United States Patent and Trademark Office OG Notices: 08 October 2002

                      Legal Framework for the Use of the
                           Electronic Filing System

   This document explains the legal framework for the treatment of
patent applications filed under the Electronic Filing System (EFS). It
describes how an electronic application will be processed by the United
States Patent and Trademark Office (USPTO or Office) and clarifies some
issues concerning these applications and the regulations of the USPTO.
It describes, from a legal point of view, the submission process and
the subsequent handling of submissions under the EFS, including New
Utility Patent Application Submissions (Part I), Provisional
Application Submissions, (Part II), Submissions under Eighteen-Month
Publication (Part III), Submissions on Compact Disc (Part IV), and
Information Disclosure Statement Submissions (Part V).

   This Legal Framework is a revision of the version published on
April 21, 2002 (1258 Off. Gaz. Pat. Office 93) under the same title,
and includes updated material concerning the Electronic Filing
Partnerships and the electronic Information Disclosure Statements.

   Special note concerning Electronic Filing Partnerships (EFP):

   On June 18, 2002 the Patent and Trademark Office (USPTO)
announced the award of partnership contracts for the electronic filing
of patent applications as part of its strategic plan to five companies:
Aspen Grove, Inc., AutoDocs, LLC, First to File, Inc., LegalStar, Inc
and LexisNexis. Each of the five companies will pursue its own business
plan, and integrate technology of its own development for providing its
customers with simple, convenient and secure electronic submissions to
the USPTO. The awardees responded to a solicitation from the USPTO and
demonstrated an ability to build and market systems that are
technically viable and provide services and products of value to
filers. The partnerships will supplement USPTO's current Electronic
Filing System (EFS).

   As each of the Electronic Filing Partners (EFPs) will operate
in a different manner, and offer a different array of supplemental
services to assist in electronic filing, a description of their
business plans is beyond the scope of this document. Details on the
operation of the EFPs will be published when available.


   Section 22 of title 35 of the United States Code expressly
provides for electronic filing of documents. However, because the
current rules of practice (title 37, Code of Federal Regulations) are
directed almost exclusively to paper submissions, the rules do not
speak to electronic submissions. To the extent that any USPTO rule is
inconsistent with EFS, the rule will be interpreted in a manner to
support EFS and waived, when necessary, until formal regulations
directed to electronic submissions are promulgated. See Electronic
Filing System Available to Public, 1240 Off. Gaz. Pat. Office 45, Nov
14, 2000 and 37 CFR 1.183. When the Office has more experience with
electronic submissions, the Office will propose rules relating to
electronic submission for public comment, and then, after consideration
of any comments, issue final rules.

   This waiver is consistent with the directives of current
statutory guidance, including the Government Paperwork Elimination Act,
Title XVII of Pub. L. 105-277 which, in section 1707 states that
government electronic records are not to be denied legal force and
effect solely because they are in electronic form. The same section
gives electronic signatures similar effect.

   The procedures and policies of the Electronic Filing System
(EFS) are described in this document and the published manuals for the
EFS located on the USPTO Patents Electronic Business Center Web site,
at http://www.uspto.gov/ebc. Some of the current regulations, for
example, in 37 CFR 1.4, 1.6, and 1.52, refer to the paper and ink
physical counterparts of an electronic submission. For the purposes of
submissions using the EFS, those regulations will be applied in a
manner consistent with the electronic nature of the EFS submissions.
Documents compliant with the requirements expressed in the EFS
documentation will not be held to violate the regulations solely
because of their electronic nature or the electronic submission

   Currently the EFS may only be used to submit 1) certain
non-provisional utility patent applications, 2) provisional
applications, 3) biotechnology sequence listings, 4) copies of patent
applications for purposes of having the copies of the patent
application published (redacted publication, republication as amended,
or voluntary publication), 5) assignments of patents and applications
and 6) Information Disclosure Statements. Those submissions are
itemized in the USPTO web site, and discussed in this document below.
Patent assignment information and Information Disclosure Statements may
be electronically filed for recording and entering with or without a
patent application. Refer to the EFS user manuals for guidance on the
USPTO Patents Electronic Business Center Web site, at


   How are new applications processed under the Electronic
Filing System (EFS)?

   The process for handling the EFS applications is shown on
Attachment 1 at the end of this paper. The following is an overview of
the process:

   A. Applications are "authored" by the applicant/attorney
using the USPTO-provided authoring templates to render the application
into special eXtensible Markup Language (XML) formats that can be
accurately processed by the Office's computers. The word processing
templates, available in either Microsoft Word or WordPerfect format,
allow the user to create an XML patent application document with tags
that identify the text content of each element of the specification.
For example, one XML tag will identify the title and a separate tag
will identify the first claim. The XML tags created in EFS submissions
permit the development of automatic application formality review
processing and form the basis for future electronic file wrappers that
will ultimately replace paper application files in the USPTO. Drawings
and complex work units, e.g., math or chemical equations, and complex
tables, may be included as image filed in the TIFF format, referenced
in the text, as per the instructions in the Users Guide.

   B. Once application files are properly formatted in XML, they
are saved on the users' computers. Then other XML files are created
using the submission software ePAVE (electronic packaging and
validation engine), assembled from the various text and data files,
validated, reviewed by the applicant or the representative and
electronically signed. The whole application is then digitally signed,
wrapped, encrypted, and electronically transmitted to the USPTO.
Applicant is urged to maintain an electronic copy of this file, similar
in concept to the admonition of 37 CFR 1.4(d)(1)(ii) for fax filings.

   C. At the USPTO, the electronic files are checked for technical
compliance, virus infection and integrity. Under normal circumstances,
the digital signature (part of the public key infrastructure (PKI)
mentioned above ) on the document package will prove valid, thus
assuring that the files were not altered since they were signed. An
electronic Acknowledgement Receipt including the Application Number and
a Confirmation Number will be produced and sent to the applicant as
proof of a successful submission. The Acknowledgement Receipt also
lists the files received by the USPTO with the name and the size of
each file, and includes a unique Message Digest code that is derived
from the submission. The applicant will retain this Acknowledgement
Receipt as clear evidence that on the date noted the files were
successfully received by the USPTO. The Acknowledgement Receipt serves
as an "Electronic Post Card" and is a very valuable assurance to
the applicant if the files or their resultant paper documents are ever
lost or damaged.

   An electronic Acknowledgement Receipt does not guarantee that
the application meets all the USPTO requirements for a filing date. For
example, any drawings that are submitted as part of an EFS submission
may not be reproducible. The Office will contact applicant if problems
are discovered in review of the submission. If the files have technical
errors, the applicant is immediately alerted by a return message that
does not include an Acknowledgement Receipt as described above. The
return message will, instead, indicate to the applicant that a problem
has occurred. The applicant will be advised to contact the USPTO for

   What types of utility applications may be submitted under EFS?

   The Office is only accepting certain utility patent
applications. We do not currently accept continued prosecution
applications, design applications, plant applications, secrecy order or
national security applications, or international applications. Very
large applications (over 10 megabytes in size ) are accepted only under
the compact disc provisions of Part IV. All other submissions should
use conventional paper media and, when appropriate under 37 CFR
1.52(e), compact disc media. Although the USPTO permits paper patent
applications to be filed in a language other than English, applications
submitted through the Electronic Filing System must be in the English

   How are applications kept secure during filing?

   Applications electronically filed under the EFS are submitted
using special software employing PKI technology. Public Key
Infrastructure (PKI) software assures the integrity, authenticity,
non-repudiation and confidentiality of the applications. USPTO security
standards are commensurate with the state of the art in electronic
commerce across the Internet. Applications are maintained in confidence
as required by 35 USC   122, until the application is published or a
patent is issued.

   What is the official submission of the new application under the EFS?

   Currently the official copies of all documents are the paper
versions printed in step 8 in Attachment 1 below, entered into the
Office files. The electronic submissions will be maintained under
electronic records management control, and will serve as evidentiary
copies if needed during prosecution or later. The Office is currently
in the process of evaluating what will be the official copy of the
application during full electronic prosecution, and the
application-as-filed when such application is submitted on paper or in
a non-compliant electronic format.

May a Computer Readable Form (CRF) of Biotechnology Sequence Listings
still be submitted with the EFS?

   Yes, the EFS may be used to submit the CRF submission required
of biotechnology applications under 37 CFR 1.821(e) for applications
that have already been submitted or for new biotechnology applications
being concurrently submitted using EFS.

   May large tables or computer program listing appendices be submitted
with the EFS?

   Yes, the submission software enables the electronic filing of
such data authored in a text (ASCII) format under 37 CFR   1.58(b) and

   What is the force and effect of the Acknowledgement Receipt sent by the
USPTO under the EFS?

   The electronic Acknowledgement Receipt is not an official
filing receipt for the application. The paper Filing Receipt (37 CFR
1.54), PTO Form-103X, is sent after printing the application in step 8
in Attachment 1 below, and reviewing the submitted application parts
for compliance with 35 U.S.C.   111 filing date requirements and will
indicate the official filing date. However, the Acknowledgement Receipt
establishes the date of successful submission of the associated
documents, and is thus a crucial part of the application process.

   What is the value of the Acknowledgement Receipt if a problem occurs?

   If the printed version of any document received by the EFS is
unreadable, and if it cannot be recovered from the stored files
received by electronic submission, then the applicant will be promptly
notified by phone, fax or e-mail as indicated in the EFS instructions.
Even with prompt processing, if EFS receipts are high the review may
take place a few days or weeks later. If an error occurs and the
application cannot be reconstructed, the applicant may have to resubmit
the application and petition for the original filing date. Such events
are expected to be rare. Under this scenario, the applicant would
present 1) the Acknowledgement Receipt, 2) a paper version and an
electronic version (on floppy disk or CD-R) of the files as submitted
and 3) a petition verifying that the attached files are the same as
mentioned in the Acknowledgement Receipt for that application number.
The Acknowledgement Receipt will establish that the resubmitted
documents were exactly those submitted on the date of receipt.

   What is the date of receipt of an application received under the EFS?

   The application's "date of receipt" is the date that it is
fully and successfully received at the USPTO, as shown on the
Acknowledgement Receipt. The date at the USPTO is controlling for the
purposes of original patent applications. There is no "certificate of
transmission" practice for non-provisional or provisional application
e-filings (37 CFR 1.8).

   Hours of operation of the EFS will be clearly expressed in the
EFS instructions. If a transmission is attempted when the system is
down, the Office cannot accept it and will, if possible, transmit back
a notice that the Office is closed. No Acknowledgement Receipt will be
sent. The "closed" notice will advise the applicant to use
alternative filing methods, such as hand delivery of paper to the USPTO
or Express Mail (under 37 CFR 1.10), to establish the filing date.
Remember that new applications under 37 CFR 1.53 cannot be submitted by
fax (37 CFR 1.6(d)(3)), and that normal certificate of mailing
procedures do not apply to new applications (37 CFR 1.8(a)(2)(I)(A) and

   If an application is successfully received on a Saturday,
Sunday or Holiday, the Office will assign that receipt date at the
USPTO to the submission, similar to the Express Mail practice under 37
CFR 1.10.

   Are there any legal consequences of the Office's accepting electronic
patent applications on Saturday and Sunday?

   The USPTO will be open for receiving applications in electronic
form during scheduled hours every day of the week. Hours will be
announced on the Patents Electronic Business Center Web Page, at the
USPTO Website: http://www.uspto.gov/ebc.

   Electronic filing will provide applicants with the opportunity
to receive a filing date on any day of the week, including Saturday,
Sunday, and Federal holidays. In addition, consistent with 35 U.S.C.
21(b), when the last day for taking any action or paying any fee in the
USPTO falls on Saturday, Sunday, or a Federal holiday within the
District of Columbia, the action may be taken or fee paid on the next
succeeding secular or business day. Thus, under United States law,
applicants will still be permitted to take action on the next business
day when the last day for taking action falls on a weekend or Federal
holiday, regardless of the mode or form of filing.

   Because the conditions for priority rights are governed by
national law, applicants are cautioned to consider possible adverse
consequences regarding the determination of priority periods under
Article 4(C)(3) of the Paris Convention when filing international
applications in the United States. Specifically, the ability to file
applications electronically on weekends may result in loss
of priority rights in foreign jurisdictions designated in international
applications filed with the USPTO, if applicants elect to take
advantage of sections 21(b) or 119(e)(3) of title 35. In such
circumstances, other Patent Offices may deny the priority
claim on the basis that the international application was not timely
filed according to their national law. For this reason, applicants may
prefer not to rely upon the "next business day" provisions of
sections 21(b) and 119(e)(3) of title 35 when filing applications with
the USPTO, and instead file the application before the Convention year
has expired.


   Provisional applications under 35 U.S.C.  111(b) can be
electronically filed using EFS. The process for handling EFS
provisional patent applications follows the same process outlined in
Part 1 of the Legal Framework and in Attachment 1 for new utility
patent application EFS filings except for the following features of the

   A. Provisional application must include the Application Data
Sheet (Section 1.76) as the equivalent submission of a cover sheet to
provide bibliographic information (i.e., inventor names, correspondence
address, etc.). The entry of a customer number for a correspondence
address will assign to the provisional application the correspondence
address associated with the customer number and will enable information
about the application to be obtained using the private Patent
Application Information Retrieval (PAIR) system.

   B. The EFS transmittal form will automatically include
information identifying the electronic submission as a provisional

   C. If the Provisional Application is subject to U.S. government
property interest, an explanation should be entered on the EFS
transmittal form comments section. Provisional Applications containing
national security related matter must not be electronically filed.

   D. Payment of the basic provisional filing fee is required.

   E. The Acknowledgement Receipt returned after a successful
electronic filing of a provisional application will contain the USPTO
assigned provisional application number.

   F. Provisional Application submissions under EFS will be
printed to paper, reviewed for completeness, and a paper Official
Filing Receipt will be mailed to the applicant. The paper File Wrapper
containing the electronically filed documents (i.e., the provisional
application) will not be examined or published.

   G. Provisional Applications submitted under EFS may be in the
English language only.

   Although the USPTO permits paper patent applications to be
filed in a language other than English, provisional and non-provisional
applications submitted through the Electronic Filing System must
currently be in the English language.


   EFS is also used for the re-submission of patent applications
for the purposes of Eighteen- Month Publication (i.e. Domestic
Publication of Patent Applications Published Abroad under P.L. 106-113
or Eighteen-Month Publication). See 37 CFR 1.211-1.221 for the relevant

   Ordinarily, a paper copy of a patent application is used for
the production of the Patent Application Publication. However, if
applicant desires:

   a) the publication of a redacted copy of an application (37 CFR 1.217)
   b) the publication of the application as amended (37 CFR 1.215) or
   c) the voluntary publication of an application filed before, but pending
on November 29, 2000 under 37 CFR 1. 221, or
   d) a republication under 37 CFR 1.221 of an application previously
published under 37 CFR 1.211 (that is not to correct material errors in
publication sought to be corrected within 2 months of publication via a
paper request)

   then the application must be submitted in electronic
form using the EFS. If the applicant requests early
publication of the application under 37 CFR 1.219 he or she may
submit an electronic copy using EFS, but EFS submissions are
currently only able to be used for publication purposes if the
application was already on file in the USPTO. Accordingly, to obtain
early publication either file the application on paper or through EFS,
and, once a confirmation number is obtained (on the filing receipt),
re-submit the application using EFS and with a request for early
publication. Alternatively, the second EFS submission may be
eliminated, but publication will be based upon a paper version of the
application. Early publication requests require submission of the
publication fee. See 37 CFR 1.219.

   Background: How are submissions handled under the
Electronic Filing System (EFS) for Eighteen-Month Publication?

   The process for handling the EFS submission of Eighteen-Month
is shown on Attachment 2 below. Note the following features of the

   A. Applications (including plant patent applications) that are
submitted for redacted, "as amended", voluntary, "previously
published" or, optionally, "early" Patent Application
Publications are authored using the USPTO-provided authoring tools as
described for new applications above. They must contain a statement
that the submission does not include any "new matter".

   B. Application files, once properly authored, are assembled,
validated, encrypted, digitally signed, wrapped and electronically
transmitted to the USPTO. This is the same process used for new
applications described above.

   C. After receipt at the USPTO, the electronic files are checked
for technical compliance, freedom from viruses and apparent integrity
as described above for new applications. The Eighteen-Month Publication
submissions are transferred to the facility that edits, publishes and
produces the Published Patent Application documents directly in
electronic form.

   Where does the applicant indicate or author the required
statement that this resubmission of the application contains no new
matter? What other certifications are effective?

   The following statement is automatically entered and printed on
the completed EFS Application Data Sheet for every Eighteen-Month
Publication electronic submission:

   "I state that this resubmission of the application contains
no new matter. If this resubmission is a redacted copy of an
application submitted under 37 CFR 1.217, the applicant hereby
certifies that the redacted copy of the application eliminates only the
part or description of the invention that is not contained in any
application filed in a foreign country, directly or through a
multilateral international agreement, that corresponds to the
application filed in the Office and otherwise does not introduce any
new matter. Additionally, if this submission is a redacted copy of an
application submitted under 37 CFR 1.217, the applicant further
certifies that the documents and certification required by 37 CFR
1.217(c) have been filed or will be filed concurrently with the request
for redacted publication (See 37 CFR 1.217(c))."

   In accordance with 37 CFR 10.18 (b), by presenting to the
Office (whether by signing, filing, submitting, or later advocating)
any paper, the party presenting such paper, whether a practitioner or
non-practitioner, is certifying that -

   1) All statements made therein of the party's own knowledge are
true, all statements made therein on information and belief are
believed to be true, and all statements made therein are made with the
knowledge that whoever, in any matter within the jurisdiction of the
Patent and Trademark Office, knowingly and willfully falsifies,
conceals, or covers up by any trick, scheme, or device a material fact,
or makes any false, fictitious or fraudulent statements or
representations, makes or uses any false writing or document knowing
the same to contain any false, fictitious or fraudulent statement or
entry, shall be subject to the penalties set forth under 18 U.S.C.
1001, and that violations of this paragraph may jeopardize the validity
of the application or document.

   Entry of one electronic signature appearing on the EFS
submission transmittal will acknowledge all the certification
statements contained in the EFS submission.

   May the applicant use a certificate of transmission?

   Electronic submissions for Eighteen-Month Publication under EFS
of "as amended" applications, "voluntary" or "previously
published" publications, or "early" publications may be submitted
with a certificate of transmission. Consistent with the certificate
practice of 37 CFR 1.8, the local date at the place of submission as
indicated on the certificate of transmission will be considered for the
purposes of determining if the electronic applications were submitted
in a timely manner. This does not apply to "redacted" applications
submitted under 37 CFR 1.217 that must be received on the specified
date at the USPTO.


   If the Applicant/Attorney attempts to file a Utility or
Provisional Patent Application or Eighteen-Month Publication Submission
that exceeds the EFS system limit of 10 Megabytes, the system will
generate an error message and advise the applicant to submit the large
application on compact discs (hereinafter CDs or CD-Rs). It cannot be
forwarded to USPTO over the Internet using ePAVE. If a large
biotechnology sequence listing, table or computer program listing
caused the large application size, the applicant may submit the
application according to the requirements of 37 CFR 1.52 (e) with the
large section on CD and the rest in paper. However, regardless of the
cause of the large size of the submission, EFS can also be used to file
the application in the following manner. The process requires the
workstation to be connected to a compact disc recorder:

   The process for handling large submissions is diagramed in
Attachment 3. Applicant, on creating a large application (>10 Megabytes)
will be instructed by ePAVE to:

   1. Print out the Transmittal Form.
   2. Copy two indicated files containing the whole application from the
workstation to compact disc-recordable (CD-R) media. Do not use floppy
or Zip disks or other media.
   3. Wrap the CD in a hard case within a padded protective mailing
envelope, attached to the Transmittal Form. Enclose a cover letter
explaining that the submission contains an application that was too
large to be submitted under the EFS ePAVE process.
   4. Hand carry, or mail the CD-R and a copy of the paper Transmittal
Form, with the cover letter to the USPTO, or deposit them with the US
Postal Service under the Express Mail procedures of 37 CFR 1.10.

   Applicant is advised to keep a copy of the CD and transmittal
form for his or her records. In step 2 above, an applicant may
optionally make a backup copy of the CD and send in both copies to the
USPTO. Label the CDs "Copy 1" and "Copy 2" and include a signed
statement that the two copies are identical. Copy 1 will be used for
processing, unless it is unreadable. Applicant is advised to
electronically "compare" the file on the CD with the files on the
computer to be sure of accuracy.

   The USPTO will receive the application package in the mailroom.
The date of receipt of the application will be recorded. In due course,
the CD will be "uploaded" to the EFS server, where the files are
unsigned, decrypted and unzipped. The application files will then be
processed as EFS submissions.

   If the submission was a new application (as opposed to a
submission of a copy of an application under Eighteen-Month
Publication), an Acknowledgement Form will be printed. However, the
Acknowledgement Form will be modified to indicate that the USPTO mail
room date of receipt of the CDs, or the Express Mail date when they
were submitted to the USPS, is the date of their receipt (the date of
uploading to the server will NOT be used). The Acknowledgement Form is
placed in the file with the printed application, and a copy of the
Acknowledgement Form is sent back to the applicant. A certificate of
mailing may be used in the same manner as the certificate of
transmission described above.

   If the files contain large tables, sequence listings or
computer program listings, the Office has the option of not printing
the large files, but rather burning two CD-Rs of such data, and
treating them under the CD practice of 37 CFR 1.52(e). If the file is
an amino acid/nucleotide sequence listing, then one additional copy of
such a sequence listing will be created and used as the CRF. In any
case, one CD is placed in the file, and one is put in the CD repository.

   In other respects, processing will continue as if the
application had been submitted by the standard EFS channels.

   What is Receipt Date for EFS New Utility or Provisional Application
Filing submitted on CD?

   The Filing Date of any EFS New Utility or Provisional
Application sent in by CD (in a "CD package", including a paper
copy of the ePAVE Transmittal form) will be based on the date the CD
package is received at USPTO, if delivered by hand or regular US mail.
That date will be indicated in any acknowledgment. If the CD package
was sent to the USPTO by Express Mail under 37 CFR 1.10, then the date
of deposit with the United States Postal Service will be used.

   What is the official copy of the Sequence Listing (1.821(c)), Table,
Program Listing?

   For applications that are originally filed using EFS, the paper
copy of the specification that is printed from the EFS submission, and
placed in the file wrapper is the official copy, with one exception.
Sequence listings, large tables, and computer program listings may be
submitted on CD media, according to 37 CFR 1.52(e). If the Office
decides, in a particular instance, to copy a sequence listing file,
computer program listing or large table onto CDs instead of printing it
to paper, the CDs become the official copy. The decision of media,
paper or CD, is dependent on the length of the submission and
feasibility of printing it to paper.

   By "official" the Office means the active authoritative
copy. The electronic submission will be maintained as an evidentiary
copy of what was submitted should any questions arise during
prosecution or later.

   May an applicant submit more than one copy of the CD to assure

   Applicant is required to submit only one EFS New Utility
Application CD. However, applicant has the option of submitting a
second copy of the CD, but must label the two copies "Copy 1" and
"Copy 2", and certify that Copy 1 and Copy 2 are the same. Copy 1
would be used for processing, unless it is unreadable.

   Will Express Mail  - submission of EFS New Utility Application CD be


   Should applicant be advised to do a file size comparison
between encrypted files copied to EFS New Utility Application CD and
the EFS files residing on the applicant's workstation?

   Yes, the EFS Guide will advise applicants to do a file comparison.


   Background: How are Information Disclosure Statements (IDS) processed
under the Electronic Filing System (EFS)?

   Information disclosure statements (IDS) may be electronically
submitted to the United States Patent and Trademark Office (USPTO or
Office) via the Office's Electronic Filing System (EFS). When making
such an EFS submission of an IDS, paper copies of U.S. patents and U.S.
application publications cited in the IDS will no longer have to be
supplied by applicants. Thus, the Office is implementing a change which
has been requested by many applicants and patent practitioners.

   Applicants file an electronic IDS by (1) entering the references'
citation information in an electronic data entry form, equivalent to
the paper PTO-1449 form; and (2) transmitting the electronic data entry
form data to the Office via ePAVE.

   What documents may be cited on an electronic Information Disclosure
Statement (eIDS)?

   This electronic form allows only citations for U.S. patents and
U.S. patent application publications.

   How does the applicant meet the requirement under 37 CFR 1.98 to submit
copies of cited documents?

   Applicants will NOT submit copies of any U.S. patent or U.S.
patent application publications cited on an electronic IDS form that is
electronically transmitted to the Office.

   How are Information Disclosure Statements with foreign
patent documents or non-patent literature documents or unpublished U.S.
applications filed?

   If any references to foreign patent documents, non-patent
literature documents or unpublished U.S. applications are to be cited,
applicants will submit those citations on a conventional paper PTO-1449
form (or revised form PTO/SB/08). A printed copy of each cited foreign
patent document, non-patent literature document and unpublished U.S.
application should accompany the conventional IDS form. Submissions of
these documents may be made by mail, facsimile transmission, or hand

   What data is entered in an electronic Information Disclosure Statement

   The ePAVE software provides an electronic data entry IDS form
equivalent to a paper PTO-1449, Information Disclosure Statement form,
in which citations for up to 50 U.S. patents and up to 50 U.S. patent
application publications may be entered. Each citation requires the
patent or application number, the name of the patentee or applicant,
and the date of issue or publication. The filer may optionally add the
kind code, and U.S. patent class and subclass code for each citation.

   How are certifications and statements of relevance required under 37
CFR 1.97(e) submitted with an eIDS?

   The electronic IDS form contains preprinted certification
statements that allow the user to click on one of the two
certifications required under 37 CFR 1.97(e), regarding citation of the
documents in a communication from a foreign patent Office and knowledge
of the cited documents by individuals under 37 CFR 1.56(c). The
electronic IDS form also contains a free form text area to allow the
user to include statements of relevance or other remarks with regard to
the cited documents.

   How are fees submitted?

   Since the Non-Patent Literature (NPL), unpublished patent
applications and foreign patent documents are to be submitted in paper,
while the US patents and published applications are indicated on the
electronic IDS, the total IDS may be broken into multiple submissions.
Generally a single fee will suffice. The fee under 37 CFR 1.97(c) must
be included with the first electronic submission of the electronic IDS.
Subsequent submissions of the non-electronic documents will not
require a fee if they are received on the same date that the electronic
IDS is received by the Office or were deposited in Express Mail,
deposited in the first class U.S. mail with a certificate of mailing in
accordance with 37 CFR 1.8, or transmitted by facsimile on the same day
with a certificate of transmission in accordance with 37 CFR 1.8 on the
same date as the electronic IDS that contained the fee. The non-electronic
submission will make reference to the electronic IDS.

   Details of the fee process are described in the documentation
of the EFS.

   How does the IDS data get sent to the Office?

   The ePAVE software validates the format of data entered into
the electronic IDS form and allows the applicant to specify whether the
electronic IDS form is to be linked to an accompanying new application
filing or is being filed for a previously filed application. ePAVE
transmits the XML formatted IDS data from the electronic data entry
form to the Office.

   As with the other types of electronic submissions, ePAVE will
validate the information, display it to the filer, prompt for the
filer's electronic signature, use the filer's digital certificate to
encrypt the whole package, and transmit the submission to the USPTO.
Upon receipt, the Office will send to the filer an electronic post card
"Acknowledgement Receipt" indicating the date of receipt, the
message digest, the application number, and the names, types, and sizes
of the files received by the USPTO.

   Is it possible to submit an eIDS subsequent to filing an application,
and, if so, how is any necessary fee flagged?

   The IDS may be submitted as part of a new utility EFS
electronic application filing, or as a subsequent submission for a
previously filed patent application. The ePAVE program will prompt the
filer to associate an IDS file with a new application file and to
provide payment information, where either is appropriate.

   If the IDS submission is subsequent to the application filing,
the filer will be required to enter both an application number and a
confirmation number. A confirmation number is an additional four-digit
identifier assigned to an application, and can be found in the upper
left-hand corner of the official filing receipt. An IDS cannot be
electronically transmitted prior to an initial filing.

   How is the eIDS treated by the Office?

   The IDS form submitted electronically will be printed and
placed in the Office's application file wrapper. The cited document
numbers will be made available electronically to the examiner to
facilitate searching and retrieval of U.S. patents and U.S. application

   The IDS form will be entered as a paper into the application
file indicating that it was received on the date the form was
completely received via EFS. This is the date the Office will use in
considering compliance with 37 CFR    1.97 and 1.98. This paper will
be treated procedurally the same as any other paper in the file, and
will be available to any party viewing the contents of the file.

   Examiners will consider the U.S. patents and U.S. patent
application publications cited on an electronic IDS form provided the
remaining requirements of 37 CFR 1.97 and 1.98 are met, by reviewing
electronic or printed copies produced from the Office electronic
databases. Examiners will indicate which documents were considered by
initialing and dating the paper copy of the eIDS form, and supplying a
copy to the applicant with the next Office action, just as with
conventional IDS submissions.

   What if the applicant transcribes the document numbers incorrectly into
the eIDS?

   It is most important that the cited patent and patent
application publication numbers be accurate. Because the IDS filer will
not submit copies of cited documents, there will be no copies of the
disclosed documents in the file wrapper for the examiner to review.
Instead, the examiner will electronically retrieve the patents and
application publications identified by the cited document numbers.

   The only mechanism for having the correct document reviewed and
considered when an erroneous patent or application publication number
is cited in an IDS citation will be by citing the correct citation
number in a subsequent IDS that conforms to the requirements of 37 CFR
1.97 and 1.98.

   For further information:

   For further information, consult the EFS documentation on the
USPTO Patents Electronic Business Center web page which includes a
complete description of the EFS process and procedures. It is located
on the Internet at http://www.uspto.gov/ebc.

   If there are any questions on the Legal Framework, please
contact Jay Lucas at jay.lucas@uspto.gov. Questions on the
EFS system should be directed to the SIRA/EFS project primary contact,
Ms. Shelia Summerlin shelia.Summerlin@uspto.gov.
Correspondence may also be addressed to Jay Lucas, United States Patent
and Trademark Office, Washington, D.C. 20231.

September 9, 2002                                         STEPHEN G. KUNIN
                                                   Deputy Commissioner for
                                                 Patent Examination Policy