‘If the drawings are informal but otherwise in compliance with 37 CFR 1.121(d), the OPAP will accept the application for purposes of publication and place a ‘Drawing Informalities’ form PTO-948 in the file wrapper.’
The examiner may require formal drawings or corrections in a subsequent office action if necessary for a proper examination or if the application is allowed.
For more information on drawing review, visit: drawing review.
For more information on informal drawings, visit: informal drawings.
For more information on OPAP, visit: OPAP.
The USPTO has specific rules for handling facsimile transmissions received outside of business hours, as outlined in MPEP 502.01:
Correspondence for which transmission was completed on a Saturday, Sunday, or Federal holiday within the District of Columbia, will be accorded a receipt date of the next succeeding day which is not a Saturday, Sunday, or Federal holiday within the District of Columbia.
This means that if a facsimile transmission is completed during non-business hours, weekends, or federal holidays, the USPTO will assign it a receipt date of the next business day. For example:
- A fax completed on Friday at 9:05 p.m. Pacific time (12:05 a.m. Saturday Eastern time) would be accorded a receipt date of the following Monday (assuming Monday is not a federal holiday).
- A fax completed on a federal holiday would be accorded a receipt date of the next business day.
It’s important to note that while the actual transmission may occur outside of business hours, the official receipt date will always be a business day. This can be crucial for meeting deadlines and calculating time-sensitive patent-related actions.
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The USPTO has specific rules for dating facsimile transmissions. According to 37 CFR 1.6(a)(3):
Correspondence transmitted by facsimile to the Patent and Trademark Office will be stamped with the date on which the complete transmission is received in the Patent and Trademark Office unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the date stamped will be the next succeeding day which is not a Saturday, Sunday, or Federal holiday within the District of Columbia.
This means that faxed correspondence is generally dated on the day of complete transmission, except for weekends and holidays, where it’s dated the next business day.
The USPTO has specific procedures for handling correspondence with a Certificate of Mailing or Transmission:
- All papers received by mail are date stamped with the actual date of receipt, regardless of any Certificate of Mailing.
- For papers with a Certificate of Mailing or Transmission, the date on the certificate is used to determine if the paper was filed within the period for reply.
- If the paper is received within the period for reply, the actual receipt date is used for all purposes.
- If the paper is received after the period for reply, but the certificate date is within the period, the paper is considered timely filed. In this case, a notation is made next to the ‘Office Date’ stamp indicating the certificate date (e.g., ‘C of Mail 11/10/97’).
- For facsimile transmissions, the date stamped is the date the complete transmission is received, 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 business day.
- For EFS-Web submissions, the receipt date is the date the correspondence is received at the USPTO’s correspondence address when it was officially submitted, which can include weekends and holidays.
The MPEP states: “The date indicated on the Certificate of Mailing or of Transmission will be used by the Office only to determine if the paper was deposited in the United States Postal Service, transmitted by facsimile or transmitted via EFS-Web within the period for reply.”
How does the USPTO handle correspondence submitted in violation of the rules?
The USPTO has specific procedures for handling correspondence submitted in violation of the rules. According to MPEP 501:
‘Correspondence submitted to the U.S. Patent and Trademark Office in violation of the rules as to paying fees, manner of presenting papers, or other formal matters will not be filed.’
However, the USPTO does provide a grace period and notification process:
- The Office may notify the submitter of the violation and set a period for correction.
- If the violation is corrected within the set period, the document will be considered as having been filed on the date of receipt of the correction.
It’s crucial for applicants to adhere to USPTO rules to avoid potential delays or non-filing of their correspondence. If a violation occurs, prompt correction based on USPTO notification is essential to maintain the original filing date.
How does the USPTO handle correspondence sent by Priority Mail Express®?
The USPTO treats correspondence sent by Priority Mail Express® (formerly Express Mail) with special consideration. According to MPEP 502:
“Any correspondence received by Priority Mail Express® will be considered filed with the USPTO on the date of deposit with the United States Postal Service.”
This means that the date of deposit with USPS is considered the filing date at the USPTO, which can be crucial for meeting deadlines. However, it’s important to note that:
- The Priority Mail Express® label number must be placed on the correspondence.
- The filing date accorded to Priority Mail Express® is only applicable to the specific items deposited with USPS.
Always keep your Priority Mail Express® mailing receipt as proof of the deposit date.
For more information on Priority Mail Express, visit: Priority Mail Express.
For more information on USPS, visit: USPS.
For more information on USPTO correspondence, visit: USPTO correspondence.
The USPTO does not receive or process correspondence on Saturdays, Sundays, or Federal holidays within the District of Columbia, with some exceptions. According to 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. Except for correspondence transmitted by facsimile under paragraph (a)(3) of this section, or filed electronically under paragraph (a)(4) of this section, no correspondence is received in the Office on Saturdays, Sundays, or Federal holidays within the District of Columbia.
When the last day for taking action or paying a fee falls on a weekend or holiday, it’s considered timely if done on the next business day: 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.
How does the USPTO handle correspondence received after official hours?
The USPTO has specific procedures for handling correspondence received outside of official business hours:
- Correspondence delivered to the USPTO after business hours is considered filed on the next business day.
- There are exceptions for certain types of time-sensitive filings.
MPEP 502 states: ‘Correspondence placed in the USPTO’s night box before midnight on weekdays (except federal holidays) will receive a filing date of the succeeding business day.’ This means that documents deposited in the night box after business hours but before midnight will be treated as if they were received on the next business day.
For electronic filings, the USPTO’s Electronic Filing System (EFS-Web) is generally available 24/7, allowing for submissions outside of regular business hours. However, the actual filing date may still be affected by the time of submission.
How does the USPTO handle correspondence during emergency situations?
The USPTO has provisions for handling correspondence during emergency situations, such as severe weather or other unforeseen circumstances:
- The USPTO may designate certain days as ‘Federal holidays within the District of Columbia’ under specific conditions.
- This designation affects filing dates and deadlines.
MPEP 502 states: ‘When the entire USPTO is officially closed for business for an entire day due to an emergency situation, the Office will consider each such day a ‘Federal holiday within the District of Columbia’ under 35 U.S.C. 21.’ This means that deadlines falling on such days will be extended to the next business day, similar to federal holidays.
During emergencies, the USPTO typically issues public notices and updates its website to inform stakeholders about any changes to operations or filing procedures. It’s crucial for patent applicants and attorneys to stay informed about such announcements to ensure compliance with modified deadlines and procedures.
How does the USPTO handle correspondence delivered by EXPRESS MAIL?
The USPTO has specific procedures for handling correspondence delivered by EXPRESS MAIL. According to MPEP 502:
“Any correspondence delivered by the ‘Express Mail Post Office to Addressee’ service of the United States Postal Service (USPS) is considered filed or received in the Office on the date of deposit with the USPS.”
This means that the date of deposit with the USPS is considered the filing date at the USPTO, provided that:
- The correspondence is properly addressed to the USPTO
- The proper address is on the EXPRESS MAIL mailing label
- The EXPRESS MAIL mailing label number is placed on the correspondence
It’s important to note that this applies only to the USPS EXPRESS MAIL service and not to similar services provided by private courier companies.
For more information on Express Mail, visit: Express Mail.
For more information on USPTO correspondence, visit: USPTO correspondence.
The USPTO treats applications with omitted drawings similarly to those with missing specification pages. According to MPEP 506:
In the event that a page of the specification, or a portion thereof, or a page of the drawings, or a portion thereof, is inadvertently omitted from an application as filed, the application will be not be considered complete and the applicant will be notified to file the omitted portion.
If drawings are omitted, the applicant will be notified and given a time period to submit the missing drawings. However, adding new drawings after the filing date may affect the application’s effective filing date if they introduce new matter. It’s crucial to include all necessary drawings with the initial application to avoid potential issues.
For more information on new matter, visit: new matter.
When an application is filed with missing parts, the USPTO follows these procedures:
- If the application meets minimum requirements for a filing date, it will be assigned one.
- A Notice to File Missing Parts will be issued, detailing the missing items.
- Applicants must submit missing items along with any required surcharges within the specified time period.
- For applications filed on or after September 16, 2012, the inventor’s oath or declaration can be postponed until payment of the issue fee if a compliant application data sheet is filed.
- For applications filed on or after December 18, 2013, filing of claims can be postponed until the expiration of the time period set in the Notice to File Missing Parts.
The MPEP states: ‘The inventor’s oath or declaration, basic filing fee, and search fee and examination fee as set forth in 37 CFR 1.16, may be filed later than the remaining application papers, but if so, they must be accompanied by the required surcharge (if appropriate, see MPEP § 506).’ (MPEP 503)
How does the USPTO assign application numbers to continuation or divisional applications?
The USPTO assigns application numbers to continuation or divisional applications in the same manner as new applications. According to MPEP 503:
A continuation or divisional application (including a continued prosecution application) filed under 37 CFR 1.53(b) is assigned a new application number.
This means:
- Each continuation or divisional application receives a unique number
- The number is assigned in the same sequence as other new applications
- The application number does not indicate its relationship to the parent application
It’s important to reference the parent application in the appropriate sections of the new application to establish the continuity.
For more information on continuation application, visit: continuation application.
For more information on Divisional application, visit: Divisional application.
For more information on USPTO procedures, visit: USPTO procedures.
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.
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The Certificate of Mailing or Transmission can significantly affect the timeliness of USPTO submissions. According to MPEP 512:
“The date indicated on the Certificate of Mailing or Transmission will be used by the Office as the date of receipt of the paper or fee.”
This means that even if there are delays in postal or electronic transmission, your submission will be considered timely if the certificate date is within the required deadline. However, it’s important to note that the actual mailing or transmission must occur on or before the certificate date. False certificates can lead to serious consequences, including invalidation of the submission and potential disciplinary action.
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The Certificate of Mailing or Transmission can affect filing date calculations in several ways:
- For timely filing: If a paper with a certificate is received after a deadline but the certificate date is within the deadline, the paper is considered timely filed. The MPEP states: “If the date stated is within the period for reply, the reply in most instances will be considered to be timely.”
- For actual receipt date: The USPTO will continue to stamp the actual date of receipt on all papers. According to the MPEP: “The receipt date stamped on all papers will also be the date which is entered on Office records and from which any subsequent periods are calculated.”
- For subsequent deadlines: If a paper starts a new period for reply, that period is calculated from the actual receipt date, not the certificate date. For example: “If the last day to reply to a final Office action was November 10, 2014, and applicant deposited a Notice of Appeal with fee in the U.S. mail on November 10, 2014, and so certified, that appeal is timely even if it was not received in the U.S. Patent and Trademark Office until November 12, 2014. Since the date of receipt of the notice of appeal will be used to calculate the time at which the brief is due, the brief was due on January 12, 2015.”
It’s important to note that while the certificate can establish timely filing, it doesn’t change the actual receipt date for other USPTO processing purposes.
The application filing limit for micro entity status works as follows:
- An applicant must not have been named as an inventor on more than 4 previously filed patent applications
- This limit excludes provisional applications, foreign applications, and PCT applications where the basic national fee was not paid
- Applications filed as a result of previous employment where rights were assigned don’t count towards the limit
MPEP 509.04(a) clarifies: ‘It does not matter how long ago the previous applications were filed or whether the previously filed applications are pending, patented, or abandoned; they are still included when counting to determine whether the application filing limit has been reached.’
Paying a small entity fee has significant implications for certifying small entity status. According to MPEP 509.03(a), “Consistent with 37 CFR 1.4(d)(4), the payment of a small entity basic filing or national fee constitutes a certification under 37 CFR 11.18(b).” This means that simply paying the small entity fee, even without a specific written assertion, activates the self-certification requirement. Applicants should be aware that this payment invokes the certification provisions, regardless of whether they are a practitioner or non-practitioner.
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When an application is filed with informal drawings, the Office of Patent Application Processing (OPAP) will review the drawings to determine if they can be used for publication purposes. If the drawings are not acceptable for publication purposes, OPAP will object to the drawings and require corrected drawings within a set time period, usually two months. This objection does not affect the filing date of the application, and applicants can correct the drawings later in the examination process if needed.
How does licensing affect small entity status?
Licensing can significantly impact small entity status. According to MPEP 509.03:
An applicant or patentee is not considered a small entity if any rights in the invention have been assigned, granted, conveyed, or licensed to an entity that would not qualify for small entity status.
This means:
- If a small entity licenses rights to a large entity, small entity status is lost.
- Exclusive licenses generally result in loss of small entity status.
- Non-exclusive licenses may not affect status if they don’t convey all significant rights.
It’s crucial to review all licensing agreements before claiming small entity status. Any change in licensing that affects status must be reported to the USPTO promptly.
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Licensing can significantly impact small entity status for patent fees. The MPEP provides specific guidance on this matter:
Rights conveyed by an applicant or patentee to a Government agency are not considered to be license for purposes of this paragraph. A Government agency includes any agency of the Federal Government or military department of the Government.
This means that licensing to a government agency does not affect small entity status. However, licensing to other entities can impact your status:
- If you license rights to a large entity, you may lose your small entity status.
- Exclusive licenses to large entities typically disqualify you from small entity status.
- Non-exclusive licenses may not affect your status, depending on the terms.
It’s crucial to review any licensing agreements carefully and consult with a patent attorney to determine how they might affect your small entity status.
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How does licensing affect small entity status for a business concern?
Licensing can significantly impact a business concern’s eligibility for small entity status. According to MPEP 509.02:
“Rights to an invention are considered as assigned, granted, conveyed, or licensed when they are held by an entity other than the inventor, and they are not qualified for small entity status.”
This means that if a business concern has licensed rights to the invention to any person or entity that does not qualify as a small entity, it may lose its small entity status. Specifically:
- If the business has licensed rights to a large entity, it cannot claim small entity status.
- Exclusive licenses to large entities will disqualify the business from small entity status.
- Non-exclusive licenses may not affect small entity status if they are arms-length agreements.
It’s crucial for businesses to carefully consider the impact of licensing agreements on their small entity status before entering into such arrangements.
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How does licensing affect micro entity status eligibility?
Licensing can significantly impact an applicant’s eligibility for micro entity status. According to the MPEP:
“The applicant has not assigned, granted, or conveyed, nor is under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding 3 times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census.”
This means that if you’ve licensed or are obligated to license your application to a high-income entity (exceeding 3 times the median household income), you may not be eligible for micro entity status. It’s crucial to consider any existing or potential licensing agreements when determining your eligibility.
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How does government funding affect small entity status?
Government funding can impact small entity status, particularly for universities and small businesses. The MPEP 509.03 provides guidance:
A small business concern or nonprofit organization is not disqualified as a small entity because of a license to the Federal government pursuant to 35 U.S.C. 202(c)(4).
This means:
- Receiving government funding does not automatically disqualify an entity from small entity status.
- The government’s license rights under the Bayh-Dole Act do not negate small entity status.
- However, other types of government agreements or contracts might affect status.
It’s important to carefully review the terms of any government funding or agreements to determine if they impact small entity eligibility. When in doubt, consult with a patent attorney or the USPTO for clarification.
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How does employment at an institution of higher education affect micro entity status?
Employment at an institution of higher education can provide a pathway to micro entity status. The MPEP states:
“A micro entity shall also include an applicant who certifies that: (1) The applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or (2) The applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular application to such an institution of higher education.” (MPEP 509.04(d))
This means that if you are employed by a qualifying institution of higher education and receive the majority of your income from it, or if you have assigned or are obligated to assign your rights in the application to such an institution, you may be eligible for micro entity status. This provision can be particularly beneficial for academic researchers and inventors.
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How does employment affect micro entity status for inventors?
An inventor’s employment can significantly impact their eligibility for micro entity status. The MPEP provides specific guidelines:
“[A]n applicant is not considered to be named on more than four previously filed patent applications if the applicant has assigned, or is under an obligation to assign, all ownership rights in the applications as the result of the applicant’s previous employment.” (MPEP 509.04(a))
This means that if an inventor has previously filed patent applications as part of their job, and they have assigned or are obligated to assign the rights to their employer, these applications don’t count towards the four-application limit for micro entity status. However, it’s crucial to note that:
- The inventor must not be currently named as an inventor on more than four non-provisional patent applications.
- The inventor’s current employer must not be considered a non-micro entity.
Inventors should carefully evaluate their employment situation and patent history when determining their eligibility for micro entity status.
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How does claiming small entity status affect patent fees?
Claiming small entity status can significantly reduce patent fees. According to MPEP 509.03, “Claiming small entity status allows the payment of certain reduced patent fees pursuant to 35 U.S.C. 41(h)(1).” This means that small entities, such as independent inventors, small businesses, and nonprofit organizations, can pay reduced fees for many patent-related services, typically 50% of the standard fee. However, it’s important to ensure eligibility before claiming this status to avoid potential issues later in the patent process.
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Assigning ownership rights can significantly affect micro entity status. The MPEP provides the following guidance:
- An applicant is disqualified from micro entity status if they transfer, or are obligated to transfer, any ownership interest to an entity that exceeds the gross income limit.
- If an inventor assigns all rights to an employer that exceeds the gross income limit, micro entity status cannot be claimed.
- Even if rights are later transferred back to the inventor or to another person who doesn’t exceed the gross income limit, micro entity status cannot be regained.
The MPEP states: “Once an assignee or licensee exceeding the gross income limit receives the ownership interest, the 37 CFR 1.29(a)(4) certification requirement can no longer be met – even if the assignee or licensee retransfers rights and no longer holds any ownership interest in the application.“
It’s important to note that this applies to both actual transfers and obligations to transfer ownership rights.
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A security interest in a patent or patent application generally does not affect small entity status unless it is defaulted upon. According to 37 CFR 1.27(a)(5):
A security interest does not involve an obligation to transfer rights in the invention for the purposes of paragraphs (a)(1) through (a)(3) of this section unless the security interest is defaulted upon.
This means that an applicant or patentee can take out a loan secured by rights in a patent application or patent without losing small entity status, even if the lender is a large entity. However, if the loan is defaulted upon and the security interest is enforced, resulting in a transfer of rights to a non-small entity, the small entity status would be lost.
In such cases, the USPTO must be notified of the loss of entitlement to small entity status prior to or at the time of paying the earliest of the issue fee or any maintenance fee due after the date on which small entity status is no longer appropriate.
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A general authorization allows the USPTO to charge certain fees to your deposit account without requiring specific authorization for each fee. The MPEP states:
A general authorization to charge all fees, or only certain fees, set forth in §§ 1.16 to 1.18 to a deposit account containing sufficient funds may be filed in an individual application, either for the entire pendency of the application or with respect to a particular paper filed.
Key points about general authorizations:
- They can cover fees under 37 CFR 1.16 and 1.17
- Fees under 37 CFR 1.19, 1.20, and 1.21 are generally not covered
- Issue fees (37 CFR 1.18) require a separate authorization after the notice of allowance
- The authorization should be clear and unambiguous to avoid misinterpretation
Always ensure your deposit account has sufficient funds to cover authorized fees to avoid potential application abandonment or additional expenses.
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To use a Certificate of Mailing or Transmission, you must include a signed certification with your correspondence. The MPEP provides suggested formats for these certificates:
“The following are suggested formats for either a Certificate of Mailing or Certificate of Transmission under 37 CFR 1.8(a). The certification may be included with all correspondence concerning this application or proceeding to establish a date of mailing or transmission under 37 CFR 1.8(a).”
The certificate should include:
- A statement certifying the date of mailing or transmission
- The signature of the person making the certification
- The application number (if known)
It’s important to note that the certificate must be signed by someone with a reasonable basis to expect the correspondence would be mailed or transmitted on or before the date indicated.
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How do I set up a deposit account with the USPTO?
To set up a deposit account with the USPTO:
- Visit the USPTO Deposit Accounts page
- Download and complete the Deposit Account Application Form
- Submit the form with an initial deposit (minimum $1,000)
- 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.
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To properly use a certificate of mailing for patent correspondence, follow these steps:
- Prepare your correspondence.
- Attach a certificate of mailing to each piece of correspondence.
- Include the required information on the certificate.
- Sign and date the certificate.
- Mail the correspondence with the attached certificate.
According to MPEP 512:
Each piece of correspondence for which a certificate is filed must include a signed and dated certificate which sets forth the date of deposit or transmission.
Ensure that you follow these guidelines to properly use the certificate of mailing procedure.
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When filing patent correspondence, you should include the following identifying information:
- Application number (checked for accuracy, including series code and serial number)
- Art Unit number (copied from most recent Office communication)
- Filing date
- Name of the examiner who prepared the most recent Office action
- Title of invention
- Confirmation number
As stated in 37 CFR 1.5(a): ‘When correspondence directed to the Patent and Trademark Office concerns a previously filed application for a patent, it must identify on the top page in a conspicuous location, the application number (consisting of the series code and the serial number; e.g., 07/123,456), or the serial number and filing date assigned to that application by the Patent and Trademark Office, or the international application number of the international application, or the international registration number of an international design application.’
How do I correct an error in micro entity status if I underpaid fees?
If you erroneously paid fees as a micro entity when you were not entitled to that status, resulting in an underpayment, you need to take the following steps:
- Submit a written assertion of small entity status (if eligible) or a written assertion to establish non-small entity status.
- Pay the fee deficiency, which is the difference between the amount paid and the amount due.
As stated in MPEP 509.04(f): “A written assertion to establish non-small entity status must be accompanied by the difference between the current amount due and the amount previously paid.”
It’s important to correct the error promptly to avoid potential issues with your patent application or granted patent.
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How do I claim small entity status for a patent application?
To claim small entity status for a patent application, follow these steps:
- Determine eligibility: Ensure you meet the criteria for small entity status as defined in 37 CFR 1.27(a).
- Submit a written assertion: Provide a written assertion of entitlement to small entity status. This can be done by:
- Checking the appropriate box on a patent application transmittal form
- Submitting a separate paper specifically asserting small entity status
- Paying small entity fees (which is considered a written assertion)
- Timing: You can claim small entity status at any time during the pendency of the application or after the patent issues.
As stated in MPEP 509.03, “A small entity status assertion must be filed in each application or patent in which the small entity is desired to claim such status.”
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To certify micro entity status, you must file a certification form with the USPTO. The USPTO provides two forms:
- Form PTO/SB/15A for certifying under the gross income basis
- Form PTO/SB/15B for certifying under the institution of higher education basis
The certification must be signed by an authorized party as defined in 37 CFR 1.33(b). It should be filed prior to or at the time of paying the first fee as a micro entity.
Inventors or applicants can qualify for micro entity status through an institution of higher education in two ways:
- If the inventor is an employee of an institution of higher education and obtains the majority of their income from that institution.
- If the applicant has assigned, granted, conveyed, or is obligated to assign, grant, or convey a license or other ownership interest in the application to an institution of higher education.
MPEP 509.04(b) states: “Under 37 CFR 1.29(d)(2)(i) the applicant must certify that the applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education. … Under 37 CFR 1.29(d)(2)(ii) the applicant must certify that the applicant has assigned, granted, or conveyed a license or other ownership interest in the subject application (or is obligated to do so) to such an institution of higher education.”
In both cases, the applicant must also meet the small entity requirement.
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How can I request a refund for my USPTO deposit account?
To request a refund for your USPTO deposit account, you need to follow these steps:
- Submit a written request to the USPTO Office of Finance
- Include your deposit account number and the amount to be refunded
- Provide a detailed explanation for the refund request
The MPEP states: “A refund to a deposit account may be made on request to the Office of Finance.” (MPEP 509.01)
It’s important to note that refunds are typically processed for overpayments or erroneous charges. The USPTO will review your request and determine if a refund is warranted based on the circumstances provided in your explanation.
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How can I replenish my USPTO deposit account?
You can replenish your USPTO deposit account through various methods. According to MPEP 509.01, “Deposits to these accounts may be made by electronic funds transfer, credit card, or check.” Here are the options:
- Electronic Funds Transfer (EFT): This is the preferred method for replenishing deposit accounts.
- Credit Card: You can use a credit card to add funds to your account.
- Check: Checks can be mailed to replenish the account balance.
For detailed instructions on each method, visit the USPTO’s Receipts Accounting Policies page.
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To regain micro entity status after losing it, you must file a new certification of entitlement to micro entity status. As stated in MPEP 509.04(e):
Once a notification of a loss of entitlement to micro entity status is filed in the application or patent, a new certification of entitlement to micro entity status is required to again obtain micro entity status.
This means you must:
- Ensure you meet the criteria for micro entity status as defined in 37 CFR 1.29(a) or 1.29(d)
- File a new certification form (PTO/SB/15A or PTO/SB/15B) in the application or patent
- Meet all other requirements for micro entity status
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You can petition the USPTO Director to consider correspondence as filed on a particular date if it was returned or refused by the USPS due to a Priority Mail Express® interruption or emergency. The petition process is outlined in 37 CFR 1.10(g) and (h):
- File the petition promptly after becoming aware of the return or refusal
- Include the original correspondence or a copy showing the Priority Mail Express® mailing label number
- Provide a copy of the Priority Mail Express® mailing label showing the “date accepted” (for returned mail)
- Include a statement establishing the original deposit attempt and that the correspondence is the original or a true copy
- The USPTO may require additional evidence to verify the interruption or emergency
As stated in MPEP 511: “37 CFR 1.10(g) provides a procedure under which applicant may petition the Director to have correspondence that was returned by the USPS due to an interruption or emergency in Priority Mail Express® service considered as filed on a particular date in the Office.”
If your correspondence is affected by a postal emergency, you can petition the Director to consider it filed on a particular date under certain conditions. The process depends on whether your mail was returned, refused, or unable to be deposited. Here’s a summary of the petition requirements based on MPEP 511:
- For returned correspondence (37 CFR 1.10(g)):
- File promptly after becoming aware of the return
- Include the original or copy of correspondence with Priority Mail Express® label
- Provide a statement establishing the original deposit
- For refused correspondence (37 CFR 1.10(h)):
- File promptly after becoming aware of the refusal
- Include the original or copy of correspondence with Priority Mail Express® label
- Provide a statement establishing the original attempt to deposit
- For correspondence unable to be deposited (37 CFR 1.10(i)):
- File promptly in a manner designated by the Director
- Include the original or copy of correspondence
- Provide a statement establishing that the correspondence would have been deposited but for the emergency
For more detailed information on filing these petitions, refer to MPEP § 513, subsections IX-XI.
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How can I pay patent fees to the USPTO?
The USPTO offers several methods for paying patent fees. According to MPEP 509:
“Fees can be paid: (A) by credit card, (B) by electronic funds transfer (EFT), (C) by check, (D) by money order, (E) by deposit account, or (F) in cash (for hand-carried applications only).”
Here’s a breakdown of these payment methods:
- Credit Card: Accepted online or by mail/fax using Form PTO-2038
- Electronic Funds Transfer (EFT): Available through the USPTO’s Electronic Filing System (EFS-Web)
- Check or Money Order: Made payable to the Director of the USPTO
- Deposit Account: A pre-established account with the USPTO
- Cash: Only for in-person payments at the USPTO office
For most applicants, online payment methods (credit card or EFT) are the most convenient and efficient options.
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How can I pay fees to the USPTO electronically?
The USPTO offers several electronic payment options for paying fees:
- Credit or Debit Card: You can pay using major credit or debit cards through the USPTO’s secure online system.
- Electronic Funds Transfer (EFT): This allows for direct transfer from your bank account to the USPTO.
- USPTO Deposit Account: Maintain a pre-funded account with the USPTO for easy fee payments.
According to MPEP 509, “The Office accepts the following forms of payment: […] by credit card, by electronic funds transfer (EFT), or by a USPTO deposit account.” Electronic payments are convenient and often processed more quickly than other methods.
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There are two main ways to obtain a receipt for items filed with the USPTO:
- 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.
- 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)
To correct an error in micro entity status, you need to follow the procedure outlined in 37 CFR 1.29(k). This involves:
- Submitting a separate deficiency payment for each application or patent
- Providing an itemization of the total deficiency payment
- Paying the deficiency owed
The MPEP states: 37 CFR 1.29(k) contains provisions for a micro entity that correspond to the provisions of 37 CFR 1.28(c) for a small entity.
This means the process is similar to correcting small entity status errors.
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How can I correct an error in micro entity status if I’m no longer eligible?
If you discover that you’re no longer eligible for micro entity status, you should promptly notify the USPTO and pay the deficiency in fees. The MPEP states:
“A notification of loss of entitlement to micro entity status must be filed in the application or patent prior to paying, or at the time of paying, any fee after the date on which status as a micro entity is no longer appropriate.” (MPEP 509.04(f))
To correct the error:
- File a notification of loss of entitlement to micro entity status
- Pay the deficiency between the micro entity fees paid and the fees that should have been paid
- Include any required surcharge for the late payment of the fee deficiency
It’s crucial to address this promptly to avoid potential issues with your patent application or granted patent.
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To find out if the USPTO is officially closed on any particular day, you can:
- Call 1-800-PTO(786)-9199
- Call (571) 272-1000
These phone numbers are provided in MPEP 510 for obtaining information about USPTO closures.
An applicant can request review of a refusal to accord a filing date by filing a petition. 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.
The petition should be marked to the attention of the Office of Petitions. If the applicant believes no defect exists, they may include a request for refund of the petition fee in the petition.
If a patent application is missing a required part, the applicant can correct the deficiency as follows:
- The USPTO will send a Notice of Missing Parts identifying the deficiency
- The applicant must submit the missing part within the time period specified in the notice (usually two months)
- A surcharge fee may be required along with the submission of the missing part
- For certain missing parts, like claims or drawings, a supplemental oath or declaration may be required for applications filed before September 16, 2012
The MPEP states: In such cases where the basic filing fee, the search fee, the examination fee, and the application size fee are paid, but additional fees are required, under 37 CFR 1.16, a notice is mailed by OPAP or the Technology Center (TC), requiring that the balance of the prescribed fee be paid.
It’s important to respond promptly to any Notice of Missing Parts to avoid abandonment of the application. If the applicant believes the part was not actually missing, they can file a petition for review of the Notice.
For more information on missing parts, visit: missing parts.
To authorize email communications with the USPTO, an applicant must provide a written authorization. According to MPEP 502.03:
‘The written authorization may be submitted via EFS-Web, mail, or fax. It cannot be submitted by email.’
The USPTO provides a sample authorization form:
‘Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.’
To facilitate processing, the USPTO recommends using Form PTO/SB/439, available at www.uspto.gov/patent/patents-forms. This form can be filed via EFS-Web using the document description ‘Internet Communications Authorized’.
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An applicant can appeal a refusal to grant a filing date by submitting a petition. 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)).”
When submitting a petition, the applicant should:
- Provide arguments that the noted items were not missing
- Explain why a filing date should be assigned even if certain items were absent (if they believe these items were unnecessary)
- Include a request for a refund of the petition fee if they allege no defect exists
Petitions related to filing dates are decided by the Office of the Deputy Commissioner for Patent Examination Policy. The MPEP advises:
“Any petition under this section should be marked to the attention of the Office of Petitions.”
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Priority Mail Express® submissions to the USPTO are treated differently in terms of dating. According to 37 CFR 1.6(a)(2):
Correspondence filed in accordance with § 1.10 will be stamped with the date of deposit as Priority Mail Express® with the United States Postal Service.
This means that new patent applications filed using Priority Mail Express® will be stamped with the date they were deposited with USPS, even if that date is a Saturday, Sunday, or federal holiday. The MPEP provides an example:
For example, if a new patent application is deposited in Priority Mail Express® in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date.
Patent applications are initially processed by the USPTO through electronic scanning and loading into the Image File Wrapper (IFW) system. According to MPEP 508, “All applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing. Once documents are loaded into the IFW system, examiners, technical support staff, and other Office personnel will perform further processing and examination using the IFW system.”
Patent applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing. As stated in the MPEP, All applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing.
This digital system allows examiners, technical support staff, and other Office personnel to perform further processing and examination efficiently.
For physical items such as models, exhibits, and specimens, special handling procedures are in place. The MPEP directs readers to MPEP § 608.03 and 608.03(a) for more information on these items.
For more information on image file wrapper, visit: image file wrapper.
For more information on patent application filing, visit: patent application filing.
For more information on USPTO procedures, visit: USPTO procedures.
Nonprovisional patent applications are assigned for examination through the Patents Service for Time and Application Routing (PSTAR) program. According to MPEP 504, “The Patents Service for Time and Application Routing (PSTAR) program assigns each nonprovisional application to an examiner.” This system ensures that each application is routed to an appropriate examiner based on factors such as the application’s subject matter and the examiner’s expertise.
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When the entire USPTO is officially closed for business for an entire day due to adverse weather or other causes:
- The day is considered a “Federal holiday within the District of Columbia” under 35 U.S.C. 21
- Any action or fee due on such a day may be taken or paid on the next succeeding business day the Office is open
MPEP 510 states: “When the entire USPTO is officially closed for business for an entire day, for reasons due to adverse weather or other causes, the Office will consider each such day a ‘Federal holiday within the District of Columbia’ under 35 U.S.C. 21. Any action or fee due on such a day may be taken, or fee paid, on the next succeeding business day the Office is open.”
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Errors in small entity status can be excused if they were made in good faith. According to 37 CFR 1.28(c): ‘If status as a small entity is established in good faith, and fees as a small entity are paid in good faith, in any application or patent, and it is later discovered that such status as a small entity was established in error, or that through error the Office was not notified of a loss of entitlement to small entity status as required by § 1.27(g)(2), the error will be excused upon: compliance with the separate submission and itemization requirements of paragraphs (c)(1) and (c)(2) of this section, and the deficiency payment requirement of paragraph (c)(2) of this section.’
To correct the error, you must:
- Submit a separate deficiency payment for each application or patent
- Provide an itemized list of the fees paid in error
- Pay the deficiency owed (difference between the small entity fee paid and the current non-small entity fee)
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The USPTO has specific rules for dating electronically filed submissions. According to 37 CFR 1.6(a)(4):
Correspondence may be submitted using the Office electronic filing system only in accordance with the Office electronic filing system requirements. Correspondence submitted to the Office by way of the Office electronic filing system will be accorded a receipt date, which is the date the correspondence is received at the correspondence address for the Office set forth in § 1.1 when it was officially submitted.
The MPEP further clarifies: Similarly, correspondence submitted via the USPTO electronic filing system (EFS-Web) will be accorded a receipt date on the date the correspondence is received at the correspondence address for the Office set forth in 37 CFR 1.1 (i.e., local time in Alexandria, VA), without regard to whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia.
Electronically filed patent applications receive special treatment for date-stamping at the USPTO. According to MPEP 505, Correspondence submitted to the Office by way of the Office electronic filing system will be accorded a receipt date, which is the date the correspondence is received at the correspondence address for the Office set forth in § 1.1 when it was officially submitted.
Key points about electronic filing date-stamping:
- The receipt date is based on the time in Alexandria, VA (USPTO’s location)
- Electronic submissions can receive a date stamp on any day, including weekends and holidays
- The electronic filing system (EFS-Web) must be used in accordance with USPTO requirements
For more details on electronic filing, refer to MPEP § 502.05.
For more information on EFS-Web, visit: EFS-Web.
For more information on electronic filing, visit: electronic filing.
For more information on USPTO, visit: USPTO.
Application numbers for patent applications are assigned by the Office of Patent Application Processing (OPAP) as follows:
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- Nonprovisional applications are assigned numbers beginning with the series code ’15’ or ’16’.
- Design applications are assigned numbers beginning with the series code ’29’.
- Plant applications are assigned numbers beginning with the series code ’16’.
- Provisional applications are assigned numbers beginning with the series code ’62’.
- Reexamination proceedings are assigned numbers beginning with the series code ’90’.
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As stated in the MPEP 503, “The application number includes a two-digit series code and a six-digit serial number.” This system allows for efficient categorization and tracking of different types of patent applications.
For more information on application number, visit: application number.
For more information on patent application types, visit: patent application types.
For more information on series code, visit: series code.
For PCT applications entering the national stage in the United States, the application number assignment process is slightly different. The MPEP states:
‘For PCT applications entering the national stage under 35 U.S.C. 371, the USPTO assigns the national stage application a U.S. application number.’
This means that when an international PCT application transitions to the national stage in the U.S., it receives a new U.S. application number distinct from its international application number. This U.S. application number is used for all subsequent processing and correspondence related to the national stage application.
It’s important to note that this U.S. application number is different from the international application number (PCT/XX/YYYY/######) that was used during the international phase of the PCT application.
For more information on application number, visit: application number.
The USPTO assigns application numbers to patent applications immediately after mail has been opened. According to MPEP 503, application numbers consist of a series code and a serial number. The series codes are assigned based on the type of application and the time period in which it was filed. For example:
- 01/ – 16/ for nonprovisional applications (utility, plant, and reissue), with different ranges for specific time periods
- 29/ for design applications
- 35/ for international design applications
- 60/, 61/, and 62/ for provisional applications
- 90/ for ex parte reexamination proceedings
- 95/ for inter partes reexamination proceedings
- 96/ for supplemental examination proceedings and resulting ex parte reexamination proceedings
The MPEP notes: “If an application is filed using the USPTO patent electronic filing system, EFS-Web provides an Acknowledgement Receipt that contains a time and date stamp, an application number and a confirmation number.”
It’s important to note that the application number on a filing receipt is the official number, which may differ from any preliminary number provided on a postcard receipt.
For more information on application number, visit: application number.
For more information on patent application types, visit: patent application types.
For more information on serial number, visit: serial number.
For more information on series code, visit: series code.
No, the United States Patent and Trademark Office (USPTO) does not provide advisory opinions on whether an individual or organization qualifies for small entity status. The MPEP 509.03(a) clearly states: “The U.S. Patent and Trademark Office does not give advisory opinions as to whether or not a specific individual or organization qualifies as a small entity.” This policy is based on Congressional intent that the USPTO rely exclusively on self-certification for small entity status. Applicants are responsible for determining their status and making the appropriate self-certification.
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The Certificate of Mailing procedure does not apply to papers mailed from a foreign country. However, the Certificate of Transmission procedure can be used for correspondence transmitted to the USPTO from a foreign country, with some conditions. The MPEP states:
The Certificate of Transmission procedure for both facsimile transmissions and transmissions via EFS-Web, however, also applies to papers transmitted to the Office from a foreign country provided that the correspondence being transmitted is not prohibited from being transmitted by facsimile or via EFS-Web and is not otherwise precluded from receiving the benefits under 37 CFR 1.8.
This means that while you can’t use a Certificate of Mailing for papers sent by postal mail from outside the United States, you can use a Certificate of Transmission for faxes or EFS-Web submissions from foreign countries, as long as the specific type of correspondence is eligible for the certificate procedure.
Yes, submitting a deficiency payment for micro entity fee errors affects your micro entity status. According to 37 CFR 1.29(k)(4):
Any deficiency payment (based on a previous erroneous payment of a micro entity fee) submitted under this paragraph will be treated as a notification of a loss of entitlement to micro entity status under paragraph (i) of this section.
This means that by submitting a deficiency payment, you are effectively notifying the USPTO that you are no longer entitled to micro entity status. After making the deficiency payment, you will need to pay fees at the small entity or non-small entity rate, as applicable, unless you file a new certification of micro entity status.
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No, paying a fee in a non-micro entity amount does not automatically change your entity status. According to MPEP 509.04(e):
Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate.
To properly notify the USPTO of a change in entity status, you must file a separate notification in the application or patent. This notification must be filed prior to or at the time of paying any fee after the date on which micro entity status is no longer appropriate.
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No, you do not need to provide copies of U.S. patent documents when responding to an unlocatable file notice. The MPEP clearly states:
Since the Office can obtain copies of U.S. patent documents (U.S. patent application publications and patents) from its internal databases, the Office is not requiring applicants or patentees to provide copies of U.S. patent application publications and patents that are among the applicant’s or patentee’s record of the correspondence between the Office and the applicant or patentee for the application, patent, or other proceeding.
However, you must provide copies of all other correspondence and documents, including any appendix or information disclosure statement submitted with the application, unless specifically exempted in the notice.
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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.”
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Yes, video conferencing tools can be used for examiner interviews in patent applications, but there are specific requirements. According to MPEP 502.03:
‘USPTO video conferencing tools may be used to conduct examiner interviews in both published and unpublished applications under the Patent Internet Usage Policy.’
However, several conditions must be met:
- Authorization by the practitioner is required prior to sending a meeting invite.
- All video conferencing communications must be hosted by USPTO personnel.
- Interviews must originate from USPTO links provided by the examiner.
- Links from non-USPTO video conferencing tools are not acceptable.
The MPEP also states:
‘The practitioner’s participation in the interview is considered consent to the use of the video conferencing tool for the interview.’
It’s important to note that personal devices or non-USPTO tools cannot be used by USPTO employees for official communications.
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Yes, the USPTO has the authority to extend deadlines during a postal service emergency. This is based on the provisions outlined in MPEP 511 and 35 U.S.C. 21(a).
Specifically, MPEP 511 states:
The Director may designate the interruption or emergency as a ‘postal service interruption or emergency’ under 35 U.S.C. 21(a) and provide for ‘tolling’ of the time for filing correspondence, fees, or other papers for a limited time.
This means that:
- The USPTO Director can officially recognize the emergency
- Time limits for filing various patent-related documents can be extended
- The extension is typically for a specific, limited period
- Applicants may need to provide evidence that their delay was due to the recognized emergency
It’s important to note that while the USPTO has this authority, each situation is evaluated individually, and extensions are not automatically granted.
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Yes, for applications filed on or after September 16, 2012 (except reissue applications), the inventor’s oath or declaration can be postponed until the application is in condition for allowance, provided certain conditions are met:
- An application data sheet (ADS) in compliance with 37 CFR 1.76 must be filed identifying each inventor by their legal name, mailing address, and residence (if different from mailing address)
- The inventor’s oath or declaration must be filed no later than the date on which the issue fee is paid
The MPEP states: For applications filed on or after September 16, 2012 (except reissue applications), applicant may postpone filing the inventor’s oath or declaration until the application is in condition for allowance if an application data sheet (ADS) in compliance with 37 CFR 1.76 is filed identifying: (1) each inventor by their legal name; and (2) for each inventor, a mailing address where the inventor customarily receives mail, and residence, if the inventor lives at a location which is different from where the inventor customarily receives mail. See 37 CFR 1.53(f)(3).
This provision allows applicants more flexibility in completing the application requirements, but it’s important to ensure the oath or declaration is filed before paying the issue fee to avoid abandonment.
For more information on declaration, visit: declaration.
For more information on inventor’s oath, visit: inventor’s oath.
For more information on patent application requirements, visit: patent application requirements.
Yes, for applications filed on or after September 16, 2012 (except reissue applications), the filing of an inventor’s oath or declaration can be postponed. The MPEP states:
For applications filed on or after September 16, 2012 (except reissue applications), applicant may postpone filing the inventor’s oath or declaration until the application is in condition for allowance if an application data sheet (ADS) in compliance with 37 CFR 1.76 is filed identifying: (1) each inventor by their legal name; and (2) for each inventor, a mailing address where the inventor customarily receives mail, and residence, if the inventor lives at a location which is different from where the inventor customarily receives mail.
However, the inventor’s oath or declaration must be filed no later than the date on which the issue fee is paid.
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.
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Can small entity status be changed during the life of a patent?
Yes, small entity status can change during the life of a patent. 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.
Key points to remember:
- Status can change due to mergers, acquisitions, or licensing agreements.
- The USPTO must be notified of any change before paying the issue fee or maintenance fees.
- If status changes from small to large entity, future fees must be paid at the higher rate.
- Conversely, if an entity becomes eligible for small entity status, they can claim it for future fee payments.
It’s important to regularly review your entity status and update the USPTO as necessary to ensure compliance and proper fee payment.
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Can international applicants claim micro entity status based on gross income?
Yes, international applicants can claim micro entity status based on gross income, provided they meet the eligibility criteria. The MPEP 509.04(a) clarifies:
“For purposes of micro entity status, the gross income (instead of median household income) is used to determine entitlement to reduced patent fees.”
International applicants must:
- Calculate their gross income in U.S. dollars
- Meet the same income threshold as U.S. applicants
- Certify their eligibility under oath
The USPTO uses the World Bank’s gross national income (GNI) per capita figures for the applicant’s country of residence to determine the income threshold. Applicants should refer to the most recent World Bank data when assessing their eligibility.
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No, you should not use the “Hold for Pickup” service option when sending Priority Mail Express® to the USPTO. The reasons for this are:
- The USPTO does not have resources for picking up mail
- Mail sent using the “Hold for Pickup” service will not reach the Office
Always use the standard Priority Mail Express® Post Office to Addressee service when sending correspondence to the USPTO.
As stated in MPEP 511: “The Office does not have resources for picking up any mail. Therefore mail should NOT be sent using the ‘Hold for Pickup’ service option (whereby the mail is retained at the destination postal facility for retrieval by the addressee). Mail sent using the ‘Hold for pickup’ service will not reach the Office.”
Can I use my USPTO deposit account for international patent applications?
Yes, you can use your USPTO deposit account for certain fees associated with international patent applications. The MPEP states: “Deposit accounts can be used for payment of any patent process fee except for international phase fees paid to the International Bureau.” (MPEP 509.01)
This means you can use your deposit account for:
- PCT fees payable to the USPTO as a Receiving Office
- National stage entry fees for U.S. national applications
- Other USPTO-related fees for international applications
However, it’s important to note that fees payable directly to the International Bureau of WIPO cannot be charged to your USPTO deposit account. For those fees, you’ll need to use alternative payment methods specified by WIPO.
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Can I use hole-punched paper for my patent application?
No, you should not use hole-punched paper for your patent application. The USPTO has specific requirements regarding the paper used for patent applications, and hole-punched paper is explicitly prohibited.
As stated in MPEP 501: Holes should not be punched in the paper.
This requirement is in place to ensure that all documents can be properly scanned, stored, and processed by the USPTO without any loss of information or potential damage to the application papers. Using standard, unmarked paper without holes helps maintain the integrity of the document throughout the application process.
Yes, you can use email to respond to Office actions from the USPTO, but certain conditions must be met:
- You must have a written authorization on file for Internet communication.
- The response must be submitted through the USPTO’s secure email system or the Electronic Filing System (EFS-Web).
- The email must include all necessary information and attachments as required for the response.
MPEP 502.03 states: “Replies to Office actions may NOT be submitted by email unless specifically authorized.” This means that without proper authorization, email responses to Office actions will not be accepted.
It’s important to note that while email can be used, the USPTO recommends using EFS-Web for most communications, including responses to Office actions, as it provides a more secure and efficient method of submission.
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Yes, you can use a handwritten signature for electronically filed patent documents. The USPTO accepts a graphic representation of a handwritten signature when submitted via the USPTO patent electronic filing system.
According to 37 CFR 1.4(d)(3): “A graphic representation of a handwritten signature as provided for in 37 CFR 1.4(d)(1) will be accepted when submitted via the USPTO patent electronic filing system.”
This allows for the use of traditional handwritten signatures in electronic filings, providing flexibility for applicants and practitioners.
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The use of a Certificate of Mailing or Transmission for international patent applications is limited and depends on the specific type of correspondence. According to the MPEP and 37 CFR 1.8(a)(2)(i)(D)-(F), the certificate procedure does not apply to:
- The filing of an international application for patent
- The filing of correspondence in an international application before the U.S. Receiving Office, the U.S. International Searching Authority, or the U.S. International Preliminary Examining Authority
- The filing of a copy of the international application and the basic national fee necessary to enter the national stage
However, the Certificate of Transmission procedure can be used for some correspondence related to international applications if it’s being transmitted to the USPTO and is not otherwise prohibited. The MPEP states:
The Certificate of Transmission procedure for both facsimile transmissions and transmissions via EFS-Web, however, also applies to papers transmitted to the Office from a foreign country provided that the correspondence being transmitted is not prohibited from being transmitted by facsimile or via EFS-Web and is not otherwise precluded from receiving the benefits under 37 CFR 1.8.
It’s crucial to carefully review the specific requirements and limitations for international application correspondence to ensure proper and timely filing.
Yes, you can use a Certificate of Transmission for documents filed electronically through the USPTO’s Electronic Filing System (EFS-Web). The MPEP provides a suggested format for a Certificate of EFS-Web Transmission:
I hereby certify that this correspondence is being transmitted via the U.S. Patent and Trademark Office electronic filing system (EFS-Web) to the USPTO on [Date].
However, it’s important to note that EFS-Web submissions have their own timestamp system. According to 37 CFR 1.6(a)(4):
Correspondence submitted to the Office by way of the Office electronic filing system will be accorded a receipt date, which is the date the correspondence is received at the correspondence address for the Office set forth in § 1.1 when it was officially submitted.
This date can be a Saturday, Sunday, or federal holiday within the District of Columbia. The certificate can provide an additional layer of documentation for your submission date, but the EFS-Web timestamp is generally considered authoritative for determining the receipt date of electronic submissions.
The use of a Certificate of Mailing or Transmission for correspondence from outside the United States depends on the method of transmission. The MPEP clarifies:
“The Certificate of Mailing procedure does not apply to papers mailed in a foreign country. The Certificate of Transmission procedure for both facsimile transmissions and transmissions via EFS-Web, however, also applies to papers transmitted to the Office from a foreign country provided that the correspondence being transmitted is not prohibited from being transmitted by facsimile or via EFS-Web and is not otherwise precluded from receiving the benefits under 37 CFR 1.8.”
Therefore:
- You cannot use a Certificate of Mailing for papers mailed from outside the U.S.
- You can use a Certificate of Transmission for facsimile or EFS-Web transmissions from outside the U.S., as long as the correspondence is eligible for this procedure.
It’s important to verify that your specific type of correspondence is eligible for the Certificate of Transmission procedure before using it from outside the United States.
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No, the Certificate of Mailing or Transmission cannot be used for all USPTO correspondence. The MPEP 512 specifies certain types of correspondence that are excluded from the certificate practice:
“The Certificate of Mailing or Transmission procedure does not apply to: (A) Relative to Patents and Patent Applications— (1) The filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date…”
The MPEP lists several other exclusions, including certain international application filings, trademark-related filings, and correspondence filed in interference or trial proceedings. It’s crucial to review the full list in MPEP 512 to ensure compliance with USPTO rules.
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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.
Can I use a certificate of mailing for all USPTO correspondence?
While the certificate of mailing or transmission is a useful tool, it cannot be used for all types of USPTO correspondence. The MPEP 502 provides specific exceptions:
“The certification procedure under 37 CFR 1.8 is not available for: (A) Applications for patent under 35 U.S.C. 111(a), including reissue applications; (B) International applications for patent; (C) International design applications; (D) Requests for reexamination under 35 U.S.C. 302…”
This list continues with several other exceptions. It’s crucial to note that:
- New patent applications cannot use the certificate of mailing.
- International applications are excluded from this procedure.
- Certain time-sensitive documents require different filing methods.
For these excluded items, consider using Priority Mail Express® or electronic filing to ensure timely receipt by the USPTO. Always check the current regulations or consult with a patent professional to determine the appropriate filing method for your specific correspondence.
For more information on Certificate of Mailing, visit: Certificate of Mailing.
For more information on patent applications, visit: patent applications.
For more information on USPTO correspondence, visit: USPTO correspondence.
While certificates of mailing are widely applicable, they cannot be used for all types of patent-related correspondence. MPEP 512 outlines specific exceptions:
The Certificate of Mailing or Transmission procedure does not apply to the filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date.
Additionally, you cannot use a certificate of mailing for:
- Filing of an international application for patent
- Filing correspondence in an international application before the U.S. Receiving Office
- Filing a copy of the international application and the basic national fee to enter the national stage under 35 U.S.C. 371
Always check the current USPTO guidelines to ensure you’re using the correct filing method for your specific correspondence.
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According to MPEP 508.02, submitting additional information after a patent application has been abandoned is generally not possible. The section states:
“After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender.”
This means that once an application is abandoned, the USPTO will typically return any new submissions related to that application. However, there are some exceptions:
- Petitions to revive the abandoned application
- Requests for continued examination (RCE) in certain circumstances
- Appeals to the Patent Trial and Appeal Board, if filed within the appropriate timeframe
If you wish to submit additional information after abandonment, you should consult with a patent attorney to determine if any of these options are available in your specific case.
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Can I retroactively claim micro entity status for previously paid fees?
No, you cannot retroactively claim micro entity status for fees that have already been paid. The MPEP clearly states:
“A fee may be paid in the micro entity amount only if it is submitted with, or subsequent to, the submission of a certification of entitlement to micro entity status.” (MPEP 509.04(f))
This means:
- Micro entity status must be established before or at the time of paying fees at the micro entity rate
- You cannot request a refund for the difference between standard fees and micro entity fees for payments made before establishing micro entity status
- Future fees can be paid at the micro entity rate once status is properly established
To benefit from micro entity status, ensure you file the certification before paying any fees you wish to pay at the reduced rate.
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Can I pay patent fees in foreign currency?
No, the USPTO does not accept foreign currency for patent fee payments. According to MPEP 509: ‘All payments of money required for USPTO fees or services must be made in U.S. dollars and in the form of a cashier’s or certified check, Treasury note, national bank notes, or United States Postal Service money order.’
If you’re an international applicant, you’ll need to arrange for payment in U.S. dollars. Options include:
- Using an international credit card that can process payments in USD
- Establishing a U.S. bank account
- Using a registered U.S. attorney who can make payments on your behalf
It’s advisable to plan ahead for currency conversion to ensure timely payment of USPTO fees.
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Yes, you can hand-carry certain documents to the USPTO, but there are specific guidelines and limitations. According to MPEP 501:
Patent-related papers may be hand-carried to the Office in Alexandria, VA. Correspondence cannot be hand-carried to the Regional Offices. If the correspondence is hand-carried to the Office, with limited exceptions (see MPEP § 502, subsection III) it must be delivered to:
United States Patent and Trademark Office
Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
For trademark-related papers, there is a separate location:
Trademark-related papers may be filed at the “walk-up” window located in the Trademark Assistance Center, Madison East, Concourse Level, Room C55, 600 Dulany Street, Alexandria, VA 22314.
It’s important to note that while hand-carrying documents is possible, electronic filing is often faster and more efficient for most types of correspondence with the USPTO.
For more information on patent office procedures, visit: patent office procedures.
For more information on USPTO submission, visit: USPTO submission.
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.”
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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.”
Can I correct micro entity status errors retroactively?
Yes, you can correct micro entity status errors retroactively, but there are specific rules and time limitations to consider. According to MPEP 509.04(f):
“Errors in micro entity status may be rectified by filing a notification of a change in status … and paying the required fee deficiency.”
However, the ability to make retroactive corrections is subject to time constraints:
- For underpayments: You can correct the error at any time by paying the fee deficiency.
- For overpayments: You must file a micro entity certification and request a refund within the time period set in 37 CFR 1.29(k), which is generally within three months of the fee payment.
It’s crucial to address any status errors promptly to maintain the validity of your patent application or granted patent and to ensure compliance with USPTO regulations.
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No, you cannot correct micro entity status errors for multiple applications or patents in a single submission. The MPEP, citing 37 CFR 1.29(k)(1), states:
Any paper submitted under this paragraph must be limited to the deficiency payment (all fees paid in error) required for a single application or patent. Where more than one application or patent is involved, separate submissions of deficiency payments are required for each application or patent (see § 1.4(b)).
This means you must submit separate deficiency payments and itemizations for each application or patent where micro entity fees were erroneously paid. This requirement ensures clear and accurate processing of fee corrections for each individual case.
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Can I change my entity status during the patent application process?
Yes, you can change your entity status during the patent application process. The MPEP 509.03 states:
“Small entity status may be claimed in a pending application at any time before, or concurrently with, the payment of an issue fee.”
This means you can:
- Change from standard to small entity status
- Change from small entity to standard status
- Claim micro entity status if you qualify
To change your status, you must file a new written assertion of the desired status. Keep in mind that if you change to a higher fee status (e.g., from small to standard), you may need to pay any fee deficiencies for previously paid fees at the lower rate.
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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.
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Yes, foreign applicants can qualify for micro entity status if they meet all the requirements. The USPTO states in MPEP 509.04(a):
Small entities may claim reduced fees regardless of the country in which they are located. There is no restriction requiring that the person, small business concern, or nonprofit organization be located in the United States.
For applicants with income in foreign currency, 37 CFR 1.29(c) specifies: ‘If an applicant’s, inventor’s, joint inventor’s, or entity’s gross income in the preceding calendar year is not in United States dollars, the average currency exchange rate, as reported by the Internal Revenue Service, during that calendar year shall be used to determine whether the applicant’s, inventor’s, joint inventor’s, or entity’s gross income exceeds the threshold specified in paragraph (a)(3) or (4) of this section.’
No, for-profit universities do not qualify as ‘institutions of higher education’ for the purpose of establishing micro entity status. One of the requirements for an institution of higher education under the Higher Education Act of 1965 is that it must be non-profit.
MPEP 509.04(b) states: “One of the requirements for an ‘institution of higher education’ under section 101(a) of the Higher Education Act of 1965 is that the institution be non-profit. Therefore, for-profit universities and colleges do not qualify as an ‘institution of higher education’ for purposes of establishing micro entity status.”
This means that employees or those who have assigned rights to for-profit universities cannot claim micro entity status on this basis.
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Yes, filing unnecessary duplicate copies of patent correspondence can potentially cause processing delays at the USPTO. The MPEP 502.04 explicitly states:
When the Office does not require duplicate copies of a paper, the filing of multiple copies may cause a delay in processing by the Office.
This is one of the reasons why the USPTO discourages the submission of duplicate copies unless specifically required. To ensure efficient processing of your patent application or correspondence, it’s best to avoid submitting unnecessary duplicates.
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Yes, drawing corrections can be made after the application has been allowed. However, such corrections must be approved by the examiner before the application can be processed for issue. If extensive corrections are required, the examiner may require that the corrections be filed with a Request for Continued Examination (RCE) under 37 CFR 1.114.
No, color drawings cannot be submitted by facsimile to the USPTO. This is explicitly stated in MPEP 502.01 and 37 CFR 1.6(d)(4):
Facsimile transmissions are not permitted and, if submitted, will not be accorded a date of receipt in the following situations: … (4) Color drawings submitted under §§ 1.81, 1.83 through 1.85, 1.152, 1.165, 1.173, 1.437, or 1.1026;
The prohibition on faxing color drawings is due to the limitations of facsimile technology in accurately reproducing colors. Submitting color drawings via fax could result in loss of quality or details that are crucial for the proper examination and understanding of the invention.
If you need to submit color drawings for your patent application, you should use other approved methods, such as mailing or electronic filing through the USPTO’s electronic filing system (EFS-Web or Patent Center). Always refer to the most current USPTO guidelines for submitting color drawings to ensure compliance with their requirements.
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No, an officer of an assignee corporation is not authorized to sign a certification of micro entity status. According to MPEP 509.04(c):
“If any applicant is an assignee or other party under 37 CFR 1.46, and the assignee or other party is a corporation or organization rather than a person, a registered practitioner must sign the certification of micro entity status. An officer of the assignee corporation, for example, is not authorized to sign a certification of micro entity status.”
This means that for corporate assignees, only a registered patent practitioner can sign the micro entity certification.
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No, an institution of higher education cannot itself claim micro entity status. The micro entity status based on an institution of higher education is intended for inventors who are employees of such institutions or who have assigned rights to them, not for the institutions themselves.
MPEP 509.04(b) clarifies: “Although the 37 CFR 1.29(d) basis for qualifying for micro entity status is referred to as the ‘institution of higher education’ basis, it is not the institution of higher education that can qualify for micro entity status, but rather inventors who are employees of an institution of higher education (see 37 CFR 1.29(d)(2)(i)) or inventors or applicants who have conveyed ownership rights to an institution of higher education (see 37 CFR 1.29(d)(2)(ii)).”
The institution itself cannot logically make the certifications required under the regulations, such as certifying that its employer is an institution of higher education or that it has assigned rights to itself.
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Yes, an applicant can withdraw their authorization for email communication with the USPTO. According to MPEP 502.03:
‘A written authorization may be withdrawn by filing a signed paper clearly identifying the original authorization.’
The USPTO provides a sample form for withdrawing authorization:
‘The authorization given on______, to the USPTO to communicate with any practitioner of record or acting in a representative capacity in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application via video conferencing, instant messaging, or electronic mail is hereby withdrawn.’
To facilitate processing, the USPTO recommends using Form PTO/SB/439, available at www.uspto.gov/patent/patents-forms. This form can be filed via EFS-Web using the document description ‘Internet Communications Authorization Withdrawn’.
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Can an applicant with a license agreement qualify for micro entity status?
Yes, an applicant with a license agreement can potentially qualify for micro entity status, but there are specific conditions that must be met. The MPEP provides guidance on this:
“An applicant is not considered to have been named on a previously filed application if the applicant has assigned, or is under an obligation to assign, all ownership rights in the application as the result of the applicant’s previous employment.” (MPEP 509.04(a))
However, it’s important to note that:
- The license agreement must not transfer all substantial rights in the invention to a non-micro entity.
- If the licensee is not a micro entity, the applicant may lose their micro entity status.
- The applicant must still meet all other micro entity criteria, including income limitations and the four-application limit.
Applicants with license agreements should carefully review the terms of their agreements and consult with a patent attorney to determine if they still qualify for micro entity status.
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Yes, an applicant can submit missing parts of an application after the filing date, but this may affect the application’s effective filing date. The MPEP 506 states:
Such portion must be filed within the time period set by the Office in the notification by the Office of the omitted portion, or the application will be regarded as abandoned.
It’s important to note that submitting missing parts may result in a later effective filing date for the application, which could have implications for patent term and prior art considerations. Applicants should strive to submit complete applications initially to avoid potential complications.
For more information on effective filing date, visit: effective filing date.
For more information on missing parts, visit: missing parts.
Can an applicant claim micro entity status based on income from a foreign country?
Yes, an applicant can claim micro entity status based on income from a foreign country. The MPEP clarifies:
“For purposes of qualifying for micro entity status based on the gross income limit, the gross income in the foreign currency must be converted into United States dollars at the exchange rate in effect on the date the micro entity certification is filed.”
This means that if you’re an applicant from a foreign country, you can still qualify for micro entity status if your income, when converted to U.S. dollars, does not exceed the gross income limit. It’s important to use the correct exchange rate on the date of filing your micro entity certification to ensure accurate calculation.
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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.
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Can a small business qualify for micro entity status?
Yes, a small business can potentially qualify for micro entity status, but there are specific requirements to meet. The MPEP outlines two main paths for small businesses:
- Income-based qualification: If the small business’s income does not exceed three times the median household income in the preceding calendar year, it may qualify.
- Institution of higher education qualification: If the small business has assigned, granted, conveyed, or is under obligation to assign, grant, or convey a license or other ownership interest in the application to an institution of higher education.
The MPEP states:
“An applicant that qualifies as a micro entity under either the gross income basis or the institution of higher education basis can file a certification of micro entity status on either basis (but not both).”
It’s important to note that all parties involved (applicants, inventors, and joint inventors) must meet the requirements. For more details, refer to MPEP 509.04.
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No, patent applications that are entitled to a filing date will not be returned to the applicant, even if requested. This applies to applications filed by regular mail, Priority Mail Express, hand-delivery, or through the USPTO patent electronic filing system.
The MPEP clearly states: ‘Applications which are entitled to a filing date, whether filed by regular mail, by Priority Mail Express® under 37 CFR 1.10, by hand-delivery, by the USPTO patent electronic filing system, or otherwise, will not be returned to applicant even if requested.’ (MPEP 503)
Applicants should be careful not to file duplicate applications or applications not intended for filing, as fees paid for such applications are generally not refundable due to a change of purpose.
Once a patent application is filed and given a filing date, it generally cannot be returned or withdrawn. According to MPEP 503:
“Applications which are entitled to a filing date, whether filed by regular mail, by Priority Mail Express® under 37 CFR 1.10, by hand-delivery, by the USPTO patent electronic filing system, or otherwise, will not be returned to applicant even if requested.”
This policy is in place to maintain the integrity of the filing process and prevent potential abuse. Applicants should be careful not to file applications that are not intended to be filed, such as duplicates of already filed applications.
Furthermore, the MPEP cites 37 CFR 1.26(a), which states that a change of purpose after payment of a fee, such as when a party desires to withdraw a patent application for which a fee was paid, does not entitle the party to a refund of such fee.
If an applicant realizes they have filed an application in error or no longer wish to pursue it, they may choose to abandon the application. However, the application will remain on file with the USPTO and any fees paid will not be refunded.
For more information on application abandonment, visit: application abandonment.
For more information on application return, visit: application return.
Yes, nonprofit organizations can qualify for small entity status under certain conditions. According to 37 CFR 1.27(a)(3), a nonprofit organization that qualifies for small entity status is one that:
- Has not assigned, granted, conveyed, or licensed any rights in the invention to a non-small entity
- Is either:
- A university or other institution of higher education
- An organization described in section 501(c)(3) of the Internal Revenue Code and exempt from taxation under 501(a)
- A nonprofit scientific or educational organization qualified under a nonprofit organization statute of a state
- A foreign organization that would qualify under the above if it were located in the U.S.
It’s important to note that government organizations, whether domestic or foreign, cannot qualify as nonprofit organizations for small entity status purposes.
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Yes, a legal entity can sign patent correspondence, but there are specific requirements. According to MPEP 502.02:
When a document is to be signed by a corporation or another juristic entity, the signature must comply with 37 CFR 1.33(b)(3).
The requirements for a legal entity’s signature include:
- The name of the person signing
- Their capacity (e.g., President, CEO, General Counsel)
- The name of the legal entity
For example, a valid signature for a corporation might look like:
/John Smith, President, XYZ Corporation/
It’s important to note that the person signing must have the authority to bind the legal entity in matters before the USPTO. This ensures that the correspondence is legally binding and properly authorized.
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Can a legal assistant or secretary sign correspondence on behalf of a patent practitioner?
No, a legal assistant or secretary cannot sign correspondence on behalf of a patent practitioner. The MPEP 502.02 clearly states:
‘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 requirement ensures that the practitioner takes personal responsibility for the content of the correspondence. Delegating this responsibility to support staff is not permitted and could lead to the correspondence being considered unsigned or improperly signed.
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USPTO employees are generally not permitted to initiate email communications with patent applicants unless there is a written authorization on record. According to MPEP 502.03:
‘USPTO employees are NOT permitted to initiate communications with applicants via Internet email unless there is a written authorization of record in the patent application by the applicant.’
However, if an applicant has provided written authorization for Internet communications:
‘USPTO employees may respond to Internet email and initiate communications with applicants via Internet email.’
It’s important to note that this policy applies to regular patent applications. For reissue applications and reexamination proceedings, which are open to public inspection, additional restrictions apply:
‘USPTO employees are NOT permitted to initiate communications with applicant in a reissue application or a patentee of a reexamination proceeding via Internet email unless written authorization is given by the applicant or patentee.’
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Are there any restrictions on paying USPTO fees by credit card?
Yes, there are some restrictions when paying USPTO fees by credit card:
- There’s a daily limit on credit card transactions.
- Some types of fees may not be eligible for credit card payment.
- Only certain credit cards are accepted.
The MPEP 509 states, “The Office will not accept a general authorization to charge all fees, or all fees in a specific case, to a credit card.” Additionally, “Credit Card Payment Form PTO-2038 should be used when paying a patent or trademark fee (or related service fee) by credit card, unless the payment is being made via EFS-Web.” It’s important to check the current USPTO guidelines for any updates to credit card payment policies.
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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.
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No, provisional patent applications are not examined. The MPEP 504 clearly states: “Provisional applications will not be examined.” Provisional applications serve as a placeholder to establish a priority date and are not subject to substantive examination by the USPTO.
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No, provisional patent applications are not assigned to examiners for examination. MPEP 504 explicitly states: “Provisional applications will not be examined.” This is because provisional applications are primarily used to establish a priority date and are not subject to substantive examination.
Photographs can be included in patent applications, but there are specific requirements and limitations. According to MPEP 507:
“OPAP may object to and require corrected drawings within a set time period, if the drawings: (F) include photographs of the claimed invention which are capable of illustration by other medium such as ink drawings, and which are illegible after scanning. See 37 CFR 1.84(b)“
This means that while photographs are acceptable, they should only be used when the subject matter cannot be accurately depicted in a drawing. Additionally, the photographs must be of sufficient quality to be legible after scanning. If a photograph can be replaced by a clear ink drawing, the USPTO may require such a replacement.
For more information on drawing requirements, visit: drawing requirements.
For more information on patent drawings, visit: patent drawings.
Are handwritten patent applications accepted by the USPTO?
While it is strongly recommended to submit typed or printed applications, the USPTO does accept handwritten patent applications under certain conditions:
- The handwriting must be legible and in permanent dark ink or its equivalent.
- The text must be clearly readable and suitable for reproduction.
- All other formatting requirements (margins, spacing, etc.) must still be followed.
As stated in MPEP 501: All papers that are to become a part of the permanent records of the United States Patent and Trademark Office should be legibly written either by a typewriter or mechanical printer in permanent dark ink or its equivalent in portrait orientation on flexible, strong, smooth, non-shiny, durable, and white paper.
While handwritten applications are technically accepted, it’s important to note that typed or printed applications are preferred for clarity and ease of processing. Handwritten applications may face additional scrutiny and potential delays in processing due to legibility concerns.
Color drawings or photographs are generally not allowed in patent applications without special permission. MPEP 507 states:
OPAP may object to and require corrected drawings within a set time period, if the drawings: … (G) contain color drawings or color photographs, but not a petition to accept color drawings/photographs.
If an applicant wishes to include color drawings or photographs, they must file a petition to accept them. It’s important to note that the requirement for a black and white photocopy of color drawings/photographs has been eliminated. Applicants should be prepared to justify the need for color in their drawings or photographs when filing such a petition.
Trademark Law (5)
The mailing address for trademark-related correspondence is:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
This address should be used for all trademark-related documents filed on paper, except for certain specific documents as outlined in the regulations.
According to 37 CFR 2.190: In general, trademark documents to be delivered by the USPS must be addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
It’s important to note that many trademark documents can and should be filed electronically through the Trademark Electronic Application System (TEAS).
To learn more:
The mailing address for trademark applications and trademark-related papers filed on paper is:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
This address should be used for all trademark-related documents filed on paper, except for:
- Documents sent to the Assignment Recordation Branch for recordation
- Requests for copies of trademark documents
- Certain documents filed under the Madrid Protocol as specified in 37 CFR 2.190(e)
According to 37 CFR 2.190(a): “In general, trademark documents to be delivered by the USPS must be addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.”
For trademark-related documents filed on paper, except for certain specific cases, the address is:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
According to MPEP 501, which cites 37 CFR 2.190: “All trademark-related documents filed on paper, except documents sent to the Assignment Recordation Branch for recordation; requests for copies of trademark documents; and certain documents filed under the Madrid Protocol as specified in 37 CFR 2.190(e), should be addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.”
It’s important to note that many trademark documents can and should be filed electronically through the Trademark Electronic Application System (TEAS).
For more information on trademark correspondence, visit: trademark correspondence.
For correspondence that is not specific to patents or trademarks, such as requests for certified copies or assignment recordation, the general mailing address is:
Director of the United States Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
This address should be used for:
- Patent and trademark documents sent to the Assignment Division for recordation (Mail Stop Assignment Recordation Services)
- Requests for certified or uncertified copies of patent and trademark documents (Mail Stop Patent and Trademark Copy Fulfillment Branch)
- Correspondence for which an address is not otherwise specified in 37 CFR 1.1 or 2.190
MPEP 501 states: “For correspondence for which an address is not otherwise specified in 37 CFR 1.1 or 2.190, should be addressed to: Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450”
Yes, you can hand-carry certain documents to the USPTO, but there are specific guidelines and limitations. According to MPEP 501:
Patent-related papers may be hand-carried to the Office in Alexandria, VA. Correspondence cannot be hand-carried to the Regional Offices. If the correspondence is hand-carried to the Office, with limited exceptions (see MPEP § 502, subsection III) it must be delivered to:
United States Patent and Trademark Office
Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
For trademark-related papers, there is a separate location:
Trademark-related papers may be filed at the “walk-up” window located in the Trademark Assistance Center, Madison East, Concourse Level, Room C55, 600 Dulany Street, Alexandria, VA 22314.
It’s important to note that while hand-carrying documents is possible, electronic filing is often faster and more efficient for most types of correspondence with the USPTO.
For more information on patent office procedures, visit: patent office procedures.
For more information on USPTO submission, visit: USPTO submission.
Trademark Procedure (4)
The mailing address for trademark-related correspondence is:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
This address should be used for all trademark-related documents filed on paper, except for certain specific documents as outlined in the regulations.
According to 37 CFR 2.190: In general, trademark documents to be delivered by the USPS must be addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
It’s important to note that many trademark documents can and should be filed electronically through the Trademark Electronic Application System (TEAS).
To learn more:
The mailing address for trademark applications and trademark-related papers filed on paper is:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
This address should be used for all trademark-related documents filed on paper, except for:
- Documents sent to the Assignment Recordation Branch for recordation
- Requests for copies of trademark documents
- Certain documents filed under the Madrid Protocol as specified in 37 CFR 2.190(e)
According to 37 CFR 2.190(a): “In general, trademark documents to be delivered by the USPS must be addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.”
For trademark-related documents filed on paper, except for certain specific cases, the address is:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
According to MPEP 501, which cites 37 CFR 2.190: “All trademark-related documents filed on paper, except documents sent to the Assignment Recordation Branch for recordation; requests for copies of trademark documents; and certain documents filed under the Madrid Protocol as specified in 37 CFR 2.190(e), should be addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.”
It’s important to note that many trademark documents can and should be filed electronically through the Trademark Electronic Application System (TEAS).
For more information on trademark correspondence, visit: trademark correspondence.
Yes, you can hand-carry certain documents to the USPTO, but there are specific guidelines and limitations. According to MPEP 501:
Patent-related papers may be hand-carried to the Office in Alexandria, VA. Correspondence cannot be hand-carried to the Regional Offices. If the correspondence is hand-carried to the Office, with limited exceptions (see MPEP § 502, subsection III) it must be delivered to:
United States Patent and Trademark Office
Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
For trademark-related papers, there is a separate location:
Trademark-related papers may be filed at the “walk-up” window located in the Trademark Assistance Center, Madison East, Concourse Level, Room C55, 600 Dulany Street, Alexandria, VA 22314.
It’s important to note that while hand-carrying documents is possible, electronic filing is often faster and more efficient for most types of correspondence with the USPTO.
For more information on patent office procedures, visit: patent office procedures.
For more information on USPTO submission, visit: USPTO submission.