Applicability
Applicants who filed a patent application from August 15 through and including August 23, 2018, may now request a refund of the non-electronic filing fee. Applicants who filed applications via EFS-Web or EFS-Web Contingency during this period do not need to do anything.
Background
The USPTO prescribed a procedure for filing patent applications by alternative electronic means during a significant unplanned electronic business system outage, as designated by the Director of the USPTO. The Director designated the unplanned electronic business system outage beginning August 15, 2018 as a significant unplanned electronic business system outage. See 83 FR 44264 (published August 30, 2018). Upon compliance with the procedure, an application filed in paper (e.g., USPS Priority Mail Express® or hand-delivery) from August 15, 2018 through and including August 23, 2018, will be treated as being filed by the USPTO’s electronic filing system.
Overview of the procedure for completing alternative electronic filing
- A copy of the application must be filed via EFS-Web as a follow-on paper and must be accompanied by a statement that it is a true copy of the original application filed in paper (e.g., USPS Priority Mail Express® or hand-delivery).
- The USPTO form, PTO/SB/448, should be used. When attaching the form, please use EFS-Web document description "Refund Request for Papers Filed During a Designated Outage”. Form PTO/SB/448 includes the required statement and request for refund.
- The copy of the application includes the specification, including claims, the drawings, the abstract, and any preliminary amendments present on the filing date of the application.
- In addition, if the application was filed with a sequence listing or a computer program listing in paper, then a copy of the sequence listing or the computer program listing must also be submitted electronically via EFS-Web.
- Furthermore, any other papers that were submitted with the application on filing, such as an Information Disclosure Statement (IDS), an Application Data Sheet (ADS), or the inventor’s oath or declaration, should not be resubmitted.
- Since a true copy of the original application is required, applicant must not make any changes to the application papers. If changes are desired, a preliminary amendment may be submitted later as a separate submission.
- Applicants should wait until a filing receipt has been issued before following this procedure.
Resources
- Frequently asked questions (FAQs)
- Form PTO/SB/448
Certification and request to treat an application filed during a designated significant unplanned electronic business system outage as an application filed by the USPTO’s Electronic Filing System - Federal Register Notice 83 FR 44264
An application filed by the alternative electronic filing means prescribed by this notice during a designated significant unplanned electronic business system outage will be treated as an application filed by electronic means for purposes of section 10(h) of the Leahy-Smith America Invents Act. - EFS-Web Contingency page
- Filing documents during an outage
- PALM outage information for patent customers
Contacts
If you need assistance with electronic filing, please contact the Patent Electronic Business Center at ebc@uspto.gov or 866-217-9197. For legal or policy questions about the procedure, please contact the Office of Patent Legal Administration at 571-272-7701.