502.05 Correspondence Transmitted by EFS-Web
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I. LEGAL FRAMEWORK FOR PATENT ELECTRONIC SYSTEM
The October 2019 version of the Legal Framework for EFS-Web is posted on the USPTO website.
A. General Information on the Patent Electronic System
The Patent Electronic System currently comprises EFS-Web, which is the USPTO’s web-based system for electronic filing of patent correspondence; and PAIR, which is the USPTO’s web-based means for electronically viewing the status of, and documents filed in or associated with, patent applications and proceedings.
B. Legal and Document Policies
1. Types of Patent Applications and Documents Permitted to be Filed via EFS-Web.
(a) Filings Permitted by Registered and Unregistered Users
EFS-Web permits registered users (see section E) and unregistered users to file the following applications, requests for reexamination, and documents:
- (1) Provisional patent applications filed.
- (2) Nonprovisional utility patent applications filed, which can include other papers such as Track One requests or accelerated examination requests on initial filing.
- (3) Nonprovisional design patent applications filed.
- (4) International applications filed under the PCT in the United States Receiving Office.
- (5) Submissions to enter the national stage.
- (6) International design applications filed under the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs.
- (7) Requests for ex parte reexamination for utility or design patents, as a new submission (i.e., not in the patent file).
- (8) Requests for supplemental examination for utility, design, or plant patents, as a new submission (i.e., not in the patent file).
- (9) Third-Party Preissuance Submissions for utility, design, or plant patent applications using a dedicated EFS-Web interface, where the information is not directly placed into the patent file. See section I.
- (10) Citation of prior art and written statements in patent files for utility applications using a dedicated EFS-Web interface where the information is not directly placed into the patent file. See section I.
- (11) Petitions to make special based on age.
- (12) Petitions to accept an unintentionally delayed payment of a maintenance fee, and payments of maintenance fees when submitted with the petition.
- (13) Reissue utility patent applications and reissue design patent applications.
(b) Filing of Documents after the Initial Submission of the Application
Registered users have the capability to file follow-on documents, via EFS-Web.
- No user, whether registered or unregistered, is permitted to file documents in applications, reexamination proceedings or supplemental examination proceedings in which they are not authorized.
Follow-on documents are any documents filed after the initial submission of the application, request for reexamination, or request for supplemental examination.
- Follow-on documents include, but are not limited to, the following: amendments, information disclosure statements (IDS), replies to Office actions and notices, evidence, petitions, and terminal disclaimers.
- Follow-on documents also include any documents submitted on the same day as the application, but after the initial submission.
Amendments and other papers filed in an application must be signed.
2. 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 and follow-on documents associated with plant patent applications, other than third party preissuance submissions, which may be submitted via a dedicated EFS-Web interface wherein the information is not directly placed into the application file.
- (2) Requests for Reexamination for plant patents and documents associated with reexamination proceedings for plant patents.
- (3) Third party inquiries, petitions or papers, unless specifically authorized by this Legal Framework and filed in the manner required by the EFS-Web interface. See B1 discussed previously. For example, a third party may file a citation of prior art and written statements in patent files or a Third Party Preissuance Submission via a dedicated EFS-Web interface; however, the filer must select the appropriate option identifying the type of submission or the submission will be improper.
- Note further that EFS-Web may not be used by third parties to file papers that have no right to entry in an application or proceeding under USPTO rules and procedures. For example, a third party is prohibited from filing a demand that the Office withdraw an application from issue on the basis of unpatentability of a claim, and may not attempt to use the Patent Electronic System to evade this prohibition.
- (4) Initial submissions for patent term extension.
- (5) Correspondence concerning registration to practice.
- (6) Certified documents.
- (7) Certified copies of priority documents. An example of such a submission is a certified copy of a foreign patent application or a certified copy of an international application.
- (8) Correspondence to be filed in an application subject to a secrecy order
- (9) Documents filed in contested cases and trials before the Patent Trial and Appeal Board (PTAB), except as the PTAB may expressly authorize.
- (10) Documents filed in contested cases and trials before the PTAB which are governed by 37 CFR part 41, subpart D and part 42, respectively. For example, petitions for inter partes review, post grant review, covered business method patent review, and derivation proceedings cannot be filed via EFS-Web, but instead are filed electronically via the USPTO Patent Trial and Appeal Board End to End System.
- (11) Correspondence filed in connection with a disciplinary proceeding under 37 CFR part 11.
- (12) Maintenance fees submitted that are not submitted with a petition. Patent owners may pay electronically using the Patent Maintenance Fees Storefront.
- (13) Assignment documents, which may be electronically filed using the Electronic Patent Assignment System (EPAS).
- (14) Submissions that are not associated with a patent, patent application, international design application, reexamination proceeding, or supplemental examination proceeding.
- (15) Notices of appeal to a court, district court complaints, or other complaints or lawsuits involving the USPTO.
3. Types of Papers That May Be Filed and Processed Electronically
Registered users may use EFS-Web to submit web-based documents such as ePetitions, Requests for Withdrawal as Attorney or Agent of Record, and eTerminal Disclaimers.
EFS-Web permits registered users to file the following auto-processed ePetitions, requests, and eTerminal Disclaimers:
- 1. Request for withdrawal as attorney or agent;
- 2. Petition to withdraw an application from issue, with some restrictions;
- 3. Petition for revival of an application, with some restrictions;
- 4. eTerminal Disclaimers for nonprovisional utility applications; and
- 5. Petition to correct assignee after payment of Issue Fee.
EFS-Web permits registered and unregistered users to file the following auto-processed ePetitions:
- 1. Petition to make special based on age; and
- 2. Petition to accept unintentionally delayed payment of the maintenance fee.
4. The Official Record of Documents Submitted via EFS-Web
The official record for the patent application, international design application, reexamination proceeding, or supplemental examination proceeding comprises:
- (1) ASCII text documents and drawings stored in SCORE as previously set forth;
- (2) TIFF images of all other original documents as stored in IFW;
- (3) 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 interfaces; and
- (4) TIFF images stored in IFW in international design applications generated from XML data received from the International Bureau.
5. Treatment of Internally Inconsistent Information Submitted via EFS-Web
When filing a new application via EFS-Web, EFS-Web requires the input of certain application data.
- This includes the type of application being filed (e.g., nonprovisional application, U.S. national stage application, international application (PCT) or international design application), the title of the application (unless the application is an international design application), the name of an inventor or applicant, and a correspondence address. In addition, other application data, such as a docket number, may be provided.
6. Determination of the Paper Size Equivalent for Applications Filed via EFS-Web for Application Size Fee Purposes
The paper size equivalency for EFS-Web filings does not apply to the application size fee for national stage submissions.
7. Submission of Fee Payments via EFS-Web
Both unregistered and registered users may submit the filing fees (e.g., the basic filing fee, search fee, examination fee, and excess claims fee) using the online fee payment in EFS-Web at the time of filing a patent application, request for reexamination, or request for supplemental examination, and may submit fees for third party preissuance submissions.
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 that require a fee for auto-processing by EFS-Web;
- (2) Pre-grant publication submissions that require a fee;
- (3) Third-party preissuance submissions that require a fee; and
- (4) Web-based Issue Fee Payment.
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.
1. The Date of Receipt of a Follow-on Document Received by the USPTO Through EFS-Web
Follow-on documents filed in an 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.
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 also be considered as being timely filed if the follow-on document is submitted in compliance:
- (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.
2. The Date of Receipt of an Application Submitted via EFS-Web
The time and date of receipt of an application filed via EFS-Web is the local time and date in USPTO headquarters in Alexandria, Virginia.
- Accordingly, the date of receipt of an application officially submitted through EFS-Web will be the date in the Eastern 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 Time zone date that the documents are fully, successfully, and officially received at the USPTO, after the user clicks the SUBMIT button on the Confirm and Submit screen.
3. Hours of Operation for Filing via EFS-Web
4. Filing New Applications During an Unscheduled Outage of the Primary Portal to EFS-Web
(a) Proper Submissions Under EFS-Web Contingency Option
Specifically, EFS-Web Contingency Option only permits users to electronically file the following items:
- (1) Provisional patent applications;
- (2) Nonprovisional utility patent applications;
- (3) Nonprovisional design patent applications;
- (4) International applications filed under the PCT in the United States Receiving Office;
- (5) Submissions to enter the national stage;
- (6) International design applications filed under the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs;
- (7) Requests for ex parte reexamination for utility or design patents;
- (8) Requests for supplemental examination for utility, design, or plant patents;
- (9) Petitions to make special based on age when filed as an ePetition;
- (10) Petitions to accept an unintentionally delayed payment of maintenance fee when filed as an ePetition, for the automatic processing of the ePetition;
- (11) Petition to make special under the accelerated examination program (must be filed with a nonprovisional utility patent application under;
- (12) Reissue utility patent applications and reissue design patent applications;
- (13) Third-Party Preissuance Submissions for utility, design, or plant patent applications using a dedicated EFS-Web interface wherein the information is not directly placed into the application; and
- (14) Citation of prior art and written statements in patent files for utility applications using a dedicated EFS-Web interface, where the information is not directly placed into the patent file.
(b) Improperly Filed Follow-on Documents
(c) Additional Information Regarding National Stage Submissions
The basic national fee is required in order for an international application to enter the national stage.
5. Inadvertent Omission of Documents Filed in a New Application via EFS-Web
The following examples describe implications raised when applicant inadvertently omits an item when filing an application under 35 U.S.C. 111 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 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 a surcharge for filing the filing fees will not be required.
- (3) Nonpublication request - Because 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 and the fee 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 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. 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.
- (6) Part of the specification - Applicant may file any 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.
6. Legal Consequences of the USPTO’s Accepting Electronic Patent Applications on Saturday, Sunday, and Holidays
Applicants may file patent applications electronically during the hours of operation of EFS-Web every day of the week, including weekends and holidays.
D. Proper Usage of EFS-Web
1. Filing Documents as PDF Files via EFS-Web
2. Entering Information on EFS-Web Interfaces
(a) Filing a New Application
When a user is submitting a new application via EFS-Web, the user is required to select the application type (e.g., design, utility, provisional or nonprovisional) being filed on the EFS-Web interface.
(b) 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, control number or proceeding number, and confirmation number of the application in which the follow-on document is being filed.
(c) Document Indexing
When a user submits an application or a follow-on document in an application using EFS-Web, the user must select from the list of document descriptions to specify the files being submitted via EFS-Web.
3. Refunds for Fees Paid via EFS-Web Due to System Malfunction
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.
E. Security and Authentication
As the USPTO transitions its Patent Electronic System from EFS-Web and PAIR to Patent Center, changes have been made to the protocols for accessing EFS-Web and PAIR.
PKI certificates are no longer being used, and have been replaced with a new authentication and log-in method for EFS-Web and PAIR to comply with the latest Federal Information Security Management Act (FISMA) requirements.
- The new authentication and log-in method is a two-step authentication paradigm requiring each individual registered user of EFS-Web or PAIR to have a unique USPTO.gov account. Users of Financial Manager may already have a USPTO.gov account.
1. PKI Certificates Have Been Discontinued
PKI certificates were usable through July 2, 2019.
2. Persons Who May Access the Patent Electronic System
3. Authorization to File Documents, Access Information, and Pay Fees Through the Patent Electronic System
Registered users are permitted to access and file via EFS-WEb follow-on documents in applications in which they are acting on behalf of the applicant, and in reexamination and supplemental examination proceedings in which they are acting on behalf of the owner.
4. Filing Documents Without a Patent Electronic System Account as an Unregistered User
Users that do not have, or do not wish to use, a Patent Electronic System Account to authenticate to the USPTO, may submit new application filings via a non-authenticated workflow as an unregistered user.
- The user would go to the EFS-Web page and choose to submit without a Patent Electronic System Account as an unregistered user, which would generate a TLS connection for the session, thus allowing secure data transmission to the USPTO.
5. Patent Electronic System Subscriber Agreement
The Patent Electronic System subscriber agreement (November 2018) explains that a holder of a Patent Electronic System account must update changes in the information in their Patent Electronic System Verification Form (Verification Form) within thirty (30) calendar days of the change.
F. Signatures
Signatures included in image attachments submitted via EFS-Web are governed by the requirements of 37 CFR 1.4(d).
- If the signer is submitting an application through EFS-Web as PDF files, he or she may apply either a handwritten signature or an S-signature before scanning the document or converting it to a PDF file.
- Alternatively, correspondence submitted through EFS-Web may be signed by a graphic representation of a handwritten signature or a graphic representation of an S-signature.
G. Submission of Pre-Grant (Eighteen-Month) Publication Requests via EFS-Web
EFS-Web enables registered users to electronically submit pre-grant publication requests for amended publication, redacted publication, early publication, voluntary publication, or republication via EFS-Web.
H. Submission of Supplemental Examination Requests via EFS-Web
Patent owners may submit a request for supplemental examination via EFS-Web. When filing a new request for supplemental examination, the patent owner should select the filing option "New application/proceeding," and then select "Supplemental Examination."
Any paper(s) that are to be filed in an existing supplemental examination proceeding, and any paper(s) that are to be filed in a reexamination proceeding ordered as a result of a supplemental examination proceeding, may be filed by:
- (1) selecting "Existing application/patent/proceeding" (e.g., a proceeding that has already been assigned a control number);
- (2) selecting "Documents/Fees for an existing application/proceeding"; and (3) entering the assigned control number and confirmation number for the proceeding.
I. Filing of Third Party Preissuance Submissions and Citation of Prior Art and Written Statements in Patent Files Filed via EFS-Web
Registered and unregistered users may submit a third-party preissuance submission for any non-provisional utility, design, or plant application, including any continuing application.
- The application may be pending or abandoned and need not be published.
J. Submission of Interim Copies of Foreign Priority Documents via EFS-Web
Interim copies of foreign priority documents may be submitted via EFS-Web in
- (i) applications filed, except for plant patent applications and design applications, and
- (ii) national stage applications.
K. Submission of Photographs and Drawings via EFS-Web
When applicants are required to submit drawings in patent applications, black and white line drawings as prescribed in 37 CFR 1.84(a)(1) are required except as follows.
1. Types of Photographs and Drawings Permitted to be Filed via EFS-Web
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;
- (3) Nonprovisional utility patent applications, including reissue utility patent applications;
- (4) U.S. national stage applications;
- (5) International design applications;
- (6) Reexamination proceedings for utility or design patents;
- (7) Supplemental examination proceedings.
2. How Text Files are Counted for Application Size Fee Purposes
3. Additional Requirements
For color drawings in utility patent applications, a petition filed under 37 CFR 1.84(a)(2) explaining why the color drawings are necessary is required.
L. Text Files, JPEG Files and File Limits
1. Biotechnology Sequence Listings, Large Tables, or Computer Program Listing Appendices Submitted as Text Files via EFS-Web
Users may submit the following document types, 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;
- (2) A sequence listing; or
- (3) Any individual table, 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. A table page is a page printed on paper in conformance with 37 CFR 1.52(b) and 1.58(c).
2. How Text Files are Counted for Application Size Fee Purposes
3. The size limit for text files and JPEG files
One hundred (100) megabytes is the size limit for sequence listing text files submitted via EFS-Web.
4. The Limit on the Number of Electronic Files That May Be Included in a Single EFS-Web Submission
The file number limit per submission is sixty (60) electronic files, as EFS-Web is not currently capable of accepting more than 60 electronic files in any one submission.
5. Complex Work Units may be Submitted Electronically via EFS-Web
M. New International Applications (PCT), New National Stage Submissions, and Associated Documents
1. New International Applications (PCT) Filed Under the PCT With the United States Receiving Office
2. Specific Requirements for Drawings or Photographs
(a) International Application (PCT)
Drawings submitted in international applications (PCT) are required to comply with PCT Rule 11.13, which does not permit color drawings.
(b) National Stage Submission
Since color drawings and color photographs are not permitted in international applications (PCT)), color drawings and color photographs filed in a national stage application will be treated as an amendment and will not be entered if they introduce new matter.
N. International Design Applications and Associated Documents
1. New International Design Applications Filed Through the USPTO as an Office of Indirect Filing
EFS-Web enables registered and unregistered users to electronically file new international design applications through the USPTO as an office of indirect filing.
(a) Official form (Form DM/1)
Applicants filing international design applications through the USPTO are required to present the international design application on the official form established by the International Bureau (i.e., Form DM/1, entitled "Application for International Registration") or on any form having the same form and content as the official form.
(b) Reproductions
Reproductions of industrial designs are required in international design applications and may be submitted as drawings, photographs, or a combination thereof, and may be in black and white or in color.
(c) Annexes
An international design application may be accompanied by annexes submitted for the purpose of complying with certain national law requirements that may be applicable to a designated Contracting Party, for example, the requirement for an inventor’s oath or declaration where the United States is designated.
2. International Design Application Fees Required by or Payable Through the USPTO as an Office of Indirect Filing
(a) Transmittal fee:
International design applications filed through the USPTO as an office of indirect filing are subject to payment of a transmittal fee.
(b) International fees payable to WIPO
Certain international design application fees payable to the International Bureau may be paid through the USPTO as an office of indirect filing, provided such fees are paid no later than the date of payment of the transmittal fee.3. Follow-on Submissions in International Design Applications
In accordance with the requirements of this framework, only registered users may file follow-on submissions via EFS-Web in international design applications.
