[Federal Register Volume 74, Number 206 (Tuesday, October 27, 2009)]
[Notices]
[Pages 55200-55211]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E9-25785]



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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No.: PTO-P-2008-0045]


Legal Framework for Electronic Filing System--Web (EFS-Web)

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Notice.

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SUMMARY: This Legal Framework provides guidance on the background 
statutes, regulations and policies that support the Electronic Filing 
System--Web (EFS-Web) project. The document is provided as a reference 
for applicants, parties in reexamination proceedings, attorneys, and 
agents, as well as their employees using the system.

FOR FURTHER INFORMATION CONTACT: Joni Y. Chang, Senior Legal Advisor, 
Office of Patent Legal Administration, Office of the Deputy 
Commissioner for Patent Examination Policy; directly by phone at 571-
272-7720, or by mail addressed to: Mail Stop Comments--Patents, 
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
    Inquiries regarding EFS-Web and other USPTO information technology 
(IT) systems may be directed to the Patent Electronic Business Center 
(Patent EBC), by telephone: 1-866-217-9197 (toll-free) and 571-272-
4100, or by e-mail: [email protected].
    Inquiries regarding IT policy for U.S. national patent applications 
may be directed to Mark Polutta (571-272-7709), Senior Legal Advisor, 
Office of Patent Legal Administration.
    Inquiries regarding IT policy for international patent applications 
may be directed to Tamara Graysay (571-272-6728), Special Program 
Examiner, Office of Patent Cooperation Treaty (PCT) Legal 
Administration.

SUPPLEMENTARY INFORMATION: This notice substantively contains the same 
information as the EFS-Web Legal Framework posted on the USPTO Web site 
(September 2008), with certain exceptions. The following is a brief 
summary of the major differences:
    1. The sections have been reorganized so that sections on similar 
topics are combined or grouped together, and clarifications and 
definitions of terms related to electronic filings have been added;
    2. Section A (former sections II, III and V) has been revised to 
provide updated general information on EFS-Web;
    3. Section B (former sections IV, VI, XII, XX, and XXXI) has been 
revised to provide a list of applications and documents that are 
permitted to be filed via EFS-Web, information on how applications 
filed via EFS-Web are counted for the application size fee purposes, 
and fee payments are permitted to be filed via EFS-Web;
    4. Section D (part of former sections IV and XXIX) has been revised 
to provide information on proper usages of EFS-Web;
    5. Section E (including subsection E1 and E2, former sections VII, 
X, and XXVIII) has been revised to permit a Public Key Infrastructure 
(PKI) certificate holder to designate a single employee of the holder's 
organization, or a single employee of a contractor, who may use the 
holder's certificate under the holder's direction and control;
    6. Section H (former section XXII) has been revised to permit color 
and grayscale drawings and photographs to be submitted via EFS-Web in 
provisional and nonprovisional utility patent applications including 
reissue applications and national stage applications;
    7. Subsection I5 is added to provide that complex work units (such 
as chemical structure drawings, mathematical formulae, three-
dimensional protein crystalline structure data and table data) may be 
submitted as text files via EFS-Web under the Complex Work Units Pilot 
Program; and
    8. Section J (former sections IX, XVII, XVIII and XIX) has been 
revised to permit PCT-EASY.zip compressed files to be submitted via 
EFS-Web when users are filing international applications with the 
United States Receiving Office, and to provide that tables related to a 
sequence listing in an international application must be submitted in a 
PDF file rather than in a text file.

Table of Contents

A. General Information on EFS-Web (Former Sections II, III and V)
B. Legal and Document Policies (Former Sections IV and VI)
    B1. Types of Patent Applications and Documents Permitted To Be 
Filed via EFS-Web (Former Section XX)
    B2. Types of Patent Applications and Documents Not Permitted To 
Be Filed via EFS-Web (Former Section XXXI)
    B3. What is the official record of documents submitted via EFS-
Web? (Former Section XII)
    B4. How are applications filed via EFS-Web counted for 
application size fee purposes?
    B5. Can fee payments be submitted via EFS-Web?
C. Electronic Acknowledgement Receipt and Date of Receipt (Former 
Section VIII)
    C1. What is the date of receipt of a follow-on document received 
by the USPTO through EFS-Web? (Former Section XXV)
    C2. What is the date of receipt of an application submitted via 
EFS-Web? (Former Section XXIII)
    C3. Can users file documents during non-business hours via EFS-
Web? (Former Section XXVI)
    C4. What if the applicant electronically files an application 
via EFS-Web, and on that same day, realizes that the applicant has 
inadvertently omitted a document from the application? (Former 
Section XXIV)
    C5. Are there any legal consequences of the USPTO's accepting 
electronic patent applications on Saturday and Sunday? (Former 
Section XXVII)
D. Proper Usage of EFS-Web (Former Section IV)
    D1. Filing Documents as PDF Files via EFS-Web
    D2. Entering Information on EFS-Web Screens
    D3. Under what conditions will the USPTO allow refunds for fees 
paid via EFS-Web? (Former Section XXIX)
E. Security and Authentication (Former Section X)
    E1. PKI Subscriber Agreement (Former Section VII)
    E2. Under what authority does an authorized assistant of the 
digital certificate holder submit signed documents? (Former Section 
XXVIII)
F. Signature Policy (Former Section XXX)
G. May pre-grant (eighteen-month) publication requests be submitted 
via EFS-Web? (Former Section XXI)
H. May photographs and color drawings be submitted via EFS-Web? 
(Former Section XXII)
I. Text Files and File Limits
    I1. May biotechnology sequence listings, large tables, or 
computer program listing appendices be submitted as text files via 
EFS-Web? (Former Section XIII)
    I2. How are text files counted for application size fee 
purposes? (Former Section XIV)
    I3. What is the size limit for text files? (Former Section XV)
    I4. What is the limit on the number of electronic files that may 
be included in a single EFS-Web submission? (Former Section XVI)
    I5. May Complex Work Units be submitted electronically via EFS-
Web?
J. International Applications and Documents for International 
Applications
    J1. May international applications filed under the PCT with the 
United States Receiving Office be electronically submitted via EFS-
Web? (Former Section XVII)
    J2. Entry in the U.S. national stage under 35 U.S.C. 371 (Former 
Section IX)
    J3. May EFS-Web be used to file international applications 
containing a nucleotide or amino acid sequence listing and/or tables 
related thereto in the United States Receiving Office? (Former 
Section XVIII)
    J4. Follow-on Submissions for International Applications (Former 
Section XIX)

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    J5. Policy of Annex F of the PCT Administrative Instructions 
(Former Section XI)

A. General Information on EFS-Web

    EFS-Web is the USPTO's system for electronic filing of patent 
correspondence. EFS-Web is accessible via the Internet on the USPTO Web 
site. The system utilizes standard Web-based screens and prompts to 
enable users to submit patent documents in Portable Document Format 
(PDF) directly to the USPTO. Users may electronically submit most 
patent applications, reexamination requests, and other patent-related 
documents securely using EFS-Web. Users may also use EFS-Web to submit 
payments of most patent fees including patent application filing fees. 
Users need not provide a duplicate copy of any document filed through 
EFS-Web unless the USPTO specifically requires the filing of a 
duplicate in a particular situation. Users may review and check their 
electronic submissions including their attached PDF files before 
submitting the documents to the USPTO. After submitting the documents 
via EFS-Web, the system will display a page that states that the USPTO 
has received the user's submission. The users, generally within two 
hours, will receive an Electronic Acknowledgement Receipt of a 
successful submission received by the USPTO. The processing of fees may 
delay the issuance of the Electronic Acknowledgement Receipt. The 
Electronic Acknowledgement Receipt is the electronic equivalent of a 
postcard receipt. See Manual of Patent Examining Procedure (MPEP) Sec.  
503. Most documents submitted via EFS-Web will be viewable via the 
Patent Application Information Retrieval (PAIR) system within an hour 
after the USPTO receives the documents if the users have associated 
their applications with their customer numbers. Therefore, users will 
be able to immediately check the contents of their applications for 
completeness and accuracy of their electronic submissions.
    A user may become a registered user by obtaining a PKI digital 
certificate. See section E of this notice for more information on PKI 
digital certificates. A registered user may file most patent 
applications and follow-on documents in a patent application, but a 
non-registered user is not permitted to file most follow-on documents 
in a patent application. See section B of this notice for more 
information.
    EFS-Web is a PDF-based filing system. Accordingly, all EFS-Web 
submissions are required to be in PDF format unless otherwise indicated 
in this notice. EFS-Web permits submission of: (1) The American 
Standard Code of Information Interchange (ASCII) text files (.TXT) to 
submit bio-sequence listings, computer program listings, mega tables, 
and Complex Work Units; and (2) PCT-EASY.zip compressed files to submit 
the Request form generated by PCT-EASY in international applications 
with the United States Receiving Office. See sections I and J of this 
notice for more information on ASCII text files and electronic filing 
of international applications, respectively. In addition, the USPTO 
provides users with PDF EFS-Web fillable forms, such as the Provisional 
Application for Patent Cover Sheet, the Information Disclosure 
Statement, the Application Data Sheet, Petition to Make Special Under 
Accelerated Examination Program, Petition to Accept Unintentionally 
Delayed Payment of Maintenance Fee in an Expired Patent, Request for 
Continued Examination (RCE) Transmittal, and Petition to Make Special 
Based on Age. When users submit information using an EFS-Web fillable 
form, the information will directly load into the USPTO databases which 
will increase accuracy and facilitate faster processing. Users may use 
other USPTO-created PDF fillable forms available on the USPTO Web site, 
or user-created forms, and submit the completed forms via EFS-Web. The 
information entered on these forms, however, will not be automatically 
loaded into the USPTO databases.
    The USPTO Web site provides additional information on EFS-Web and 
PAIR, such as instructions, guidelines, frequently asked questions, and 
tutorials (http://www.uspto.gov/ebc/efs_help.html). Users may contact 
the Patent Electronic Business Center (Patent EBC) for assistance with 
EFS-Web and PAIR as well as for requesting PKI digital certificates and 
customer numbers.

B. Legal and Document Policies

    To the extent that any USPTO regulation is inconsistent with the 
procedures for EFS-Web, the regulation will be interpreted in a manner 
to support EFS-Web. This notice sets forth the USPTO's policies 
concerning documents submitted electronically using EFS-Web, including 
patent applications and requests for reexamination, as well as follow-
on documents in patent applications and reexamination proceedings.
    B1. Types of Patent Applications and Documents Permitted to be 
Filed via EFS-Web: EFS-Web permits registered users (who have a PKI 
digital certificate) and non-registered users to file the following 
patent applications, requests for reexamination, and documents:
    1. Provisional patent applications under 35 U.S.C. 111(b);
    2. Nonprovisional utility patent applications under 35 U.S.C. 
111(a) (including reissue utility patent applications);
    3. Nonprovisonal design patent applications under 35 U.S.C. 171 
(including reissue design patent applications);
    4. International applications under PCT Article 11, designating the 
United States, for filing in the United States Receiving Office;
    5. National stage applications under 35 U.S.C. 371;
    6. Requests for ex parte reexamination under 35 U.S.C. 302 for 
utility or design patents;
    7. Requests for inter partes reexamination under 35 U.S.C. 311 for 
utility or design patents;
    8. Petitions to make special based on age under 37 CFR 1.102(c); 
and
    9. Petitions to accept an unintentionally delayed payment of 
maintenance fee under 37 CFR 1.378(c), and payments of maintenance fees 
when submitted with the petition.
    10. Petition to make special under accelerated examination program 
(must be filed with a nonprovisional utility patent application under 
35 U.S.C. 111(a)).
    Follow-on documents: Registered users are permitted to file follow-
on documents in the patent applications and reexamination proceedings 
listed above via EFS-Web. Follow-on documents are documents filed after 
the initial submission of the application or request for reexamination, 
which include, but are not limited to, the following: amendments, 
information disclosure statements (IDS), replies to Office actions and 
notices, evidence, petitions, and other documents filed after the 
filing of a patent application or request for reexamination. In 
addition, registered users may file copies of the patent application 
(e.g., a copy of the amended specification including the claims, and 
drawings, for the purposes of publication of the application) for the 
following pre-grant (eighteen-month) publication requests via EFS-Web: 
amended publication under 37 CFR 1.215(c), redacted publication under 
37 CFR 1.217, early publication under 37 CFR 1.219, and voluntary 
publication or republication under 37 CFR 1.221(a). See section G for 
more information on filing these publication requests via EFS-Web. 
Follow-on documents also include any documents submitted on the same 
day as the application, but after the initial submission. In

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reexamination proceedings, both the reexamination requester and the 
patent owner may file documents via EFS-Web, if they are registered 
users. Registered users may also file a second or subsequent submission 
for patent term extension under 35 U.S.C. 156 in a patent file via EFS-
Web.
    Non-registered users are not permitted to file follow-on documents 
via EFS-Web, except those listed in items 8-10 above. Non-registered 
users may file follow-on documents by mail (with a certificate of 
mailing in accordance with 37 CFR 1.8), Express Mail from USPS in 
accordance with 37 CFR 1.10, or hand delivery.
    B2. Types of Patent Applications and Documents Not Permitted to be 
Filed via EFS-Web: The following is a list of submission types that are 
not permitted to be filed using EFS-Web:
    1. Plant patent applications under 35 U.S.C. 161 and documents 
associated with plant patent applications.
    2. Requests for Reexamination under 35 U.S.C. 302 and 311 for plant 
patents and documents associated with reexamination proceedings for 
plant patents.
    3. Third party submissions under 37 CFR 1.99.
    4. Protests under 37 CFR 1.291.
    5. Public use papers under 37 CFR 1.292.
    6. Color drawings and color photographs for international 
applications that have not entered the national stage.
    7. Initial submissions for patent term extension under 35 U.S.C. 
156.
    8. Correspondence concerning registration practice as specified in 
37 CFR 1.4(e). See also 37 CFR 1.6(d)(1).
    9. Certified documents as specified in 37 CFR 1.4(f). See also 37 
CFR 1.6(d)(2). An example of such a submission is a certified copy of a 
foreign patent application filed pursuant to 35 U.S.C. 119 or a 
certified copy of an international application filed pursuant to 35 
U.S.C. 365.
    10. Correspondence to be filed in a patent application subject to a 
secrecy order under 37 CFR 5.1 through 5.5. See also 37 CFR 1.6(d)(6).
    11. Documents filed in contested cases before the Board of Patent 
Appeals and Interferences (BPAI), except as the BPAI may expressly 
authorize. See also 37 CFR 1.6(d)(9).
    12. Documents filed in contested cases before the BPAI, which are 
governed by 37 CFR 41.106(f). See also 37 CFR 1.6(d)(3) and 
1.8(a)(2)(i)(C).
    13. Correspondence filed in connection with a disciplinary 
proceeding under 37 CFR parts 10 and 11. See also 37 CFR 1.6(d)(3).
    14. Maintenance fees submitted under 37 CFR 1.366 that are not 
submitted with a petition under 37 CFR 1.378(c) (see item 9 in section 
B1 of this notice). Patent owners may be paid electronically using the 
Office of Finance On-Line Shopping Page at https://ramps.uspto.gov/eram/. See MPEP Sec.  2510 for information regarding the proper methods 
for submitting maintenance fees.
    15. Assignment documents under 35 U.S.C. 261, which may be 
electronically filed using the Electronic Patent Assignment System 
(EPAS) or the Electronic Trademark Assignment System (ETAS). 
Information regarding EPAS is available at: http://epas.uspto.gov. 
Information regarding ETAS is available at: http://etas.uspto.gov.
    16. Submissions that are not associated with a patent application 
or reexamination proceeding.
    If any of the documents listed above is submitted via EFS-Web, the 
document will not be accorded a date of receipt and it will not be 
considered officially filed in the USPTO. Furthermore, no benefit will 
be given to a certificate of transmission under 37 CFR 1.8 on the 
document.
    B3. What is the official record of documents submitted via EFS-Web? 
When the USPTO successfully receives documents filed in accordance with 
the EFS-Web requirements, the USPTO will convert the PDF files 
submitted by users into Tagged Image File Format (TIFF) image files and 
then store the TIFF image files in the Image File Wrapper (IFW) as part 
of the official record, except for color and grayscale drawings which 
are stored in the Supplemental Complex Repository for Examiners (SCORE) 
as part of the official record. In addition, certain submissions may be 
filed as ASCII text files (e.g., sequence listings or computer program 
listings), which are stored in SCORE as part of the official record. 
Accordingly, the official record for the patent application and 
reexamination proceeding comprises:
    (1) ASCII text documents as well as color and grayscale drawings in 
PDF format as stored in SCORE; and
    (2) TIFF images of all other original documents as stored in IFW as 
well as the Electronic Acknowledgement Receipt and the Electronic 
Patent Application Fee Transmittal, both of which contain information 
entered via the EFS-Web graphical user interface (GUI) data collection 
screens.
    See also Legal Framework for the Use of the Electronic Filing 
System, 1286 Off. Gaz. Pat. Office 113, 114 (Sept. 14, 2004). The 
original documents submitted via EFS-Web (e.g., applications and 
reexamination proceeding documents) are stored exactly as filed in an 
independent location. See section I of this notice for more information 
on ASCII text documents and section H on color and grayscale drawings. 
Submissions for pre-grant (eighteen-month) publication are forwarded to 
the Pre-Grant Publication Division and are not stored in IFW or SCORE 
as part of the official record of the patent application. See section G 
for more information on publication requests.
    B4. How are applications filed via EFS-Web counted for application 
size fee purposes? For patent applications filed under 35 U.S.C. 111 
(including provisional applications, utility and design nonprovisional 
applications, and reissue applications), the paper size equivalent of 
the specification (including claims) and drawings of an application 
submitted via EFS-Web will be considered to be seventy-five percent 
(75%) of the number of sheets of paper present in the specification 
(including claims) and drawings of the application when entered into 
IFW after being rendered by EFS-Web for purposes of determining the 
application size fee required by 37 CFR 1.16(s). See 37 CFR 1.52(f)(2) 
and MPEP Sec.  607. The paper size equivalency under 37 CFR 1.52(f)(2) 
for EFS-Web filings does not apply to national stage submissions. See 
MPEP Sec.  1893.01(c).
    Any sequence listing in compliance with 37 CFR 1.821(c) or (e), and 
any computer program listing in compliance with 37 CFR 1.96, submitted 
via EFS-Web will be excluded when determining the application size fee 
required by 37 CFR 1.16(s) if the listing is submitted in ASCII text as 
part of an associated file of the application. See 37 CFR 1.52(f)(2) 
and sections I2 and J3 of this notice. Sequence listing or computer 
program listings submitted as PDF files would not be excluded.
    B5. Can fee payments be submitted via EFS-Web? Yes, non-registered 
and registered users may submit the filing fees (e.g., the basic filing 
fee, search and examination fee, and excess claims fee) using the 
online fee payment in EFS-Web at the time of filing a patent 
application or request for reexamination. Only registered users may 
submit payment of fees in a previously filed application or 
reexamination proceeding. EFS-Web permits users to electronically 
submit the payment of fees with a credit card, USPTO deposit account, 
or electronic fund transfer. Users may also provide authorizations to 
charge fees to a deposit account with the documents

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being submitted electronically via EFS-Web (e.g., a fee transmittal 
letter or form). However, users should not submit a credit card charge 
authorization including the Credit Card Payment Form (PTO-2038) 
electronically via EFS-Web, because the electronic submission 
automatically will be loaded into the application file in IFW, and the 
credit card information may become part of the record of an application 
file that is open to public inspection.
    When the online fee payment in EFS-Web is unavailable, a deposit 
account authorization transmittal (e.g., PTO/SB/17) may be included 
with the documents being submitted via EFS-Web. A credit card 
authorization transmittal (e.g., PTO-2038) may also be submitted by 
facsimile transmission to the USPTO Central Facsimile (571) 273-8300, 
or sent via Express Mail from the United States Postal Service (USPS) 
in accordance with 37 CFR 1.10. Applicants must include the application 
number from the Electronic Acknowledgement Receipt to ensure that the 
fees are paid in the correct application. Facsimile submission of the 
basic national fee for national stage under 35 U.S.C. 371 is not 
accepted. Failure to timely pay the basic national fee prior to the 
expiration of 30 months from the priority date will result in 
abandonment of the international application. If applicant wishes to 
submit the application filing fees on the filing date of a patent 
application to avoid the surcharge, the payment of the filing fees must 
be submitted and received by the USPTO before midnight on the filing 
date of application. Failure to pay the fees on the filing date of the 
application will result in a surcharge.
    When the online fee payment in EFS-Web is unavailable, the 
following types of submissions cannot be filed via EFS-Web, since 
online fee payment must accompany the submission:
    (1) Petitions under 37 CFR 1.378(c) for auto-processing by EFS-Web; 
and
    (2) Pre-grant publication submissions under 37 CFR 1.211 to 1.221 
that require a fee.

C. Electronic Acknowledgement Receipt and Date of Receipt

    The Electronic Acknowledgement Receipt establishes the date of 
receipt by the USPTO of documents submitted via EFS-Web. The electronic 
documents are itemized in the Electronic Acknowledgement Receipt, which 
will contain a full listing of the documents submitted to the USPTO as 
described by the user during the submission process, including the 
count of pages and/or byte sizes for each document. Thus, the 
Electronic Acknowledgement Receipt is the electronic equivalent of the 
postcard receipt described in MPEP section 503.
    The official application filing date will be noted on the Filing 
Receipt (37 CFR 1.54) after the submitted application parts are 
reviewed for compliance with 35 U.S.C. 111 (or for compliance with 35 
U.S.C. 371 for entry into the U.S. national stage of an international 
application). The filing date is based on the dates indicated on the 
Electronic Acknowledgement Receipt assuming that, after review, the 
documents submitted are found to be entitled to an application filing 
date. Likewise the official reexamination filing date will be noted on 
the ``Notice of * * * Reexamination Request Filing Date,'' after 
Central Reexamination Unit (CRU) review for filing date compliance, and 
is based on the dates indicated on the Electronic Acknowledgement 
Receipt.
    If the official version of any document received by EFS-Web is 
lost, damaged or rendered unreadable and if it cannot be recovered from 
the stored files received by electronic submission, then the user will 
be promptly notified. Such events are expected to be rare. In that 
situation, the user may have to resubmit any lost document and petition 
for the original filing date. The user would be required to present: 
(1) The Electronic Acknowledgement Receipt; (2) a copy of the missing 
files as submitted; and (3) a signed petition accompanied by a 
statement stating that the attached files are the same as those 
originally submitted and mentioned in the Electronic Acknowledgement 
Receipt for that application number (e.g., a petition under 37 CFR 
1.53(e) or 37 CFR 1.182 with the appropriate petition fee under 37 CFR 
1.17(f)).
    The Electronic Acknowledgement Receipt and statement will serve as 
prima facie evidence that the resubmitted documents are the same as 
those submitted on the date of receipt, except when the document 
description used by the user does not match the document. For example, 
if an applicant originally filed a specification and a set of claims 
and used the correct document descriptions for a specification and a 
set of claims, then the Electronic Acknowledgement Receipt will serve 
as prima facie evidence that the applicant filed the specification and 
set of claims on the original filing date. However, if the applicant 
actually filed two sets of claims, the Electronic Acknowledgement 
Receipt will not serve as prima facie evidence that the applicant filed 
a specification and a set of claims (even though the applicant used the 
document descriptions for a specification and a set of claims). Note 
the Electronic Acknowledgement Receipt only indicates that the USPTO 
received what was actually sent, as opposed to what may have been 
intended to be transmitted. Users should exercise the same care in 
preparing and preserving a copy of a submission in electronic form as 
in paper.
    C1. What is the date of receipt of a follow-on document received by 
the USPTO through EFS-Web? Follow-on documents filed in a patent 
application or reexamination proceeding after the initial filing of the 
application or request for reexamination will be accorded a receipt 
date, which is the date the follow-on document is received at the 
USPTO. See 37 CFR 1.6(a)(4).
    A follow-on document required to be filed in the USPTO within a set 
period of time (e.g., a reply to an Office action) will be considered 
as being timely filed if the follow-on document is submitted in 
compliance with the procedure set forth in 37 CFR 1.8(a):
    (1) The follow-on document is submitted via EFS-Web prior to 
expiration of the set period of time in accordance with the 
requirements for EFS-Web; and
    (2) The document includes a certificate of transmission stating the 
date of transmission and signed by a person that has reasonable basis 
to expect that the document would be transmitted on or before the date 
of transmission. See 37 CFR 1.8(a)(1)(i)(C) and (ii). However, the 
certificate of transmission practice under 37 CFR 1.8 does not apply to 
the documents listed in 37 CFR 1.8(a)(2) (e.g., a document filed for 
the purpose of obtaining an application filing date).
    C2. What is the date of receipt of an application submitted via 
EFS-Web? 35 U.S.C. 111(a)(4) states in part (emphasis added):

    The filing date of an application shall be the date on which the 
specification and any required drawing are received in the Patent 
and Trademark Office.

    Thus, the filing date of an application is the date of receipt of 
the application in the USPTO. Further, the USPTO is located in the 
Eastern Standard Time zone. Accordingly, the date of filing of an 
application officially submitted through EFS-Web will be the date in 
the Eastern Standard Time zone when the USPTO received the submission. 
As such, the submission's ``date of receipt,'' as shown on the 
Electronic Acknowledgement Receipt, is the Eastern Standard Time date 
that the documents are fully, successfully, and officially received at 
the USPTO, after

[[Page 55204]]

the user clicks the SUBMIT button on the Confirm and Submit screen. See 
37 CFR 1.6(a)(4). This date is controlling for filing date purposes of 
a newly filed application. There is no ``certificate of transmission'' 
practice for new application filings (37 CFR 1.8). This applies by 
analogy to reexamination proceedings.
    To be very specific, the EFS-Web system records as the date of 
receipt of documents the local date in Eastern Standard Time on which 
the USPTO receives the documents, after the user clicks the SUBMIT 
button on the Confirm and Submit screen for those documents.
    For example, if an applicant in California officially files a 
patent application with the USPTO through EFS-Web by clicking on the 
SUBMIT button at 1 p.m. Pacific Time in California on May 1, that 
application would be officially received by the USPTO at 1 a.m. Eastern 
Standard Time on May 2. Accordingly, the application would receive a 
filing date of May 2. However, the applicant could alternatively file 
the application using Express Mail from the USPS in accordance with 37 
CFR 1.10 in which case the applicant would have until midnight on May 1 
in his or her local time zone to file the application and obtain a 
filing date of May 1.
    C3. Can users file documents during non-business hours via EFS-Web? 
Hours of operation of EFS-Web will be clearly provided in the EFS-Web 
instructions when users log on to the system. The USPTO will post 
information on any scheduled down time due to system maintenance in 
advance. Users may file patent documents electronically during the 
hours of operation of EFS-Web every day of the week, including weekends 
and holidays. If the submission is successfully received (even on a 
Saturday, Sunday or Federal holiday within the District of Columbia), 
the USPTO will assign that receipt date to the submission.
    If a transmission is attempted during a down time, the USPTO cannot 
accept it and will, if possible, transmit back a notice that the USPTO 
is not accepting submissions. No Electronic Acknowledgement Receipt 
will be sent. Instead a notice will advise the user to use alternative 
filing methods, such as Express Mail from the USPS in accordance with 
37 CFR 1.10 or hand delivery of paper to the USPTO, to establish the 
filing date. Note that applications filed under 37 CFR 1.53, and 
reexamination requests, cannot be submitted by facsimile transmission 
(37 CFR 1.6(d)(3) and (5)), and that certificate of mailing procedures 
do not apply to new applications and reexamination requests (37 CFR 
1.8(a)(2)(i)(A) and (D)). Users are strongly advised to transmit their 
electronic filings sufficiently early in the day to allow time for 
alternative paper filing when transmission cannot be initiated or 
correctly completed.
    C4. What if the applicant electronically files an application via 
EFS-Web, and on that same day, realizes that the applicant has 
inadvertently omitted a document from the application? One advantage of 
filing a patent application via EFS-Web is that applicant (who is a 
registered user) may view the submission in PAIR and file a document 
directly into the application on the same day as the filing date of the 
application. In certain situations, applicant may correct an error by 
filing a missing item(s) on the same day as the filing date of the 
application. Applicant, however, may wish to file another new 
application in other certain situations.
    The following examples describe implications raised when applicant 
inadvertently omits an item when filing an application electronically 
via EFS-Web:
    1. Oath or Declaration--Applicant may file an executed oath or 
declaration on the same day as the filing date as the application via 
EFS-Web. The oath or declaration will not be considered late and thus a 
surcharge for filing a late oath or declaration will not be required.
    2. Filing Fees--Applicant may file the filing fees (e.g., the basic 
filing fee, search and examination fees, application size fee, or 
excess claims fee) on the same day as the filing date of the 
application via EFS-Web. The fees will not be considered late and thus 
a surcharge for filing the filing fees will not be required.
    3. Nonpublication request--Since 37 CFR 1.213(a)(1) requires any 
nonpublication request to be filed with the application, applicant 
cannot simply file the nonpublication request to correct the error. If 
applicant does not wish to have the application publish, applicant must 
file: (a) a new application with a nonpublication request; and (b) in 
the initial application, a petition for express abandonment to avoid 
publication under 37 CFR 1.138(c) and fee under 37 CFR 1.17(h) in 
sufficient time to permit the appropriate officials in the Pre-Grant 
Publication Division to recognize the abandonment and remove the 
application from the publication process.
    4. Drawings--Applicant may file the missing drawings as a 
preliminary amendment on the same day as the filing date of the 
application. The drawings will be considered as part of the original 
disclosure of the application. See 37 CFR 1.115(a)(2). If the 
application was filed with the ``wrong drawings,'' a preliminary 
amendment could be filed on the same day as the filing date of the 
application adding the correct drawings and deleting the ``wrong 
drawings.'' An amendment adding new drawings and deleting the ``wrong 
drawings,'' filed on a day after the filing date of the application may 
raise new matter issues.
    5. Claims--Applicant may file claims as a preliminary amendment on 
the same day that applicant filed the application papers and such 
claims will be considered as part of the original disclosure of the 
application. Please note that the application will not be entitled to a 
filing date until applicant files at least one claim in the 
application.
    6. Part of the specification--Applicant may file the missing 
portion of the written description as a preliminary amendment on the 
filing date of the application. Such amendment will be considered as 
part of the original disclosure.
    If applicant files another new application to correct an error in 
the first application, applicant will have filed two applications. 
Applicant may continue to prosecute the first application that has the 
error or abandon the first application by filing a declaration of 
express abandonment. Please note that any fees paid in the first 
application will not be refunded or applied to the second application. 
Applicant may request refund of the search fee and any excess claims 
fees (but not the basic filing fee, examination fee, and application 
size fee) paid in the first application if the application was filed 
under 35 U.S.C. 111(a) on or after December 8, 2004, and the applicant 
files a petition for express abandonment in accordance with 37 CFR 
1.138(d).
    C5. Are there any legal consequences of the USPTO's accepting 
electronic patent applications on Saturday and Sunday? Applicants may 
file patent applications electronically during the hours of operation 
of EFS-Web every day of the week, including weekends and holidays. EFS-
Web will provide applicants with the opportunity to receive a filing 
date on any day of the week, including Saturday, Sunday, and Federal 
holidays. In addition, 35 U.S.C. 21(b) states:

    When the day, or the last day, for taking any action or paying 
any fee in the United States Patent and Trademark Office falls on 
Saturday, Sunday, or a Federal holiday within the District of 
Columbia, the action

[[Page 55205]]

may be taken, or fee paid, on the next succeeding secular or 
business day.

Further, 35 U.S.C. 119((e)(3)) states:

    If the day that is 12 months after the filing date of a 
provisional application falls on a Saturday, Sunday, or Federal 
holiday within the District of Columbia, the period of pendency of 
the provisional application shall be extended to the next succeeding 
secular or business day.

Thus, under United States law, applicants will be permitted to take 
action on the next business day when the last day for taking action 
falls on a weekend or Federal holiday, regardless of the mode or form 
of filing.
    However, Article 4 of the Paris Convention addresses the priority 
period and in Article 4(c)(3) it states:

    If the last day of the period is an official holiday, or a day 
when the Office is not open for the filing of applications in the 
country where protection is claimed, the period shall be extended 
until the first following working day.

Further, as stated above, the USPTO is capable of accepting electronic 
patent application filings every day of the week, including weekends 
and holidays, through EFS-Web. Thus, applicants are cautioned to 
consider possible adverse consequences regarding the determination in 
other countries of priority periods under Article 4(C)(3) of the Paris 
Convention when filing international applications with the United 
States Receiving Office. Specifically, the ability to file applications 
electronically on weekends and holidays in the USPTO may result in loss 
of priority rights in foreign jurisdictions designated in international 
applications filed with the United States Receiving Office, if 
applicants elect, in accordance with 35 U.S.C. 21(b) or 119(e)(3), to 
file an international application on the next succeeding business day 
in the event that the twelve-month Paris Convention priority period set 
out in Article 4(C)(1) falls on a Saturday, Sunday, or Federal Holiday. 
In such circumstances, other patent offices may deny the priority claim 
on the basis that the international application was not timely filed if 
their national law strictly incorporates the provision of Paris 
Convention Article 4(c)(3) and considers the USPTO to be open for the 
filing of applications on weekends and holidays. For this reason, 
applicants may prefer not to rely upon the ``next business day'' 
provisions of 35 U.S.C. 21(b) and 119(e)(3) when filing international 
applications with the USPTO, and instead file the international 
application before the Paris Convention twelve-month priority period 
has expired.

D. Proper Usage of EFS-Web

    Users should follow the instructions and guidelines for EFS-Web 
provided on the USPTO Web site. Before clicking the SUBMIT button, the 
user should check whether the correct documents have been attached to 
the submission, and whether the information related to the submission 
has been entered correctly. Once the user clicks the SUBMIT button on 
the Confirm and Submit screen, the submission will be electronically 
sent to the USPTO. A submission is officially filed at the USPTO when 
the documents are received by the USPTO (Eastern Time). Use of EFS-Web 
in a manner significantly in violation of the instructions and 
guidelines for EFS-Web provided on the USPTO Web site and in this 
notice may result in non-entry of the submission or failure to accord a 
filing date in the event the USPTO does not fully, successfully, and 
officially receive all of the elements necessary to obtain a filing 
date for an intended submission. Furthermore, electronic files 
submitted via EFS-Web must be free of executables, worms, viruses, or 
any other type of potentially malicious content. Please note that 18 
U.S.C. 1030 imposes a duty on users not to intentionally cause damage 
to a federal government system.
    D1. Filing documents as PDF Files via EFS-Web: EFS-Web accepts 
standard PDF documents up to 25 megabytes for each file, and 60 
electronic files per submission. See section I4 of this notice for more 
information. PDF files created from scanned documents and submitted via 
EFS-Web must be created using a scanning resolution no lower than 300 
dpi. Lower resolution scans have significantly delayed processing and 
publication of applications, e.g., resubmission has been required for 
documents failing to comply with the legibility requirements. See 37 
CFR 1.52(a)(1)(v) and (a)(5) regarding document legibility 
requirements.
    In addition, because the PDF format is so feature-rich, certain PDF 
features are currently not supported by the USPTO systems. For example, 
PDF documents with multiple layers must be flattened prior to 
submission to ensure that the complete document is received by the 
USPTO and readable to the examiner or other deciding officials. If a 
document contains layers that are marked as ``invisible'', the 
invisible layers will be lost when the document is processed by the 
USPTO, and thus the official records in IFW will not contain the 
information on the invisible layers. Furthermore, if a user uses the 
PDF comments or annotations to enter the information on a form, only 
the blank form without the PDF comments and annotations will be 
processed. Therefore, the complete document will not be officially 
filed at the USPTO and the user cannot rely on the Electronic 
Acknowledgement Receipt as evidence that the completed form was filed 
at the USPTO. Users are encouraged to check the contents of their 
submissions for completeness and accuracy via PAIR.
    Users must follow the PDF Guidelines for EFS-Web and PDF Creation 
for EFS-Web (available on the USPTO Web site at http://www.uspto.gov/ebc/portal/tools.htm) to create and submit PDF files via EFS-Web to 
ensure that all of the information in the PDF files is successfully 
received and processed by the USPTO.
    D2. Entering information on EFS-Web Screens: EFS-Web collects 
information from on-screen entries made by the user through the EFS-Web 
graphical user interface (GUI) data collection screens. Through these 
data collection screens, the user provides the USPTO with information 
regarding the electronic submission, such as the type of application 
being filed, the application number of the application in which a 
follow-on document is being submitted, or the type of document being 
submitted. The USPTO systems (e.g., EFS-Web, IFW, etc.) will use the 
information entered by the user on the EFS-Web screens to 
automatically: (1) Assign the application number, create the 
application, and process the application, if a new patent application 
is being filed; (2) upload the follow-on document into the application 
file specified by the user; or (3) message the deciding official based 
on the document description selected by the user. Therefore, providing 
incorrect information regarding the submission could lead to: (1) An 
incorrect type of application file being created; (2) a delay in 
processing the document; (3) filing a document in an incorrect 
application; or (4) the deciding official not recognizing the document 
in sufficient time to avoid publication, to withdraw the application 
from issue, or to avoid the abandonment of the application.
    1. Follow-on documents: When a user submits a follow-on document 
(e.g., a reply to an Office action or notice) via EFS-Web, the user is 
required to enter the correct application number and confirmation 
number of the application in which the follow-on document is being 
filed. Providing the incorrect application number and confirmation 
number pair will result in filing the follow-on document in the wrong 
application. Therefore, it is important

[[Page 55206]]

for the user to enter the correct application number on the EFS-Web 
screen when filing the follow-on document.
    After the submission of the follow-on document is completed, the 
user should log on to PAIR to review the application file and check 
whether the follow-on document has been filed in the correct 
application. Checking the application file via PAIR would also help the 
user to discover other filing errors, such as filing a wrong document 
or omitting a portion of the document.
    2. Filing a new patent application: When a user is submitting a new 
patent application via EFS-Web, the user is required to select the 
application type (e.g., design, utility, provisional or nonprovisonal) 
being filed on the EFS-Web screen. Only document descriptions and fee 
codes pertinent to the selected application type will be available for 
the submission. The system will also automatically generate the 
application number based on the user's selection. For example, if the 
user indicates that the submission is a provisional application by 
selecting the EFS-Web radio button for a provisional application, the 
application will be assigned a provisional application number, 
provisional application fees will be collected or required, and the 
application will be further processed as a provisional application. 
Furthermore, the application will not be assigned to an examiner for 
examination and will not be published because the submission is 
processed as a provisional application. Therefore, it is important for 
the user to select the correct application type on the EFS-Web screen, 
and review the Electronic Acknowledgement Receipt and the application 
file using PAIR after the submission is completed.
    3. Document indexing: When a user submits a patent application or a 
follow-on document in a patent application using EFS-Web, the user must 
select from the list of document descriptions to specify the files 
being submitted via EFS-Web. For instance, when the user is filing a 
patent application, the submission must be separated into appropriate 
sections: specification, claims, abstract, and drawing; and when the 
user is filing an amendment, the user must select the appropriate type 
of amendment: amendment after non-final, amendment after allowance, 
preliminary amendment, and amendment after final. Based on the document 
description selected by the user, a document code is assigned and a 
message regarding the document submitted to the USPTO will be forwarded 
to the appropriate organization for processing, and to the appropriate 
official for consideration. Furthermore, the IFW and PAIR systems use 
the document code for identifying the document maintained in the 
application file. Therefore, accurate document indexing is important to 
facilitate efficient processing and proper consideration of the 
document by the USPTO. For example: (a) If the user indicated an after-
final amendment as a non-final amendment, the processing of such 
amendment may be delayed and the examiner may not have sufficient time 
to consider the amendment before the time period expires; (b) if the 
user selects the ``Pre-Grant Publication'' radio button on the EFS-Web 
data collection screen for submitting a substitute specification filed 
in response to a non-final Office action, the submission will be 
forwarded to the publication branch rather than processed into IFW and 
forwarded to the examiner for consideration; and (c) if the user 
selects ``drawings--only black and white line drawings'' for submitting 
color drawings in a utility application rather than ``drawing--other 
than black and white line drawings'', the color drawings would not be 
processed as color drawings, and would be maintained as black and white 
drawings in IFW.
    More information on document indexing is available on the USPTO Web 
site at http://www.uspto.gov/ebc/portal/infodocuments.htm. It is 
important for users to select the correct document description, and 
check the application file via PAIR after the submission is completed.
    D3. Under what conditions will the USPTO allow refunds for fees 
paid via EFS-Web? The USPTO will grant refunds to users when, due to a 
malfunction with the EFS-Web system, the EFS-Web system has misled a 
user into paying a fee in error. If it cannot be determined that a 
malfunction occurred, but rather it seems to be a user error, no refund 
will be given. The users should contact the Patent EBC if there are any 
issues associated with their submissions.

E. Security and Authentication

    The USPTO requires PKI certificates to meet federal government 
computer system authentication guidelines as defined by the National 
Institute of Standards and Technology (NIST) and the Office of 
Management and Budget (OMB). The required evaluation of EFS-Web and 
PAIR determined that level three authentication was needed; this is met 
by the USPTO's PKI.
    Only a PKI certificate holder (or the designated employee under the 
certificate holder's direction and control) can submit follow-on 
documents. This preserves confidentiality, and is consistent with power 
of attorney and correspondence regulations. In order to obtain a PKI 
certificate, the user must be a registered practitioner (i.e., an 
attorney or agent) or an inventor, and complete the appropriate 
paperwork (e.g., review the PKI subscriber agreement and complete the 
certificate action form, available on the USPTO Web site). Once the 
user has a PKI certificate, the user can authenticate himself or 
herself to the USPTO through the EFS-Web sign-on. This will generate a 
secure, encrypted connection with the USPTO.
    For users that do not have, or do not wish to use, a PKI 
certificate to authenticate to the USPTO, they may still submit new 
application filings only via a non-authenticated workflow. The user 
would go to the EFS-Web page and choose to submit without a PKI 
certificate as a non-registered user, which would generate a Transport 
Layer Security (TLS) connection for the session, thus allowing secure 
data transmission to the USPTO. Non-registered users have the same 
level of protection for filing as a registered user, but are limited to 
submission of initial filings. This practice minimizes the risk of 
improperly-filed third party submissions and other documents. Non-
registered users may file follow-on documents by mail (with a 
certificate of mailing in accordance with 37 CFR 1.8), Express Mail 
from USPS in accordance with 37 CFR 1.10, or hand delivery.


    Note: Users are advised that the USPTO may revoke a user's 
digital PKI certificate if the user makes an improper submission 
through EFS-Web. See section B and paragraph 4 of the ``United 
States Patent and Trademark Office Public Key Infrastructure 
Subscriber Agreement'' located at [http://www.uspto.gov/ebc/documents/subscribersagreement.pdf].


    E1. PKI Subscriber Agreement: A PKI certificate holder may 
designate a single employee of the holder's organization, or a single 
employee of a contractor, who may use the holder's USPTO certificate 
under the holder's direction and control in compliance with the PKI 
subscriber agreement. Accordingly, a practitioner who is a PKI 
certificate holder, or the designated employee acting under the 
direction and control of the practitioner, may file documents signed by 
either the practitioner or another practitioner via EFS-Web, in 
compliance with the PKI subscriber agreement. Filing of a document that 
is unauthorized to be filed via EFS-Web (e.g., a third party submission 
under 37

[[Page 55207]]

CFR 1.99 or a protest under 37 CFR 1.291) is inconsistent with the 
subscriber agreement and the rules and policies of the USPTO. Thus, the 
certificate holder, and designated employee acting under the direction 
and control of the certificate holder, must make sure that document 
being submitted is authorized to be filed via EFS-Web, regardless of 
whether the document is signed by the practitioner exercising the 
direction and control or by another practitioner.
    EFS-Web also permits a legal assistant or paralegal to submit an 
application or a request for reexamination previously reviewed by a 
registered practitioner without the registered practitioner being 
present. See section E2 for more information.
    E2. Under what authority does an authorized assistant of the 
digital certificate holder submit signed documents? A PKI digital 
certificate holder is permitted to designate a single employee of the 
holder's organization, or a single employee of a contractor, under the 
PKI subscriber agreement and certificate action form. The designated 
employee under the direction and control of the digital certificate 
holder may use the certificate holder's certificate to submit documents 
through EFS-Web in compliance with the PKI subscriber agreement and the 
rules and policies of the USPTO.
    The documents submitted through EFS-Web must be signed in 
accordance with 37 CFR 1.4, 1.33(b), and 11.18. If the designated 
employee is an assistant who is not an authorized party to sign the 
documents, the designated employee is not responsible for the contents 
of the documents submitted. Instead, the person who signs the documents 
(e.g., the inventor or a registered practitioner who is representing 
the inventor) is responsible for the contents. For example, the 
documents may be electronically signed or ink signed by the applicant 
or attorney of record. The assistant who serves the ministerial 
function of pickup and delivery of documents may submit the signed 
documents electronically via EFS-Web under the direction and control of 
the certificate holder. (Ink signed documents can be electronically 
scanned and then e-filed.) The assistant may also view and retrieve 
documents from Private PAIR under the direction and control of the 
certificate holder in compliance with the PKI subscriber agreement.
    In the submission process, the assistant who is using the holder's 
certificates to submit the documents through EFS-Web is required to 
specify certain ``locator information'' so the documents can be 
associated with the proper application file in the IFW system. That 
locator information may include the application's title, first named 
inventor, docket number, application number, confirmation number, 
correspondence address and filing date, all if available. The type of 
application (e.g., 35 U.S.C. 111(a), national stage application under 
35 U.S.C. 371, international application) and information necessary for 
the payment of fees are not considered to be locator information. The 
``locator information'' is entered on submission to assure that the 
documents are placed in the proper file, and do not constitute a signed 
submission of bibliographic data on behalf of the applicant or 
reexamination party. Errors made in the ``locator information'' may be 
corrected by the USPTO on its own initiative, or by the applicant or 
reexamination party, similar to the way they are corrected in paper 
processing.
    It also should be noted that the assistant could pay the fees 
associated with the submission in the EFS-Web process. This is 
comparable to the paper practice in which law firms designate 
individuals to pay fees.

F. Signature Policy

    Signatures, other than handwritten signatures meeting the standard 
of 37 CFR 1.4(d)(1), included in image attachments submitted via EFS-
Web are governed by the S-signature requirements of 37 CFR 1.4(d)(2) 
(See also Changes To Support Implementation of the United States Patent 
and Trademark Office 21st Century Strategic Plan, 69 FR 56481, 56486 
(Sept. 21, 2004), 1287 Off. Gaz. Pat. Office 67 (Oct. 12, 2004).
    If the signer is submitting an application through EFS-Web as PDF 
files, he or she should apply either a handwritten signature in 
compliance with 37 CFR 1.4(d)(1) or an S-signature in compliance with 
37 CFR 1.4(d)(2) before scanning the document or converting it to a PDF 
file. Any follow-on documents, such as an amendment filed in an 
application, must also be signed in accordance with 37 CFR 1.33(b). 
Even though a new patent application is entitled to a filing date if it 
complies with all the statutory requirements set forth in 35 U.S.C. 
111(a) or (b), it is noted that when filing a new application by EFS-
Web, a signed transmittal form or a signed application data sheet (ADS) 
is recommended for identification purposes, and any nonpublication 
request and certification that accompany the application must be 
signed.
    A legible electronic image of a handwritten signature inserted, or 
copied and pasted by the person signing the correspondence into an 
application document may be considered to be an acceptable signature. 
The legible image of the handwritten signature of the person signing 
the correspondence must be inserted by the person. Additionally, the 
signature must be 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 is indicated below or adjacent the 
signature as per 37 CFR 1.4(d)(2). The slashes may be inserted into the 
document prior to the insertion of the signature.
    The presentation to the USPTO (whether by signing, filing, 
submitting, or later advocating) of any document constitutes a 
certification under 37 CFR 11.18(b) (or former 37 CFR 10.18(b)). See 37 
CFR 1.4(d)(4).

G. May pre-grant (eighteen-month) publication requests be submitted via 
EFS-Web?

    Yes, EFS-Web enables users to electronically submit pre-grant 
publication requests for amended publication, redacted publication, 
early publication, voluntary publication, or republication under 37 CFR 
1.215, 1.217, 1.219, and 1.221(a) via EFS-Web. When filing pre-grant 
publication requests via EFS-Web, the form-fillable application data 
sheet (PTO/SB/14) is required to be used for fulfilling the 
bibliographic data requirements. An electronic submission for voluntary 
publication, amended publication, republication (37 CFR 1.221(a)) or 
redacted publication must be submitted as a ``Pre-Grant Publication'' 
by selecting the ``Pre-Grant Publication'' radio button on the EFS-Web 
data collection screen. It is not sufficient for a user to submit a 
document via EFS-Web requesting amended publication, redacted 
publication, early publication, voluntary publication, or republication 
without also selecting the ``Pre-Grant Publication'' radio button on 
the EFS-Web data collection screen.

H. May photographs and color drawings be submitted via EFS-Web?

    The USPTO prefers black and white line drawings as prescribed in 37 
CFR 1.84(a)(1) when applicants are required to submit drawings in 
patent applications. As stated in 37 CFR 1.84(a)(2) and (b), 
photographs and color drawings are not ordinarily

[[Page 55208]]

permitted in utility and design patent applications, but the USPTO will 
accept photographs and color drawings in utility or design patent 
applications, if they are the only practicable medium for illustrating 
the claimed subject matter. The photographs and color drawings 
submitted in utility or design patent applications must be of 
sufficient quality such that all details in the photographs and 
drawings are reproducible in black and white in the printed patent.
    Drawings submitted in international applications are required to 
comply with PCT Rule 11.13, which does not permit color drawings. 
Furthermore, there is no provision for photographs. Nevertheless, black 
and white photographs will be accepted where it is impossible to 
present in a drawing what is to be shown (e.g., crystalline 
structures). Color photographs are not permitted in international 
applications.
    The USPTO may object to the drawings and photographs, and require 
corrections or deletions if they do not comply with 37 CFR 1.84 or PCT 
Rule 11.13. Additionally, since color drawings are not permitted in 
international applications, color drawings and color photographs filed 
in a national stage application will be treated as an amendment and 
will be objected to if they introduce new matter.
    Types of Photographs and Drawings Permitted to be Filed via EFS-
Web: Black and white line drawings may be submitted via EFS-Web in the 
types of patent applications and proceedings listed in section B1 of 
this notice. However, photographs, color drawings, grayscale drawings, 
and other drawings that are not black and white line drawings may be 
submitted via EFS-Web in only the following types of applications and 
proceedings:
    1. Nonprovisional design patent applications, including reissue 
design patent applications;
    2. Provisional applications under 35 U.S.C. 111(b);
    3. Nonprovisional utility patent applications under 35 U.S.C. 
111(a), including reissue utility patent applications; and
    4. U.S. national stage applications under 35 U.S.C. 371; and
    5. Reexamination proceedings for utility or design patents.
Only black and white photographs may be submitted via EFS-Web in 
international applications.
    Document Description for Photograph and Drawings: Users must select 
the correct document description when submitting photographs and 
drawings via EFS-Web. Selecting an incorrect document description may 
cause the photographs and drawings to be processed in a quality that is 
not sufficient for examination and publication. Applicant must select:
    1. ``Drawings--only black and white line drawings'' (document code 
``DRW'') for the following:
    a. Black and white line drawings in: (i) Provisional applications 
under 35 U.S.C. 111(b); (ii) nonprovisional utility patent applications 
under 35 U.S.C. 111(a), including reissue utility patent applications; 
(iii) international applications and national stage applications under 
35 U.S.C. 371; and (iv) reexamination proceedings for utility patents. 
These drawings will be converted into TIFF images and stored in IFW.
    b. Black and white line drawings, grayscale drawings, photographs, 
color drawings, and other drawings that are not black and white line 
drawings in design patent applications, including reissue design patent 
applications, and reexamination proceedings for design patents. These 
drawings will be stored in SCORE, and a black and white copy will be 
stored in IFW along with a SCORE placeholder sheet.
    2. ``Drawings--other than black and white line drawings'' (document 
code ``DRW.NONBW'') for the following:
    a. Photographs, color drawings, grayscale drawings, and other 
drawings that are not black and white line drawings in: (i) provisional 
applications under 35 U.S.C. 111(b); (ii) nonprovisional utility patent 
applications under 35 U.S.C. 111(a), including reissue utility patent 
applications; (iii) national stage applications under 35 U.S.C. 371; 
and (iv) reexamination proceedings for utility patents. These drawings 
will be stored in SCORE, and a black and white copy will be stored in 
IFW along with a SCORE placeholder sheet.
    b. Black and white photographs, and grayscale drawings, in 
international applications. These drawings will be stored in SCORE, and 
a black and white copy will be stored in IFW along with a SCORE 
placeholder sheet.
    Other Requirements: For color drawings, a petition filed under 37 
CFR 1.84(a)(2) explaining why the color drawings are necessary is 
required. See MPEP Sec.  608.02. The requirement for three (3) sets of 
color drawings under 37 CFR 1.84(a)(2)(ii) is not applicable to color 
drawings submitted via EFS-Web. Therefore, only one set of such color 
drawings is necessary when filing via EFS-Web.
    EFS-Web supports the use of black and white, color, or grayscale 
images within the PDF document. However, grayscale or color images 
filed as ``drawings--other than black and white line drawings'' in a 
utility patent application will be converted to black and white images 
when stored into IFW. The quality of black and white images may be 
degraded.
    To obtain sufficient quality so that all details in the images are 
reproducible in black and white in the eighteen-month publication and 
the printed patent, images should be scanned at a minimum resolution of 
300 DPI. Furthermore, PAIR is only capable of displaying portrait 
orientation. Users should not submit landscape oriented drawings via 
EFS-Web because PAIR will automatically convert the image to portrait, 
which may cause the images to be distorted during viewing.

I. Text Files and File Limits

    I1. May biotechnology sequence listings, large tables, or computer 
program listing appendices be submitted as text files via EFS-Web? Yes, 
all of these types of documents may be submitted as ASCII text files 
with a ``.txt'' extension (e.g., ``seqlist.txt'') for national 
applications (other than international applications) and reexamination 
proceedings. The compact disc practice of 37 CFR 1.52(e) and 1.821 et 
seq. remains as a filing option. The filing of international 
applications via EFS-Web is discussed in section J of this notice.
    Users may submit the following document types, as specified in 37 
CFR 1.52(e), as ASCII text files via EFS-Web instead of on compact 
disc, provided the specification contains a statement in a separate 
paragraph that incorporates by reference the material in the ASCII text 
file identifying the name of the ASCII text file, the date of creation, 
and the size of the ASCII text file in bytes:
    1. A computer program listing (see 37 CFR 1.96);
    2. A sequence listing (submitted under 37 CFR 1.821); or
    3. Any individual table (see 37 CFR 1.58) if the table is more than 
50 pages in length, or if the total number of pages of all of the 
tables in an application exceeds 100 pages in length, wherein a table 
page is a page printed on paper in conformance with 37 CFR 1.52(b) and 
1.58(c).
    The requirements of 37 CFR 1.52(e)(3)-(6) for documents submitted 
on compact disc are not applicable to computer program listings, 
sequence listings, and tables submitted as ASCII text files via EFS-
Web. However, each text file must be in compliance with ASCII and has a 
file name with a ``.txt'' extension. Further, the specification must 
contain an incorporation-by-reference of the material in the ASCII

[[Page 55209]]

text file in a separate paragraph identifying the name of the ASCII 
text file, the date of creation, and the size of the ASCII text file in 
bytes similar to the requirements of 37 CFR 1.52(e)(5) for compact 
discs.
    It is recommended that a sequence listing be submitted in an ASCII 
text file via EFS-Web rather than in a PDF file. If the sequence 
listing text file submitted via EFS-Web complies with the requirements 
of 37 CFR 1.824(a)(2)-(6) and (b) (i.e., is a compliant sequence 
listing ASCII text file), the text file will serve as both the paper 
copy required by 37 CFR 1.821(c) and the computer readable form (CRF) 
required by 37 CFR 1.821(e). Thus, the following are not required and 
should not be submitted: (1) A second copy of the sequence listing in a 
PDF file; (2) a statement under 37 CFR 1.821(f) (indicating that the 
paper copy and CRF copy of the sequence listing are identical); and (3) 
a request the use of a compliant computer readable ``Sequence Listing'' 
that is already on file for another application pursuant to 37 CFR 
1.821(e). If such a request is filed, the USPTO will not carry out the 
request but will use the sequence listing submitted in an ASCII text 
file with the application via EFS-Web. Checker software that may be 
used to check a sequence listing for compliance with the requirements 
of 37 CFR 1.824 is available on the USPTO web site at http://www.uspto.gov/web/offices/pac/checker/.
    If a user submits a sequence listing (under 37 CFR 1.821(c) and 
(e)) as an ASCII text file via EFS-Web in response to a requirement 
under 37 CFR 1.821(g) or (h), the sequence listing text file must be 
accompanied by a statement that the submission does not include any new 
matter which goes beyond the disclosure of the application as filed. In 
addition, if a user submits an amendment to, or a replacement of, a 
sequence listing (under 37 CFR 1.821(c) and (e)) as an ASCII text file 
via EFS-Web, the sequence listing text file must be accompanied by: (1) 
A statement that the submission does not include any new matter, and 
(2) a statement that indicates support for the amendment in the 
application, as filed. See 37 CFR 1.825.
    Submission of the sequence listing in a PDF file is not recommended 
because applicant would still be required to provide the CRF required 
by 37 CFR 1.821(e) and the sequence listing in the PDF file will not be 
excluded when determining the application size fee. The USPTO prefers 
the submission of a sequence listing in an ASCII text file because as 
stated above, the text file will serve as both the paper copy required 
by 37 CFR 1.821(c) and the CRF required by 37 CFR 1.821(e). Any 
sequence listing in PDF format is treated as the paper copy required by 
37 CFR 1.821(c). If applicant submits a sequence listing in a PDF file 
and a copy of the sequence listing in an ASCII text file, a statement 
that the sequence listing content of the PDF copy and the ASCII text 
file copy are identical is required. In situations where applicant 
files the sequence listing in PDF format and requests the use of the 
CRF of another application under 37 CFR 1.821(e), applicant must submit 
a letter and request in compliance with 37 CFR 1.821(e) and a statement 
that the PDF copy filed in the new application is identical to the CRF 
filed in the other application.
    I2. How are text files counted for application size fee purposes? 
Any sequence listing submitted as an ASCII text file via EFS-Web that 
is otherwise in compliance with 37 CFR 1.52(e) and 1.821(c) or (e), and 
any computer program listing submitted as an ASCII text file via EFS-
Web that is otherwise in compliance with 37 CFR 1.52(e) and 1.96, will 
be excluded when determining the application size fee required by 37 
CFR 1.16(s) or 1.492(j) as per 37 CFR 1.52(f)(1).
    Regarding a table submitted as an ASCII text file via EFS-Web that 
is part of the specification or drawings, each three kilobytes of 
content submitted will be counted as a sheet of paper for purposes of 
determining the application size fee required by 37 CFR 1.16(s) or 
1.492(j). Each table should be submitted as a separate text file. 
Further, the file name for each table should indicate which table is 
contained therein.
    I3. What is the size limit for text files? One hundred (100) 
megabytes is the size limit for sequence listing text files submitted 
via EFS-Web. If a user wishes to submit an electronic copy of a 
sequence listing text file that exceeds 100 megabytes, it is 
recommended that the user file the application without the sequence 
listing using EFS-Web to obtain the application number and confirmation 
number, and then file the sequence listing on compact disc in 
accordance with 37 CFR 1.52(e) on the same day by using Express Mail 
from the USPS in accordance with 37 CFR 1.10, or hand delivery, in 
order to secure the same filing date for all parts of the application. 
Alternatively, a user may submit the application on paper and include 
the electronic copy of the sequence listing text file on compact disc 
in accordance with 37 CFR 1.52(e). Sequence listing text files may not 
be partitioned into multiple files for filing via EFS-Web as the EFS-
Web system is not currently capable of handling such submissions. If 
the sequence listing is filed on a compact disc, the sequence listing 
must be a single document, but the document may be split using software 
designed to divide a file, that is too large to fit on a single compact 
disc, into multiple concatenated files. If the user breaks up a 
sequence listing so that it may be submitted on multiple compact discs, 
the compact discs must be labeled to indicate their order (e.g., ``1 of 
X'', ``2 of X'').
    For all other file types, 25 megabytes is the size limit. If a user 
wishes to submit an electronic copy of a computer program listing or 
table that is larger than 25 megabytes, it is recommended that the 
electronic copy be submitted on compact disc via Express Mail from the 
USPS in accordance with 37 CFR 1.10 on the date of the corresponding 
EFS-Web filing in accordance with 37 CFR 1.52(e) if the user wishes the 
electronic copy to be considered to be part of the application as 
filed. Alternatively, the user may submit the application in paper and 
include the electronic copies on compact disc in accordance with 37 CFR 
1.52(e). Another alternative would be for the user to break up a 
computer program listing or table file that is larger than 25 megabytes 
into multiple files that are no larger than 25 megabytes each and 
submit those smaller files via EFS-Web. If the user chooses to break up 
a large computer program listing or table file so that it may be 
submitted electronically, the file names must indicate their order 
(e.g., ``1 of X'', ``2 of X'').
    I4. What is the limit on the number of electronic files that may be 
included in a single EFS-Web submission? Sixty (60) electronic files is 
the file number limit per submission, as EFS-Web is not currently 
capable of accepting more than 60 electronic files in any one 
submission. Accordingly, if an application file is comprised of more 
than 60 electronic files, it is recommended that the user submit 60 or 
fewer files in an initial filing via EFS-Web at which time the 
application will be assigned an application number. Note that regarding 
the 60 electronic file limit per submission, an applicant may upload 
and validate in sets of up to 20 files each, with a limit of three sets 
of 20 files. If applicant chooses to divide a file into multiple parts 
using the multi-doc feature, each part is counted as one file. Then the 
user may submit any additional electronic files as follow-on documents 
later on the same day as the initial filing. This will allow all of the 
electronic files making up the application to receive the same filing 
date.

[[Page 55210]]

    I5. May Complex Work Units be submitted electronically via EFS-Web? 
Yes, under the Complex Work Unit Pilot Program, complex work units 
(such as chemical structure drawings, mathematical formulae, three-
dimensional protein crystalline structure data and table data) may be 
submitted as ASCII text files via EFS-Web for national applications 
(other than international applications) and reexamination proceedings. 
Complex work units cannot be submitted as ASCII text files in 
international applications. More information is available on the USPTO 
Web site at http://www.uspto.gov/web/patents/cwupilot.html.

J. International Applications and Documents for International 
Applications

    J1. May international applications filed under the PCT with the 
United States Receiving Office be electronically submitted via EFS-Web? 
Yes, EFS-Web enables users to electronically file international 
applications under the PCT with the United States Receiving Office. 
Applicants are advised that EFS-Web may be used to file either: (1) 
International applications in fully electronic form; or (2) follow-on 
papers to previously filed international applications, regardless of 
the manner in which the international application was initially filed. 
The required page size for international applications filed via EFS-Web 
in PDF format is A4 (29.7 cm x 21 cm). See PCT Rule 11.5.
    EFS-Web permits users to submit PCT-EASY.zip files created by PCT-
SAFE when operated in the PCT-EASY mode. A PCT-EASY.zip file will 
contain the Request and fee calculation sheet in PDF format. All other 
documents or application parts (e.g., description, claims, drawings and 
abstract) MUST be separately prepared and attached as PDF documents, 
except for sequence listings. See section J3 of this notice for more 
information on sequence listings. PCT-SAFE permits users to create and 
electronically sign using an S-signature the PCT Request Form and the 
Declaration of Inventorship for the purposes of filing via EFS-Web with 
the United States Receiving Office. PCT-SAFE when operated in the PCT-
EASY mode creates a validated PCT Request which will entitle the 
applicant to a reduction of the international filing fee. If applicant 
chooses not to use PCT-SAFE to create the Request and fee calculation 
sheet, the applicant may use Form PCT/RO/101 (or equivalent) for the 
Request and attach it as a PDF document. More information regarding 
filing international applications is available on the USTPO Web site 
(http://www.uspto.gov/ebc/portal/efs/dct_pct_file_new_tutorial.pdf).
    The term ``international application'' as used in this notice 
refers to an international application filed under the PCT where papers 
have not been submitted to enter the national stage under 35 U.S.C. 
371. The term ``national stage'' as used in this notice refers to an 
international application where papers have been submitted to enter the 
national stage under 35 U.S.C. 371.
    J2. Entry in the U.S. national stage under 35 U.S.C. 371: It is 
recommended that applicants continue to use the Transmittal Letter to 
the United States Designated/Elected Office (DO/EO/US) Concerning a 
Submission Under 35 U.S.C. 371 (Form PTO-1390) when electronically 
filing documents for entry into the U.S. national stage under 35 U.S.C. 
371. The PTO-1390 Form includes useful information that is not 
otherwise collected by EFS-Web at this time.
    If a timely submission to enter the national stage of an 
international application is compliant with the conditions of 35 U.S.C. 
371 and other applicable requirements, Form PCT/DO/EO/903 indicating 
acceptance of the application as a national stage submission under 35 
U.S.C. 371 will be issued in addition to the Filing Receipt. For more 
information on fees associated with international applications entering 
the national stage under 35 U.S.C. 371, see MPEP Sec.  1893.01(c).
    J3. May EFS-Web be used to file international applications 
containing a nucleotide or amino acid sequence listing and/or tables 
related thereto in the United States Receiving Office?
    a. Sequence Listing: Under PCT Rule 5.2(a), the sequence listing 
part must always be presented as a separate part of the description. 
When filing an international application using EFS-Web, the sequence 
listing part of the description should preferably be submitted as a 
single ASCII text file with a ``.txt'' extension (e.g., 
``seqlist.txt''). If the sequence listing part is submitted as an ASCII 
text file, applicant need not submit any additional copies. The ASCII 
text file will serve both as the sequence listing part of the 
description under PCT Rule 5.2 and the electronic form under PCT Rule 
13ter.1(a). Furthermore, the required statement in paragraph 4(v) of 
Annex C that ``the information recorded in the electronic form 
furnished under Rule 13ter is identical to the sequence listing as 
contained in the international application'' is not required. The 
sequence listing in an ASCII text file will not be taken into account 
when calculating the application page count, i.e., no excess page fees 
will be required for the sequence listing in the text file.
    Submission of the sequence listing part in a PDF file is not 
recommended because applicant would still be required to supply a copy 
of the sequence listing in an ASCII text file in accordance with AI 
Annex C, ]40. When a sequence listing is filed in both a PDF file and 
an ASCII text file, the PDF copy of the sequence listing will be 
considered to form part of the application and the ASCII text file will 
be used for search purposes and will be transmitted to the 
International Bureau with the record copy. The pages of the PDF file 
that contain the sequence listing will be taken into account when 
calculating the application page count, i.e., excess page fees may be 
required for the PDF file.
    b. Tables Related to a Sequence Listing: Tables related to a 
sequence listing must be an integral part of the description of the 
international application, and must not be included in the sequence 
listing part. Such table will be taken into account when calculating 
the application page count, and excess page fees may be required. When 
applicant submits tables related to a sequence listing in an 
international application via EFS-Web, the tables must be in a PDF 
file. If applicant submits tables related to a sequence listing in a 
text file, such tables will not be accepted as part of the 
international application. For more information, see Sequence Listings 
and Tables Related Thereto in International Applications Filed in the 
United States Receiving Office, 1344 Off. Gaz. Pat. Office 50 (July 7, 
2009).
    c. File Size and Quantity Limits: One hundred (100) megabytes is 
the size limit for sequence listing text files. Sequence listing text 
files must not be partitioned into multiple files for filing via EFS-
Web as the EFS-Web electronic filing system is not currently capable of 
handling such submissions. For all other file types EFS-Web is 
currently not capable of accepting files that are larger than 25 
megabytes. Additionally, a single EFS-Web submission may include no 
more than 60 electronic files. Note that regarding the 60 electronic 
file limit, an applicant may upload and validate in sets of up to 20 
files each, with a limit of three sets of 20. If applicant chooses to 
divide a file into multiple parts using the multi-doc feature, each 
part is counted as one file. The need to submit unusually large 
sequence listings and/or numerous electronic files may prevent 
applicant from making a complete international application filing in a 
single EFS-Web

[[Page 55211]]

submission. Applicant may use EFS-Web to file part of the international 
application and to obtain the international application number and the 
confirmation number, and then file the remainder of the international 
application on the same day as one or more follow-on submissions using 
EFS-Web, in order to secure the same filing date for all parts of the 
international application. However, applicant is not permitted to file 
part of the international application electronically via EFS-Web, and 
then file the remainder of the international application on paper to 
secure a filing date of all parts of the international application.
    In the situation where applicant needs to file a sequence listing 
that is over one hundred megabytes, applicant may use EFS-Web to file 
the international application without the sequence listing to obtain 
the international application number and the confirmation number, and 
then file the sequence listing on compact discs on the same day by 
using Express Mail from the USPS in accordance with 37 CFR 1.10, or 
hand delivery, in order to secure the same filing date for all parts of 
the international application. However, USPS Express Mail and hand-
carried submissions may not contain PDF files and must fully comply 
with the guidelines for filing a sequence listing on electronic media 
as set forth in MPEP Sec.  1823.02, except that only one copy of the 
sequence listing is required, and applicant need not make any reference 
to AI Part 8 or AI Sec.  801. The sequence listing must be a single 
document, but the document may be split using software designed to 
divide a file, that is too large to fit on a single compact disc, into 
multiple concatenated files. If the user breaks up a sequence listing 
into multiple concatenated files so that it may be submitted on 
multiple compact discs, the compact discs must be labeled to indicate 
their order (e.g., ``1 of X'', ``2 of X'').
    d. Fee Determination for International Applications Containing a 
Sequence Listing: The calculation of the international filing fee for 
an international application, including a sequence listing, filed via 
EFS-Web is determined based on the type of sequence listing file. A 
sequence listing filed in an ASCII text file will not be included in 
the page count of the international application. A sequence listing 
filed in a PDF file will be included in the page count of the 
international application. Therefore, the page count for an EFS-Web 
filed application containing both a PDF and text format sequence 
listing will be determined by the number of pages of the PDF sequence 
listing.
    J4. Follow-on Submissions for International Applications: As noted 
above, a sequence listing in an ASCII text file, as well as additional 
PDF files, may be submitted in one or more follow-on submissions, via 
EFS-Web. Such follow-on submissions will form part of the international 
application if filed on the same date on which the international 
application was filed. Note that follow-on submissions of PDF files 
(including, but not limited to, PDF sequence listings) may change the 
number of pages in the international application and therefore may 
affect the international filing fee.
    EFS-Web may also be used to submit a sequence listing in an ASCII 
text file after the international filing date in response to a 
requirement under 37 CFR 1.821(h) and PCT Rule 13ter. Such sequence 
listing will not form part of the international application as set 
forth in PCT Rule 13ter.1(e).
    J5. Policy of Annex F of the PCT Administrative Instructions: EFS-
Web employs a Web-based approach to document submission which is 
different from the Annex F ``wrapped, bundled and signed package'' 
approach. Thus EFS-Web does not meet Annex F requirements. See Annex F 
of the PCT Administrative Instructions located at [http://www.wipo.int/pct/en/texts/].

    Dated: October 21, 2009.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. E9-25785 Filed 10-26-09; 8:45 am]
BILLING CODE 3510-16-P