502.05 Correspondence Transmitted by EFS-Web
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I. LEGAL FRAMEWORK FOR EFS-WEB
The information in this MPEP section parallels the organizational structure of the April 2011 Legal Framework for EFS-Web
A. General Information on EFS-Web
Users may electronically submit most patent applications, applications for international registration of industrial designs, reexamination requests, supplemental examination requests, and other patent-related documents securely using EFS-Web.
- Users may also use EFS-Web to submit Web-based documents such as ePetitions and eTerminal Disclaimers that can be filled out completely online through Web-based screens.
- 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.
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 Non-registered Users
EFS-Web permits registered users (who have a PKI digital certificate) and non-registered users to file the following applications, requests for reexamination, and documents:
- Provisional patent applications.
- Nonprovisional utility patent applications.
- Nonprovisional design patent applications.
- International applications filed under the PCT in the United States Receiving Office.
- Submissions to enter the national stage.
- International design applications filed under the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Design.
- Requests for ex parte reexamination for utility or design patents.
- Requests for supplemental examination for utility, design, or plant patents.
- Third-Party Preissuance Submissions for utility, design, or plant patent applications.
- Citation of prior art and written statements in patent files for utility applications
- Petitions to make special based on age.
- Petitions to accept an unintentionally delayed payment of maintenance fee, and payments of maintenance fees when submitted with the petition.
- Petition to make special under accelerated examination program (must be filed with a nonprovisional utility patent).
- Reissue utility patent applications and reissue design patent applications.
b. Filing of Follow-on Documents
Registered users are permitted to file follow-on documents in their applications, reexamination proceedings and supplemental examination proceedings as listed above via EFS-Web.
Registered users are not permitted to file follow-on documents in applications, reexamination proceedings and supplemental examination proceedings where they are not of record or acting in a representative capacity.
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
- requests for continued examination (RCEs)
- continued prosecution applications in design applications (CPAs)
- evidence
- petitions
- terminal disclaimers
Follow-on documents also include any documents submitted on the same day as the application, but after the initial submission.
Non-registered users are not permitted to file follow-on documents via EFS-Web, except those listed in items 9-12 above which includes the following:
- Third-Party Preissuance Submissions for utility, design, or plant patent applications.
- Citation of prior art and written statements in patent files for utility applications
- Petitions to make special based on age.
- Petitions to accept an unintentionally delayed payment of maintenance fee, and payments of maintenance fees when submitted with the petition.
Non-registered users may file follow-on documents by mail (with a certificate of mailing), Priority Mail Express® from USPS, or hand delivery.
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:
- Plant patent applications and follow-on documents associated with plant patent applications, other than third party preissuance submissions.
- Requests for Reexamination for plant patents and documents associated with reexamination proceedings for plant patents.
- Requests for inter partes review.
- Any third party inquiries, petitions or papers unless specifically authorized by the EFS-Web Legal Framework (e.g., citation of prior art and written statements in patent files) and/or provided for via dedicated EFS-Web interface (e.g., Third Party Preissuance Submissions) is improper. Some examples of third party papers include inquiries into the timing of future actions on an application, disputes over inventorship in an application, and demands that the Office withdraw an application from issue on the basis of unpatentability of a claim.
- Color drawings and color photographs for international applications that have not entered the national stage.
- Initial submissions for patent term extension.
- Correspondence concerning registration practice.
- Certified documents.
- Correspondence to be filed in an application subject to a secrecy order.
- Documents filed in contested cases and trials before the Patent Trial and Appeal Board (PTAB), except as the PTAB may expressly authorize.
- Documents filed in contested cases and trials before the PTAB.
- Correspondence filed in connection with a disciplinary proceeding.
- Maintenance fees submitted that are not submitted with a petition. Patent owners may pay electronically using the proper methods for submitting maintenance fees.
- Assignment documents, which may be electronically filed using the Electronic Assignment System (EPAS) or the Electronic Trademark Assignment System (ETAS).
- Submissions that are not associated with a patent application, international design application, reexamination proceeding, or supplemental examination 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 on the document.
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.
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).
Only a PKI certificate holder (or the designated employee under the certificate holder’s direction and control) can submit follow-on documents.
1. PKI Subscriber Agreement
The PKI Subscriber Agreement (April 2013) explains that a holder of a PKI certificate must update changes in the information in their Certificate of Action Form within thirty (30) calendar days of the change.
2. Authorized Assistants of the Digital Certificate Holder
A PKI digital certificate holder is permitted to designate more than one employee of the holder’s organization (or a contractor’s organization), under the PKI Subscriber Agreement and certificate action form.
F. Signature Policy
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 in 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 as provided
G. Submission of Pre-Grant (Eighteen-Month) Publication Requests Via EFS-Web
EFS-Web enables 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 the electronic filing system (EFS-Web).
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 eFilers may submit a third-party preissuance submission in 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 under 35 U.S.C. 111(a), except for plant patent applications and design applications, and
- (ii) national stage applications.
K. Submission of Photographs and Drawings via EFS-Web
The USPTO prefers black and white line drawings:
- Color drawings are permitted in design applications.
- Color drawings and photographs are not ordinarily permitted in utility patent applications, but the USPTO will accept photographs in utility or design patent applications, or color drawings in utility patent applications, if they are the only practicable medium for illustrating the claimed subject matter.
- Color photographs and color drawings are not permitted in PCT international applications.
- Color drawings and photographs (in black and white or in color) may be submitted in international design applications as provided under the Hague Agreement.
1. Types of Photographs and Drawings Permitted to be Filed via EFS-Web
Black and white line drawings may be submitted via EFS-Web.
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:
- Nonprovisional design patent applications, including reissue design patent applications;
- Provisional applications;
- Nonprovisional utility patent applications, including reissue utility patent applications;
- U.S. national stage applications, including reissue utility patent applications;
- International design applications;
- Reexamination proceedings for utility or design patents; and
- Supplemental examination proceedings.
Only black and white photographs, and black and white line drawings, may be submitted via EFS-Web in PCT international applications.
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 eFilers 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 efilers may file follow-on submissions via EFS-Web in international design applications.
