513 Deposit as Priority Mail Express^® with U.S. Postal Service [R-07.2015]

“EXPRESS MAIL” RENAMED PRIORITY MAIL EXPRESS^®

Effective July 28, 2013, the United States Postal Service (USPS) changed the name of “Express Mail” to Priority Mail Express^®. All characteristics of the Priority Mail Express^® service are the same as those of the former “Express Mail” service (although the mailing labels differ).

The statutory authority for the granting of a filing date based on the date of deposit for correspondence sent by Priority Mail Express^® and received by the Office is found in section 21(a) of Title 35 of the United States Code.

The specific rule for obtaining a filing date as of the date of deposit in Priority Mail Express^® (rather than the date of receipt at the Office) is 37 CFR 1.10.

35 U.S.C. 21(a) is limited to correspondence deposited with the United States Postal Service (USPS). The procedure in 37 CFR 1.10 is limited to correspondence deposited in the Priority Mail Express^® Post Office to Addressee service of the USPS. There are no similar provisions and no similar benefit can be obtained for correspondence deposited in International Express Mail.

Effective July 28, 2013, the USPS changed the name of Express Mail^®. In addition, the USPS updated the Priority Mail Express^® mailing label. The mailing label now has a ‘‘date accepted’’ field rather than a ‘‘date-in’’ field, which was previously used on the Express Mail^® label.

I. EFFECTIVE DATE, WEEKENDS & HOLIDAYS

37 CFR 1.6(a)(2) provides that correspondence deposited as Priority Mail Express^® in accordance with 37 CFR 1.10 will be stamped, and, therefore, considered as filed on the date of its deposit, regardless of whether that date is a Saturday, Sunday or federal holiday within the District of Columbia. 37 CFR 1.10 provides a procedure for assigning the date on which any paper or fee is deposited as Priority Mail Express^® with the USPS as the filing date of the paper or fee in the U.S. Patent and Trademark Office (Office). The date of deposit with the USPS is shown by the “date accepted” on the Priority Mail Express^® mailing label or other official USPS notation. This holds true for any day that the correspondence may be accepted as Priority Mail Express^® by the USPS, even when the paper or fee is deposited and accepted on a Saturday, Sunday or federal holiday within the District of Columbia. For example, if a person files a patent application by Priority Mail Express^® with the USPS on a Saturday in compliance with 37 CFR 1.10, he or she will receive the benefit of the Saturday date, even though the Office is closed on Saturdays and, therefore, the person could not have filed the application by depositing it directly at the Office on that Saturday. See 37 CFR 1.6(a)(1). In those cases where the procedure of 37 CFR 1.10(a) has not been properly followed, e.g., the “date accepted” is illegible, the filing date of the correspondence will be the date of actual receipt in the Office. An applicant may file a petition under the conditions specified in 37 CFR 1.10(c), (d) or (e) (discussed below) presenting whatever arguments and evidence that the paper or fee is entitled to a filing date other than the filing date accorded by the Office.

II. DATE ACCEPTED, DIRECT DEPOSIT, PRIORITY MAIL EXPRESS^® BOX RECEPTACLES & LOG BOOKS

The procedure in 37 CFR 1.10(a) requires the use of the Priority Mail Express^® Post Office to Addressee service of the USPS. This service provides for the use of a mailing label on which the USPS clearly indicates the date on which it was deposited. Correspondence sent by the Priority Mail Express^® Post Office to Addressee service is considered filed in the Office on the “date accepted” entered by the USPS. The “date accepted” on the Priority Mail Express^® mailing label must be completed by the USPS, not by the applicant. For correspondence filed in accordance with 37 CFR 1.10, Office personnel will routinely look to the Priority Mail Express^® mailing label, and stamp the “date accepted” or other official USPS notation as the filing date of the correspondence. Accordingly, if the USPS enters the deposit date as its “date accepted,” the correspondence will receive the deposit date as its filing date. If the USPS deposit date cannot be determined, the correspondence will be accorded the date of receipt in the Office as the filing date. An applicant may file a petition under the conditions specified in 37 CFR 1.10(c), (d), (e), (g), (h), or (i) (discussed below) presenting whatever arguments and evidence that the paper or fee is entitled to a filing date other than the filing date accorded by the Office.

37 CFR 1.10(b) further provides that correspondence should be deposited directly with an employee of the USPS to ensure that the person depositing the correspondence receives a legible copy of the Priority Mail Express^® mailing label with the “date accepted” clearly marked, and that persons dealing indirectly with the employees of the USPS (such as by depositing correspondence in a Priority Mail Express^® drop box) do so at the risk of not receiving a copy of the Priority Mail Express^® mailing label with the desired “date accepted” clearly marked. On petition, the failure to obtain a Priority Mail Express^® receipt with the “date accepted” clearly marked may be considered an omission that could have been avoided by the exercise of due care, as discussed below. While the Office strongly urges direct deposit of Priority Mail Express^® correspondence in order to obtain a legible copy of the Priority Mail Express^® mailing label, parties are not precluded from using Priority Mail Express^® drop boxes, but do so at their own risk.

A paper or fee placed in a Priority Mail Express^® box receptacle after the box has been cleared for the last time on a given day will be considered to be deposited as of the date of receipt (“date accepted”) indicated on the Priority Mail Express^® mailing label by the Postal Service Priority Mail Express^® acceptance clerk. 37 CFR 1.10(d) permits the Office to correct a USPS “date-in” error when the correspondence is deposited in an Priority Mail Express^® drop box prior to last scheduled pick up of the day, that is, the time clearly marked on the Priority Mail Express^® drop box indicating when the box will be cleared for the last time on the date of deposit. 37 CFR 1.10(d) sets forth the procedures to be followed to be entitled to such a correction.

Parties who do use drop boxes can protect themselves from uncertainty due to illegible mailing labels by routinely maintaining a log of Priority Mail Express^® deposits in which notations are entered by the person who deposited the correspondence as Priority Mail Express^® within one business day after deposit with the USPS. Such evidence could be useful to later support a petition filed under 37 CFR 1.10(c), (d), (e), or (g). Evidence that came into being after deposit and within one day after the deposit of the correspondence as Priority Mail Express^® may be in the form of a log book which contains information such as the Priority Mail Express^® number; the application number, attorney docket number or other such file identification number; the place, date and time of deposit; the time of the last scheduled pick-up for that date and place of deposit; the depositor’s initials or signature; and the date and time of entry in the log.

III. PRIORITY MAIL EXPRESS^® MAILING LABEL NUMBER

While 37 CFR 1.10(b) does not require placement of the Priority Mail Express^® mailing label number on the correspondence prior to mailing, it is advisable to do so. If the number of the mailing label did not appear on the correspondence as originally filed, relief will not be granted on petition under 37 CFR 1.10(c), (d), (e), (g), or (h), even if the party who filed the correspondence satisfies the other requirements of 37 CFR 1.10(c), 1.10(d), 1.10(e), 1.10(g), or 1.10(h). To be effective, the number must be placed on each separate paper and each fee transmittal either directly on the document or by a separate paper firmly and securely attached thereto. In situations wherein the correspondence includes several papers directed to the same application (for example, the specification, drawings, and declaration for a new application), the correspondence may be submitted with a cover or transmittal letter which should itemize the papers. It is not necessary that the number be placed on each page of a particular paper or fee transmittal. Merely placing the number in one prominent location on each separate paper or fee transmittal (or cover sheet or transmittal letter which should itemize the separate papers and fees) will be sufficient.

Since the filing of correspondence under 37 CFR 1.10 without the number of the Priority Mail Express^® mailing label thereon is an oversight that can be avoided by the exercise of reasonable care, requests for waiver of this requirement will not be granted on petition. A party’s inadvertent failure to comply with the requirements of a rule is not deemed to be an extraordinary situation that would warrant waiver of a rule under 37 CFR 1.183, 2.146(a)(5) or 2.148. See Honigsbaum v. Lehman, 903 F. Supp. 8, 37 USPQ2d 1799 (D.D.C. 1995) (Commissioner did not abuse his discretion in refusing to waive requirements of 37 CFR 1.10(c) in order to grant filing date to patent application, where applicant failed to produce “Express Mail” customer receipt or any other evidence that application was actually deposited with USPS as “Express Mail.”), aff’d without opinion, 95 F.3d 1166 (Fed. Cir. 1996); Gustafson v. Strange, 227 USPQ 174 (Comm’r Pat. 1985) (counsel’s unawareness of 37 CFR 1.8 not extraordinary situation warranting waiver of a rule); In re Chicago Historical Antique Automobile Museum, Inc., 197 USPQ 289 (Comm’r Pat. 1978) (since certificate of mailing procedure under 37 CFR 1.8 was available to petitioner, lateness due to mail delay not deemed to be extraordinary situation).

IV. PETITIONS

37 CFR 1.10(c) through 1.10(e) and 1.10(g) set forth procedures for petitioning the Director to accord a filing date as of the date of deposit as Priority Mail Express^® (Priority Mail Express). Briefly, 37 CFR 1.10(c) applies where there is a discrepancy between the filing date accorded by the Office and the “date accepted” entered by the USPS on the Priority Mail Express^® mailing label or other official USPS notation; 37 CFR 1.10(d) applies where the “date accepted” is incorrectly entered by the USPS; 37 CFR 1.10(e) applies where correspondence deposited with the USPS as Priority Mail Express^® is not received by the Office; and 37 CFR 1.10(g) applies where correspondence deposited with the USPS as "Express Mail" was returned by the USPS due to an interruption or emergency in Priority Mail Express^® service.

37 CFR 1.10(h) and 1.10(i) set forth procedures for petitioning the Director when correspondence was attempted to be deposited as Priority Mail Express^®. 37 CFR 1.10(h) applies where correspondence was refused by an employee of the USPS due to an interruption or emergency in Priority Mail Express^® service; and 37 CFR 1.10(i) applies where correspondence was unable to be deposited with the USPS due to an interruption or emergency in Priority Mail Express^® service which has been so designated by the Director.

V. PETITION TO CORRECT FILING DATE AND DATE ACCEPTED DISCREPANCY

37 CFR 1.10(c) sets forth procedures for filing a petition to the Director for a filing date as of the date of deposit with the USPS, where there is a discrepancy between the filing date initially accorded by the Office and the “date accepted” entered by the USPS or other official USPS notation. Such a petition should:

• (A) be filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date other than the USPS deposit date;
• (B) include a showing that the number of the Priority Mail Express^® mailing label was placed on each piece of correspondence prior to the original mailing; and
• (C) include a true copy of the Priority Mail Express^® mailing label showing the “date accepted” or other official notation by the USPS.

VI. PETITION TO CORRECT INCORRECTLY ENTERED DATE-IN

37 CFR 1.10(d) sets forth procedures for filing a petition to the Director to accord a filing date as of the actual date of deposit with the USPS, where the “date accepted” or other official notation is incorrectly entered by the USPS. Such a petition should:

• (A) be filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date based upon an incorrect entry by the USPS;
• (B) include a showing that the number of the Priority Mail Express^® mailing label was placed on each piece of correspondence prior to the original mailing; and
• (C) include a showing that the correspondence was deposited as Priority Mail Express^® prior to the last scheduled pickup on the requested filing date.

The showing under 37 CFR 1.10(d) must be corroborated by (1) evidence from the USPS, or (2) evidence that came into being after deposit and within one business day of the deposit of the correspondence as Priority Mail Express^®. Evidence from the USPS may be the Priority Mail Express^® Corporate Account Mailing Statement. Evidence that came into being within one day after the deposit of the correspondence as Priority Mail Express^® may be in the form of a log book which contains information such as the Priority Mail Express^® number; the application number, attorney docket number or other such file identification number; the place, date and time of deposit; the time of the last scheduled pick-up for that date and place of deposit; the depositor’s initials or signature; and the date and time of entry in the log.

The reason the Office considers correspondence to have been filed as of the date of deposit as Priority Mail Express^® is that this date has been verified by a disinterested USPS employee, through the insertion of a “date accepted,” or other official USPS notation, on the Priority Mail Express^® mailing label. Due to the questionable reliability of evidence from a party other than the USPS that did not come into being contemporaneously with the deposit of the correspondence with the USPS, 37 CFR 1.10(d) specifically requires that any petition under 37 CFR 1.10(d) be corroborated either by evidence from the USPS, or by evidence that came into being after deposit and within one business day after the deposit of the correspondence as Priority Mail Express^®.

A petition alleging that the USPS erred in entering the “date accepted” will be denied if it is supported only by evidence (other than from the USPS) which was:

• (A) created prior to the deposit of the correspondence as Priority Mail Express^® with the USPS (e.g., an application transmittal cover letter, or a client letter prepared prior to the deposit of the correspondence); or
• (B) created more than one business day after the deposit of the correspondence as Priority Mail Express^® (e.g., an affidavit or declaration prepared more than one business day after the correspondence was deposited with the USPS as Priority Mail Express^®).

On the other hand, a notation in a log book, entered after deposit by the person who deposited the correspondence as Priority Mail Express^® within one business day of such deposit, setting forth the items indicated above, would be deemed on petition to be an adequate showing of the date of deposit under 37 CFR 1.10(d)(3).

37 CFR 1.10(d)(3) further provides that a party must show that correspondence was deposited as Priority Mail Express^® before the last scheduled pickup on the requested filing date in order to obtain a filing date as of that date.

VII. PETITION FOR CORRESPONDENCE NEVER RECEIVED

37 CFR 1.10(e) sets forth procedures for filing a petition to the Director to accord a filing date as of the date of deposit with the USPS, where correspondence deposited as Priority Mail Express^® is never received by the Office. Such a petition should:

• (A) be filed promptly after the person becomes aware that the Office has no evidence of receipt of the correspondence;
• (B) include a showing that the number of the Priority Mail Express^® mailing label was placed on each piece of correspondence prior to the original mailing;
• (C) include a true copy of the originally deposited correspondence showing the number of the Priority Mail Express^® mailing label thereon, a copy of any returned postcard receipt, a copy of the Priority Mail Express^® mailing label showing the “date accepted” or other official notation entered by the USPS; and
• (D) include a statement, signed by the person who deposited the documents as Priority Mail Express^® with the USPS, setting forth the date and time of deposit, and declaring that the copies of the correspondence, Priority Mail Express^® mailing label, and returned postcard receipt accompanying the petition are true copies of the correspondence, mailing label and returned postcard receipt originally mailed or received.

37 CFR 1.10(e) provides for the filing of a petition to accord correspondence a filing date as of the date of deposit with the USPS as Priority Mail Express^® only where the correspondence was mailed with sufficient postage and addressed as set out in 37 CFR 1.1(a). There is no corresponding provision that correspondence be properly addressed and mailed with sufficient postage in 37 CFR 1.10(a), (c) and (d), because these sections apply only to correspondence that is actually received by the Office. Correspondence mailed by Priority Mail Express^® that is actually received by the Office will not be denied a filing date as of the date of deposit as Priority Mail Express^® simply because the correspondence was not mailed with sufficient postage or not addressed as set out in 37 CFR 1.1(a). 37 CFR 1.10(e)(3) provides that if the requested filing date is a date other than the “date accepted” on the Priority Mail Express^® mailing label, the petition should include a showing under 37 CFR 1.10(d)(3), as discussed above, that the correspondence was deposited as Priority Mail Express^® before the last scheduled pickup on the requested filing date in order to obtain a filing date as of that date. 37 CFR 1.10(e) applies only in those situations in which the correspondence at issue was lost in toto (i.e., the entire correspondence was not delivered to the Office). Where there is a dispute as to the contents of correspondence submitted to the Office (e.g., an applicant asserts that three sheets of drawings were submitted under 37 CFR 1.10 with an application, but the Office records indicate receipt of only two sheets of drawings with the application), an applicant may not rely upon the provisions of 37 CFR 1.10(e) to establish what document(s) and/or fee(s) were filed in the Office with such correspondence. Rather, where the records of the Office (e.g., the file of the application) contain any document(s) or fee(s) corresponding to the contents of the correspondence at issue, the Office will rely upon its official record of the contents of such correspondence in absence of convincing evidence (e.g., a postcard receipt under MPEP § 503 containing specific itemization of the document(s) or fee(s) purported to have been filed with the correspondence at issue) that the Office received and misplaced any document(s) or fee(s) that is not among the official records of the Office.

VIII. ADDITIONAL EVIDENCE MAY BE REQUIRED

37 CFR 1.10(f) provides that the Office may require additional evidence to determine whether the correspondence was deposited as Priority Mail Express^® with the USPS on the date in question.

IX. PETITION FOR CORRESPONDENCE RETURNED DUE TO POSTAL INTERRUPTION OR EMERGENCY

37 CFR 1.10(g) provides that any person who mails correspondence addressed as set out in 37 CFR 1.1(a) to the Office with sufficient postage utilizing the Priority Mail Express^® Post Office to Addressee service of the USPS, but has the correspondence returned by the USPS due to an interruption or emergency in Priority Mail Express^® service, may petition the Director to consider the correspondence as filed on a particular date in the Office. Such a petition must:

• (A) be filed promptly after the person becomes aware of the return of the correspondence;
• (B) include a showing that the number of the Priority Mail Express^® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by Priority Mail Express^®
• (C) include the original correspondence or a copy of the original correspondence showing the number of the Priority Mail Express^® mailing label thereon and a copy of the Priority Mail Express^® mailing label showing the "date accepted;" and
• (D) include a statement which establishes, to the satisfaction of the Director, the original deposit of the correspondence and that the correspondence or the copy of the correspondence is the original correspondence or a true copy of the correspondence originally deposited with the USPS on the requested filing date.

The Office may require additional evidence to determine if the correspondence was returned by the USPS due to an interruption or emergency in Priority Mail Express^® service. For example, the Office may require a letter from the USPS confirming that the return was due to an interruption or emergency in the Priority Mail Express^® service.

This procedure does not apply where the USPS returned the Priority Mail Express^® for a reason other than an interruption or emergency in Priority Mail Express^® service such as the address was incomplete or the correspondence included insufficient payment for the Priority Mail Express^® service.

X. PETITION FOR CORRESPONDENCE REFUSED DUE TO POSTAL INTERRUPTION OR EMERGENCY

37 CFR 1.10(h) provides that any person who attempts to mail correspondence addressed as set out in 37 CFR 1.1(a) to the Office with sufficient postage utilizing the Priority Mail Express^® Post Office to Addressee service of the USPS, but has the correspondence refused by an employee of the USPS due to an interruption or emergency in Priority Mail Express^® service, may petition the Director to consider the correspondence as filed on a particular date in the Office. Such a petition must:

• (A) be filed promptly after the person becomes aware of the refusal of the correspondence;
• (B) include a showing that the number of the Priority Mail Express^® mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the attempted mailing by Priority Mail Express^®
• (C) include the original correspondence or a copy of the original correspondence showing the number of the Priority Mail Express^® mailing label thereon; and
• (D) include a statement by the person who originally attempted to deposit the correspondence with the USPS which establishes, to the satisfaction of the Director, the original attempt to deposit the correspondence and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally attempted to be deposited with the USPS on the requested filing date.

The Office may require additional evidence to determine if the correspondence was refused by an employee of the USPS due to an interruption or emergency in Priority Mail Express^® service. For example, the Office may require a letter from the USPS confirming that the refusal was due to an interruption or emergency in the Priority Mail Express^® service.

This procedure does not apply where the USPS refused the Priority Mail Express^® for a reason other than an interruption or emergency in Priority Mail Express^® service such as the address was incomplete or the correspondence included insufficient payment for the Priority Mail Express^® service. In addition, this procedure does not apply because an Priority Mail Express^® drop box is unavailable or a Post Office facility is closed.

XI. PETITION FOR CORRESPONDENCE UNABLE TO BE DEPOSITED DUE TO A DIRECTOR-DESIGNATED POSTAL INTERRUPTION OR EMERGENCY

37 CFR 1.10(i) provides that any person attempting to file correspondence by Priority Mail Express^® that was unable to be deposited with the USPS due to an interruption or emergency in Priority Mail Express^® service which has been so designated by the Director may petition the Director to consider such correspondence as filed on a particular date in the Office. Such a petition must:

• (A) be filed in a manner designated by the Director promptly after the person becomes aware of the designated interruption or emergency in Priority Mail Express^® service;
• (B) include the original correspondence or a copy of the original correspondence; and
• (C) include a statement which establishes, to the satisfaction of the Director, that the correspondence would have been deposited with the USPS but for the designated interruption or emergency in Priority Mail Express^® service, and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally attempted to be deposited with the USPS on the requested filing date.

This procedure applies only when the Director designates an interruption or emergency in Priority Mail Express^® service. In the notice designating the interruption or emergency the Director will provide guidance on the manner in which petitions under 37 CFR 1.10(i) should be filed. The notice will be placed on the USPTO website at www.uspto.gov and published in the Official Gazette.

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