Q&A - Postal Service Emergencies

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Q1. Why haven't we received our post cards or filing receipts for new applications? (Date: January 28, 2002)
Q2. I thought that Express Mail could not be addressed to post office boxes. Are you sure that we should mail to a post office box? (Date: January 28, 2002)
Q3. The reply that I mailed to the USPTO was returned as undeliverable because it had been damaged in the decontamination process. The reply was mailed with a certificate of mailing under 37 CFR 1.8 showing a date that is within the period of reply set forth in the last Office action (or notice). If I submit a duplicate of the original reply, will the duplicate reply be considered as timely? (Date: January 28, 2002)
Q4. The application that I mailed to the USPTO via Express Mail in compliance with 37 CFR 1.10 was returned as undelivered because it had been damaged in the decontamination process. Should I resubmit the damaged application papers? (Date: January 28, 2002)
Q5. I need to file a sequence listing in electronic form. Where should I send it to? (Date: January 28, 2002)

Q6.

A Notice of Allowance for my application was mailed by the Office on October 23, 2001, but I have not received the notice. The three-month shortened statutory period has expired. What can I do so that the Office will remail the Notice of Allowance and provide a new period for reply? (Date: February 20, 2002)
Q7. I mailed an after-final amendment before the expiration of the 3-month shortened statutory period (SSP) set in the final Office action. Due to U.S. Postal Service mail delays, the Office did not receive the amendment until after the expiration of the SSP. Do I need to file a petition for extension of time under 37 CFR 1.136(a) for the consideration of the amendment? (Date: March 4, 2002)
Q8. I mailed an after-final amendment prior to the expiration of the shortened statutory period set in a final Office action. The delivery of my after-final amendment was substantially delayed by the U.S. Postal Service. I recently received an advisory action near the end of the maximum extendable statutory period. If I file a Notice of Appeal or a request for continued examination (RCE), what is the amount of extension of time required? (Date: March 4, 2002)
Q9. I mailed an after-final amendment within 2 months from the mailing of the final Office action. A certificate of mailing under 37 CFR 1.8 was included. Due to U.S. Postal Service Mail delays, the Office did not receive my amendment until after 3 months from the mailing of the final Office action. When the Office mails an advisory action, will the shortened statutory period be extended to expire on the date the advisory action is mailed? (Date: March 4, 2002)
Q10.

I filed a first after-final amendment within 2 months from the mailing of the final Office action (i.e., the Office actually received the amendment within the 2-month period). (Date: March 4, 2002)
(i) If the Office mailed an advisory action before the end of 3 months from the mail date of the final Office action, but due to substantial U.S. Postal Service mail delays....
(ii) If the Office mailed an advisory action after the end of 3 months from the mail date of the final Office action, but due to substantial mail delays....

Q1. Why haven't we received our post cards or filing receipts for new applications? (Date: January 28, 2002)

A. The USPTO did not receive all of its mail via the USPS from the last week or so of October, until the end of November. This mail is now being delivered to the USPTO. Until the USPTO receives your mail (and the post card receipt), and has time to process this mail, the USPTO cannot return the post card receipt or give a filing receipt.

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Q2. I thought that Express Mail could not be addressed to post office boxes. Are you sure that we should mail to a post office box? (Date: January 28, 2002)

A. Yes. Express Mail can be delivered to Post Office boxes. Other services such as UPS and Federal Express may not deliver to a post office box, but Express Mail is a United States Postal Service product, and does deliver to U.S. Post Office boxes.

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Q3. The reply that I mailed to the USPTO was returned as undeliverable because it had been damaged in the decontamination process. The reply was mailed with a certificate of mailing under 37 CFR 1.8 showing a date that is within the period of reply set forth in the last Office action (or notice). If I submit a duplicate of the original reply, will the duplicate reply be considered as timely? (Date: January 28, 2002)

A. Yes. What you need to do: Since the original reply had a certificate of mailing in compliance with 37 CFR 1.8 showing a date within the period of reply, the duplicate reply will be accepted, as timely, if you submit the following:
1. a copy of the previously mailed reply showing the original certificate of mailing with a date within the period of reply; and
2. a statement that the reply was previously mailed to the USPTO on the date indicated on the certificate of mailing, and that it was returned as undeliverable because it was damaged in the mail.

The statement must be signed by the person who personally mailed the original reply, a registered attorney or agent, the assignee of the entire interest, or the applicants (all of the inventors or the party qualified under 37 CFR 1.42, 1.43, or 1.47).

The duplicate copy and statement should be resubmitted to the Office within a week of it being returned. Delays in resubmitting the papers may result in the application being held abandoned and a petition to withdraw the holding of abandonment being required.

The duplicate reply and statement should either be mailed to the Office, or faxed to the area that is waiting for the reply (e.g., Technology Center, Office of Initial Patent Examination, Office of Petitions, or Office of Publications).

The duplicate reply will be considered as timely: The timeliness for the reply is determined by the date on the original certificate of mailing. If that date is within the shortened statutory period, the reply is considered timely and no extensions of time are required.

Extensions of Time: If a petition for extension of time and the required fee were mailed with the original reply within the extended time period for reply, the extension of time fee will be calculated as a function of the original certificate of mailing date.

Date of Receipt: The date that the USPTO receives the duplicate reply, as described above, and the required statement, is the date of receipt of the reply that will be recorded in USPTO records. If the reply is a notice of appeal, the appeal brief will be due 2 months after the date the USPTO receives the duplicate reply, and any extensions of time to file an appeal brief will be measured from the date of receipt of the duplicate reply.

Note that correspondence mailed with a certificate of mailing under 37 CFR 1.8 is not treated the same as Express Mail pursuant to 37 CFR 1.10. Mail received with a certificate of mailing is accorded a date of receipt as of the date the paper is received in the USPTO, whereas Express Mail is accorded a date of receipt as of the "date-in" on the original Express Mail mailing label.

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).

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Q4. The application that I mailed to the USPTO via Express Mail in compliance with 37 CFR 1.10 was returned as undelivered because it had been damaged in the decontamination process. Should I resubmit the damaged application papers? (Date: January 28, 2002)

A. No, please do not resubmit any damaged mail to the USPTO. The filing date of the application will be the date on the original Express Mail mailing label used when you submitted the application previously (i.e., the "date-in"), if you submit the following:
1. a copy of the previously mailed application papers showing the Express Mail mailing label number;
2. a copy of the original Express Mail mailing label showing the "date-in" and the same Express Mail mailing label number as on the application papers; and
3. a statement that the application was previously mailed to the USPTO on the date indicated on the Express Mail mailing label, and that it was returned as undeliverable because it was damaged in the mail.

The statement must be signed by the person who personally mailed the original reply, a registered attorney or agent, the assignee of the entire interest, or the applicants (all of the inventors or the party qualified under 37 CFR 1.42, 1.43, or 1.47).

If the original Express Mail package contained more than one application, each resubmitted application should have a separate statement and a separate copy of the original Express Mail mailing label.

Any duplicate continued prosecution application (CPA), request for continued examination (RCE), or reply and statement should either be mailed to the Office, or faxed to the area that is waiting for the reply (Technology Center, Office of Initial Patent Examination, Office of Petitions, of Office of Publications).

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).

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Q5. I need to file a sequence listing in electronic form. Where should I send it to? (Date: January 28, 2002)

A. Any sequence listing in electronic form should NOT be sent to the 20231 zip code address for the United States Patent and Trademark Office, but instead it should be:

1. Electronically submitted through EFS-Bio (http://www.uspto.gov/ebc/efs/downloads/documents.htm, EFS Submission User Manual - ePAVE)

2. Mailed to:
U.S. Patent and Trademark Office
Box Sequence, P.O. Box 2327
Arlington, VA 22202


3. Mailed by Federal Express, United Parcel Service or other delivery service to:
U. S. Patent and Trademark Office
2011 South Clark Place
Customer Window, Box Sequence
Crystal Plaza Two, Lobby, Room 1B03
Arlington, Virginia 22202

OR

4. Hand Carried directly to the Customer Window at:
2011 South Clark Place
Crystal Plaza Two, Lobby, Room 1B03, Box Sequence,
Arlington, Virginia 22202

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Q6. A Notice of Allowance for my application was mailed by the Office on October 23, 2001, but I have not received the notice. The three-month shortened statutory period has expired. What can I do so that the Office will remail the Notice of Allowance and provide a new period for reply? (Date: February 20, 2002)

A. You will need to file a petition to withdraw the holding of abandonment as provided in MPEP 711.03(c)(II), subsection (II), page 700-140, left-hand column (August 2001) because the non-extendable shortened statutory period set in the Notice of Allowance has expired. If the non-receipt Office correspondence which led to the holding of abandonment was mailed between October 13, 2001 and January 2, 2002, filing a copy of the docket record, or a copy of any other evidence where the correspondence would have been recorded, is not required, instead:

(1) If the applicant is represented by a registered practitioner, then the registered practitioner must submit a statement that the Office correspondence (e.g., a Notice of Allowance) was not received at the correspondence address of record and a significant amount of correspondence mailed by the Office between October 13, 2001 and January 2, 2002 has not been received at that address.

(2) If the applicant is prosecuting the application without the assistance of a registered practitioner (i.e., a pro se applicant), then the applicant should state in the petition that the Office correspondence was not received at the correspondence address of record, and the Office correspondence was mailed by the Office between October 13, 2001 and January 2, 2002.

To avoid mail delays, the petition to withdraw the holding of abandonment may be faxed to the technology center that was handling the application. A list of the fax numbers for the technology centers is posted at: http://www.uspto.gov/september11/faxnotice.htm. You may also call the technology center to request a courtesy copy of the Notice of Allowance and submit a complete reply with the petition to expedite the issuance of the patent.

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Q7. I mailed an after-final amendment before the expiration of the 3-month shortened statutory period (SSP) set in the final Office action. Due to U.S. Postal Service mail delays, the Office did not receive the amendment until after the expiration of the SSP. Do I need to file a petition for extension of time under 37 CFR 1.136(a) for the consideration of the amendment? (Date: March 4, 2002)

A. No, an extension of time is not required so long as the after-final amendment included a certificate of mailing under 37 CFR 1.8 and the date on the certificate of mailing is prior to the expiration of the SSP set in the Office action.

If a certificate of mailing was not used, and the application file, or the reply, includes a general authorization to charge fees, or an authorization to charge fees under 37 CFR 1.17, to a deposit account, then the Office will charge any needed extension of time fee, and process the reply.

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Q8. I mailed an after-final amendment prior to the expiration of the shortened statutory period set in a final Office action. The delivery of my after-final amendment was substantially delayed by the U.S. Postal Service. I recently received an advisory action near the end of the maximum extendable statutory period. If I file a Notice of Appeal or a request for continued examination (RCE), what is the amount of extension of time required? (Date: March 4, 2002)

A. The shortened statutory period set in the final Office action will not be extended due to the delayed receipt of an after-final amendment. Such period will expire at the end of 3 months from the date of mailing of the final Office action. If you file a Notice of Appeal or an RCE after the fifth month from the mailing of the final Office action, an extension of time for 3 months is required.

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Q9. I mailed an after-final amendment within 2 months from the mailing of the final Office action. A certificate of mailing under 37 CFR 1.8 was included. Due to U.S. Postal Service Mail delays, the Office did not receive my amendment until after 3 months from the mailing of the final Office action. When the Office mails an advisory action, will the shortened statutory period be extended to expire on the date the advisory action is mailed? (Date: March 4, 2002)

A. No, the shortened statutory period set in the final Office action will not be extended because the Office received the amendment after 2 months from the mailing of the final Office action. A certificate of mailing is not effective to have the reply considered as having been filed within the 2-month period. Actual receipt in the Office is required.

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Q10. I filed a first after-final amendment within 2 months from the mailing of the final Office action (i.e., the Office actually received the amendment within the 2-month period). (Date: March 4, 2002)

(i) If the Office mailed an advisory action before the end of 3 months from the mail date of the final Office action, but due to substantial U.S. Postal Service mail delays, I didn't receive it until substantially after the 3-month period, will the shortened statutory period (SSP) be extended to expire on the date of receipt at the correspondence address of record?

A. Yes, if the requirements set forth in the answer of (ii) of this question are met, the SSP will be extended to the receipt date of the advisory action at the correspondence address of record, but in no event can the period be extended beyond 6 months from the mail date of the final Office action.

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(ii) If the Office mailed an advisory action after the end of 3 months from the mail date of the final Office action, but due to substantial mail delays, more than 1 month has elapsed before I received the advisory action, will the SSP be extended to expire on the receipt date of the advisory action at the correspondence address of record?

A. Yes, if the following requirements are met, the SSP will be extended to the receipt date of the advisory action at the correspondence address of record, but in no event can the period be extended beyond 6 months from the mail date of the final Office action:

(1) The advisory action was mailed between October 13, 2001 and January 2, 2002;
(2) A petition under 37 CFR 1.181 is filed within two weeks of actual receipt of the advisory action;
(3) More than one month has elapsed from the time the Office mailed the advisory action to the time the action is received at the correspondence address;
(4) The petition includes a clear statement that the action was received at the correspondence address on the date indicated, and a request that the shortened statutory period set in the final Office action be extended to end on the actual receipt date; and
(5) The petition is signed by the applicants or a registered practitioner.

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