Mitigation of Delays in Mail Deliveries to the USPTO

The United States Patent and Trademark Office (USPTO) since October 21, 2001, has been experiencing an interruption in delivery of United States Mail sent to our 20231 zip code. The USPTO has received very little correspondence sent to the 20231 zip code in the past few weeks. In view of these circumstances, if USPTO begins to receive this mail in large batches, it may create internal processing delays. These delays may remain in effect until the USPTO is able to eliminate any backlogs which have been created.

For time sensitive correspondence (e.g., after final amendments) that were mailed during the last few weeks, it may be desirable to contact the examiner or TC Customer Service Center to determine whether the paper has been received and whether alternative delivery options (e.g., facsimile) should be considered. Under such circumstances, the normal guidance against duplicate papers is not applicable.

The USPTO has been advised by he United States Postal Service (USPS) that outgoing USPTO correspondence has not been delayed. Nevertheless, the provisions of MPEP 710.06 apply in the event that a party experiences delay in receiving USPTO patent correspondence.

Except as provided in 37 CFR 1.8 and 1.10, mail sent through the USPS will be given the date it is received by the USPTO as its receipt date. Therefore, parties may, particularly in this regard, wish to consider availing themselves of those rules for filing documents and of permissible delivery methods other than mail delivery. If a party files correspondence in accordance with the provisions of 37 CFR 1.8 or 1.10, that correspondence will be considered timely under 37 CFR 1.8 (in situations in which 37 CFR 1.8 is applicable) or filed in the USPTO on the "date-in" indicated on the Express Mail mailing label (in situations in which 37 CFR 1.10 is applicable, such as the filing of new patent or trademark applications), regardless of any USPS delay in ultimately delivering the correspondence to the USPTO and any consequent delay by the USPTO in treating the correspondence (e.g., issuing a Filing Receipt for new applications).

The USPTO provides, as alternatives to the submission of correspondence by mail, for the following options: facsimile transmission, hand delivery, and electronic submission over the Internet. Applicants are reminded that not all types of correspondence may be submitted with each of these other permissible delivery methods.

This notice will provide an overview of 37 CFR 1.8 and 1.10, describe each of these permissible delivery methods including what types of correspondence may be delivered by each delivery method, and explain what may not be delivered by each delivery method and some of the associated problems with each method (if any).

Express Mail

As authorized by 35 U.S.C. § 21(a), 37 CFR 1.10 permits the USPTO to treat correspondence delivered by the "Express Mail Post Office to Addressee" service of the USPS as being filed in the USPTO on the date of deposit with the USPS as shown by the "date in" on the "Express Mail" mailing label. Use of this procedure can, therefore, obviate risks of delay in postal delivery. Those utilizing the procedure under 37 CFR 1.10 are encouraged to inspect the mailing label receipt to ensure that the "date in" portion of the mailing label is accurate and legible. This procedure is particularly useful for the filing of national and international patent and trademark applications and for the filing of any paper for an application subject to the Patent Term Adjustment (PTA) provisions of the American Inventors Protection Act of 1999 (plant or utility patent application filed on or after May 29, 2000).

>>See notice below regarding changes in procedures for filing trademark documents by Express Mail.

First Class Mail

37 CFR 1.8 permits applicants to certify that papers were mailed to the USPTO by first class mail on a particular date. The certificate of mailing procedure does not apply to filing of U.S. national and international patent applications, certain correspondence in interference cases and the filing of some correspondence related to international patent applications. See 37 CFR 1.8(a)(2). The certificate of mailing procedure also does not apply to papers mailed in a foreign country. All documents related to trademark applications and registrations, except the trademark application, can be filed using the procedures in 37 C.F.R. 1.8. By utilizing the procedure set forth in 37 CFR 1.8, any correspondence required to be filed in the USPTO within a set time period, e.g., a reply to an Office action, would be considered as being timely filed if the document mailing complies with 37 CFR 1.8 and is mailed prior to expiration of the time period set by the USPTO. The date of actual receipt of the document is used for all other purposes. This procedure is particularly useful when replying to a notice or Office action related to a patent application. In patent applications subject to PTA, applicants are cautioned that the date of actual receipt and not the certificate of mailing date is used to determine both positive and negative adjustments. See 37 CFR 1.8(a) and 1.703(f). For a certificate of mailing form, see PTO/SB92 posted at http://www.uspto.gov/web/forms/index.html.

Facsimile Transmission

37 CFR 1.6(d) specifies the types of correspondence which may be transmitted by facsimile. These include continued prosecution applications (CPAs) filed under 37 CFR 1.53(d), amendments, declarations, petitions, and authorizations to charge deposit account. Situations where transmission by facsimile are prohibited are identified in 37 CFR 1.6(d)(1) - (9). Papers filed by facsimile are considered received by the USPTO on the date a complete transmission is received by the USPTO, except where the complete transmission is received on a Saturday, Sunday or Federal holiday within the District of Columbia, in which case the correspondence is considered received on the next business day. For a list of facsimile numbers to submit replies to patent-related Office actions listed by (Patent) Technology Center, see http://www.uspto.gov/september11/faxnotice.htm. The filing of (non-CPA) patent applications is not, currently, permitted by facsimile. Since the receipt date of the correspondence is the date the complete transmission is received in the USPTO, applicants are cautioned to allow sufficient time to complete the transmission (measured as of U.S. Eastern Standard Time) in order to ensure that correspondence is considered timely filed. For Patent correspondence utilizing the facsimile numbers above, the USPTO will attempt to send an acknowledgment receipt confirming the receipt of the correspondence by date, time, and number of pages. This receipt is sent to the number associated with the sender's "sending machine fax number." Applicants are encouraged to include a certificate of transmission with the facsimile transmission. See 37 CFR 1.8(a)(1)(i)(B). For a certificate of transmission form, see PTO/SB97 posted at http://www.uspto.gov/web/forms/index.html.

Hand-Delivery

The USPTO also provides for hand-delivery of correspondence (including by non-U.S. mail courier services) during the hours the USPTO is open for business. As a customer service, the USPTO has a long-standing practice of providing customer service windows for hand-carried papers. The window for receipt of patent correspondence, known as the "OIPE Customer Service Center Window," is located in Room 1B03 of Crystal Plaza Building 2, 2011 South Clark Place, Arlington, Virginia, 22202. The window for receipt of trademark correspondence, known as the "Trademark Finance Window," is located in Room 4B10 of the South Tower Building, Arlington, Virginia, 22202-3513. The OIPE Customer Service Center Window is open from 8:30 a.m. until midnight on any day that the USPTO is open for business. The Trademark Finance Window is open from 8:30 a.m. to 5:00 p.m. on any day the USPTO is open for business. Correspondence is date stamped as received by the USPTO on the date of hand-delivery to either the OIPE Customer Service Center Window or the Trademark Finance Window. As a change in practice, where review of sealed packages and hand return of a date stamped itemized list is requested, the USPTO will no longer open packages or envelopes at either the OIPE Customer Service Center Window or the Trademark Finance Window. Should an itemized post card receipt be desired to be returned at the window, only the correspondence may be given to USPTO staff and not an envelope or package. The USPTO will, however, continue to accept sealed envelopes and packages, but this correspondence will not be opened at the window.

Internet

The Office strongly encourages both trademark and patent applicants to file new applications over the Internet. For questions on filing patent applications over the Internet, please contact the Patent Electronic Business Center's help desk at (703) 305-3028. See also http://www.uspto.gov/ebc/efs/index.html. New national patent applications filed using the Patent Electronic Filing System are considered filed on the date that transmission is completed, assuming the document submitted is entitled to a filing date. Patent correspondence other than new applications may not at this time be filed using the Patent Electronic Filing System. Electronically filed applications may be accorded a filing date on Saturdays, Sundays and Federal holidays within the District of Columbia. For applying for trademark registration, see http://www.uspto.gov/teas/index.html. At that web address, applicants and registrants can file a trademark or service mark application, a statement of use or amendment to allege use, a request for extension of time to file a statement of use, as well as the most common post-registration documents. Any document submitted to the previous web address is considered filed on the date that transmission is completed, assuming the document is entitled to a filing date. For additional e-mail addresses at which trademark documents may be filed, including responses to Office actions, see: http://www.uspto.gov/september11/tmemailnotice.htm. Applicants are reminded that in any matter being handled in Law Offices 102, 112 and 107, applicant may request all correspondence from the Office be sent via e-mail.

The trademark mailroom continues to process trademark mail. The majority of trademark mail is sent to the 22205-3513 Zip Code and is processed through the Merrifield, Virginia, Post Office. As far as the USPTO knows, there have been no significant delays in the delivery of mail from that Post Office.

The USPTO is currently exploring further options to permit expansion of the options for transmission of incoming and outgoing electronic correspondence in view of the current mailing delays. A notice of any changes will be provided as soon as possible.

Inquiries regarding submission of patent correspondence should be directed to Mark Polutta, Hiram Bernstein, Robert Clarke or Eugenia Jones, Legal Advisors in the Office of Patent Legal Administration, all of whom may be reached by telephone at 703-308-6906 or by electronic mail message via the Internet addressed to Mark.Polutta@uspto.gov, Hiram.Bernstein@uspto.gov, Robert.Clarke@uspto.gov, or Eugenia.Jones@uspto.gov. Inquiries regarding submission of trademark correspondence should be directed to Carol Smith or Karen Smith at (703) 308-8900 or by electronic mail message via the Internet addressed to Carol.Smith@uspto.gov or Karen.Smith2@uspto.gov.

Date: 08 November 2001 Signed: /s/
Nicholas P. Godici
Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office

NOTE: Effective June 24, 2002, 37 C.F.R. §1.10(a) has been amended. The Express Mail procedure provided in 37 C.F.R. §1.10 no longer applies to any of the following trademark documents:

  • Trademark/Service Mark Application under §1 or §44 of the Trademark Act, 15 U.S.C. §1051 or §1126
  • Statement of Use under §1(d) of the Trademark Act, 15 U.S.C. §1051(d)
  • Amendment to Allege Use under §1(c) of the Trademark Act, 15 U.S.C. §1051(c)
  • Request for Extension of Time to File a Statement of Use under §1(d) of the Trademark Act, 15 U.S.C. §1051(d)
  • Affidavit or Declaration of Continued Use under Section 8 of the Trademark Act, 15 U.S.C. §1058
  • Renewal Request under Section 9 of the Trademark Act, 15 U.S.C. §1059
  • Combined Filing under Sections 8 and 9 of the Trademark Act, 15 U.S.C. §§1058 and 1059
  • Combined Affidavit or Declaration under Sections 8 and 15 of the Trademark Act, 15 U.S.C. §§1058 and 1065
  • Request to Change or Correct Address

If the documents listed above are filed by Express Mail, they will receive a filing date as of the date of receipt in the Office and not the date of deposit with the United States Postal Service. See notice at 67 Fed. Reg. 36099 (May 23, 2002) [PDF].