[Federal Register Volume 73, Number 152 (Wednesday, August 6, 2008)]
[Proposed Rules]
[Pages 45662-45673]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E8-18025]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1, 2, and 3

[Docket No. PTO-P-2008-0022]
RIN 0651-AC27


Changes to Practice for Documents Submitted to the United States 
Patent and Trademark Office

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
proposing to revise the rules of practice to limit the types of 
correspondence that may be submitted to the Office by facsimile. The 
Office is also proposing an increased minimum font size for use on 
papers submitted to the Office for a patent application, patent or 
reexamination proceeding. The proposed changes will improve the 
legibility of documents in the Office's files of patent applications 
and reexamination proceedings.

DATES: Written comments must be received on or before October 6, 2008. 
No public hearing will be held.

ADDRESSES: Comments should be sent by electronic mail over the Internet 
addressed to [email protected]. Comments may also be submitted by 
mail addressed to: Mail Stop Comments-Patents, Commissioner for 
Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the 
attention of Raul Tamayo, Legal Advisor, Office of Patent Legal 
Administration (OPLA). Although comments may be submitted by mail, the 
Office prefers to receive comments via the Internet.
    Comments may also be sent by electronic mail message over the 
Internet via the Federal eRulemaking Portal. See the Federal 
eRulemaking Portal Web site (http://www.regulations.gov) for additional 
instructions on providing comments via the Federal eRulemaking Portal.
    The comments will be available for public inspection at the Office 
of Patent Legal Administration, Office of the Deputy Commissioner for 
Patent Examination Policy, currently located at Room 7D74 of Madison 
West, 600 Dulany Street, Alexandria, Virginia and will also be 
available through anonymous file transfer protocol (ftp) via the 
Internet (address: http://www.uspto.gov). Because comments will be made 
available for public inspection, information that is not desired to be 
made public, such as an address or a telephone number, should not be 
included in the comments.

FOR FURTHER INFORMATION CONTACT: Hiram H. Bernstein ((571) 272-7707), 
Senior Legal Advisor, or Raul Tamayo, Legal Advisor, ((571) 272-7728), 
Office of Patent Legal Administration, Office of Deputy Commissioner 
for Patent Examination Policy, directly by telephone, or by mail 
addressed to: Mail Stop Comments-Patents, Commissioner for Patents, 
P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of 
the Office of Patent Legal Administration.
    For information regarding reexamination issues, contact Stephen 
Marcus ((571) 272-7743) or Kenneth Schor ((571) 272-7710), Senior Legal 
Advisors, Office of Patent Legal Administration, Office of Deputy 
Commissioner for Patent Examination Policy.

SUPPLEMENTARY INFORMATION: The Office is proposing to revise the rules 
of practice in title 37 of the Code of Federal Regulations (CFR) for 
facsimile transmissions of correspondence, and the minimum font size 
required to be used. The Office is specifically proposing revising 
Sec. Sec.  1.6, 1.52, 1.366, 2.195, 3.24, and 3.25.

I. Background

    The number of patent applications and patent-related correspondence 
received by the Office has increased substantially over the last few 
years, and submissions are expected to continue to increase in the next 
few years. Processing paper is extremely labor-intensive and subject to 
error and misfiling, particularly as the Office must sort through 
several thousand pieces of patent correspondence that are received on a 
daily basis. Although the Office has made substantial changes in an 
attempt to accurately and efficiently process the increased number of 
correspondence received, the Office believes that it should make 
further changes in its business practices to improve its handling of 
patent correspondence.

II. Facsimile Transmission

    In 1988, the Office, due to widespread use of facsimile 
transmission and the resulting time saved in correspondence between 
applicants and the Office, established a trial program to accept 
facsimile transmission of certain correspondence. In light of the 
success of the trial program, a policy on acceptance of facsimile 
transmissions was incorporated into the rules of practice. See Changes 
in Signature and Filing Requirements for Correspondence Files in the 
Patent and Trademark Office, 58 FR 54494 (October 22, 1993). Facsimile 
transmission of correspondence has grown to over 240,000 pieces of 
patent correspondence per year sent to the Office's central facsimile 
number. While the number of facsimile transmissions in any one 
application may be small, the overall number of facsimile transmissions 
represents a significant processing burden on the Office.
    The advantage of facsimile transmitting patent and assignment 
correspondence has been the quick submission of such correspondence to 
the particular area of the Office concerned with promptly acting on 
them. The advantage, however, is not exclusive to facsimile 
transmissions. EFS-Web offers this advantage as well as others not 
available with facsimile transmission. For example, EFS-Web submissions 
are ``soft scanned'' (i.e., electronically uploaded) directly into the 
official application file, so multiple Office employees can 
simultaneously view the document(s). Furthermore, when documents are 
submitted via EFS-Web, the Office's electronic system sends an auto-
generated message notifying the appropriate area which treats the type 
of documents submitted. Additionally, EFS-Web offers

[[Page 45663]]

applicants the opportunity to review the content of their submissions 
after the ``soft scanning'' process is complete.
    It should be recognized that correspondence received by the Office 
via facsimile are often of low image quality when printed and viewed. 
The low image quality is not so much dependent upon the type of printer 
used by the Office when receiving and printing the transmitted 
correspondence, but rather is dependent upon the quality of the machine 
used by an applicant in generating the facsimile transmission. When the 
Office scans these low image quality correspondence into the Office's 
official application file called the Image File Wrapper (IFW), the 
image quality can be further compromised.
    In addition to low image quality, a number of other adverse 
consequences, from the Office's perspective, exist when applicant 
submits patent and assignment documents via facsimile. For example, a 
number of applicants are not meticulous in determining the specific 
facsimile transmission number to which a correspondence should be sent. 
Under the current rules, receipt by the Office via any facsimile 
transmission number may suffice to represent a completed, effective 
transmission. However, the area of the Office needing to act on the 
errant transmission would not be aware of its receipt, and the area 
receiving it may not immediately recognize what type of correspondence 
has been received, or where the correspondence should be forwarded for 
prompt action. Such circumstances cause unnecessary delays and add 
unnecessary costs to the processing of errant correspondence. In some 
instances, routing errant correspondence to the correct area of the 
Office is not possible or is not done in a timely manner (e.g., the 
paper copy becomes misplaced before the proper forwarding area can be 
determined, or the proper forwarding area is not readily identifiable 
by the receiving area), thereby forcing the applicant to rely on a 
transmission receipt via a petition alleging that the correspondence 
was timely submitted. Additionally, even where the facsimile 
transmission is sent to the designated transmission number, the Office 
must print the transmitted correspondence, process the paper, scan the 
possibly low-quality image, and update the IFW. All of these steps are 
additionally time-consuming and costly.
    Accordingly, the Office believes that given: (1) The costs and 
quality concerns regarding facsimile transmitted correspondence; and 
(2) the newly upgraded EFS-Web electronic filing system, which offers 
the same benefit of quick submission to the particular area of the 
Office that needs to act on the correspondence, it is now appropriate 
to terminate the use of facsimile transmissions as a method for filing 
most correspondence intended to become part of the file record of a 
patent application, patent or reexamination proceeding. Specifically, 
correspondence that can be submitted via EFS-Web would no longer be 
accepted via facsimile transmission. For example, a petition to 
withdraw a patent application from issue per 37 CFR 1.313 would no 
longer be accepted via facsimile transmission and would need to be 
submitted via EFS-Web.
    Similarly, it is also appropriate to eliminate facsimile 
transmission of other types of correspondence that can be submitted via 
certain other electronic systems of the Office. Specifically, any type 
of patent or trademark correspondence that can be submitted via the 
Office's Electronic Patent Assignment System (EPAS) (discussed in 
Manual of Patent Examining Procedure (MPEP) Sec.  302.10), and 
Electronic Trademark Assignment System (ETAS) (discussed in Trademark 
Manual of Examination Procedure (TMEP) Sec.  503.03(a)), such as 
assignment documents submitted for recording in Assignment Services 
Division, would no longer be permitted to be submitted via facsimile 
transmission. While such documents are intended to become part of the 
official assignment records, they are not intended to become part of 
the official patent or trademark file to which they relate.
    Additional aspects of the proposed rule making would require 
applicants, third party requesters, and patent owners: (1) To utilize a 
facsimile transmission number identified by the Office for a particular 
type of correspondence, i.e., the submission must be transmitted 
directly to the area of the Office appropriate to receive the 
transmission at its identified transmission number (as opposed to 
transmission to any other facsimile transmission number, such as a 
facsimile transmission number identified for a different type of 
correspondence), or otherwise the transmission would not be effective 
(see Sec.  1.6(d)(3)); and (2) to limit each submission made via 
facsimile transmission to one application or other matter before the 
Office, except for a single submission of multiple patent maintenance 
fee payments or requests for refunds thereof. The submission for a 
single application or other matter may address more than one issue with 
more than one piece or type of correspondence in regard to the single 
application or matter if each correspondence can be properly submitted 
via facsimile.
    While this Notice proposes to restrict facsimile transmissions of 
correspondence directed to the Office, nothing in the proposed rule 
making is intended to curtail the ability of the Office to utilize 
facsimile transmissions for its outgoing correspondence as it deems 
appropriate, such as replies to certain inquiries from applicants.

III. EFS-Web

    The Office's Web-based electronic filing system (EFS-Web) went into 
full operation on March 17, 2006, and is supported by the LEGAL 
FRAMEWORK FOR EFS-WEB (http://www.uspto.gov/ebc/portal/efs/legal.htm), 
which identifies what documents may be submitted via EFS-Web. The rules 
of practice were amended so that EFS-Web submissions would be treated 
analogously to submissions filed via First-Class Mail or facsimile 
transmissions with a certificate of mailing or transmission. See 
Changes to Facilitate Electronic Filing of Patent Correspondence, 72 FR 
2770 (January 23, 2007); 1315 Off. Gaz. Pat. Office 57 (February 13, 
2007) (final rule). EFS-Web is easy to use as correspondence can be 
submitted to the Office at the click of a button, and EFS-Web is 
available twenty-four hours a day, seven days a week. An increasing 
amount of patent-related correspondence has been filed via EFS-Web. In 
particular, the percentage of utility, plant, reissue, national stage 
applications, and requests for continued examination (RCE) filed via 
EFS-Web has dramatically increased from approximately 28% in the first 
week in October 2006 to approximately 70% in the second week in January 
2008.
    As discussed above in item II, ``Facsimile transmission,'' 
increased use of EFS-Web would increase efficiency and improve the 
quality of the images in the IFW used for prosecution and publication 
purposes. Additionally, system delays caused by paper processing and 
scanning would be much reduced.
    With EFS-Web being available for the submission of patent 
correspondence twenty-four hours a day, seven days a week, patent 
applicants, owners, and third party requesters in reexamination 
proceedings (both ex parte and inter partes) are provided easy and 
convenient access to a system for submitting their patent 
correspondence. Shortly after patent correspondence is officially 
submitted to the Office via EFS-Web, the Office receives the 
correspondence and issues an

[[Page 45664]]

acknowledgment receipt. The acknowledgment receipt contains the 
``receipt date,'' the time the correspondence was received at the 
Office (not the local time at the submitter's location), and a full 
listing of the correspondence received. Accordingly, an acknowledgment 
receipt is the legal equivalent of a post card receipt described in 
MPEP Sec.  503, with the added convenience of being automatically 
generated. In contrast, a return receipt for correspondence transmitted 
to the Office's central facsimile number is only automatically 
generated when (1) the sender's facsimile number is properly programmed 
in the sending facsimile machine and (2) the sender's facsimile machine 
is capable of receiving a return facsimile transmission immediately 
following receipt of the original transmission.
    For the filing of patent applications, the official filing date 
will continue to be stated on the filing receipt under Sec.  1.54(b), 
which is sent to applicants after the submitted application parts are 
reviewed for compliance with the filing date requirements. Under Sec.  
1.6(a)(4), patent correspondence filed via EFS-Web is considered to 
have been filed on the date the Office receives the submission 
(regardless of whether that date is a Saturday, Sunday, or Federal 
holiday within the District of Columbia). Thus, by using EFS-Web, 
applicants and other EFS-Web users (e.g., practitioners) can, in a 
short period of time, ensure that they have received a ``date certain'' 
for any submission made via EFS-Web.
    Correspondence submitted by facsimile transmission is received in 
paper form and is considered paper correspondence (although it has an 
electronic transmission component), while EFS-Web transmissions are 
electronic transmissions that remain in electronic form after receipt. 
Critical data concerning patent correspondence submitted via EFS-Web is 
entered into the automated systems much sooner than if the 
correspondence was received in paper in that the electronic document of 
an EFS-Web submission is directly available in the IFW system (by 
``soft scanning''), while the printed paper for a facsimile submission 
requires manual handling and scanning of the paper in order to make 
such documents available in the IFW system.
    Continued increases in the amount of patent correspondence 
encourage the Office to change its business approach for serving its 
users. With EFS-Web, users are provided with better quality, as well as 
improved accuracy of the information submitted to and processed by the 
Office, while using fewer resources, thus reducing the time required 
for processing and handling. Users have greater assurance that the 
content of the IFW is accurate. Submitting correspondence via EFS-Web 
provides a level of consistency, accuracy, quality and predictability 
that a paper-based facsimile transmission cannot provide. EFS-Web users 
have repeatedly stated that they are satisfied with the ease of access 
and use of EFS-Web, and appreciate the automatic generation of the 
acknowledgment receipt after they officially submit their 
correspondence to the Office. Accordingly, the need for the submission 
of patent correspondence to a central facsimile number or a facsimile 
number for a particular type of correspondence is greatly reduced.
    The Legal Framework for EFS-WEB permits submission of all types of 
correspondence that are not specifically excepted. See Item XXXIII. 
Documents Policy, in the legal framework document at http://www.uspto.gov/ebc/portal/efs/legal.htm. The following is a non-
exclusive list of correspondence types that are identified in the legal 
framework document as currently not permitted:
    1. Correspondence concerning Registration to Practice submitted 
under Sec.  1.4(e).
    2. Certified copies submitted under Sec.  1.4(f).
    3. Correspondence to be filed in a patent application subject to a 
secrecy order under Sec. Sec.  5.1 through 5.5 of this chapter.
    4. Submissions in contested cases before the Board of Patent 
Appeals and Interferences, except as the Board may expressly authorize.
    5. Papers filed in contested cases before the Board of Patent 
Appeals and Interferences, which are governed by Sec.  41.106(f).
    6. Correspondence filed in connection with a disciplinary 
proceeding pursuant to 37 CFR part 10.
    7. Submissions that are not associated with an application or a 
reexamination proceeding.
    8. Third party papers under Sec.  1.99.
    9. Protests under Sec.  1.291.
    10. Public use hearing papers under Sec.  1.292.
    11. Maintenance fees submitted under Sec.  1.366.
    Although a main purpose of the proposed changes to the facsimile 
transmission rules is to prohibit submission by facsimile transmission 
of those types of correspondence that can be submitted via EFS-Web, the 
Office is proposing to also terminate the ability of third parties to 
submit correspondence via facsimile transmission that cannot be 
submitted via EFS-Web, as third party submissions under Sec.  1.99, 
protests under Sec.  1.291, and public use hearing papers under Sec.  
1.292 are all ill-suited for facsimile transmission.
    Assignment documents submitted for recording under 35 U.S.C. 261 
are also barred from submission via EFS-Web by item 7 (even though 
related to an application or a patent), but they may be electronically 
filed using the Electronic Patent Assignment System (EPAS) or the 
Electronic Trademark Assignment System (ETAS). Hence, there is no 
continued need to submit assignments for recording via facsimile 
transmission. Information regarding EPAS is available by sending an e-
mail to [email protected]. Information regarding ETAS is available by 
sending an e-mail to [email protected].
    EFS-Web permits registered users to file both new submissions and 
follow-on documents. Some examples of papers that may be submitted via 
EFS-Web and therefore would no longer be able to be submitted by 
facsimile transmission are: (1) Amendments; (2) information disclosure 
statements; (3) petitions, including petitions to withdraw an 
application from issue, petitions for express abandonment to avoid 
publication, and maintenance fee related petitions; (4) requests for 
continued examination; (5) papers in ex parte or inter partes 
reexamination proceedings; (6) Design continued prosecution application 
(CPA) filings; (7) refund requests related to an application or a 
reexamination proceeding; (8) papers submitted to the U.S. Receiving 
Office; (9) papers submitted in regard to a pre-appeal or an appeal 
conference or an appeal to the Board of Patent Appeals and 
Interferences; and (10) status inquiries related to the issuance of the 
next Office action on the merits or the issuance of a decision on 
petition.
    Correspondence submitted via EFS-Web should be intended to become 
part of the official file record. Generally, EFS-Web submissions are 
automatically made part of the official file record, except for pre-
grant publication submissions (i.e., amended republications, amended 
first publications, voluntary publications), which must be submitted 
via EFS-Web but are not made part of the official file record if 
submitted properly. Maintenance fee payments, refunds of such payments, 
and related papers would continue to be able to be submitted via 
facsimile transmission. See the preamble discussion in regard to Sec.  
1.6(d)(2)(i). Related papers would include a petition to transfer a 
maintenance fee payment from the

[[Page 45665]]

``wrong'' patent where the fee had not previously been paid (and 
therefore payment could be applied thereto) to the right patent (where 
the maintenance fee had not already been paid). Where a maintenance fee 
has already been paid, payment of an additional maintenance fee will 
result in an automatic refund. Maintenance fee payers should consult 
https://ramps.uspto.gov/eram/patentMaintFees.do.
    Types of reexamination proceeding correspondence that may be 
submitted via EFS-Web when the correspondence is intended to become 
part of the official file in a reexamination proceeding are: (1) An 
original request for ex parte or inter partes reexamination; (2) any 
corrected request for ex parte or inter partes reexamination submitted 
in response to either a Notice of Failure to Comply with Reexamination 
Request Filing Requirements or a Decision vacating the filing date that 
was accorded to a previously-submitted request for reexamination; (3) 
all follow-on prosecution papers (including appeal papers) filed by 
either the patent owner or a third party requester in any reexamination 
proceeding (including papers that are submitted together with a 
petition to expunge the papers from the record); (4) notices of prior 
or concurrent proceedings and decisions pursuant to MPEP sections 2282 
and 2686; and (5) petition papers filed by the patent owner or third 
party requester that are directed to any reexamination proceeding.
    Types of application correspondence not intended to become part of 
the official file record and currently not permitted to be submitted 
via EFS-Web would be able to continue to be submitted via facsimile 
transmission, unless specifically excepted, until such time that the 
Legal Framework for EFS-WEB is amended to permit such type of 
correspondence to be submitted via EFS-Web. Some examples of 
correspondence that are not intended to be part of the official 
application or patent file record and therefore are not permitted to be 
submitted via EFS-Web and would be able to continue to be submitted via 
facsimile transmission are:
    (1) Proposed amendments for examiner review, such as in regard to 
an upcoming interview;
    (2) an inquiry as to whether a 35 U.S.C. 371 national stage 
application, or a 35 U.S.C. 111(a) continuing application of a PCT 
application has been filed for a particular PCT application (which 
inquiry is obviously not intended to become part of an application file 
but only seeks to ascertain whether an application has been filed); and
    (3) orders for copies of application, patent, and reexamination 
files.
    Any proposed amendment submitted by facsimile transmission would 
not be part of the official file record, but must be made part of the 
official file record, when such amendment is referred to in another 
correspondence (e.g., interview summary) that is part of the official 
file record (whether referred to by applicant or the examiner).
    Correspondence directed to a reexamination proceeding that is not 
intended for entry into the record of the reexamination proceeding is 
considered to be an ``unofficial paper,'' and must not be submitted via 
EFS-Web. A patent owner or third party requester who desires to submit 
correspondence to be treated as an ``unofficial paper'' in an ex parte 
reexamination proceeding may expedite consideration of the 
correspondence by contacting the Central Reexamination Unit (CRU) 
((571) 272-7705) for instructions on how to submit the ``unofficial 
paper'' via transmission to a facsimile machine designated for such 
purpose in the CRU.
    Examples of an ``unofficial paper'' that a party to an ex parte 
reexamination proceeding may submit via facsimile transmission are: (1) 
A courtesy paper identifying issues to be discussed that is submitted 
prior to a permitted interview with the examiner; (2) a paper submitted 
for review by Office personnel (in rare instances where such is 
permitted, and the Office has been contacted for permission to submit 
the paper for review) to determine the formal sufficiency of the paper; 
and (3) a paper submitted to obtain examiner review of a proposed 
amendment intended to overcome an examiner rejection. Any such proposed 
amendment that is submitted unofficially, and as such is not part of 
the official file record, must be made part of the official file 
record, when such proposed amendment is referred to in a paper that is 
part of the official file record (whether referred to by a party to the 
reexamination proceeding or by the examiner or other Office official). 
Where there are two parties to the ex parte reexamination proceeding, 
an ``unofficial paper'' submitted to the Office by one party need not 
be served on the other party to the reexamination proceeding, since 
such a paper is not considered to have been ``filed'' in the 
reexamination proceeding within the meaning of the rules (e.g., 
Sec. Sec.  1.510(a), 1.550(f), 1.903 or 1.913) because an ``unofficial 
paper'' is a paper not intended to become part of the official record.
    It is to be noted that an ``unofficial paper'' (i.e., an ex parte 
communication) directed to an inter partes reexamination is strictly 
prohibited. Interviews are not permitted in inter partes reexamination, 
and the submission of a proposed amendment would constitute an 
impermissible interview. It is also noted that no correspondence is to 
be submitted directly to any examiner in inter partes reexamination 
irrespective of the delivery method.
    The Office will presume that application correspondence submitted 
via EFS-Web is intended to be an ``official paper'' whereas 
correspondence that could be submitted via EFS-Web but is instead 
submitted via facsimile transmission will be presumed an ``unofficial 
paper'' (i.e., a paper not to be made part of the official file 
record). For example, an amendment to the application proposed by 
applicant and facsimile transmitted to an examiner for discussion 
during a scheduled interview would be considered an ``unofficial 
paper.'' Conversely, for an amendment submitted by EFS-Web, the Office 
will presume that the amendment should be part of the application file 
record, and the amendment will automatically become part of the 
application file record.
    A status inquiry regarding the issuance of an Office action on the 
merits, unlike an inquiry regarding the presence of a PCT filing 
(above), will be made part of the file record. See MPEP Sec.  203.08. 
Accordingly, use of facsimile transmission would not be permitted for 
status inquiries regarding the issuance of Office actions. Rather, a 
status inquiry submitted via EFS-Web, which is directed to the 
Technology Center where the application is docketed and not to the 
examiner, would be appropriate.
    In view of the linkage of what would be permitted as a facsimile 
transmission to what would not be permitted to be submitted via EFS-
Web, applicants and other parties, prior to determining whether to 
submit documents via facsimile transmission, would need to review the 
current version of the Legal Framework for EFS-WEB, http://www.uspto.gov/ebc/portal/efs/legal.htm, to determine what is permitted 
to be submitted via EFS-Web or some other Office electronic system and 
thus not permitted to be facsimile transmitted.
    As it is noted in the Legal Framework for EFS-WEB, except for the 
initial filing of an application, use of a public key infrastructure 
(PKI) certificate for follow-on submissions is required. See

[[Page 45666]]

Item X of the legal framework. The process for obtaining a PKI 
certificate requires the completion of some paperwork, though the 
Office believes that the process is not unduly burdensome. However, 
should an applicant not wish to obtain a PKI certificate, the types of 
correspondence that would no longer be allowed to be submitted to the 
Office by facsimile transmission would still be able to be submitted by 
hand-carry, U.S. Postal Service first class mail using a Sec.  1.8 
certificate of mailing, or the U.S. Postal Service ``Express Mail Post 
Office to Addressee'' service as set forth in Sec.  1.10 along with the 
benefits and protections currently contained therein.
    The Legal Framework for EFS-WEB does not permit a simple text file 
larger than 25 megabytes. See Item XV of the legal framework. However, 
a text file of more than 25 megabytes may be broken up into multiple 
text files that can be submitted together. There is a limitation of 60 
files that can be submitted in one submission. Where there are more 
than 60 files to be submitted, additional submissions may be made on 
the same day. See Item XVI of the legal framework. These types of very 
large submissions would probably not be appropriate for a facsimile 
transmission due to the quantity of sheets that must be handled at both 
the transmitting and receiving machines.
    Similarly, where filing sequence listings, tables related to 
sequence listings, or both are submitted for international applications 
in the U.S. Receiving Office, the applicant may partition an oversized 
file into multiple files, each of which is smaller or equal to 25 
megabytes. See Item XIX. C. of the legal framework.
    Electronic forms of transmission, such as EFS-Web, EPAS, ETAS, and 
facsimile transmission have historically been subject to disturbances 
in service (``down time'') from time to time. However, providing notice 
as to down time is far faster in the EFS-Web environment than with an 
isolated and infrequently attended facsimile machine. The Office is 
continuing to address the need for fast notification of any disruption 
in the EFS-Web system. (See Item XXVIII. of the Legal Framework for 
EFS-WEB.)
    Applicants and other users are reminded to always check the 
availability of EFS-Web at the time a transmission is to be attempted. 
If EFS-Web is unavailable, recourse is to use first class mail with a 
certificate of mailing pursuant to Sec.  1.8, or Express Mail pursuant 
to Sec.  1.10, depending on the type of correspondence being submitted 
and based on the actual receipt date desired. The unavailability of 
EFS-Web (e.g., due to an EFS-Web system failure, or an interruption in 
a user's internet service provider) will not permit use of facsimile 
transmission based on an argument that the correspondence was not 
permitted to be submitted via EFS-Web.

IV. Font Size

    The Office needs to receive application specifications and other 
papers that are legible and can be easily read by examiners and other 
Office personnel. In addition, the public will benefit when 
applications that have been published or otherwise opened to public 
inspection are legible. A key attribute of legible text is an 
appropriate font size of the text. Previously, the Office was neither 
able to define the preferred font size as the mandatory minimum font 
size of text in view of limitations imposed by Patent Cooperation 
Treaty (PCT) obligations and implementing regulations, nor had the 
Office believed that mandatory rules would be needed in order that all 
correspondence received by the Office be readily legible. Some 
practitioners and applicants, however, have adopted a continuing 
practice of submitting documents that are not readily legible, e.g., 
entire specifications with a font size as small as 6 point.
    Font size as small as 6 point does not have sufficient clarity to 
permit electronic capture by use of digital imaging and optical 
character recognition (OCR) in accordance with Sec.  1.52(a)(1)(v). 
Accordingly, the results of the Office's electronic capture of the 
unusually small font by OCR are often unsatisfactory. The accuracy of 
OCR conversion is inversely proportional to the size of the text being 
electronically captured and it has been found that electronic capture 
by use of OCR of applications with smaller font sizes contain more 
errors, which must then be corrected, thus wasting time and resources 
on the part of both the Office and the applicant. The Office 
experiences significant difficulties when trying to publish 
applications and patents with specifications having unusually small 
text. Some applications are not even capable of being electronically 
captured by OCR as the text is too small. Errors in electronic capture 
may not be caught immediately and may delay issuance of a patent or, if 
not identified by the Office, represent problems with enforcement of 
any patent that should issue.
    The practice of using an unusually small font size has expanded to 
other papers, such as remarks, amendments, and maintenance fee 
payments. When requested to resubmit the paper with a larger font, some 
strong resistance has been encountered based on the lack of a 
regulatory requirement defining the minimum font needed by the Office 
to process and read the paper. The Office anticipates moving forward 
with a plan to OCR all amendments and remarks submitted by applicants. 
This plan would be adversely impacted by the continued submission of 
such papers with unusually small font size.
    Some practitioners argue that the Office should be capable of 
adjusting the font size to produce any text size that it desires. The 
Office, however, cannot automatically resize the document. Attempts to 
change the parameters of the document received may introduce 
substantive errors in the document, particularly where tables, charts, 
formulas, and drawings are concerned.
    In view of the significant problems facing the Office by 
applicants' use of unusually small font size, and the recent amendment 
of PCT regulations (effective April 1, 2007, PCT Rule 11.9(d) was 
revised from ``all text matter shall be in characters the capital 
letters of which are not less than 0.21 cm high'' to ``all text matter 
shall be in characters the capital letters of which are not less than 
0.28 cm high''), the Office needs to and can now eliminate such 
practice.
    Accordingly, it is proposed to: (1) Increase the mandatory minimum 
font size where the font must have capital letters no smaller than 0.28 
cm (0.11 inch) high (e.g., a font size of 12 point in Times New Roman); 
(2) establish that the newly proposed font size requirement applies to 
prosecution papers (specification, including the claims and abstract, 
drawings, and oath or declaration, reexamination request, any 
amendments or correction(s)) and any remarks, petitions, requests, 
affidavits or other papers submitted during prosecution of an 
application or a reexamination proceeding; (3) clarify that the 
proposed font size requirement does not apply to pre-printed 
information on paper forms provided by the Office or the copy of the 
patent submitted on paper in double column format as the specification 
in a reissue application or request for reexamination; and (4) clarify 
that papers submitted electronically that are to become part of the 
patent application or reexamination file must be readily legible.

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Parts 1, 2, and 3, are 
proposed to be amended as follows:

[[Page 45667]]

    Section 1.6(a)(1) is proposed to be amended to add a descriptive 
title, and to update the reference to facsimile transmissions to 
paragraph (d)(1) of Sec.  1.6 from the current reference to Sec.  
1.6(a)(3).
    Section 1.6(a)(2) is proposed to be amended to add a descriptive 
title.
    Section 1.6(a)(3) is proposed to be amended to add a descriptive 
title, and to add a reference to paragraph (d)(1) of Sec.  1.6 and the 
correspondence permitted by that section to be submitted via facsimile 
transmission.
    Section 1.6(a)(4) is proposed to be amended to add a descriptive 
title.
    Section 1.6(a)(5) is proposed to be newly added to set forth 
current practice that non-facsimile electronic transmission of patent-
related correspondence other than correspondence filed via the Office's 
patent-related electronic systems (e.g., EFS-Web, and EPAS) may not be 
used for submission of correspondence to the Office intended to become 
part of the official file record (e.g., Image File Wrapper) for an 
application, patent, or reexamination proceeding, or other matter 
before the Office, except as expressly authorized by the Board of 
Patent Appeals and Interferences (BPAI) in cases before the BPAI, or 
applicant when consistent with the Office's express policy on internet 
usage. See Internet Usage Policy, 64 FR 33056 (June 21, 1999).
    The prohibition includes e-mail, and additional forms of Internet-
based transmission other than the Office patent electronic systems, 
i.e., EFS-Web, and EPAS. E-mail may continue to be used for inquiries, 
such as questions regarding patent practice and procedure directed to 
[email protected]. Communications by the Office via the Internet 
are governed by the published Internet Usage Policy. See MPEP Sec.  
502.03. As it is recognized that Internet e-mail communications are not 
secure, the Office will not respond via Internet e-mail to any Internet 
correspondence which contains information subject to the 
confidentiality requirement as set forth in 35 U.S.C. 122 without a 
written authorization by the applicant. Current internet (e-mail) 
policy covers both incoming correspondence to the Office from applicant 
and outgoing correspondence to applicant from the Office. A copy of the 
e-mail correspondence is required to be made of record in the file, 
even though such correspondence can only be directed towards 
communications other than those under 35 U.S.C. 132 or which otherwise 
require a signature.
    Section 1.6(d) is proposed to be amended by deleting material 
duplicative of material in current Sec.  1.6(a)(3), relating to the 
receipt date accorded facsimile transmissions. Additional material 
present in Sec.  1.6(d) would be placed in amended paragraphs (d)(1)-
(3), leaving Sec.  1.6(d) with only the introductory title.
    Additionally, Sec.  1.6(d) and paragraphs (d)(1)-(9) are proposed 
to be amended to change facsimile transmission practice from the 
existing practice that facsimile transmission is generally accepted but 
for some limited exceptions set forth in current paragraphs (d)(1)-(9), 
to the proposed practice that facsimile transmission would generally 
not be accepted for most types of correspondence in view of the 
availability of EFS-Web for submission of most types of correspondence. 
Accordingly, new paragraphs (d)(1)(i)-(vi) would continue to prohibit 
the specific types of correspondence that are currently prohibited in 
current paragraphs (d)(1)-(6) (paragraphs (d)(7) and (8) are currently 
reserved and do not recite prohibitions). The prohibition set forth in 
proposed (d)(1)(iii) would not contain the exception in current Sec.  
1.6(d)(3) and thus would result in the prohibition of the facsimile 
transmission of continued prosecution applications. While the 
prohibition proposed in (d)(1)(vi) only prohibits facsimile 
transmissions of correspondence in secrecy order applications that are 
directly related to the secrecy order, Sec.  1.6(d)(viii) would also 
prohibit facsimile transmission of correspondence that is not directly 
related to the secrecy order but can be submitted pursuant to Sec.  
1.6(a)(4) (EFS-Web).
    Newly proposed Sec.  1.6(d)(1)(vii) would prohibit facsimile 
transmission of correspondence for cases before the Board of Patent 
Appeals and Interferences (BPAI), except as the BPAI may expressly 
authorize. This would expand the current facsimile transmission 
prohibition now limited to contested cases before the BPAI of current 
Sec.  1.6(d)(9).
    Newly proposed Sec.  1.6(d)(1)(viii) would prohibit facsimile 
transmission of the type of correspondence that could be submitted via 
EFS-Web, as would be set forth in the Legal Framework for EFS-WEB. This 
would include most types of patent correspondence for applications 
(including reissue and provisional applications), patents (including 
Certificates of Correction pursuant to Sec. Sec.  1.322 and 1.323, and 
inventorship correction pursuant to Sec.  1.324), and reexamination 
proceedings (both ex parte and inter partes).
    Newly proposed paragraph (d)(1)(ix) would prohibit facsimile 
transmission of the type of correspondence permitted to be submitted 
via the Office's patent-related electronic system for assignments to be 
recorded, EPAS.
    Newly proposed paragraphs (d)(1)(x)-(xii) would prohibit the 
facsimile transmission of third party papers under Sec.  1.99, protests 
under Sec.  1.291, and public use hearing papers under Sec.  1.292 even 
though such papers may not currently be submitted via EPS-Web. The 
exclusions of third party papers and protests from EPS-Web submission, 
even though these papers are intended to become part of the Official 
file, was based on the need to use a PKI certificate for follow-on 
submissions, which a third party filing a paper under Sec. Sec.  1.99 
or 1.291 would not generally either have access to or would be given 
access to by the applicant. The Office is committed to working on a 
solution that would permit the filing of such papers via EPS-Web. As 
such papers can be massive or frequently have detailed drawings, it 
would not be in the interest of the parties submitting such papers to 
continue to use facsimile transmission.
    Section 1.6(d)(2) would be directed at setting forth the 
requirements for facsimile transmission for the types of correspondence 
not prohibited in Sec.  1.6(d)(1).
    Section 1.6(d)(2)(i) would make mandatory that a facsimile 
transmission be limited to a single application or other matters before 
the Office (e.g., patents and reexamination proceedings), except for 
the payment of maintenance fees pursuant to Sec.  1.366 and requests 
for refunds thereof. For example, while an applicant may need to submit 
the same type of document for more than one application file, such as 
proposed amendments to claims in related applications that are to be 
discussed in the same upcoming interview, the proposed amendments for 
each application must be separately transmitted. The payment of 
maintenance fees in multiple patents would be exempt from this proposed 
requirement. Maintenance fee payments would continue to qualify for 
facsimile transmission as they may not be submitted via EPS-Web.
    Where a small entity assertion pursuant to Sec.  1.27 is required 
to support payment of a small entity maintenance fee or a request for a 
maintenance fee refund, the payment or request for refund with the 
accompanying small entity assertion may be facsimile transmitted. 
Similarly, where, for example, the assignee is separately submitting a 
small entity assertion to support payment of a maintenance fee,

[[Page 45668]]

and an annuity company is the party making the small entity payment, 
the assignee may facsimile transmit the Sec.  1.27 small entity 
assertion. It should be noted, however, that small entity assertions 
can be submitted via EPS-Web and the Office recommends that EPS-Web be 
used to ensure that the assertion becomes part of the patent file. For 
small entity fees other than maintenance fees, such as an issue fee in 
an application, which can be submitted via EPS-Web (as well as the 
small entity assertion), the fee and the supporting small entity 
assertion cannot be facsimile transmitted. It is only in situations 
where the fee payment, i.e., a maintenance fee payment, cannot be 
submitted via EPS-Web, that the small entity assertion for the payment 
(which would not otherwise be permitted to be facsimile transmitted) 
can also be facsimile transmitted. The facsimile transmission must be 
made to a facsimile number identified by the Office as appropriate for 
maintenance fee payments and refunds thereof.
    Section 1.6(d)(2)(ii) would set forth requirements set forth in 
current Sec.  1.6(d) for identifying the application or matter before 
the Office for which the transmitted correspondence is intended. 
Section 1.6(d)(2)(ii) continues to advise the use of sufficient 
information to identify the application or matter before the Office for 
which the correspondence is intended as part of the sender's 
identification on the required cover sheet. The inability to be able to 
readily ascertain the appropriate application or other matter for the 
transmission may result in: A delay in acting on the paper, or 
discarding of the paper without notice to the sender if the Office 
cannot reasonably determine to which application or other matter the 
paper is directed.
    Section 1.6(d)(2)(iii) would require that permitted facsimile 
transmissions must be sent to the specific facsimile transmission 
number identified by the Office for that type of correspondence. In the 
case of reexamination proceedings, contacting the CRU for the 
transmission number would be required. For applications, the Office 
would provide a Web page that would contain the usable transmission 
numbers and identification of types of correspondence that can be 
facsimile transmitted, as well as a link to EPS-Web for the submission 
of types of correspondence that cannot be facsimile transmitted but can 
be transmitted via EPS-Web. Therefore, the central facsimile number 
would no longer be usable since the rules as proposed to be amended 
would require that the transmission for any remaining use must be sent 
directly to the area of the Office needing to receive the transmission 
at its identified transmission number. Office forms for which facsimile 
transmission would no longer be appropriate, such as the express 
abandonment forms PTO/SB/24, PTO/SB/24a, and the PTO/SB/24b, and the 
issue fee payment form PTOL-85, Part B, would have the facsimile 
transmission information removed.
    Section 1.6(d)(2)(iv) would require that each unofficial 
correspondence transmitted by facsimile include a conspicuous marking 
that identifies it as an ``unofficial paper'' (correspondence that 
could be submitted via EPS-Web but is instead submitted via facsimile 
transmission). Unofficial papers, regardless of whether they are 
properly marked as such, will not be entered into the record of the 
application or reexamination proceeding unless expressly permitted by 
rule or Office policy. Further, any of these unofficial papers 
submitted via facsimile without the required conspicuous marking may be 
discarded without consideration of the paper and without notification 
to the sender that the paper has been discarded without consideration. 
This requirement for conspicuous marking of facsimile transmitted 
papers and the discarding of unmarked or mis-marked papers would act to 
discourage applicants, patent owners, and third party requesters from 
attempting to file official papers via facsimile, instead of via EPS-
Web.
    Section 1.6(d)(3) would set forth the consequences resulting from: 
(1) Transmitting correspondence to a number other than the specific 
facsimile transmission number identified by the Office for that type of 
correspondence; (2) facsimile transmission of correspondence not 
permitted to be submitted by facsimile transmission; or (3) facsimile 
transmission of an ``unofficial paper'' without the conspicuous marking 
required in (d)(2)(iv). The consequences would be equally applicable to 
any copy of such correspondence created by the Office (e.g., paper 
copies made directly from the facsimile transmission or copies made 
from scanning the paper copy of the transmission). The consequences 
would be that such correspondence: (1) Would not be given a receipt 
date; (2) would not operate to be an effective paper (e.g., will not be 
considered a reply to the Office action, or a request for action by the 
Office); and (3) could be discarded by the Office without notification 
to the sender. When the Office discards submitted material it is 
without notification to the submitter, unless such notification is 
specifically provided for by rule or Office policy. The specific 
provision in the rule of lack of notification to the sender would be 
added merely to reinforce the concept of lack of notification.
    For example, an otherwise timely reply submitted by facsimile 
transmission to an outstanding first Office action would not be 
effective to toll the time period for reply as this type of 
correspondence would no longer (after implementation of the rule 
revision) be permitted to be submitted by facsimile transmission. 
Additionally, applicant could not simply later affirm the prior 
submission of the reply within the period for reply and rely on the 
previously submitted facsimile transmission of the reply. A new reply 
would need to be timely submitted to avoid abandonment.
    Current Sec.  1.6(f), relating to a petition remedy where the 
facsimile transmission of a continued prosecution application (CPA) was 
not received by the Office, would be canceled and reserved.
    Section 1.52(a) is proposed to be amended to remove the italics. 
Sections 1.52(a), (a)(1) and (a)(2) are proposed to be amended to 
remove ``United States Patent and Trademark'' for conformity with the 
use of ``Office'' in the remaining sections of Sec.  1.52.
    Section 1.52(a)(5) is proposed to be amended to contain only a 
descriptive title.
    Section 1.52(a)(5)(i) would contain the language of current 
1.52(a)(5).
    Sections 1.52(a)(5)(ii) would be an added paragraph intended to 
clarify that submissions must be presented in a form that is readily 
legible to the Office after receipt thereof by the Office.
    Section 1.52(b) would be amended to address a problem involving the 
font size used for specifications and prosecution papers.
    Section 1.52(b) is proposed to be amended by removing the italics 
and simplifying the recitation of the papers that are subject to the 
rule. Sections 1.52(b)(1) and (b)(2) would be expanded to cover 
application and reexamination papers other than just the specification 
and amendments or corrections. These sections would be applicable to 
cover sheets, remarks, petitions, requests, affidavits, or other papers 
submitted in support of prosecution of the application or the 
reexamination proceeding. These sections would also be applicable to 
IDS listings and any other IDS requirements such as a concise 
explanation or a translation of a non-English language document (but 
not the actual non-English language document). ``Amendment'' covers all 
types of amendments, including

[[Page 45669]]

amendments to the claims, specification and the drawings. ``Amendment'' 
covers amendments made at any time during prosecution of the patent 
application or reexamination proceeding (e.g., amendments under 
Sec. Sec.  1.111, 1.115, 1.116, 1.312, 1.530, 1.941, etc.).
    Section 1.52(b)(2)(ii) is proposed to be amended to correspond to 
the amendment of PCT Rule 11.9(d) by requiring a text lettering style 
having capital letters, which capital letters must be no smaller than 
0.28 cm. (0.11 inch) high (e.g., a font size of 12 point in Times New 
Roman). The requirement for a nonscript font lettering style means 
utilization of a commercially available nonscript font in its 
commercially available form. Altering the font from its commercially 
available form (e.g., by changing the look of the characters or the 
automatic spacing between the characters) may not be in compliance with 
the rule. Compliance with the proposed font size and style requirements 
should not impose much difficulty as the Office has suggested their use 
for a number of years. The recitation of font size in terms relative to 
a type font having capital letters of a minimum size permits the normal 
and expected deviation for non-capital letters and numbers that a 
commercially available font complying with the required font size would 
utilize. It should be noted that utilizing capital letters that meet 
the 0.28 cm. requirement and then reducing the font size of the non-
capital letters and numbers would not present a text lettering style 
within the rule. Further, by altering the line height to fit more 
characters per page, one runs the risk of presenting correspondence 
that is unreadable by Office personnel or presents a problem for 
optical character recognition in the electronic capture operation, 
which would require re-submission of the correspondence in compliant 
form. Specialized usage of the type font in a word processing program, 
such as ``2nd'', super and subscripts, etc., must comply also with the 
minimum font size requirements. In other words, the normal font size 
produced by the program for these specialized characters when the 
program is set to comply with the capital letter requirement must be 
maintained. Additionally, applicants also need to be aware that as a 
word processing program may normally set a footnote numeral and the 
text of a footnote to be smaller than the required 0.28 cm. capital 
letter height to be used in the main text, applicants must adjust the 
font size of the footnote accordingly to meet the requirements of the 
rule.
    Forms: Sections 1.52(a) and (b) do not apply to applicant's use of 
the Office's pre-printed forms (that may contain smaller font size). 
Section 1.52(a)(3), which is reproduced in the rules section to provide 
context, is not proposed to be changed. Office forms have been exempt 
and continue to be exempt from font size requirements as: (1) The 
information in lower font size is standardized information, such as 
required of the Office by statute under the Paperwork Reduction Act, 
form number, etc., but is not required information that applicant must 
supply; (2) it is common practice for agencies to place this 
standardized information in a smaller font size, and doing so keeps the 
forms from being too long and makes them more usable by the public; and 
(3) the Office does not need to process such information when an Office 
form is submitted. Commercial forms that are subject to Sec.  1.52(b), 
e.g., an application data sheet pursuant to Sec.  1.76, must comply 
with the font size requirement. An Office form that has been altered in 
any way is considered a commercial form and must comply with the 
requirements of Sec.  1.52. Such form must also have its OMB approval 
removed. Therefore, an applicant desiring to use a compact form (e.g., 
cover or transmittal sheet) that meets the requirements of Sec.  1.52 
should consider using an Office form in its original, unaltered state. 
Office-generated fillable forms containing the font size built into the 
form by the Office would comply with font size requirements.
    The strictness of the proposed rule and its application by the 
Office results from the Office's need to efficiently process, read, and 
publish the text. It is emphasized that should the Office encounter 
difficulty in reading or electronically capturing the font for any 
portion of text, a substitute paper will be required.
    As the Office intends to strictly enforce the font size 
requirement, in a rare instance where applicant believes some variation 
should be permitted, a petition under Sec.  1.183 would be required.
    Section 1.366 is proposed to be amended to add paragraph (h) that 
would require maintenance fee payments, when submitted in paper, by 
mail or facsimile transmission (which would continue as such type of 
correspondence may not be submitted via EFS-Web), to comply with 
Sec. Sec.  1.52(a) and (b). Failure to comply with the format 
requirements of Sec.  1.52 would not jeopardize the date of payment but 
would require a new submission in a compliant format.
    Section 2.195(d) is proposed to be amended to prohibit facsimile 
transmission of the type of correspondence that can be submitted via 
the Office's electronic trademark system for assignments to be 
recorded, ETAS.
    Section 3.24(a) is proposed to be amended by inserting a reference 
in the title to EPAS as the electronic form of submission of patent 
assignment documents to be recorded.
    Section 3.24(b) is proposed to be amended as a conforming amendment 
to Sec.  1.6(d)(1)(ix), which would only permit patent-related 
assignments to be submitted via EPAS and no longer via facsimile 
transmission. Accordingly, the reference to facsimile transmissions in 
the title would be deleted. Material relating to return of recorded 
documents would be transferred to newly added paragraph (c).
    Section 3.24(c) is proposed to be added to highlight current 
material related to the non-return of patent documents submitted for 
recording, so that original documents would not be submitted. The rule 
is also proposed to be amended to delete ``recorded'' to clarify that 
any document submitted for recording will not be returned whether or 
not it is recorded.
    Section 3.25 is proposed to be amended by inserting a reference in 
the title to ETAS as the electronic form of submission of trademark 
assignment documents to be recorded.
    Section 3.25(c) is proposed to be amended as a conforming amendment 
to Sec.  2.195(d), which would only permit trademark-related 
assignments to be submitted via ETAS and on paper and no longer via 
facsimile transmission. Accordingly, the reference to facsimile 
transmissions in the title would be deleted. The phrasing of the rule 
is also proposed to be amended so that it is consistent with the 
analogous rule for patent assignment documents.
    Material relating to return of recorded documents would be 
transferred to newly added paragraph (c)(3). Section 3.24(c)(3) is 
proposed to be added to highlight current material related to the non-
return of trademark documents submitted for recording, so that original 
documents would not be submitted. The rule is also proposed to be 
amended to delete ``recorded'' to clarify that any document submitted 
for recording will not be returned whether or not it is recorded.

Rule Making Considerations

A. Administrative Procedure Act
    This notice proposes changes to the rules of practice to limit the 
submission

[[Page 45670]]

of correspondence by facsimile transmission in patent prosecution 
matters, and assignments to be recorded. The notice also proposes 
changes to the rules of practice to increase the size of the minimum 
font used on papers submitted to the Office for patent applications, 
patents or reexamination proceedings. The changes being proposed in 
this notice do not change the substantive criteria of patentability and 
do not effectively foreclose the applicant's opportunity to make a case 
on the merits. Applicants, when no longer able to submit most types of 
patent prosecution or assignments to be recorded by facsimile 
transmission, may still rely on mail delivery in all instances and may 
almost always utilize an electronic system provided by the Office for 
filing submissions. Therefore, these rule changes involve interpretive 
rules, or rules of agency practice and procedure. See Bachow Communs., 
Inc. v. FCC, 237 F.3d 683, 690 (DC Cir. 2001) (rules governing an 
application process are ``rules of agency organization, procedure, or 
practice'' and exempt from the Administrative Procedure Act's notice 
and comment requirement); see also Fressola v. Manbeck, 36 USPQ2d 1211, 
1215 (D.D.C. 1995) (``It is extremely doubtful whether any of the rules 
formulated to govern patent or trademark practice are other than 
`interpretive rules, general statements of policy, * * * procedure, or 
practice.' '') (quoting C.W. Ooms, The United States Patent Office and 
the Administrative Procedure Act, 38 Trademark Rep. 149, 153 (1948)). 
Accordingly, prior notice and opportunity for comment is not required 
pursuant to 5 U.S.C. 553(b)(A) (or any other law), and thirty-day 
advance publication is not required pursuant to 5 U.S.C. 553(d) (or any 
other law). Nevertheless, the Office is seeking public comment on 
changes contemplated to these rules of practice to obtain the benefit 
of such input prior to adopting changes to the rules of practice.
B. Regulatory Flexibility Analysis
    As prior notice and an opportunity for public comment are not 
required pursuant to 5 U.S.C. 553 (or any other law), neither a 
regulatory flexibility analysis nor a certification under the 
Regulatory Flexibility Act (5 U.S.C. 601 et seq.) are required. See 5 
U.S.C. 603. Nevertheless, for the reasons set forth herein, the Deputy 
General Counsel for General Law of the United States Patent and 
Trademark Office has certified to the Chief Counsel for Advocacy of the 
Small Business Administration that the changes proposed in this notice 
will not have a significant economic impact on a substantial number of 
small entities. See 5 U.S.C. 605(b).
    The primary impact of the changes proposed in this notice are that: 
(1) Certain documents may no longer be submitted to the Office via 
facsimile transmission; and (2) certain documents submitted to the 
Office must have a minimum font size, namely a font that has capital 
letters no smaller than 0.28 cm (0.11 inch) high (e.g., a font size of 
12 point in Times New Roman). The elimination of the availability of 
facsimile transmission will not have a significant economic impact 
because these documents may be submitted to the Office via EFS-Web or 
via the USPS by first class mail. The requirement that documents 
submitted to the Office must have a minimum font size will not have a 
significant economic impact because the current rules of practice 
require that such documents be ``[p]resented in a form having 
sufficient clarity and contrast between the paper and the writing 
thereon to permit the direct reproduction of readily legible copies in 
any number by use of photographic, electrostatic, photo-offset, and 
microfilming processes and electronic capture by use of digital imaging 
and optical character recognition'' (37 CFR 1.52(a)(1)(v)), and set 
forth that font size below the proposed minimum font size generally 
does not comply with this pre-existing requirement of the rules of 
practice. In addition, the overwhelming majority of the documents to 
which this provision applies are created using word processors, and it 
will not have a significant economic impact to change the font size on 
a word processor. Therefore, the changes proposed in this notice will 
not have a significant economic impact on a substantial number of small 
entities.
C. Executive Order 13132 (Federalism)
    This rule making does not contain policies with federalism 
implications sufficient to warrant preparation of a Federalism 
Assessment under Executive Order 13132 (Aug. 4, 1999).
D. Executive Order 12866 (Regulatory Planning and Review)
    This rule making has been determined to be not significant for 
purposes of Executive Order 12866 (Sept. 30, 1993), as amended by 
Executive Order 13258 (Feb. 26, 2002) and Executive Order 13422 (Jan. 
18, 2007).
E. Executive Order 13175 (Tribal Consultation)
    This rule making will not: (1) Have substantial direct effects on 
one or more Indian tribes; (2) impose substantial direct compliance 
costs on Indian tribal governments; or (3) preempt tribal law. 
Therefore, a tribal summary impact statement is not required under 
Executive Order 13175 (Nov. 6, 2000).
F. Executive Order 13211 (Energy Effects)
    This rule making is not a significant energy action under Executive 
Order 13211 because this rule making is not likely to have a 
significant adverse effect on the supply, distribution, or use of 
energy. Therefore, a Statement of Energy Effects is not required under 
Executive Order 13211 (May 18, 2001).
G. Executive Order 12988 (Civil Justice Reform)
    This rule making meets applicable standards to minimize litigation, 
eliminate ambiguity, and reduce burden as set forth in sections 3(a) 
and 3(b)(2) of Executive Order 12988 (Feb. 5, 1996).
H. Executive Order 13045 (Protection of Children)
    This rule making is not an economically significant rule and does 
not concern an environmental risk to health or safety that may 
disproportionately affect children under Executive Order 13045 (Apr. 
21, 1997).
I. Executive Order 12630 (Taking of Private Property)
    This rule making will not effect a taking of private property or 
otherwise have taking implications under Executive Order 12630 (Mar. 
15, 1988).
J. Congressional Review Act
    Under the Congressional Review Act provisions of the Small Business 
Regulatory Enforcement Fairness Act of 1996 (5 U.S.C. 801 et seq.), 
prior to issuing any final rule the United States Patent and Trademark 
Office will submit a report containing the final rule and other 
required information to the U.S. Senate, the U.S. House of 
Representatives and the Comptroller General of the Government 
Accountability Office. The changes proposed in this notice are not 
expected to result in an annual effect on the economy of 100 million 
dollars or more, a major increase in costs or prices, or significant 
adverse effects on competition, employment, investment, productivity, 
innovation, or the ability of United States-based enterprises to 
compete with foreign-based enterprises in domestic and export markets. 
Therefore, this rule making is not likely to result in a ``major rule'' 
as defined in 5 U.S.C. 804(2).

[[Page 45671]]

K. Unfunded Mandates Reform Act of 1995
    The changes proposed in this notice do not involve a Federal 
intergovernmental mandate that will result in the expenditure by State, 
local, and tribal governments, in the aggregate, of 100 million dollars 
(as adjusted) or more in any one year, or a Federal private sector 
mandate that will result in the expenditure by the private sector of 
100 million dollars (as adjusted) or more in any one year, and will not 
significantly or uniquely affect small governments. Therefore, no 
actions are necessary under the provisions of the Unfunded Mandates 
Reform Act of 1995. See 2 U.S.C. 1501 et seq.
L. National Environmental Policy Act
    This rule making will not have any effect on the quality of 
environment and is thus categorically excluded from review under the 
National Environmental Policy Act of 1969. See 42 U.S.C. 4321 et seq.
M. National Technology Transfer and Advancement Act
    The requirements of section 12(d) of the National Technology 
Transfer and Advancement Act of 1995 (15 U.S.C. 272 note) are 
inapplicable because this rule making does not contain provisions which 
involve the use of technical standards.
N. Paperwork Reduction Act
    This notice involves information collection requirements which are 
subject to review by the Office of Management and Budget (OMB) under 
the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The 
collections of information involved in this notice have been reviewed 
and previously approved by OMB under OMB control numbers: 0651-0031, 
0651-0032, and 0651-0059. The United States Patent and Trademark Office 
is not resubmitting the other information collections listed above to 
OMB for its review and approval because the changes proposed in this 
notice do not affect the information collection requirements associated 
with the information collections under these OMB control numbers. The 
principal changes proposed in this notice are to provide that: (1) 
Certain documents may no longer be submitted to the Office via 
facsimile transmission; and (2) certain documents submitted to the 
Office must have a minimum font size, namely a font that has capital 
letters no smaller than 0.28 cm (0.11 inch) high (e.g., a font size of 
12 point in Times New Roman).
    Comments are invited on: (1) Whether the collection of information 
is necessary for proper performance of the functions of the agency; (2) 
the accuracy of the agency's estimate of the burden; (3) ways to 
enhance the quality, utility, and clarity of the information to be 
collected; and (4) ways to minimize the burden of the collection of 
information to respondents.
    Interested persons are requested to send comments regarding these 
information collections, including suggestions for reducing this 
burden, to: (1) The Office of Information and Regulatory Affairs, 
Office of Management and Budget, New Executive Office Building, Room 
10202, 725 17th Street, NW., Washington, DC 20503, Attention: Desk 
Officer for the Patent and Trademark Office; and (2) Robert A. Clarke, 
Director, Office of Patent Legal Administration, Commissioner for 
Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall a person be subject to a penalty for failure to 
comply with a collection of information subject to the requirements of 
the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

List of Subjects

37 CFR Part 1

    Administrative practice and procedure, Inventions and patents, 
Reporting and recordkeeping requirements, Small businesses.

37 CFR Part 2

    Administrative practice and procedure, Trademarks.

37 CFR Part 3

    Administrative practice and procedure, Patents, Trademarks.

    For the reasons set forth in the preamble, 37 CFR parts 1, 2, and 3 
are proposed to be amended as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

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

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

    2. Section 1.6 is amended by removing and reserving paragraph (f) 
and revising paragraphs (a) and (d) to read as follows:


Sec.  1.6  Receipt of correspondence.

    (a) Date of receipt and Express Mail date of deposit. 
Correspondence received in the United States Patent and Trademark 
Office is stamped with the date of receipt except as follows:
    (1) Open for receipt of correspondence. The United States Patent 
and Trademark Office is not open for the filing of correspondence on 
any day that is a Saturday, Sunday, or Federal holiday within the 
District of Columbia. Except for correspondence transmitted by 
facsimile under paragraph (d)(1) of this section, or filed 
electronically under (a)(4) of this section, no correspondence is 
received in the Office on Saturdays, Sundays, or Federal holidays 
within the District of Columbia.
    (2) ``Express Mail'' stamp date. Correspondence filed in accordance 
with Sec.  1.10 will be stamped with the date of deposit as ``Express 
Mail'' with the United States Postal Service.
    (3) Receipt date of facsimile transmission. Correspondence 
permitted by paragraph (d)(1) of this section to be filed by facsimile 
transmission to the United States Patent and Trademark Office will be 
stamped with the date on which the complete transmission is received in 
the United States Patent and Trademark Office unless that date is a 
Saturday, Sunday, or Federal holiday within the District of Columbia, 
in which case the date stamped will be the next succeeding day which is 
not a Saturday, Sunday, or Federal holiday within the District of 
Columbia.
    (4) Office electronic filing system (EFS-Web). Correspondence may 
be submitted using the Office electronic filing system only in 
accordance with the Office's electronic filing system requirements. 
Correspondence submitted to the Office by way of the Office's 
electronic filing system will be accorded a receipt date, which is the 
date the correspondence is received at the correspondence address for 
the Office set forth in Sec.  1.1 when it was officially submitted.
    (5) Non-facsimile electronic transmission of patent-related 
correspondence other than correspondence filed via the Office's patent-
related electronic systems (e.g., EFS-Web, and Electronic Patent 
Assignment System (EPAS)). Non-facsimile electronic transmission of 
patent-related correspondence other than correspondence filed via the 
Office's patent-related electronic systems may not be used for 
submission of correspondence to the Office intended to become part of 
the official file record for an application, patent, reexamination 
proceeding, or other matter before the Office, except as expressly 
authorized by:

[[Page 45672]]

    (i) The Board of Patent Appeal and Interferences in cases before 
the Board of Patent Appeals and Interferences, or
    (ii) Applicant pursuant to the Office's express policy for internet 
usage.
* * * * *
    (d) Facsimile transmission. (1) Facsimile transmission of 
correspondence to the Office is not permitted for:
    (i) Correspondence as specified in Sec.  1.4(e);
    (ii) Certified documents as specified in Sec.  1.4(f);
    (iii) Correspondence which cannot receive the benefit of the 
certificate of mailing or transmission as specified in Sec. Sec.  
1.8(a)(2)(i)(A) through (D) and (F), and Sec.  1.8(a)(2)(iii)(A);
    (iv) Color drawings submitted under Sec. Sec.  1.81, 1.83 through 
1.85, 1.152, 1.165, 1.173, or 1.437;
    (v) A request for reexamination under Sec.  1.510 or 1.913;
    (vi) Correspondence to be filed in a patent application subject to 
a secrecy order under Sec. Sec.  5.1 through 5.5 of this chapter and 
directly related to the secrecy order content of the application;
    (vii) Cases before the Board of Patent Appeals and Interferences, 
except as the Board may expressly authorize;
    (viii) Correspondence permitted to be submitted pursuant to 
paragraph (a)(4) of this section;
    (ix) Correspondence permitted to be submitted via the Office's 
patent-related electronic system for recording assignments (e.g., 
Electronic Patent Assignment System (EPAS));
    (x) Third party papers under Sec.  1.99;
    (xi) Protests under Sec.  1.291; and
    (xii) Public use hearing papers under Sec.  1.292.
    (2) A facsimile transmission of correspondence when not prohibited 
pursuant to paragraph (d)(1) of this section must:
    (i) Be limited to a single application or other matter before the 
Office, except for payments of maintenance fees pursuant to Sec.  1.366 
or requests for refunds thereof;
    (ii) Include a facsimile cover sheet with the sender's 
identification, which should contain sufficient identifying information 
of the application or other matter to which the transmission is 
intended, such as:
    (A) The application number of a patent application;
    (B) The control number of a reexamination proceeding;
    (C) The interference number of an interference proceeding; or
    (D) The patent number of a patent;
    (iii) Be transmitted to the specific facsimile transmission number 
identified by the Office for that type of correspondence; and
    (iv) Include a conspicuous marking on each correspondence intended 
to be unofficial that identifies such correspondence as an unofficial 
paper.
    (3) Transmission to a facsimile number other than that identified 
by the Office for the type of correspondence transmitted, facsimile 
transmission of a type of correspondence that is not permitted to be 
facsimile transmitted, or facsimile transmission of correspondence 
without the conspicuous marking pursuant to paragraph (d)(2)(iv) of 
this section, and any copy of such correspondence created by the 
Office:
    (i) Will not be given a receipt date;
    (ii) Will not operate to be an effective paper; and
    (iii) May be discarded by the Office without notification to the 
sender.
* * * * *
    3. Section 1.52 is amended by revising the introductory text of 
paragraph (a)(1), paragraphs (a)(2), (a)(3), (a)(5), the introductory 
text of paragraph (b), (b)(1), and (b)(2) to read as follows:


Sec.  1.52  Language, paper, writing, margins, compact disc 
specifications.

    (a) Papers that are to become a part of the permanent Office 
records in the file of a patent application or a reexamination 
proceeding. (1) All papers, other than drawings, that are submitted on 
paper or by facsimile transmission, and are to become a part of the 
permanent Office records in the file of a patent application or 
reexamination proceeding, must be on sheets of paper that are the same 
size, not permanently bound together, and:
* * * * *
    (2) All papers that are submitted on paper or by facsimile 
transmission, and are to become a part of the permanent records of the 
Office should have no holes in the sheets as submitted.
    (3) The provisions of this paragraph and paragraph (b) of this 
section do not apply to the pre-printed information on paper forms 
provided by the Office, or to the copy of the patent submitted on paper 
in double column format as the specification in a reissue application 
or request for reexamination.
* * * * *
    (5) All papers submitted electronically to the Office must be:
    (i) Formatted and transmitted in compliance with the Office's 
electronic filing system requirements; and
    (ii) Readily legible to the Office after receipt thereof.
    (b) The application (specification, including the claims and 
abstract, drawings, and oath or declaration) or a reexamination 
request, any amendments or correction(s) to an application or patent 
undergoing reexamination, and any remarks, petitions, requests, 
affidavits or other papers submitted during prosecution of an 
application or a reexamination proceeding:
    (1) Except as provided for in Sec.  1.69 and paragraph (d) of this 
section, must:
    (i) Comply with the requirements of paragraph (a) of this section; 
and
    (ii) Be in the English language or be accompanied by a translation 
of the application and a translation of any corrections or amendments 
into the English language together with a statement that the 
translation is accurate; and
    (2) Except for the specifications of reissue applications (but not 
amendments thereto made by a separate paper pursuant to Sec.  1.173(b)) 
and specifications for patents for which reexamination has been 
requested (but not amendments thereto pursuant to Sec.  1.530) and as 
provided for in Sec. Sec.  1.821 through 1.825, must have:
    (i) Lines that are 1\1/2\ or double spaced;
    (ii) Text written in a nonscript font (e.g., Arial, Times New 
Roman, or Courier) lettering style having capital letters which must be 
no smaller than 0.28 cm (0.11 inch) high (e.g., a font size of 12 point 
in Times New Roman); and
    (iii) Only a single column of text.
* * * * *
    4. Section 1.366 is amended by adding paragraph (h) to read as 
follows:


Sec.  1.366  Submission of maintenance fees.

* * * * *
    (h) Paper submissions of maintenance fee-related payments must 
comply with Sec.  1.52(a) and (b).

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

    5. The authority citation for 37 CFR part 2 continues to read as 
follows:

    Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.

    6. Section 2.195 is amended by adding a new paragraph (d)(6) to 
read as follows:


Sec.  2.195  Receipt of trademark correspondence.

* * * * *
    (d) * * *
    (6) Correspondence permitted to be submitted via the Office's 
electronic system for recording assignments (e.g., Electronic Trademark 
Assignment System (ETAS)).
* * * * *

[[Page 45673]]

PART 3--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE

    7. Section 3.24 is revised to read as follows:


Sec.  3.24  Requirements for documents and cover sheets relating to 
patents and patent applications.

    (a) For electronic submissions (e.g., Electronic Patent Assignment 
System (EPAS)): Either a copy of the original document or an extract of 
the original document may be submitted for recording. All documents 
must be submitted as digitized images in Tagged Image File Format 
(TIFF) or another form as prescribed by the Director. When printed to a 
paper size of either 21.6 by 27.9 cm (8\1/2\ inches by 11 inches) or 
21.0 by 29.7 cm (DIN size A4), the document must be legible and a 2.5 
cm (one inch) margin must be present on all sides.
    (b) For paper: Either a copy of the original document or an extract 
of the original document must be submitted for recording. Only one side 
of each page may be used. The paper size must be either 21.6 by 27.9 cm 
(8\1/2\ inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4), and in 
either case, a 2.5 cm (one inch) margin must be present on all sides. 
The paper used should be flexible, strong, white, non-shiny, and 
durable.
    (c) Non-return of submissions: The Office will not return documents 
submitted for recording. Therefore, original documents must not be 
submitted for recording.
    8. Section 3.25 is amended by revising paragraph (c) as follows:


Sec.  3.25  Recording requirements for trademark applications and 
registrations.

* * * * *
    (c) All documents. (1) For electronic submissions (e.g., Electronic 
Trademark Assignment System (ETAS)): All documents must be submitted as 
digitized images in Tagged Image File Format (TIFF) or another form as 
prescribed by the Director. When printed to a paper size of either 21.6 
by 27.9 cm (8\1/2\ inches by 11 inches) or 21.0 by 29.7 cm (DIN size 
A4), the document must be legible and a 2.5 cm (one inch) margin must 
be present on all sides.
    (2) For paper: Only one side of each page may be used. The paper 
size must be either 21.6 by 27.9 cm (8\1/2\ inches by 11 inches) or 
21.0 by 29.7 cm (DIN size A4), and in either case, a 2.5 cm (one inch) 
margin must be present on all sides. The paper used should be flexible, 
strong, white, non-shiny, and durable.
    (3) Non-return of submissions: The Office will not return documents 
submitted for recording. Therefore, original documents must not be 
submitted for recording.

    Dated: July 31, 2008.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. E8-18025 Filed 8-5-08; 8:45 am]
BILLING CODE 3510-16-P