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e-Office Action FAQs

 

FAQs

What is e-Office Action?

The e-Office Action program is a new USPTO initiative available through Private PAIR.  The e-Office Action program is designed to notify applicants, via e-mail, that new Office communication is available for viewing and downloading in Private PAIR. Applicants who opt-in to the program will receive a daily e-mail notification that will replace the daily POSTAL MAILED PAPER DELIVERY of Office communication.

Please Note: The e-Office Action program is based on applications associated to a Customer Number. Applicants with multiple Customer Numbers must opt-in each Customer Number to receive separate e-mail notifications.

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What types of application are included in the program?

The program includes provisional applications and non-provisional applications filed under 35 U.S.C. 111, including utility, plant, design, and reissue applications and national stage applications under 35 U.S.C. 371. However, the following applications and proceedings are not included in the program: international applications under 35 U.S.C. 363, reexamination proceedings, and interference proceedings.

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How is e-Office Action different from the current paper delivery of Office communication?

The USPTO currently mails Office actions and all other communications to applicants. Applicants electing to participate in the e-Office Action program will receive daily e-mail notifications at their designated e-mail addresses from the USPTO that Office communication is available for secure viewing and downloading in Private PAIR. Opting into the program means that the USPTO will discontinue mailing participating applicants paper copies of Office communication. Applicants participating in the e-Office Action program will rely solely on e-mail notifications and the Office communication that is electronically available in Private PAIR rather than paper copies of communication send through the mail.

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What are the key benefits of participating in the e-Office Action program?

  • Minimizes the risk of delayed or lost Office communication sent by mail
  • e-mail notification expedites the availability of Office communication up to three days faster than communication sent by postal mail
  • Eliminates receipt of paper copies thus reducing paper communication processing errors and docketing time

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Does e-Office Action program change the policy for communication via the Internet?

By registering for the e-Office Action program, participant is authorizing the Office to send e-mail notifications of Office communications entered by the participating Office business units in the applications associated with the Customer Number. The e-Office Action program does not, otherwise, change the policy for communication via the Internet set forth in the Manual of Patent Examining Procedure (MPEP) § 502.03. The e-mail notification is simply an automated e-mail sent by the Office. It is not an e-mail sent by the examiner. The program does not alter the Office policy prohibiting an applicant or examiner from engaging in improper e-mail correspondence.

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Who may participate?

Effective on June 29, 2009, any registered attorney or agent of record, and pro se inventor who is a named inventor, in a patent application associated with a Customer Number through which Private PAIR is accessed, may participate in the e-Office Action program. To access Private PAIR, the participant must have a Public Key Infrastructure (PKI) certificate linked to the participant’s Customer Number.

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What are the steps I must take to participate in the e-Office Action Program?

A few steps make it simple and easy to begin participating in the USPTO’s e-Office Action program.  

  1. Log-in to Private PAIR and select View Customer Number Details from the menu list. This will take you to the Details for Customer Number screen so you can review current Customer Number details. 
  2. Next, select the ‘Request Customer Data Change(s)’ button near the bottom of the web page to enter the Edit Customer Details screen.  
  3. In the heading section on the Edit Customer Details screen, select: Receive Correspondence Notification via e-mail.
  4. Finally, enter up to a maximum of three e-mail addresses where the notifications will be sent, preview your changes, then submit your change request to the USPTO.  
  5. After completing this process, PAIR will send a test email to each modified or new e-mail address.

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When can I expect the first e-mail notification after I elect to participate in the e-Office Action program?

The first e-mail notification of Office communication will be generally delivered no earlier than two business days after switching to e-Office Action program. However, this is dependent on the volume of Office communication you receive for applications associated to the Customer Number.

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Will the Office communication documents be attached to the e-mail notification?

No. The actual Office communication documents can be accessed via Private PAIR.

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Can I opt out of the program anytime after I elect to participate?

Yes. Participants in the e-Office Action program can easily opt-out of the program at anytime. From the Details for Customer Number page, participants must select from the menu items: Receive Correspondence via Postal Mail, then review changes, and submit your changes to the USPTO. Please note that switching repeatedly between electronic and paper communication within a calendar day may result in notification delays. Also, opting out of the program will not stop the distribution of courtesy postcards for any unviewed communication for which an e-mail notification was sent. Should you elect to return to paper communication, it is recommended that one e-mail address remain assigned to the Customer Number in order to deliver e-mail notifications still in process.

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How often will I receive e-mail notifications?

Participants will receive an e-mail notification daily for each Customer Number, including weekends, by 8:00 a.m. Eastern Time. An e-mail notification is sent only when there is new Office communication that day for applications associated with the participant’s Customer Number. Once you are opted in, any Office action currently in process will continue to be mailed in a paper format.

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What information is contained in an e-Office Action e-mail notification?

An e-mail notification provides comprehensive information regarding the new Office communication. The information in the e-mail notification includes application number(s), Image File Wrapper (IFW) Document Code, mail room date, the attorney docket number, as well as your correspondence address and associated Customer Number. Basically, you will know exactly what you are being notified for prior to accessing the actual communication in Private PAIR. (Please refer to the e-Office Action Computer Based Training module for additional details and to view a sample e-mail notification).

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How do I view the new Office communication once I have been notified?

There are two methods to access new Office communication in IFW via Private PAIR.  The first method is to search by individual application number then select the IFW tab to access the file wrapper. The second method is by Customer Number via the Outgoing Correspondence search.

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What happens if I forget to view my Office communication?

As a courtesy, the USPTO will mail a reminder postcard to the applicant if new communication has not been accessed in Private PAIR within seven calendar days after the sending date of e-mail notification. Please note that the postcard is sent only for communications that require an applicant’s response such as a Final Rejection, Non-Final Rejection or Notice of Allowance and Allowability.

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How many e-mail addresses can I associate to e-Office Action?

The e-Office Action program requires at least one e-mail address. Up to a maximum of three valid e-mail addresses can be assigned to receive e-mail notifications. For example, these e-mail addresses may be an individual’s e-mail address, a general mailbox, or a docketing department’s e-mail address.

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Which USPTO business units participate in the e-Office Action program?

Participants will receive e-mail notifications for any communications prepared by the following participating business units: Technology Centers, the Office of Patent Application Processing (formerly Office of Initial Patent Examination (OIPE)), Office of Data Management (Pre-Grant Publications and Office of Publications), Board of Patent Appeals and Interferences (BPAI) for ex parte appeals of rejections, Office of Petitions, and Office of Licensing & Review.

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Which business units in the USPTO do not participate in the e-Office Action program?

Since several areas of the Office have independent mailing processes, participants will continue to receive paper mailings for communications prepared by certain business units including (but not limited to): the PCT Operations Division – International Branch, BPAI for interference proceedings, Central Reexamination Unit (CRU), Office of Enrollment and Discipline, and Office of the Solicitor.

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Can I view an e-mail history of e-mail notifications?

Yes. Specific e-Office Action related events with corresponding date are available in the Transaction History tab in Private PAIR. The Transaction Description events are self explanatory and are labeled as “Email Notification,” “Electronic Review,” and if applicable “Mail Post Card.”  In addition, an OA.EMAIL document is placed in the file wrapper of the application notified that day.  The OA.EMAIL document is a truncated version of the daily e-mail listing details of only that specific application number’s new communication.

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What should I do if I do not get notified or get notified late via an e-Office Action e-mail notification?

Please refer to sections 10 and 12 of the OG notice

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How do I gain access to Private PAIR?

To access Private PAIR you must:

  • be a registered patent attorney/agent, an Independent Inventor, or a person granted limited recognition;
  • have a customer number; and
  • have a digital PKI certificate.

Instructions on how to apply for a Customer Number and digital PKI certificate can be found on the Patent EBC Web site.

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How do I associate my existing patent applications to my Customer Number?

You will need to submit a Customer Number Upload Spreadsheet to associate your current patent applications to your Customer Number. Please go to the Patent EBC Web site and follow the instructions within Step 1 under the heading "Associate Existing Patent Applications to a Customer Number".

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If I am participating in the initial Pilot Program for e-Office Action, will I need to sign up again when the program is made available to everyone?

The pilot-to-production transition will be transparent to you. You will automatically be part of the e-Office Action program.  No action from you is needed. There is no need to opt in again.

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If I utilize an e-mail spam filter, what configuration setting must be performed to allow the e-mail notification?

  • The USPTO.GOV domain must be listed in the ‘allow’ or ‘white’ list.
  • Additional spam filter configurations are:
  • The subject name of the notification: Private PAIR Correspondence Notification for Customer Number XXXXX, where XXXXX refers to your Customer Number
  • The ‘From’ field of the e-mail is PAIR_eOfficeAction@uspto.gov.  Please do not reply to this email address.

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Last Modified: 5/8/2013 9:54:51 AM