New USPTO Rules on Electronic Signatures, Form Modification, and Certificates of Transmission

For any paper, application, or reexamination proceeding filed in the Office on or after January 23, 2007, the United States Patent and Trademark Office (Office) is amending the rules of practice to support implementation of the Office’s electronic filing system (EFS) for patent correspondence, and in particular, the Web-based electronic filing system (EFS-Web).

Specifically, the changes in this final rule: (1) Provide patent users with a process for showing that certain national stage correspondence submitted via EFS-Web was actually received by the Office by relying on the acknowledgment receipt; and (2) create a new certificate of EFS-Web transmission, which will allow the Office to treat certain correspondence as received (for timeliness purposes) as of the date submitted by applicant rather than the date received by the Office if the correspondence is filed by EFS-Web.

Under EFS-Web, correspondence is accorded a ‘‘receipt date’’ that is the date the correspondence is received (Eastern Time) at the Office’s correspondence address set forth in § 1.1 (e.g., Alexandria, Virginia) when it was officially submitted. The ‘‘receipt date’’ is recorded on an acknowledgment receipt, which is automatically sent to the person filing the correspondence after the correspondence is officially submitted. Under EFS-Web, the acknowledgment receipt contains a full listing of the correspondence submitted, including the count of pages and/or byte size for each piece of correspondence in the submission. Accordingly, the acknowledgment receipt is a legal equivalent of a post card receipt described in the Manual of Patent Examining Procedure (MPEP), Section
503. For the filing of applications, the official filing date will continue to be stated on the filing receipt under § 1.54(b), which is sent to applicants after the submitted application parts are reviewed for compliance with the filing date requirements.

Section 1.4 on "Nature of correspondence and signature requirements" is being amended to formally allow "S-signatures" and modification of Office forms if all USPTO idenfitying information has been removed:

(d)(2) . . .

An S-signature is a signature inserted between forward slash marks, but not a handwritten signature as defined by § 1.4(d)(1). An S-signature includes any signature made by electronic or mechanical means, and any other mode of making or applying a signature not covered by a handwritten signature of § 1.4(d)(1). Correspondence being filed in the Office in paper, by facsimile transmission as provided in § 1.6(d), or via the Office electronic filing system as an attachment as provided in § 1.6(a)(4), for a patent application, patent, or a reexamination proceeding may be S-signature signed instead of being personally signed (i.e., with a handwritten signature) as provided for in paragraph (d)(1) of this section. The requirements for an S-signature under this paragraph (d)(2) of this section are as follows.

(3) Forms. . . .

No changes to certification statements on the Office forms (e.g., oath or declaration forms, terminal disclaimer forms, petition forms, and nonpublication request form) may be made. The existing text of a form, other than a certification statement, may be modified, deleted, or added to, if all text identifying the form as an Office form is removed. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any Office form with text identifying the form as an Office form by a party, whether a practitioner or non-practitioner, constitutes a certification under § 10.18(b) of this chapter that the existing text and any certification statements on the form have not been altered other than permitted by EFS-Web customization.

(4) * * *
(ii) Certifications as to the signature:
(A) Of another: A person submitting a document signed by another under paragraph (d)(2) of this section is obligated to have a reasonable basis to believe that the person whose signature is present on the document was actually inserted by that person, and should retain evidence of authenticity of the signature.
(B) Self certification: The person inserting a signature under paragraph (d)(2) of this section in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature.

Section 1.6(g) has been added to provide a new procedure for establishing that national stage correspondence, national stage filings, or follow-on correspondence required by § 1.495(b), which had been submitted via EFS was, in fact, received by the Office in the event that the Office has no evidence of receipt. Where the international application was filed with the United States Receiving Office as the competent receiving Office, the copy of the international application referred to in § 1.495(b) is not required. Payment of the basic national fee will indicate applicant’s intention to enter the national stage and will provide a U.S. correspondence address in most instances. Applicants cannot pay the basic national fee with a surcharge after the thirty-month deadline. Failure to pay the basic national fee within thirty months from the priority date will result in abandonment of the application. The time for payment of the basic fee is not extendable.

Section 1.8(a)(1)(i) is being amended by adding new paragraph (C) to permit certain correspondence, excluding correspondence not entitled to a certificate of mailing or transmission or not permitted to be electronically transmitted, to be treated as being timely received on the local date at the location where submitted if filed with a certificate of transmission via the EFS-Web.

Users should place the certificate of transmission on the correspondence (e.g., transmittal letter) submitted under EFS-Web in a similar manner as they would for correspondence submitted by facsimile transmission. For EFS-Web submissions, applicants are encouraged to use the acknowledgment receipt generated by EFS-Web, if available, as part of the evidence to support the statement required by § 1.8(b)(3).