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Patents Alerts Archive 2007

December 2007

December 5, 2007

- PDX Checklist
- EFS-Web 1.2
- Choosing the Correct Document Description

Priority Document Exchange (PDX)

The United States Patent and Trademark (USPTO) began exchanging priority documents electronically with the European Patent Office (EPO) on January 16, 2007, and with the Japan Patent Office (JPO) on July 28, 2007, through secure, electronic connections using the Trilateral Document Access (TDA) web services at no cost to the applicant. PDX offers applicants a faster, economical, and more secure transmission means for exchanging a priority document between patent offices.

In the last year, the USPTO has had to deny a significant percentage of priority document requests coming from the EPO and the JPO. This high denial rate is a result of Applicants not authorizing release of a copy of the unpublished U.S. application. Filing the Form PTO/SB/39 with the USPTO is encouraged for this authorization purpose. In order to ensure a successful filing of the Form PTO/SB/39 using the USPTO's electronic filing system (EFS-Web), please follow the checklist below.

Filing Form PTO/SB/39 Using EFS-Web

Log in to EFS-Web as a Registered e-Filer

 Certify your identity

A request can be made at the time of filing a new application or as a follow-on document. If you are filing a follow-on document, select Existing application/patent on the filing type selection screen following log in

∅ After selecting Existing application/patent, enter the Application Number and Confirmation Number in the appropriate fields

∅ authorize the USPTO to electronically transmit Official Priority Documents to the EPO or JPO and enter them into the file wrapper, attach a completed Form PTO/SB/39 on the Attach Documents screen in EFS-Web. Form PTO/SB/39 must be signed in accordance with 37 CFR 1.14(c). See 37 CFR 1.14(h)(2). The form can be found at: http://www.uspto.gov/web/forms/sb0039.pdf

  • Select Priority Documents from the Category drop-down list
  • Select Authorization to Access Application by Trilateral Office from the Document Description drop-down list
  • Click Upload and Validate button
  • Review your documents and select Continue
  • There are no fees associated with requesting priority documents. If there are no other fees due, proceed and click Submit

Form PTO/SB/39 can also be faxed to the Central Fax number at 571-273-8300 or mailed to:
Commissioner of Patents
P.O. Box 1450
Alexandria VA 22313-1450

For Additional Information Regarding PDX Visit http://www.uspto.gov/web/patents/faqs.htm or e-mail : PDX@uspto.gov

Patent Electronic Business Center (EBC) Telephone : 1-866-217-9197 (toll free)

Diana Oleksa, Patent Legal Advisor Telephone: 1-571-272-3291

Hung Vuong, Computer Specialist Telephone: 1-571-272-5727

e-Commerce Updates
EFS-Web 1.2

More information about the enhancements made to EFS-Web with the 1.2 release in November is now available on the USPTO's website. To learn more about what's new with EFS-Web 1.2, visit: http://www.uspto.gov/ebc/portal/efs/efs_web1_2.pdf.

Did you know?

Choosing the correct document description may be simpler than you think. When attaching your documents, you can click on the blue "i" information icon found near Document Descriptions, and a new window will open with a list of all available document descriptions. The USPTO business process description for each document description is provided to help you index your documents correctly. For a complete list of document descriptions on the USPTO web site, please link to: http://www.uspto.gov/ebc/portal/infodocuments.htm. You can also find help on how to index your documents at http://www.uspto.gov/ebc/portal/efs/rules_doc_codes.htm.

 

 

Priority Document Exchange (PDX)

The United States Patent and Trademark (USPTO) began exchanging priority documents electronically with the European Patent Office (EPO) on January 16, 2007, and with the Japan Patent Office (JPO) on July 28, 2007, through secure, electronic connections using the Trilateral Document Access (TDA) web services at no cost to the applicant. PDX offers applicants a faster, economical, and more secure transmission means for exchanging a priority document between patent offices.

In the last year, the USPTO has had to deny a significant percentage of priority document requests coming from the EPO and the JPO. This high denial rate is a result of Applicants not authorizing release of a copy of the unpublished U.S. application. Filing the Form PTO/SB/39 with the USPTO is encouraged for this authorization purpose. In order to ensure a successful filing of the Form PTO/SB/39 using the USPTO's electronic filing system (EFS-Web), please follow the checklist below.

Filing Form PTO/SB/39 Using EFS-Web

Log in to EFS-Web as a Registered e-Filer

Certify your identity

 A request can be made at the time of filing a new application or as a follow-on document. If you are filing a follow-on document, select Existing application/patent on the filing type selection screen following log in

  •  After selecting Existing application/patent, enter the Application Number and Confirmation Number in the appropriate fields
  • Authorize the USPTO to electronically transmit Official Priority Documents to the EPO or JPO and enter them into the file wrapper, attach a completed Form PTO/SB/39 on the Attach Documents screen in EFS-Web. Form PTO/SB/39 must be signed in accordance with 37 CFR 1.14(c). See 37 CFR 1.14(h)(2). The form can be found at: http://www.uspto.gov/web/forms/sb0039.pdf
  • Select Priority Documents from the Category drop-down list
  •  Select Authorization to Access Application by Trilateral Office from the Document Description drop-down list
  •  Click Upload and Validate button
  • Review your documents and select Continue
  •  There are no fees associated with requesting priority documents. If there are no other fees due, proceed and click Submit

Form PTO/SB/39 can also be faxed to the Central Fax number at 571-273-8300 or mailed to:
Commissioner of Patents
P.O. Box 1450
Alexandria VA 22313-1450

For Additional Information Regarding PDX Visit http://www.uspto.gov/web/patents/faqs.htm or e-mail : PDX@uspto.gov

Patent Electronic Business Center (EBC) Telephone : 1-866-217-9197 (toll free)

Diana Oleksa, Patent Legal Advisor Telephone: 1-571-272-3291

Hung Vuong, Computer Specialist Telephone: 1-571-272-5727

e-Commerce Updates
EFS-Web 1.2

More information about the enhancements made to EFS-Web with the 1.2 release in November is now available on the USPTO's website. To learn more about what's new with EFS-Web 1.2, visit: http://www.uspto.gov/ebc/portal/efs/efs_web1_2.pdf.

Did you know?

Choosing the correct document description may be simpler than you think. When attaching your documents, you can click on the blue "i" information icon found near Document Descriptions, and a new window will open with a list of all available document descriptions. The USPTO business process description for each document description is provided to help you index your documents correctly. For a complete list of document descriptions on the USPTO web site, please link to: http://www.uspto.gov/ebc/portal/infodocuments.htm. You can also find help on how to index your documents at http://www.uspto.gov/ebc/portal/efs/rules_doc_codes.htm.

December 7, 2007 - Retiring Legacy Private PAIR

One Year Extension Period Ends on December 31, 2007

Portal Private PAIR was successfully deployed on February 23, 2006. In July 2006, the United States Patent and Trademark Office (USPTO) announced its intention to retire Legacy Private PAIR at the end of 2006. A published announcement in January 2007 subsequently extended the retirement date one additional year to allow applicants and software developers additional time to adjust office procedures and modify their programs to reflect the current version of Portal PAIR. Most customers have migrated to the Portal Private PAIR system and taken advantage of the new features that are available, and some software developers have modified programs to accommodate for the new software architecture.

Many Legacy Private PAIR infrastructure components, including authentication software, are no longer supported by their vendors. In addition, the operating system that supports Legacy Private PAIR cannot be upgraded without re-hosting the entire system. Continuing to operate with the unsupported operating system will result in a probable failure of Certification and Accreditation as required by OMB Circular A-130, Appendix III. (For more information on Security Certification and Accreditation of Federal Information Systems, refer to http://csrc.nist.gov/publications/nistpubs/800-37/SP800-37-final.pdf.) Having completed a comprehensive assessment of the management, operational, and technical factors, the USPTO plans to discontinue the availability of Legacy Private PAIR as scheduled, effective December 31, 2007.

Portal Private PAIR offers applicants many improvements including XML data download options. An XML file may be downloaded containing an extensive list of bibliographic data for single applications; users can obtain a list of applications with status changes; and a list of outgoing correspondence and reference documents is also available. Each of the XML download files has W3C (World Wide Web Consortium) schema files available for download from the USPTO.

Other improvements only available in Portal Private PAIR include e-Office Action notifications, real-time self-administration of Attorney Docket numbers, and correspondence address information for Customer Number. When applicants ‘opt-in’ to receive e-mail notifications for new Office Actions, they will no longer receive paper copies of certain types of correspondence by postal mail. Office Actions and reference documents will be available for viewing and download from within the portal version of Private PAIR.

Additional information about the retirement of Legacy Private PAIR is available at http://www.uspto.gov/ebc/pair_faq.htm.

 

 

November 2007

 

November 8, 2007

- EFS-Web 1.2 Enhancements
- Request for PCTs Containing SL and/or Related Tables Filed in the RO/US via EFS-Web
- e-Office Action Pilot Program Has Expanded Its Services

USPTO Releases New EFS-Web 1.2 Enhancements

EFS-Web 1.2 is scheduled to be released next week on November 11th. Two of the user-requested enhancements include: real-time onscreen EFS-Web system announcements, and reminder messages to upload and validate files before reviewing. For a complete list of the EFS-Web 1.2 enhancements, please visit: http://www.uspto.gov/ebc/portal/announce_efsweb12release.htm

e-Commerce Updates

Request for PCTs Containing SL and/or Related Tables Filed in the RO/US via EFS-Web
A new document including detailed information for filling out the Request (conventional PCT/RO/101 & PCT SAFE/EASY) and Fee Calculation Sheet for international applications containing sequence listing and/or related tables filed in the RO/US via EFS-Web has been posted on the PCT Legal webpage: http://www.uspto.gov/web/offices/pac/dapps/pct/sl_efs_web_instructions.pdf

Did you know?

The USPTO’s e-Office Action Pilot Program has expanded its services. In addition to receiving electronic Office notifications from the Technology Centers, pilot participants can now receive electronic Office notifications for correspondence from five additional USPTO offices, including:

  • Office of Initial Patent Examination
  • Office of Petitions
  • Office of Patent Publication
  • Office of License and Review
  • Board of Patent Appeals

Current exceptions to this program will soon be listed on the USPTO website. The link to the list will be provided to you in the next e-Alert.

In lieu of receiving new outgoing correspondence related to a patent application in paper via postal mail, this program sends pilot participants an e-mail notification to access outgoing documents in Private PAIR. Currently, there are over 400 Customer Numbers actively participating in this pilot program.

Are you interested in joining the e-Office Action Pilot? Please e-mail your request to participate and Customer Numbers to the PAIR team at pair@uspto.gov .

Please use the pair@uspto.gov mailbox as your first point of contact for questions or concerns you may have regarding the Private PAIR e-Office Action Pilot Program.

 

October 2007

October 11, 2007 - USPTO eCommerce e-ALERT Special Edition

As a valued Patents e-Commerce customer, we wanted to share this important message from the USPTO’s Commissioner for Patents, John Doll, with you.

Reminder: Claims and Continuations Rules Effective Nov. 1
I want to take this opportunity to remind you that on November 1, 2007, the new claims and continuations rules will go into effect.  These new rules were two years in the making and are based on extensive research, outreach to thousands of applicants, and comments from over 500 patent stakeholders in response to the original Notices of Proposed Rule Making which were published in the Federal Register in January of 2006. 

The USPTO is certain that these rules will make the patent process more effective and efficient and we appreciate your cooperation.  To ensure a smooth transition on November 1st, we are clarifying certain provisions of the rules and making some procedural adjustments.  An Official Gazette notice describing these changes is available at the following link http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/clmcontclarification.pdf
and will be published in the Official Gazette on November 6, 2007.

The USPTO recognizes that you play a significant role in providing the USPTO with quality applications which allow examiners to provide better quality examinations resulting in high quality patents.
 
Thank you again for your interest and cooperation in making our intellectual property system better, stronger and more vibrant worldwide.

John Doll
Commissioner for Patents
United States Patent and Trademark Office

If further information is needed concerning the Claims and Continuation Final Rule, please contact the Office of Patent Legal Administration, by telephone at (571) 272-7704, or by e-mail at PatentPractice@USPTO.gov.

 

 

USPTO e-COMMERCE e-ALERT

This e-Alert contains detailed information on the following important subjects regarding USPTO e-Commerce:

  • e-Commerce Outreach Feedback Form Deadline Approaches
  • “USPTO builds a better e-Filing mousetrap” article in GCN
  • Did you know?
  • e-Filing e-Tip
  • Upcoming e-Commerce Event

 

October 9, 2007

-e-Commerce Outreach Feedback Form Deadline Approaches
- USPTO Builds a Better e-Filing Mousetrap
- Request For Reexamination
- Drawing Document Descriptions

- American Intellectual Property Law Association Annual Meeting

e-Commerce Outreach Feedback Form Deadline Approaches

The USPTO would like to invite you to provide your valuable input on how to improve our e-Commerce outreach activities by 12noon Eastern Time on Wednesday, October 10, 2007.

We have established a short feedback form to capture your thoughts and suggestions. This form will take less than five minutes to complete, and your comments will be invaluable as we begin planning for the coming year.

If you have already submitted your feedback, we thank you for taking the time to share your thoughts. If you have not already done so, please go to the following web address to complete the form:

http://vovici.com/wsb.dll/s/8803g2d17d

USPTO builds a better e-Filing mousetrap
Government Computer News - September 10, 2007

EFS-Web was featured in the September 10th issue of Government Computer News. The article talks about the benefits of filing patents electronically and the adoption of EFS-Web among top corporations and law firms. Commissioner for Patents John Doll, reflecting on how successful the system is, indicated that the success was due to feedback received from the patent-filing community.

Jon Meyer, Senior Vice President of intellectual-property law at Motorola, explained how the electronic patent-filing system meets the corporation's strict standards of security. Jan Gardner, Operations Manager at Oblon Spivak McClelland Maier and Neustadt, explained the ease of use compared to earlier systems and noted that her firm will be filing all patent documents electronically by the end of the year.

To read the article, visit the Government Computer News website at: http://www.gcn.com/print/26_23/44976-1.html.

Did you know?

A request for reexamination is a proceeding for reviewing whether a substantial new question of patentability exists and how it impacts an EXISTING PATENT.  When filing a new application or a follow-on paper for an existing application, please refrain from selecting the "Reexam application" type.

e-Filing e-Tip

The drawing document descriptions (e.g., Drawings) are reserved ONLY for drawings.  
Please index any documents describing amendments to the drawings as "Applicant Arguments/Remarks Made in an Amendment."

The Patents Electronic Business Center (EBC) can walk you through filing a patent application online. 

Upcoming e-Commerce Event

Learn more about EFS-Web by visiting the e-Commerce booth at the following event:

  • October 18-20, 2007

American Intellectual Property Law Association Annual Meeting
Exhibit Booth #11
Washington, DC
http://www.aipla.org/Content/ContentGroups/Meetings_and_Events1/Annual_Meetings/200713/2007_Annual_Meeting.htm

 

October 2O, 2007 -  Help Improve USPTO's e-Commerce and EFS-Web Communication Efforts

The United States Patent and Trademark Office would like to express appreciation for your continued participation in and support of e-Commerce initiatives including EFS-Web.  We request your valuable input once again as we work to improve communication with our customers.

We have established a short feedback form to capture your thoughts and suggestions. This form will take less than five minutes to complete, and your comments will be invaluable as we begin planning for the coming year. 

Please go to the following web address to complete the form:

http://vovici.com/l.dll/JGs6194B5B5A5lgXD9U1417232J.htm


Throughout the year we reach out to the Intellectual Property community with training, events, and various announcements regarding the web-enabled patent filing system, EFS-Web.

To date, the USPTO has trained over 11,000 individuals and received over 800,000 electronically filed submissions, i.e., patent applications and follow-on documents, using EFS-Web.  Weekly, over 70 percent of total filings are now submitted via EFS-Web.

As Fiscal Year 2007 draws to a close, the USPTO would like to learn from you what impact these trainings and events have had on your organization, as well as learn how we can improve our e-Commerce outreach activities.   The link above will take you to the feedback form.

If you would like to receive regular updates from USPTO on EFS-Web and related e-Commerce initiatives, please register by clicking on the link below:

http://uspto.websurveyor.net/mail/register.aspx


If you are interested in upcoming training opportunities, please e-mail efsweb.events@uspto.gov for more information.

Thank you again for your time and support.

Customer Outreach Team
Search and Information Resources Administration, USPTO

 

 

August 2007

August 28, 2007

- Private PAIR 7.1 Enhancements
- PCT RO/101 and Fee Sheet Information
- Embedded Fonts
- Maintenance Fee Workflow Reminder
- e-Office Action Pilot
- Upcoming e-Commerce Events
- PDX Tips

Private PAIR 7.1 Enhancements

The United States Patent and Trademark Office (USPTO) continues to update e-Commerce tools based on the feedback received from the intellectual property community. Enhancements to Private PAIR will be introduced on August 31, 2007, with the release of Private PAIR 7.1. These features include new options for downloads and updated search features. For more information on Private PAIR 7.1, please visit: http://www.uspto.gov/ebc/portal/announce_pair2007aug15.htm


e-Commerce Updates


PCT RO/101 and Fee Sheet Information

If you are attaching a PCT-SAFE Zip file, you will also need to attach the specification, claims, abstract, drawings, etc., as separate PDF files. These files cannot be added to the Zip file, as EFS-Web will not extract them for processing. The RO/101 and Fee sheet, in the Zip file, are all that EFS-Web extracts for processing.

Embedded Fonts

All characters (glyphs) that make up the text of the document must be embedded. Embedding allows the fonts used in the creation of a document to travel with that document, ensuring that a user sees documents exactly as the designer intended them to be seen. Embedded fonts may be limited to a subset containing the glyphs necessary to render the document. All fonts embedded within the document must be licensed and legally embeddable.

If using Adobe Acrobat 6+, the USPTO.JobOptions file can be used to create Adobe PDF documents suitable for submission to the USPTO, including embedding the fonts. For further information on the USPTO.JobOptions file, please see the Job Options instructions located on the EFS-Web Tools page at: http://www.uspto.gov/ebc/portal/tools.htm.

If you are utilizing other PDF creation tools and experiencing embedded font issues, you can convert the text-based PDF to an image-based PDF by selecting File > Print. Select your PDF creation tool from the Printer name drop down. Then select Advanced and check the box to "Print as Image". Select "Print" and save your PDF.

Maintenance Fee Workflow Reminder

Petition under 1.378(c) Saves Time: Did you know the USPTO's EFS-Web allows for applicants to submit a Petition to Accept Unintentionally Delayed Payment of a Maintenance Fee in an Expired Patent (37 CFR 1.378(c))? This petition can be granted automatically, i.e. the patent will be reinstated immediately, if filed using the Petition under 37 CFR 1.378(c) under "Existing Application/Patent" in EFS-Web.

Currently, this petition can be filed three ways. In paper, which can take weeks to have the petition granted; electronically via EFS-Web as a supplemental paper to an existing application/patent, which, also, can take weeks to have granted; or electronically via EFS-Web as a Petition under 37 CFR 1.378(c), which can be granted immediately and the patent will be reinstated within minutes. For more information, view the Quick Start Guide for Petitions at http://www.uspto.gov/ebc/portal/tools.htm.

e-Office Action Pilot

The USPTO is hosting a pilot program for customers to evaluate and comment on the usability and functionality of the e-Office Action program. As an alternative to receiving new outgoing correspondence related to a patent application in paper via postal mail, this program sends the pilot participant an e-mail notification to directly access outgoing documents in Private PAIR.

The pilot will be entering Phase IV on August 31, 2007, and USPTO will open registration in the pilot to a limited number of new participants at this time.

If you are interested in participating in the e-Office Action pilot, please e-mail the PAIR team with your Customer Numbers at pair@uspto.gov .

Please use the pair@uspto.gov mailbox as your first point of contact for questions or concerns you may have.

Upcoming e-Commerce Events

Learn more about EFS-Web by visiting the e-Commerce booth at the following events:

• September 25-27, 2007
National Manufacturing Week
Exhibiting with the Japan Patent Office and the European Patent Office
Booth #4633
Rosemont, IL
http://www.devicelink.com/expo/nmw07/

• October 18-20, 2007
American Intellectual Property Law Association Annual Meeting
Washington, DC
http://www.aipla.org/Content/ContentGroups/Meetings_and_Events1/Annual_Meetings/200713/2007_Annual_Meeting.htm

Did you know?

Over the last few months, the USPTO has had to deny a significant percentage of the requests coming from the Japan Patent Office and the European Patent Office due to the lack of authorization from the applicant to release a copy of the unpublished US application (e.g., Form SB-39). These Offices have strict deadlines for submission of priority documents, and failure to supply the documents on a timely basis can have unfortunate consequences. To ensure successful transmission of your priority document(s) to an Office of Second Filing, please submit such authorization as early as possible during the prosecution of your US application.

 

 

e-Office Action Pilot Program

The USPTO is hosting a pilot program for customers to evaluate and comment on the usability and functionality of the e-Office Action program. As an alternative to receiving new outgoing correspondence related to a patent application in paper via postal mail, this program sends the pilot participant an e-mail notification to directly access outgoing documents in Private PAIR.

The pilot will be entering Phase IV on August 31, 2007, and USPTO will open registration in the pilot to a limited number of new participants at this time.

If you would like to provide feedback on the e-Office Action Pilot Program or if you would like to participate in the pilot and need additional information, please send an e-mail to PAIR@uspto.gov.

e-Commerce Updates

New Document Description for a Letter Accompanying an Information Disclosure Statement
A document description for letters submitted with Information Disclosure Statements (IDS) became available in EFS-Web on July 29, 2007. When filing the letter that accompanies the IDS form in EFS-Web, please choose category IDS/References and document description Information Disclosure Statement Letter. Please do not use the document description “Information Disclosure Statement (IDS) Filed" when submitting the letter that accompanies the IDS form.

International Application Filing Standards
When filing International Applications or Patent Cooperation Treaty (PCT) applications, all documentation filed in EFS-Web should be A4 paper size (8.27 X 11.69).

Terminal/Statutory Disclaimer Fee Payment
When paying for Terminal or Statutory Disclaimers, the correct fee code is 1814 under Statutory Disclaimer located in the Post Issuance and Post Allowance Fees section of the “Calculate Fees” page in EFS-Web. See 37 CFR 1.20(d) and 1.321.

Currently, the Large Entity Statutory Disclaimer fee is available when filing a follow-on submission. The Small Entity fee option will be made available through follow-on submissions in the 1.2 release of EFS-Web scheduled for later this year.

Small entity filers can submit a fee transmittal form indicating their deposit account number as a substitute for paying the fee through EFS-Web. To pay by credit card, please submit the fee transmittal form as well as the Credit Card Payment Form (Form PTO-2038) to the Central Fax (571-273-8300) subsequent to filing the Disclaimer document via EFS-Web. Alternatively, the Credit Card Payment Form may be mailed. It is suggested that the applicant use Express Mail when submitting the Credit Card Payment Form so that the fee payment will be considered filed with the USPTO on the date of deposit with the United States Postal Service. See 37 CFR 1.10. The mailing address for such correspondence is:

Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

Please do not submit the credit card authorization form through EFS-Web.

Upcoming e-Commerce Events

Learn more about EFS-Web by visiting the e-Commerce booth at the following events:

  • September 25-27, 2007
    National Manufacturing Week
    Exhibiting with the Japan Patent Office and the European Patent Office
    Rosemont, IL
    http://www.devicelink.com/expo/nmw07/
  • October 18-20, 2007
    American Intellectual Property Law Association Annual Meeting
    Washington, DC
    http://www.aipla.org/Content/ContentGroups/Meetings_and_Events1/Annual_Meetings/200713/2007_Annual_Meeting.htm

Did you know?

Indexing your documents correctly will prevent unnecessary delays in processing time. When submitting the Request for Continued Examination (RCE) fillable form (SB30) in EFS-Web, please choose the document description Request for Continued Examination located in the “Amendment” and “Petition” categories.

 

 

August 1, 2007

- JPO Now Joins USPTO and EPO in the PDX Program
- Terminal/Statutory Disclaimer Fee Payment
- Best Practices Forum Results Webinar

Priority Document Exchange JPO Now Joins USPTO and EPO in the PDX Program

The United States Patent and Trademark Office (USPTO) announces the second foreign intellectual property office to join the Priority Document Exchange (PDX) program. As of July 28, 2007 the USPTO can now exchange priority documents electronically with the Japan Patent Office (JPO) as well as the European Patent Office (EPO). The USPTO exchanges priority documents with the JPO and EPO through secure, electronic connections using the Trilateral Document Access (TDA) Web Services at no cost to the applicant.

The USPTO will also automatically request retrieval of a JPO priority document if an U.S. application claims priority in the Oath, Declaration, or Application Data Sheet, eliminating the need to submit a “Request To Retrieve” form SB-38. The USPTO already automatically attempts to electronically retrieve a copy of any EPO priority document to which priority is claimed in an U.S. application

The USPTO and the EPO originally launched the PDX program on January 16, 2007 in order to offer applicants a faster, economical, and more secure transaction of priority documents.

How It Works:
Retrieving Priority Documents from the JPO for USPTO Applications

- For U.S. applications filed on or after July 28, 2007, the USPTO will automatically attempt to electronically retrieve a copy of any JPO priority document, to which priority is claimed in a U.S. application. The USPTO already automatically attempts to electronically retrieve a copy of any EPO priority document to which priority is claimed in a U.S. application.

- If an applicant would like the USPTO to retrieve a copy of a JPO priority document for a U.S. application filed prior to July 28, 2007, the applicant must file a request or an authorization form for the USPTO to retrieve a copy of the JPO priority document.

- Form PTO/SB/38 entitled “Request to Retrieve Electronic Priority Application(s)” is available for making such a request on the USPTO website at http://www.uspto.gov/web/forms/sb0038.pdf.

Transmitting U.S. Priority Documents to the JPO or EPO

Priority documents will be provided to the JPO and EPO only if one of the following criteria is met:
- The U.S. application is published or patented;

-OR-

- The U.S. application has cleared national security review and the applicant submitted written authorization to transmit the priority document to the intellectual property specified. Use of form PTO/SB/39 entitled “Authorization To Permit Access To Application By Participating Offices” is encouraged for this purpose and is available on the USPTO website at http://www.uspto.gov/web/forms/sb0039.pdf

For additional information, please visit: http://www.uspto.gov/web/offices/com/speeches/07-28.htm or e-mail: PDX@uspto.gov.

Terminal/Statutory Disclaimer Fee Payment

When paying for Terminal or Statutory Disclaimers, the correct fee code is 1814 – Statutory Disclaimer located in the Post Issuance and Post Allowance Fees section of the “Calculate Fees” page in EFS-Web. See 37 CFR 1.20(d) and 1.321.

Currently, the Large Entity Statutory Disclaimer fee is available when filing a follow-on submission. The Small Entity fee option will be made available through follow-on submissions in the 1.2 release of EFS-Web currently scheduled later this year.

Small entity filers can submit a fee transmittal form indicating their deposit account number in substitution of paying the fee through EFS-Web. To pay by credit card, please submit the fee transmittal form as well as the Credit Card Payment Form (Form PTO-2038) to the Central Fax (571-273-8300) subsequent to filing their Disclaimer document via EFS-Web. Alternatively, the Credit Card Payment Form may be mailed via Express Mail (if same receipt date is desired) to:

Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

Please do not submit the credit card authorization form through EFS-Web.

If you have any questions, please contact the Patent Electronic Business Center (PEBC) at 866-217-9197.

Did you know?

You can learn about e-filers’ ideas, individual challenges, and successes surrounding the adoption of EFS-Web into their business processes by watching the Best Practices Forum Results webinar. The webinar can be viewed online at: http://www.uspto.gov/web/forms/sb0039.pdf"

United States Patent and Trademark Office
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Last Modified: 8/29/2011 1:52:16 PM