[Federal Register Volume 72, Number 14 (Tuesday, January 23, 2007)]
[Rules and Regulations]
[Pages 2770-2776]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E7-906]



[[Page 2770]]

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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 1

[Docket No.: PTO-P-2005-0021]
RIN 0651-AB92


Changes To Facilitate Electronic Filing of Patent Correspondence

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
amending the rules of practice to support implementation of the 
Office's electronic filing system (EFS) for patent correspondence, and 
in particular, the Web-based electronic filing system (EFS-Web). EFS-
Web permits most patent correspondence, that is, most patent 
applications and other patent related documents, to be submitted in a 
portable document file (``PDF'') format. The major changes that the 
Office is adopting are changes to provide patent users with a process 
for showing that correspondence submitted in an application which has 
entered national stage under 35 U.S.C. 371 submitted via EFS-Web was 
actually received by the Office by relying on the acknowledgment 
receipt, and to treat certain correspondence as received, for 
timeliness purposes, as of the date submitted by applicant rather than 
the date received by the Office if the correspondence is filed via EFS-
Web.

DATES: Effective Date: January 23, 2007. The changes apply to any 
paper, application, or reexamination proceeding filed in the Office on 
or after January 23, 2007.

FOR FURTHER INFORMATION CONTACT: Fred A. Silverberg ((571) 272-7719), 
Senior Legal Advisor, Office of Patent Legal Administration, Office of 
the Deputy Commissioner for Patent Examination Policy, or Robert A. 
Clarke ((571) 272-7735), Deputy Director of the Office of Patent Legal 
Administration, Office of the Deputy Commissioner for Patent 
Examination Policy, directly by phone, or by facsimile to (571) 273-
7719, or by mail addressed to: Mail Stop Comments-Patents, Commissioner 
for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

SUPPLEMENTARY INFORMATION: The United States Patent and Trademark 
Office (Office) is amending the rules of practice to support 
implementation of the Office's electronic filing system (EFS) for 
patent correspondence, and in particular, the new Web-based electronic 
filing system (EFS-Web), which went into production (for the public) on 
March 17, 2006. Specifically, the changes in this final rule: (1) 
Provide patent users with a process for showing that certain national 
stage correspondence submitted via EFS-Web was actually received by the 
Office by relying on the acknowledgment receipt; and (2) create a new 
certificate of EFS-Web transmission, which will allow the Office to 
treat certain correspondence as received (for timeliness purposes) as 
of the date submitted by applicant rather than the date received by the 
Office if the correspondence is filed by EFS-Web. The procedure for the 
certificate of EFS-Web transmission is similar to the procedure for the 
existing certificate of mailing or transmission under Sec.  1.8. For 
example, correspondence sent in reply to an Office action setting a 
three-month shortened statutory period for reply would be considered 
timely if transmitted via EFS-Web at 11:59 p.m. Pacific Time on the 
last day of the three-month period for reply even though it was 
received in the Office more than three months from the mailing of the 
Office action. Thus, the rules are amended so that EFS-Web submissions 
would be treated analogously to submissions filed via First-Class Mail 
or facsimile transmission with a certificate of mailing or 
transmission. This notice is also making minor changes to Sec. Sec.  
1.4, 1.6, and 1.33 to align the rules of practice to existing practices 
regarding EFS-Web.
    Discussion of EFS-Web: The Office's electronic filing system 
previously provided two distinct electronic filing systems for filing 
patent correspondence namely: (1) EFS-Web, and (2) the client-side 
components ePAVE for form generation, validation and submission to the 
Office in combination with EFS-ABX for authoring the patent application 
specification. Prior to EFS-Web, the Office only provided for the 
electronic submission of limited patent correspondence using ePAVE and 
EFS-ABX. ePAVE and EFS-ABX were discontinued on November 1, 2006. See 
Retirement of Electronic Filing System--Application Body Extensible 
Markup Language (EFS-ABX) and Electronic Packaging and Validation 
Engine (ePAVE) Components, 1311 Off. Gaz. Pat. Off. 155 (October 24, 
2006). Thus, EFS-Web is the sole system for electronic filing of most 
patent correspondence. EFS-Web permits most patent applications and 
other patent-related documents, to be submitted in a ``PDF'' file 
format. In addition, EFS-Web does not require any significant client 
side components (unlike ePAVE and EFS-ABX). Accordingly, EFS-Web allows 
users to streamline processing and filing of patent correspondence, and 
better integrates electronic filing into their current computer 
systems.
    Under EFS-Web, correspondence officially submitted is accorded a 
``receipt date,'' which is the date the correspondence was received by 
the Office (e.g., in Alexandria, Virginia (Eastern Time zone)). The 
receipt date is not limited to an official business day, but can be a 
Saturday, Sunday or Federal holiday within the District of Columbia. 
Correspondence is officially submitted to the Office via EFS-Web when a 
user clicks the submit button on the Confirm and Submit screen after 
the correspondence has been uploaded to the USPTO server for, inter 
alia, user review. An acknowledgment receipt is automatically, 
electronically sent to the person filing the correspondence after the 
correspondence is officially submitted. The acknowledgment receipt 
contains the ``receipt date,'' the time the correspondence was received 
at the Office (not the local time at the submitter's location), and a 
full listing of the correspondence submitted. Accordingly, an 
acknowledgment receipt is a legal equivalent of a post card receipt 
described in the Manual of Patent Examining Procedure (MPEP), Section 
503. As the acknowledgment receipt contains the time the correspondence 
was received at the Office, users may not be able to solely rely on the 
acknowledgment receipt to support a position that correspondence was 
submitted at a particular local time. Therefore, users are advised to 
keep a copy of papers submitted, including a certification of EFS-Web 
transmission under Sec.  1.8, as evidence of the local time of all 
submissions to support a position that correspondence was submitted at 
a particular local time in the event such evidence is needed. For the 
filing of applications, the official filing date will continue to be 
stated on the Filing Receipt under Sec.  1.54(b), which is sent to 
applicants after the submitted application parts are reviewed for 
compliance with the filing date requirements.
    An acknowledgment receipt will not be generated until EFS-Web 
correspondence is officially submitted to and received by the Office. 
If a user officially submits correspondence to the Office by clicking 
on the submit button on the Confirm and Submit screen in EFS-Web, but 
no acknowledgment receipt is generated thereafter, the user should 
check private PAIR, if possible, for the acknowledgment receipt, which 
should be entered in private PAIR a short period of time after the

[[Page 2771]]

correspondence is officially submitted to the Office. If no 
acknowledgment receipt is available in private PAIR or the user does 
not have access to private PAIR, then the user should contact the 
Patent Electronic Business Center (EBC) for assistance. If a user 
becomes disconnected from EFS-Web prior to officially submitting 
correspondence to the Office or who otherwise has difficulty submitting 
correspondence through EFS-Web, the user is encouraged to contact the 
Patent EBC for assistance. Full technical support is currently 
available through the Patent EBC during their Standard Hours of 
Operation, which are Monday through Friday from 6 a.m. until midnight 
(eastern time), and Saturday and Sunday from 10 a.m. through 6 p.m. 
(eastern time) at 866-217-9197 (toll-free). The patent EBC may also be 
contacted by E-mail: [email protected] or FAX: 571-273-0177. Limited 
assistance is available at all other times through the Office's 
Electronic Business Support (EBS) at 1-800-786-9199 or 571-272-1000.
    If a transmission is attempted during a time when the Office's 
electronic filing system is down, the Office will not be able to accept 
any correspondence electronically. In this situation, the user is 
advised to use alternative filing methods. For the filing of an 
application, alternative methods to establish the filing date for an 
application are Express Mail under Sec.  1.10 or hand-delivery to the 
Office. (Note that new applications filed under Sec.  1.53 cannot be 
submitted by facsimile transmission (Sec.  1.6(d)(3)).) For other 
patent correspondence, alternative methods to establish timeliness of a 
submission are First-Class Mail with a certificate of mailing under 
Sec.  1.8 (if applicable), facsimile transmission with a certificate of 
transmission under Sec.  1.8 (if applicable), Express Mail under Sec.  
1.10, or hand-delivery to the Office. Certificate of mailing or 
transmission procedures under Sec.  1.8 do not apply to: (1) The filing 
of a national patent application specification and drawing or other 
correspondence for the purpose of obtaining an application filing date, 
including a request for a continued prosecution application of a design 
application under Sec.  1.53(d) (see Sec.  1.8(a)(2)(i)(A)); (2) the 
filing of an international application for patent (see Sec.  
1.8(a)(2)(i)(D)); (3) the filing of correspondence in an international 
application before the U.S. Receiving Office, the U.S. International 
Searching Authority, or the U.S. International Preliminary Examining 
Authority (see Sec.  1.8(a)(2)(i)(E)); and (4) the filing of a copy of 
the international application and the basic national fee necessary to 
enter the national stage, as specified in Sec.  1.495(b) (see Sec.  
1.8(a)(2)(i)(F)) regardless of the media that is used. Likewise, if the 
user cannot pay fees on-line because the RAM interface is down, the 
user should pay fees via alternative methods such as authorizing 
payment to a deposit account or by a credit card in a document (e.g., a 
fee transmittal). Accordingly, users are strongly advised to submit 
their correspondence via EFS-Web sufficiently early in the day to allow 
time for alternative filing or payment methods when submissions via EFS 
or RAM cannot be initiated or correctly completed.
    As EFS-Web is easy to use and readily available twenty-four hours a 
day, every day, some users may find it tempting to include 
correspondence to multiple applications in one, single EFS-Web 
submission, or to submit the required reply piecemeal over multiple 
sessions. Such submissions may result in processing delays in the 
Office, and should be avoided. In order to facilitate proper processing 
of any correspondence submitted via EFS-Web, each submission session 
must be limited to correspondence for a single application, with each 
distinct reply being contained in a separate paper (see Sec.  1.4(c)). 
The application number or the patent number for which the 
correspondence pertains must be included in any submission to assure 
proper matching with the application file.
    For more information on EFS-Web, see the Legal Framework for EFS-
Web (http://www.uspto.gov/ebc/portal/efs/legal.htm), which provides 
guidance on the background statutes, regulations and policies that 
support the Office electronic filing system, including EFS-Web and the 
use of S-signature therein. The Legal Framework for EFS-Web is a 
valuable reference for applicants and patent practitioners using EFS-
Web.
    Although EFS-Web accepts most patent correspondence, there are 
still certain types of correspondence that are not permitted to be 
filed by EFS-Web, such as any correspondence for reexamination 
proceedings. See the Legal Framework for EFS-Web for a current list of 
types of correspondence that are not permitted to be filed using EFS-
Web. If any additional types of correspondence are permitted to be 
filed via EFS-Web, they will be announced on the Office's Web site and 
will be added to the Legal Framework for EFS-Web in due course. 
Therefore, users are advised to periodically review the Legal Framework 
for EFS-Web to view current information on types of correspondence that 
are not permitted to be filed through EFS-Web.

Discussion of Specific Rules

    Sections 1.4, 1.6, 1.8, and 1.33 governing applicant correspondence 
are amended to reflect use of electronic commerce, in particular EFS-
Web, as follows:
    Section 1.4: Section 1.4(d)(2) is amended to delete the reference 
to the character coded signature of paragraph (d)(3), which was only 
applicable to the ePAVE software, a component of the Office's older, 
discontinued patent electronic filing system. Since S-signatures are 
acceptable signatures in EFS-Web submissions in accordance with Sec.  
1.4(d)(2), this paragraph is also amended to eliminate the reference to 
``EFS Tag(ged) Image File Format (TIFF)'' because EFS-Web does not 
accept TIFF attachments. In addition, a reference to Sec.  1.6(a)(4) is 
added as a conforming amendment. Accordingly, the relevant phrase has 
been rewritten as ``via the Office Electronic Filing System as an 
attachment as provided in Sec.  1.6(a)(4).''
    A legible electronic image of a handwritten signature inserted, or 
copied and pasted by the person signing the correspondence into the 
correspondence may be considered to be an acceptable signature under 
Sec.  1.4(d)(2) provided the signature is surrounded by a first single 
forward slash mark before the electronic image and a second single 
forward slash mark after the electronic image. That is, the legible 
electronic image of a handwritten signature must be enclosed between 
two single forward slashes, and the signer's name indicated below or 
adjacent to the signature as required by Sec.  1.4(d)(2). The slashes 
must be inserted in the correspondence prior to, or at the same time 
as, the insertion of the signature. The slashes must not be added after 
the insertion of the signature.
    Section 1.4(d)(3) is amended to provide requirements in using 
Office forms. The character coded signature requirements of former 
paragraph (d)(3) have been removed because such requirements were only 
applicable to the ePAVE software, which is now discontinued.
    The Office provides forms to the public to use in certain 
situations to assist in the filing of correspondence for a certain 
purpose and to meet certain requirements. Use of the forms for purposes 
for which they were not designed is prohibited. No changes to 
certification statements on the Office forms (e.g., oath or declaration 
forms, terminal disclaimer forms, petition forms, and the 
nonpublication request

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form) may be made. For example, the following statements are 
certification statements on an oath or declaration form PTO/SB/01: (1) 
``I believe the inventor(s) named below to be the original and first 
inventor(s) of the subject matter which is claimed and for which a 
patent is sought on the invention entitled;'' (2) ``I hereby state that 
I have reviewed and understand the contents of the above-identified 
specification, including the claims, as amended by any amendment 
specifically referred to above;'' (3) ``I acknowledge the duty to 
disclose information which is material to patentability as defined in 
37 CFR 1.56, including for continuation-in-part applications, material 
information which became available between the filing date of the prior 
application and the national or PCT international filing date of the 
continuation-in-part application;'' and (4) ``I hereby declare that all 
statements made herein of my own knowledge are true and that all 
statements made on information and belief are believed to be true; and 
further that these statements were made with the knowledge that willful 
false statements and the like so made are punishable by fine or 
imprisonment, or both, under 18 U.S.C. 1001 and that such willful false 
statements may jeopardize the validity of the application or any patent 
issued thereon.'' As another example, the following statement is a 
certification on the nonpublication request form PTO/SB/35: ``I hereby 
certify that the invention disclosed in the attached application has 
not and will not be the subject of an application filed in another 
country, or under a multilateral international agreement, that requires 
publication at eighteen months after filing.'' Other Office forms for 
patent applications or patents that contain certification statements 
include, but are not limited to, forms PTO/SB/01, PTO/SB/01A, PTO/SB/
03, PTO/SB/03A, PTO/SB/04, PTO/SB/25, PTO/SB/26, PTO/SB/28, PTO/SB/35, 
PTO/SB/51, PTO/SB/51s, PTO/SB/53, PTO/SB/62, PTO/SB/63, PTO/SB/64, PTO/
SB/64a, PTO/SB/66, and PTO/SB/101-110.
    Most of the Office forms are static in that the forms do not allow 
users to customize the form to their particular needs. The existing 
text of a static form, other than a certification statement, may be 
modified, deleted or added to by a party, only if information 
identifying the form as an Office form (e.g., the form number and the 
Office of Management and Budget (OMB) approval information in the 
header and footer of the form) is removed. For example, a static form 
could be amended to add additional signature blocks if the form number 
and OMB information is removed. EFS-Web forms, however, do allow for 
customization. For example, users may add, remove, or change certain 
additional data blocks (e.g., signature blocks) as needed by selecting 
the ``add'' or ``remove'' buttons on the EFS-Web forms. These EFS-Web 
forms can be customized in a way provided for by the form without 
removing the text identifying the form as an Office form (e.g., the 
form number and OMB information in the header and the footer). 
Currently, only forms PTO/SB/08 Information Disclosure Statement, PTO/
SB/14 Application Data Sheet, PTO/SB/28 Petition to Make Special under 
the Accelerated Examination Program, PTO/SB/30 Request for Continued 
Examination (RCE) Transmittal, and PTO/SB/66 Petition to Accept 
Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent 
(37 CFR 1.378(c)) are EFS-Web forms.
    The presentation to the Office (whether by signing, filing, 
submitting, or later advocating) of any form with text identifying the 
form as an Office form (e.g., the form number and the OMB information 
in the header and footer) by a party, whether a practitioner or non-
practitioner, constitutes a certification under Sec.  10.18(b) that the 
existing text and any certification statement on the form has not been 
altered other than permitted by EFS-Web customization.
    Section 1.4(d)(4) is amended to make conforming changes due to the 
removal of the character coded signature requirements of former 
paragraph (d)(3).
    Section 1.6: Section 1.6(a)(4) is added to indicate that most 
patent applications and other patent correspondence, including, inter 
alia, amendments, drawing changes and extensions of time, may be 
submitted using the Office electronic filing system only in accordance 
with the Office electronic filing system requirements (see the Legal 
Framework for EFS-Web, which sets forth the electronic filing system 
requirements (http://www.uspto.gov/ebc/portal/efs/legal.htm)). The 
phrase ``using the Office electronic filing system only in accordance 
with the Office electronic filing system requirements'' codifies and 
continues the current EFS practice.
    Under EFS-Web, correspondence is accorded a ``receipt date'' that 
is the date the correspondence is received (Eastern Time) at the 
Office's correspondence address set forth in Sec.  1.1 (e.g., 
Alexandria, Virginia) when it was officially submitted. The receipt 
date is not limited to an official business day, but can be a Saturday, 
Sunday or Federal holiday within the District of Columbia. 
Correspondence is officially submitted to the Office via EFS-Web when a 
user clicks the submit button on the Confirm and Submit screen after 
the correspondence has been uploaded to the USPTO server for, inter 
alia, user review.
    The ``receipt date'' is recorded on an acknowledgment receipt, 
which is automatically sent to the person filing the correspondence 
after the correspondence is officially submitted. Under EFS-Web, the 
acknowledgment receipt contains a full listing of the correspondence 
submitted, including the count of pages and/or byte size for each piece 
of correspondence in the submission. Accordingly, the acknowledgment 
receipt is a legal equivalent of a post card receipt described in the 
Manual of Patent Examining Procedure (MPEP), Section 503. For the 
filing of applications, the official filing date will continue to be 
stated on the filing receipt under Sec.  1.54(b), which is sent to 
applicants after the submitted application parts are reviewed for 
compliance with the filing date requirements.
    Section 1.6(g) is added to provide a new procedure for establishing 
that national stage correspondence, national stage filings, or follow-
on correspondence required by Sec.  1.495(b), which had been submitted 
via EFS was, in fact, received by the Office in the event that the 
Office has no evidence of receipt.
    To begin entry into the national stage, applicant is required to 
comply with Sec.  1.495(b) within thirty months from the priority date. 
Thus, applicant must pay the basic national fee on or before thirty 
months from the priority date and be sure that a copy of the 
international application has been received by the U.S. Designated or 
Elected Office prior to expiration of thirty months from the priority 
date. Where the international application was filed with the United 
States Receiving Office as the competent receiving Office, the copy of 
the international application referred to in Sec.  1.495(b) is not 
required. Payment of the basic national fee will indicate applicant's 
intention to enter the national stage and will provide a U.S. 
correspondence address in most instances. Applicants cannot pay the 
basic national fee with a surcharge after the thirty-month deadline. 
Failure to pay the basic national fee within thirty months from the 
priority date will result in abandonment of the application. The time 
for payment of the basic fee is not extendable. Similarly, the copy of 
the

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international application, if required under Sec.  1.495(b), must be 
provided within thirty months from the priority date to avoid 
abandonment of the application. Accordingly, the ability to present 
evidence of timely receipt of national stage correspondence is critical 
to potentially avoid abandonment of the application.
    This new procedure is equivalent to the Office's domestic filing 
process for providing evidence of the Office's receipt of a continued 
prosecution application (CPA) for a design application under Sec.  
1.53(d) submitted by facsimile transmission in the event that the 
Office does not have evidence of receipt, as set forth in Sec.  1.6(f) 
and MPEP 502.01. For a CPA, the procedure for providing evidence of 
receipt by the Office requires a petition be filed requesting that the 
CPA be accorded a filing date as of the date the CPA is shown to have 
been transmitted to and received in the Office (Sec.  1.6(f)). The 
showing must include, inter alia, a copy of the sending unit's report 
confirming transmission of the application or evidence that came into 
being after the complete transmission of the application and within one 
business day of the complete transmission of the application. Under the 
new procedure for providing evidence of a prior submission via EFS-Web, 
the petition and showing necessary to accept the re-submission of the 
correspondence as being filed on an earlier date is the same as the 
petition and showing required under Sec.  1.6(f) with the exception 
that the acknowledgment receipt, or other equivalent evidence, must be 
provided rather than the sender's facsimile report.
    If applicant has the acknowledgment receipt, applicant must include 
a copy of the acknowledgment receipt as evidence of the submission of 
the national stage correspondence. In the rare situations where 
applicant does not have the acknowledgment receipt, equivalent 
evidence, which is another piece of correspondence that shows 
substantially similar evidence that is provided by the acknowledgment 
receipt, will be considered in support of the petition.
    Section 1.8: Section 1.8(a)(1)(i) is amended by adding new 
paragraph (C) to permit certain correspondence, excluding 
correspondence not entitled to a certificate of mailing or transmission 
or not permitted to be electronically transmitted, to be treated as 
being timely received on the local date at the location where submitted 
if filed with a certificate of transmission via the Office's electronic 
filing system, which is EFS-Web. See the Legal Framework for EFS-Web 
for a current list of types of correspondence that are not permitted to 
be filed using EFS-Web, such as any correspondence for reexamination 
proceedings. This rule change will provide a similar procedure for 
correspondence filed via EFS-Web that currently exists for 
correspondence filed via First-Class Mail under Sec.  1.10 and 
facsimile transmission using a certificate of mailing or transmission 
under Sec.  1.8. Users should place the certificate of transmission on 
the correspondence (e.g., transmittal letter) submitted under EFS-Web 
in a similar manner as they would for correspondence submitted by 
facsimile transmission. See MPEP 512 for more information on 
certificate of mailing or transmission under Sec.  1.8.
    Prior to this amendment to Sec.  1.8, a person could state on 
certain papers directed to the Office, the date on which the paper will 
be deposited in the United States Postal Service or transmitted by 
facsimile. This amendment to Sec.  1.8 will permit a similar procedure 
for establishing timeliness when correspondence is filed via EFS-Web. 
Accordingly, if the date stated in the correspondence submitted via 
EFS-Web is within the period for reply, the reply, in most instances, 
will be considered to be timely. This is true even if the paper does 
not actually reach the Office until after the end of the period for 
reply.
    Even with such procedures under Sec.  1.8, the Office will continue 
its usual practice of recording the receipt date (e.g., ``Office Date'' 
Stamp) on all papers received through the mail, by facsimile, or via 
EFS-Web except those filed under Sec.  1.10 (See MPEP 513). The receipt 
date will also be the date that is entered on Office records and from 
which any subsequent periods are calculated.
    The certificate of mailing or transmission under Sec.  1.8 is not 
available for all correspondence. Paragraph (a)(2) of Sec.  1.8 lists 
some correspondence for which the certification of mailing or 
transmission does not apply to, and no benefit will be given to such 
certificates if used. The list enumerated in Sec.  1.8(a)(2) is not 
exhaustive, and the provisions of Sec.  1.8 do not apply to the time 
periods or situations that have been explicitly excluded from Sec.  
1.8. For example, provisions of Sec.  1.8(a) do not apply to time 
periods and situations set forth in Sec. Sec.  1.217(e) and 1.703(f) 
because the exceptions are provided explicitly in Sec. Sec.  1.217(e) 
and 1.703(f).
    Paragraphs (b) and (c) of Sec.  1.8 will also apply to a 
certification of EFS-Web transmission by new paragraph (a)(1)(i)(C) of 
this section. Paragraphs (b) and (c) concern the situation where a 
paper containing a certificate was timely filed, but never received by 
the Office. Specifically, Sec.  1.8(b) permits a party to notify the 
Office of a previous mailing, or transmission, of correspondence when a 
reasonable amount of time has elapsed from the time of mailing or 
transmitting of the correspondence, but Office records do not show 
receipt of the correspondence. Applicant may notify the Office of the 
previous mailing or transmission and supply a duplicate copy of the 
previously mailed or transmitted correspondence and a statement 
attesting on a personal knowledge basis or to the satisfaction of the 
Director to the previous timely mailing or transmission. If the person 
signing the statement did not sign the certificate of mailing or 
transmission, then the person signing the statement should explain how 
they have firsthand knowledge of the previous timely mailing or 
transmission. Such a statement should be filed promptly after the 
person becomes aware that the Office has not received the 
correspondence. Before notifying the Office of a previously submitted 
correspondence that appears not to have been received by the Office, 
applicants should check the Office's private Patent Application 
Information Retrieval (PAIR) System to see if the correspondence has 
been entered into the application file.
    For EFS-Web submissions, applicants are encouraged to use the 
acknowledgment receipt generated by EFS-Web, if available, as part of 
the evidence to support the statement required by Sec.  1.8(b)(3). An 
acknowledgment receipt is automatically electronically sent to the 
person filing the correspondence after the correspondence is officially 
submitted. As the acknowledgment receipt contains the time (Eastern 
Time) the correspondence was received at the Office, users may not be 
able to solely rely on the acknowledgment receipt to support a position 
that correspondence was submitted at a particular local time. 
Therefore, users are advised to keep a copy of papers submitted, 
including a certification of EFS-Web transmission, as evidence of the 
local time of all EFS-Web submissions to support a position that 
correspondence was submitted at a particular local time in the event 
such evidence is needed.
    Section 1.33: Section 1.33(a) is amended to accommodate changes due 
to electronic commerce. The Office anticipates that, in the near term 
future, applicants may have the option to view Office communications 
via the Office's private PAIR system instead of receiving mailed 
communications. Also, when a submitter files correspondence using

[[Page 2774]]

EFS-Web, an acknowledgment receipt is typically generated and 
automatically sent via e-mail to the submitter. The acknowledgment 
receipt is also placed in the Office's electronic file and is viewable 
in private PAIR. To accommodate these processes, the phrases ``, or 
otherwise make available,'' and ``the person associated with'' was 
added so the third sentence will read as follows: ``The Office will 
direct, or otherwise make available, all notices, official letters, and 
other communications relating to the application to the person 
associated with the correspondence address.'' In addition, the word 
``generally'' was added to the following sentence as a conforming 
change: ``The Office will generally not engage in double correspondence 
with an applicant and a patent practitioner, or with more than one 
patent practitioner except as deemed necessary by the Director.''

Rule Making Considerations

Administrative Procedure Act

    This notice adopts changes to the rules of practice that concern 
the manner of submitting certain correspondence via the Office's 
electronic filing systems. Specifically, the changes in this final 
rule: (1) Provide patent users with a process for showing that certain 
national stage correspondence submitted via EFS-Web was actually 
received by the Office by relying on the acknowledgment receipt; and 
(2) treat certain correspondence as received (for timeliness purposes) 
as of the date submitted by applicant rather than the date received by 
the Office if the correspondence is filed by EFS-Web, which will 
provide a similar procedure as the existing certificate of mailing or 
transmission under Sec.  1.8. Therefore, these rule changes involve 
interpretive rules, or rules of agency practice and procedure. See 
Bachow Communications Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir. 2001) 
(rules governing an application process are ``rules of agency 
organization, procedure, or practice'' and exempt from the 
Administrative Procedure Act's notice and comment requirement); see 
also Merck & Co., Inc. v. Kessler, 80 F.3d 1543, 1549-50, 38 USPQ2d 
1347, 1351 (Fed. Cir. 1996) (the rules of practice promulgated under 
the authority of former 35 U.S.C. 6(a) (now in 35 U.S.C. 2(b)(2)) are 
not substantive rules (to which the notice and comment requirements of 
the Administrative Procedure Act apply)), and Fressola v. Manbeck, 36 
USPQ2d 1211, 1215 (D.D.C. 1995) (``it is extremely doubtful whether any 
of the rules formulated to govern patent or trade-mark practice are 
other than `interpretive rules, general statements of policy, * * * 
procedure, or practice.' '') (quoting C.W. Ooms, The United States 
Patent Office and the Administrative Procedure Act, 38 Trademark Rep. 
149, 153 (1948)). Accordingly, prior notice and an opportunity for 
public comment were not required pursuant to 5 U.S.C. 553(b)(A) (or any 
other law), and thirty-day advance publication is not required pursuant 
to 5 U.S.C. 553(d) (or any other law).

Regulatory Flexibility Act

    As discussed previously, the changes in this final rule involve 
rules of agency practice and procedure under 5 U.S.C. 553(b)(A), and 
prior notice and an opportunity for public comment were not required 
pursuant to 5 U.S.C. 553(b)(A) (or any other law). As prior notice and 
an opportunity for public comment were not required pursuant to 5 
U.S.C. 553 (or any other law) for the changes in this final rule, a 
regulatory flexibility analysis under the Regulatory Flexibility Act (5 
U.S.C. 601 et seq.) is not required for the changes in this final rule. 
See 5 U.S.C. 603.

Executive Order 13132

    This rule making does not contain policies with federalism 
implications sufficient to warrant preparation of a Federalism 
Assessment under Executive Order 13132 (Aug. 4, 1999).

Executive Order 12866

    This rule making has been determined to be not significant for 
purposes of Executive Order 12866 (Sept. 30, 1993).

Paperwork Reduction Act

    This notice involves information collection requirements which are 
subject to review by the Office of Management and Budget (OMB) under 
the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The 
changes in this notice are limited to amending the rules of practice to 
support implementation of the Office's electronic filing system (EFS) 
for patent correspondence, and in particular, the new web-based 
electronic filing system (EFS-Web). The changes in this final rule: (1) 
Provide patent users with a process for showing that certain national 
stage correspondence submitted via EFS-Web was actually received by the 
Office by relying on the acknowledgment receipt; and (2) treat certain 
correspondence as received (for timeliness purposes) as of the date 
submitted by applicant rather than the date received by the Office if 
the correspondence is filed by EFS-Web, which will provide a similar 
procedure as the existing certificate of mailing or transmission under 
Sec.  1.8. The collections of information involved in this notice have 
been reviewed and previously approved by OMB under the following OMB 
control numbers: 0651-0021, 0651-0031 and 0651-0032. The United States 
Patent and Trademark Office is not resubmitting the information 
collections package for OMB control numbers 0651-0031 and 0651-0032 to 
OMB for its review and approval because the changes in this notice do 
not affect the information collection requirements associated with the 
information collection under OMB control numbers 0651-0031 and 0651-
0032. The United States Patent and Trademark Office is resubmitting the 
information collections package for OMB control numbers 0651-0021 to 
OMB for its review and approval because the changes in this notice do 
affect the information collection requirements associated with the 
information collection under OMB control number 0651-0021.
    The title, description and respondent description of the 
information collection under OMB control number 0651-0021 are shown 
below with estimates of the annual reporting burdens. Included in the 
estimates is the time for reviewing instructions, gathering and 
maintaining the data needed, and completing and reviewing the 
collection of information.
    OMB Number: 0651-0021.
    Title: Patent Cooperation Treaty.
    Form Numbers: PCT/RO/101, PCT/RO/134, PTO-1382, PTO-1390, PCT/IPEA/
401, PTO/SB/61/PCT, PTO/SB/64/PCT, PCT/Model of power of attorney, PCT/
Model of general power of attorney.
    Type of Review: Approved through March 2007.
    Affected Public: Individuals or households, businesses or other 
for-profits, not-for-profit institutions, farms, the Federal 
Government, and state, local or tribal governments.
    Estimated Number of Respondents: 355,655.
    Estimated Time per Response: 15 minutes to 8 hours.
    Estimated Total Annual Burden Hours: 347,889.
    Needs and Uses: The general purpose of the Patent Cooperation 
Treaty (PCT) is to standardize the format and filing procedures so that 
applicants may file one international application in one location, in 
one language, and pay one initial set of fees to seek protection for an 
invention in more than 100 designated countries. This collection of 
information is necessary so that respondents can file an international

[[Page 2775]]

patent application and so that the USPTO can fulfill its duties to 
process, search, and examine international patent applications under 
the provisions of the PCT.
    Interested persons are requested to send comments regarding these 
information collections, including suggestions for reducing this 
burden, to Robert J. Spar, Director, Office of Patent Legal 
Administration, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 
22313-1450, or to the Office of Information and Regulatory Affairs, 
Office of Management and Budget, New Executive Office Building, Room 
10235, 725 17th Street, NW., Washington, DC 20503, Attention: Desk 
Officer for the Patent and Trademark Office.
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall a person be subject to a penalty for failure to 
comply with a collection of information subject to the requirements of 
the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

List of Subjects in 37 CFR Part 1

    Administrative practice and procedure, Courts, Freedom of 
information, Inventions and patents, Reporting and recordkeeping 
requirements, Small businesses.

0
For the reasons set forth in the preamble, 37 CFR part 1 is amended as 
follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority citation for 37 CFR part 1 continues to read as 
follows:

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


0
2. Section 1.4 is amended by revising paragraphs (d)(2) introductory 
text, (d)(3), and (d)(4)(ii) to read as follows:


Sec.  1.4  Nature of correspondence and signature requirements.

* * * * *
    (d) * * *
    (2) S-signature. An S-signature is a signature inserted between 
forward slash marks, but not a handwritten signature as defined by 
Sec.  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 not covered by a handwritten signature of Sec.  
1.4(d)(1). Correspondence being filed in the Office in paper, by 
facsimile transmission as provided in Sec.  1.6(d), or via the Office 
electronic filing system as an attachment as provided in Sec.  
1.6(a)(4), for a patent application, patent, or a reexamination 
proceeding may be S-signature signed instead of being personally signed 
(i.e., with a handwritten signature) as provided for in paragraph 
(d)(1) of this section. The requirements for an S-signature under this 
paragraph (d)(2) of this section are as follows.
* * * * *
    (3) Forms. The Office provides forms to the public to use in 
certain situations to assist in the filing of correspondence for a 
certain purpose and to meet certain requirements for patent 
applications and proceedings. Use of the forms for purposes for which 
they were not designed is prohibited. No changes to certification 
statements on the Office forms (e.g., oath or declaration forms, 
terminal disclaimer forms, petition forms, and nonpublication request 
form) may be made. The existing text of a form, other than a 
certification statement, may be modified, deleted, or added to, if all 
text identifying the form as an Office form is removed. The 
presentation to the Office (whether by signing, filing, submitting, or 
later advocating) of any Office form with text identifying the form as 
an Office form by a party, whether a practitioner or non-practitioner, 
constitutes a certification under Sec.  10.18(b) of this chapter that 
the existing text and any certification statements on the form have not 
been altered other than permitted by EFS-Web customization.
    (4) * * *
    (ii) Certifications as to the signature:
    (A) Of another: A person submitting a document signed by another 
under paragraph (d)(2) of this section is obligated to have a 
reasonable basis to believe that the person whose signature is present 
on the document was actually inserted by that person, and should retain 
evidence of authenticity of the signature.
    (B) Self certification: The person inserting a signature under 
paragraph (d)(2) of this section in a document submitted to the Office 
certifies that the inserted signature appearing in the document is his 
or her own signature.
* * * * *

0
3. Section 1.6 is amended by adding new paragraphs (a)(4) and (g) to 
read as follows:


Sec.  1.6  Receipt of correspondence.

    (a) * * *
    (4) Correspondence may be submitted using the Office electronic 
filing system only in accordance with the Office electronic filing 
system requirements. Correspondence submitted to the Office by way of 
the Office electronic filing system will be accorded a receipt date, 
which is the date the correspondence is received at the correspondence 
address for the Office set forth in Sec.  1.1 when it was officially 
submitted.
* * * * *
    (g) Submission of the national stage correspondence required by 
Sec.  1.495 via the Office electronic filing system. In the event that 
the Office has no evidence of receipt of the national stage 
correspondence required by Sec.  1.495, which was submitted to the 
Office by the Office electronic filing system, the party who submitted 
the correspondence may petition the Director to accord the national 
stage correspondence a receipt date as of the date the correspondence 
is shown to have been officially submitted to the Office.
    (1) The petition of this paragraph (g) requires that the party who 
submitted such national stage correspondence:
    (i) Informs the Office of the previous submission of the 
correspondence promptly after becoming aware that the Office has no 
evidence of receipt of the correspondence under Sec.  1.495;
    (ii) Supplies an additional copy of the previously submitted 
correspondence;
    (iii) Includes a statement that attests on a personal knowledge 
basis, or to the satisfaction of the Director, that the correspondence 
was previously officially submitted; and
    (iv) Supplies a copy of an acknowledgment receipt generated by the 
Office electronic filing system, or equivalent evidence, confirming the 
submission to support the statement of paragraph (g)(1)(iii) of this 
section.
    (2) The Office may require additional evidence to determine if the 
national stage correspondence was submitted to the Office on the date 
in question.


0
4. Section 1.8 is amended by revising paragraphs (a)(1)(i) and (b)(3) 
to read as follows:


Sec.  1.8  Certificate of mailing or transmission.

    (a) * * *
    (1) * * *
    (i) The correspondence is mailed or transmitted prior to expiration 
of the set period of time by being:
    (A) Addressed as set out in Sec.  1.1(a) and deposited with the 
U.S. Postal Service with sufficient postage as first class mail;
    (B) Transmitted by facsimile to the Patent and Trademark Office in 
accordance with Sec.  1.6(d); or
    (C) Transmitted via the Office electronic filing system in 
accordance with Sec.  1.6(a)(4); and
* * * * *
    (b) * * *
    (3) Includes a statement that attests on a personal knowledge basis 
or to the

[[Page 2776]]

satisfaction of the Director to the previous timely mailing, 
transmission or submission. If the correspondence was sent by facsimile 
transmission, a copy of the sending unit's report confirming 
transmission may be used to support this statement. If the 
correspondence was transmitted via the Office electronic filing system, 
a copy of an acknowledgment receipt generated by the Office electronic 
filing system confirming submission may be used to support this 
statement.
* * * * *

0
5. Section 1.33 is amended by revising the introductory text of 
paragraph (a) to read as follows:


Sec.  1.33  Correspondence respecting patent applications, 
reexamination proceedings, and other proceedings.

    (a) Correspondence address and daytime telephone number. When 
filing an application, a correspondence address must be set forth in 
either an application data sheet (Sec.  1.76), or elsewhere, in a 
clearly identifiable manner, in any paper submitted with an application 
filing. If no correspondence address is specified, the Office may treat 
the mailing address of the first named inventor (if provided, see 
Sec. Sec.  1.76(b)(1) and 1.63(c)(2)) as the correspondence address. 
The Office will direct, or otherwise make available, all notices, 
official letters, and other communications relating to the application 
to the person associated with the correspondence address. For 
correspondence submitted via the Office's electronic filing system, 
however, an electronic acknowledgment receipt will be sent to the 
submitter. The Office will generally not engage in double 
correspondence with an applicant and a patent practitioner, or with 
more than one patent practitioner except as deemed necessary by the 
Director. If more than one correspondence address is specified in a 
single document, the Office will select one of the specified addresses 
for use as the correspondence address and, if given, will select the 
address associated with a Customer Number over a typed correspondence 
address. For the party to whom correspondence is to be addressed, a 
daytime telephone number should be supplied in a clearly identifiable 
manner and may be changed by any party who may change the 
correspondence address. The correspondence address may be changed as 
follows:
* * * * *

    Dated: January 17, 2007.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. E7-906 Filed 1-22-07; 8:45 am]
BILLING CODE 3510-16-P