Midnight Filing: The USPTO continues to changes its rules and regulations to favor electronic filing. Now, users of the electronic filing system (EFS) get a last minute bonus: Correspondence submitted via EFS-WEB will now be considered timely if submitted on the due date. (The old rule required it to be received at the PTO on the due date).
You should be cautious and retain your USPTO E-filing acknowledgment. Filings should be immediately available for review on Private PAIR.
Finally if EFS-WEB is not working, the practitioner should be ready with an alternative method of filing such as fax or snail mail.
National Stage Evidence: The PTO has also given notice that the EFS-WEB acknowledgment receipt will be sufficient to show that correspondence submitted in a national stage application was actually received by the Office.
Link: Read the USPTO Notice
The practitioner should be ready with an alternative method of filing such as fax or snail mail.
I am leaving here a problem and resolution for a rather mundane EFS-Web problem that practitioners or support staff might encounter when they change to a new computer system in the 2007 time frame. It might save somebody some night at 11:39PM when trying to get a filing date. PROBLEM: You purchased a new Windows computer in the 2007 time frame and now you cannot log in EFS-Web or Private Pair using Internet Explorer 7, even though you have dutifully copied over your “.epf” digital certificate file. Specifically, when you get to the EFS-Web or Private PAIR login page, and you press “Browse” to open up your “.epf” file, nothing happens, i.e., no dialog box opens up, your browser just sits there. So you cannot log in. SOLUTION: According to the USPTO EBC help desk (the guy was very nice by the way) the problem is associated with Java, and in particular, the “new version of Java” on your new system did something wrong to your existing “epf” digital certificate. It is very easy to fix. Close all your active windows, then go to Control Panel –> Java, which will bring up the Java Control Panel. Then in the “General” tab, select Settings –> Delete Files, and make sure everything is selected when the “Delete Temporary Files” window comes up and press “OK”. Then press “OK” again to go to back to the Java Control Panel. Then in the “Security” tab of the Java Control Panel, press “Certificates,” and you will see an entry entitled “Entrust Limited.” Select the “Entrust Limited” line and press “Remove,” and then close everything out by pressing OK as needed until you are back to your desktop. You should now be able to log in normally to Private PAIR or EFS-Web, provided you answer “Yes” or “Go” to any security messages that pop up.
How does this FAVOR electronic filing? Doesn’t it just make it consistent with what you can already get for paper filing?
Here’s my reading of the changes. §1.6(a)(4) is added and states that “Correspondence submitted to the Office by way of the Office electronic filing system will be accorded a receipt date, which is [the date the correspondence is received] at the correspondence address set forth in §1.1 (e.g., addressed to “Commissioner of Patents,” “Director,” etc. at the PO box in Alexandria) [when it was officially submitted].” The first [bracketed] passage suggests it is the receipt date at the Office that controls. The second [bracketed] passage throws some ambiguity on things, but I think it needs to be read in context with §1.6(a)(3) that discusses fax transmissions and states that the receipt date for a fax transmission will be the next business day following a Saturday, Sunday, or Holiday. In contrast (a)(4) says that the receipt date will be when the correspondence is received when actually submitted, as opposed to the next business day following a Saturday, Sunday, or Holiday. Further, §1.6(d) still reads that the received date accorded to a fax is the date the complete transmission is received at the Office, i.e., Eastern time. Thus, it would stand to reason that since the filing time stamped on an acknowledgement receipt by EFS is Eastern, then that is the received date.
However, if under §1.8(b)(3) you include a certificate of transmission with your filing (similar to a certificate of mailing stating your date of deposit at a local mailbox) stating that you are submitting via EFS on a certain day during you local time, you will be granted that submission date even if the Eastern time acknowledgement receipt has rolled to the next day. Therefore, you could file a response to an Office action at 11:59 PM Pacific time if you include a certificate of submission. If you don’t include a certificate of submission, you will get the Eastern time date. Further, this will not work to get a filing date for a new app, RCE, CPA CON, PCT, 371, Reissue, Reexam, any appeals papers, any papers to the ISA, RO, etc. These have to be either filed before the Eastern time deadline on EFS or by Express mail to get the date.
The new § 1.6(g) is directed to a mechanism for proving a national stage filing was timely made in the event that the EFS system screws up and loses the filing.
Similarly, the revised §1.8(b)(3) also provides a mechanism for proving any EFS filing was timely made based upon the EFS filing receipt (which shows the filing time as Eastern time at the PTO server) in the event that the EFS system screws up and loses the filing.
American territory is only relevant to certificates of mailing because there are no US post offices in foreign countries that can receive Express Mail. A filing mailed in a foreign country cannot get a USPS date stamp, and so only gets the date received in the USPTO. This is why no-one does this. The favoured method used instead is to fax or e-mail to someone in the US who hand carries the filing to the customer window. There may conceivably be law firms who handle these filings, but all the firms I know who do it are actually search firms, who are doing no more than any courier could do, as you don’t need a reg. number to hand things in at the customer window.
Filing by EFS Web can be done from anywhere in the world, so I imagine that Tonga would be just fine for this purpose.
Guam is west of the date line and 15 hours ahead of Washington time. The territory’s motto is “Where America’s day begins”. Nice beaches, but wrong place for last-minute filings.
PTO will probably anticipate/argue that the “artifice potential” of using proxy servers (e.g., in Howard Is., Am Samoa, Hawaii, etc.) by practitioners (e.g., in Wash DC or less obvious addresses) should negative their usage by non-indiginous locals… Big Brother seldom misses a trick, true?
We may have a loophole here. A local jurisdiction (somewhere in the world) may do well by setting its clocks 24-hours back.
Does the notice require a filing from U.S. Territory? If so, consider using a proxy server in American Samoa, which looks to be an hour earlier than Hawaii.
If not, contact your favorite associate in Tonga, which is on the other side of the international date line, but nevertheless appears to have a local time that is 12 hours prior to GMT.
The furthest west US territory that I could find is Baker or Howard Island. Both are uninhabited.
link to en.wikipedia.org
link to upload.wikimedia.org
They are two hours further west than Hawaii
I understand from the office that there is currently over a one year backlog in getting filing receipts out in US national stage filings. I found this out when over six months had passed and I still didn’t have a receipt.
Perhaps that is why they are saying the e-ACK is your receipt.
“This was certainly made less than clear from the notice, but again, this is how I read it: the certificates replace 1.8 transmissions by facsimile and first class US Mail.”
You are reading it correctly. A “Certificate of EFS-Web Transmission” can only be used for correspondence where you could otherwise use a Certificate of Mailing or a Certificate of Transmission. If you want to obtain an application filing date, you are left with the traditional options: date of actual receipt, or date of desposit with USPS Express Mail delivery.
Chris,
The notice specifically discusses this example and indicates that it will look to the local time:
“For example, correspondence sent in reply to an Office action setting a three-month shortened statutory period for reply would be considered timely if transmitted via EFS-Web at 11:59 p.m. Pacific Time on the last day of the three-month period for reply even though it was received in the Office more than three months from the mailing of the Office action.”
This only works where a certificate of mailing could be used to obtain the date.
Also, Stepback, I think you should investigate Guam…
I think practitioners should be cautious with this Certificate. My reading of it left me with the impression that you DO NOT get the LOCAL TIME/DATE for application filings (NOT a certificate under 1.10). Thus, if you file on a 1 year bar date at 11:15 from Chicago, you have missed your bar date, because the PTO marks the filing as “Date In” of 12:15am 1-year + 1 day.
This was certainly made less than clear from the notice, but again, this is how I read it: the certificates replace 1.8 transmissions by facsimile and first class US Mail.
We should soon expect to see automated filing offices opening up in Hawaii. Or is there a US territory even more to the West and still on this day’s side of the International date line?
link to martinlamm.de
Another interesting aspect of electronic filing is that the PTO will treat separate submissions made on the same day as part of a single submission. Effectively, you can submit a new specification, and then later submit the declaration and avoid receiving a missing parts. You can also replace your specification entirely or submit a preliminary amendment adding new matter at a later time (albeit on the same day) and avoid any new matter rejection.