Editing MPEP 500

{{MPEP Chapter|400|600}}
501 Filing Papers With the U.S.
 
Patent 
and Trademark Office [R-5]

37 CFR 1.1. Addresses for non-trademark correspondence 
with the United States Patent and Trademark Office.

(a)In general. Except as provided in paragraphs (a)(3)(i), 
(a)(3)(ii) and (d)(1) of this section, all correspondence intended 
for the United States Patent and Trademark Office must be 
addressed to either “Director of the United States Patent and 
Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-
1450” or to specific areas within the Office as set out in paragraphs 
(a)(1), and (a)(3)(iii) of this section. When appropriate, 
correspondence should also be marked for the attention of a particular 
office or individual.

(1)Patent correspondence.

(i)In general. All correspondence concerning patent 
matters processed by organizations reporting to the Commissioner 
for Patents should be addressed to: Commissioner for Patents, PO 
Box 1450, Alexandria, Virginia 22313-1450.

(ii)Board of Patent Appeals and Interferences. See 
§
 
41.10 of this title. Notices of appeal, appeal briefs, reply briefs, 
requests for oral hearing, as well as all other correspondence in an 
application or a patent involved in an appeal to the Board for 
which an address is not otherwise specified, should be addressed 
as set out in paragraph (a)(1)(i) of this section.

(2)[Reserved]

(3)Office of General Counsel correspondence.— 

(i)Litigation and service. Correspondence relating to 
pending litigation or otherwise within the scope of part 104 of this 
title shall be addressed as provided in §
 
104.2.

(ii)Disciplinary proceedings. Correspondence to 
counsel for the Director of the Office of Enrollment and Discipline 
relating to disciplinary proceedings pending before an 
Administrative Law Judge or the Director shall be mailed to: 
Office of the Solicitor, PO Box 16116, Arlington, Virginia 22215.

(iii)Solicitor, in general. Correspondence to the Office 
of the Solicitor not otherwise provided for shall be addressed to: 
Mail Stop 
8, Director of the United States Patent and 
Trademark 
Office, PO Box 1450, Alexandria, Virginia 22313-
1450.

(iv)General Counsel. Correspondence to the Office of 
the General Counsel not otherwise provided for, including correspondence 
to the General Counsel relating to disciplinary proceedings, 
shall be addressed to: General Counsel, United States 
Patent and Trademark Office, PO Box 1450, Alexandria, Virginia 
22313-1450.

(v)Improper correspondence. Correspondence improperly 
addressed to a Post Office Box specified in paragraphs 
(a)(3)(i) and (a)(3)(ii) of this section will not be filed elsewhere in 
the United States Patent and Trademark Office, and may be returned.


(4)Office of Public Records correspondence.

(i)Assignments. All patent-related documents submitted 
by mail to be recorded by Assignment Services Division, 
except for documents filed together with a new application, 
should be addressed to: Mail Stop Assignment Recordation Services, 
Director of the United States Patent and Trademark Office, 
P.O. Box 1450, Alexandria, Virginia 22313-1450. See § 3.27.

(ii)Documents. All requests for certified or uncertified 
copies of patent documents should be addressed to: Mail Stop 
Document Services, Director of the United States Patent and 
Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-
1450.

(5)Office of Enrollment and Discipline correspondence. 
All correspondence directed to the Office of Enrollment and Discipline 
concerning enrollment, registration, and investigation matters 
should be addressed to Mail Stop OED, Director of the United 
States Patent and Trademark Office, P.O. Box 1450, Alexandria, 
Virginia 22313-1450.

(b)Patent Cooperation Treaty. Letters and other communications 
relating to international applications during the interna







tional stage and prior to the assignment of a national serial number 
should be additionally marked “Mail Stop PCT.”

(c)For reexamination proceedings. 

(1)Requests for ex parte reexamination (original request 
papers only) should be additionally marked “Mail Stop Ex parteReexam.”

(2)Requests for inter partes reexamination (original 
request papers) and all subsequent inter partes reexamination correspondence 
filed in the Office, other than correspondence to the 
Office of the General Counsel pursuant to § 1.1(a)(3) and 
§
 
1.302(c), should be additionally marked “Mail Stop Inter partesReexam.”

(d)Maintenance fee correspondence.— 

(1)Payments. Payments of maintenance fees in patents 
not submitted electronically should be mailed to: United States 
Patent and Trademark Office, P.O. Box 371611, Pittsburgh, Pennsylvania 
15250-1611.

(2)Other correspondence. Correspondence related to 
maintenance fees other than payments of maintenance fees in patents 
is not to be mailed to P.O. Box 371611, Pittsburgh, Pennsylvania 
15250-1611, but must be mailed to: Mail Stop M 
Correspondence, Director of the United States Patent and Trademark 
Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.

(e)Patent term extension. All applications for extension of 
patent term under 35 
U.S.C. 156 and any communications relating 
thereto intended for the United States Patent and Trademark 
Office should be additionally marked “Mail Stop Patent Ext.” 
When appropriate, the communication should also be marked to 
the attention of a particular individual, as where a decision has 
been rendered.

(f)[Reserved]

37 CFR 1.4. Nature of correspondence and signature 
requirements.

(a)Correspondence with the Patent and Trademark Office 
comprises:

(1)Correspondence relating to services and facilities of 
the Office, such as general inquiries, requests for publications 
supplied by the Office, orders for printed copies of patents, orders 
for copies of records, transmission of assignments for recording, 
and the like, and

(2)Correspondence in and relating to a particular application 
or other proceeding in the Office. See particularly the rules 
relating to the filing, processing, or other proceedings of national 
applications in subpart B, §§ 1.31 to 1.378; of international applications 
in subpart C, §§ 1.401 to 1.499; of ex parte reexaminations 
of patents in subpart D, §§ 1.501 to 1.570; of extension of patent 
term in subpart F, §§ 1.710 to 1.785; of inter partes reexaminations 
of patents in subpart H, §§ 1.902 to 1.997; and of the Board 
of Patent Appeals and Interferences in part 41 of this title.

(b)Since each file must be complete in itself, a separate 
copy of every paper to be filed in a patent, patent file, or other proceeding 
must be furnished for each file to which the paper pertains, 
even though the contents of the papers filed in two or more 
files may be identical. The filing of duplicate copies of correspondence 
in the file of an application, patent, or other proceeding 
should be avoided, except in situations in which the Office 
requires the filing of duplicate copies. The Office may dispose of 
duplicate copies of correspondence in the file of an application, 
patent, or other proceeding.

(c)Since different matters may be considered by different 
branches or sections of the United States Patent and Trademark 
Office, each distinct subject, inquiry or order must be contained in 
a separate paper to avoid confusion and delay in answering papers 
dealing with different subjects.

(d)(1) Handwritten signature. Each piece of correspondence, 
except as provided in paragraphs (d)(2), (d)(3), (e) and (f) of this 
section, filed in an application, patent file, or other proceeding in 
the Office which requires a person’s signature, must:

(i)Be an original, that is, have an original handwritten 
signature personally signed, in permanent dark ink or its equivalent, 
by that person; or

(ii)Be a direct or indirect copy, such as a photocopy or 
facsimile transmission (§ 1.6(d)), of an original. In the event that a 
copy of the original is filed, the original should be retained as evidence 
of authenticity. If a question of authenticity arises, the 
Office may require submission of the original.



(2) S-signature. An S-signature is a signature inserted 
between forward slash marks, but not a handwritten signature as 
defined by § 1.4(d)(1). An S-signature includes any signature 
made by electronic or mechanical means, and any other mode of 
making or applying a signature not covered by either a handwritten 
signature of § 1.4(d)(1) or an Office Electronic Filing System 
(EFS) character coded signature of §
 
1.4(d)(3). Correspondence 
being filed in the Office in paper, by facsimile transmission as 
provided in §
 
1.6(d), or via the Office Electronic Filing System as 
an EFS Tag(ged) Image File Format (TIFF) attachment, for a 
patent application, patent, or a reexamination proceeding may be 
S-signature signed instead of being personally signed (i.e., with a 
handwritten signature) as provided for in paragraph (d)(1) of this 
section. The requirements for an S-signature under this paragraph 
(d)(2) are as follows.

(i)The S-signature must consist only of letters, or 
Arabic numerals, or both, with appropriate spaces and commas, 
periods, apostrophes, or hyphens for punctuation, and the person 
signing the correspondence must insert his or her own S-signature 
with a first single forward slash mark before, and a second single 
forward slash mark after, the S-signature (e.g., /Dr. James T. 
Jones, Jr./); and



(ii)A patent practitioner (§ 1.32(a)(1)), signing pursuant 
to §§ 1.33(b)(1) or 1.33(b)(2), must supply his/her registration 
number either as part of the S-signature, or immediately below or 
adjacent to the S-signature. The number (#) character may be used 
only as part of the S-signature when appearing before a practitioner’s 
registration number; otherwise the number character may 
not be used in an S-signature. 

(iii)The signer’s name must be:

(A)Presented in printed or typed form preferably 
immediately below or adjacent the S-signature, and

(B)Reasonably specific enough so that the identity 
of the signer can be readily recognized.






(3) EFS character coded signature. Correspondence in 
character coded form being filed via the Office Electronic Filing 
System for a patent application or patent may be signed electronically. 
The electronic signature must consist only of letters of the 
English alphabet, or Arabic numerals, or both, with appropriate 
spaces and commas, periods, apostrophes, or hyphens for punctuation. 
The person signing the correspondence must personally 
insert the electronic signature with a first single forward slash 
mark before, and a second single forward slash mark after, the 
electronic signature (e.g., /Dr. James T. Jones, Jr./).

(4) Certifications. (i) Section 10.18 certifications: The 
presentation to the Office (whether by signing, filing, submitting, 
or later advocating) of any paper by a party, whether a practitioner 
or non-practitioner, constitutes a certification under § 10.18(b) of 
this chapter. Violations of § 10.18(b)(2) of this chapter by a party, 
whether a practitioner or non-practitioner, may result in the imposition 
of sanctions under § 10.18(c) of this chapter. Any practitioner 
violating § 10.18(b) of this chapter may also be subject to 
disciplinary action. See §§ 10.18(d) and 10.23(c)(15) of this chapter.


(ii) Certifications as to the signature: (A) Of another: 
A person submitting a document signed by another under paragraphs 
(d)(2) or (d)(3) of this section is obligated to have a reasonable 
basis to believe that the person whose signature is present on 
the document was actually inserted by that person, and should 
retain evidence of authenticity of the signature.

(B) Self certification: The person inserting a signature 
under paragraphs (d)(2) or (d)(3) of this section in a document 
submitted to the Office certifies that the inserted signature 
appearing in the document is his or her own signature.

(C) Sanctions: Violations of the certifications as to 
the signature of another or a person’s own signature, set forth in 
paragraphs (d)(4)(ii)(A) and (B) of this section, may result in the 
imposition of sanctions under § 10.18(c) and (d) of this chapter.

(e)Correspondence requiring a person’s signature and relating 
to registration practice before the Patent and Trademark Office 
in patent cases, enrollment and disciplinary investigations, or disciplinary 
proceedings must be submitted with an original hand 
written signature personally signed in permanent dark ink or its 
equivalent by that person.

(f)When a document that is required by statute to be certified 
must be filed, a copy, including a photocopy or facsimile 
transmission, of the certification is not acceptable.

(g)An applicant who has not made of record a registered 
attorney or agent may be required to state whether assistance was 
received in the preparation or prosecution of the patent application, 
for which any compensation or consideration was given or 
charged, and if so, to disclose the name or names of the person or 
persons providing such assistance. Assistance includes the preparation 
for the applicant of the specification and amendments or 
other papers to be filed in the Patent and Trademark Office, as 
well as other assistance in such matters, but does not include 
merely making drawings by draftsmen or stenographic services in 
typing papers.

(h)Ratification/confirmation/evidence of authenticity: The 
Office may require ratification, confirmation (which includes submission 
of a duplicate document but with a proper signature), or 
evidence of authenticity of a signature, such as when the Office 
has reasonable doubt as to the authenticity (veracity) of the signature, 
e.g., where there are variations of a signature, or where the 
signature and the typed or printed name, do not clearly identify 
the person signing.

I.GENERAL MAILING ADDRESSES

The U.S. Patent and Trademark Office (Office) has 
three separate general mailing addresses. The 
addresses are as follows:

A.For Patent Applications and Patent-Related 
Papers

Correspondence in patent-related matters under the 
direction of the Commissioner for Patents should be 
addressed to:

Commissioner for Patents

P.O. Box 1450

Alexandria, Virginia 22313-1450

Such correspondence includes: patent applications, 
replies to notices of informality, requests for extension 
of time, notices of appeal to the Board of Patent 
Appeals and Interferences (the Board), briefs in support 
of an appeal to the Board, requests for oral hearing 
before the Board, applications for extensions of 
term of patent, requests for publication of Statutory 
Invention Registration (SIR), requests for reexamination, 
statutory disclaimers, certificates of correction, 
petitions to the Commissioner for Patents, submission 
of information disclosure statements, petitions to 
institute a public use proceeding, petitions to revive 
abandoned patent applications, and other correspondence 
related to patent applications and patents which 
is processed by organizations reporting to the Commissioner 
for Patents.

Certain patent-related correspondence requires 
immediate Office attention. Examples are:

(A)Petitions for express abandonment to avoid 
publication under 37 CFR 1.138(c);

(B)Petitions to withdraw an application from 
issue under 37 CFR 1.313(c); 

(C)Request for expedited examination of a 
design application (rocket docket); and

(D)Papers required by the Office of Patent Publication 
to be hand-carried or faxed to the Office of 
Patent Publication.






Applicants are encouraged to transmit these types 
of correspondence by facsimile transmission (see 
MPEP § 502.01) or, where permitted (items B and D 
only), hand-carry them to the appropriate area of the 
Office for processing. (see MPEP § 502)

B.For Trademark Applications and Trademark-
Related Papers

Correspondence in trademark-related matters under 
the direction of the Commissioner for Trademarks or 
the Trademark Trial and Appeal Board should be 
addressed to:

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA 22313-1451

Such correspondence includes all trademark applications 
and other trademark-related mail, except for 
trademark documents sent to the Assignment Division 
for recordation, correspondence for the Office’s 
Madrid Processing Unit, requests for certified and 
uncertified copies of trademark documents, and filings 
submitted electronically. See 37 CFR 2.190.

Correspondence to be delivered by the United 
States Postal Service to the Office’s Madrid Processing 
Unit must be mailed to:

Commissioner for Trademarks

P.O. Box 16471

Arlington, VA 22215-1471

Attention MPU

C.For Other Correspondence

Patent and trademark documents sent to the Assignment 
Division for recordation (Mail Stop Assignment 
Recordation Services), requests for certified or uncertified 
copies of patent and trademark documents (Mail 
Stop Document Services), and for correspondence for 
which an address is not otherwise specified in 37 CFR 
1.1, should be addressed to:

Director of the United States Patent and Trademark 
Office

P.O. Box 1450

Alexandria, VA 22313-1450

II.SEPARATE MAILING ADDRESSES FOR 
CERTAIN CORRESPONDENCE

The Office has separate mailing addresses for certain 
correspondence:

(A)Certain court-related correspondence (e.g., 
summons and complaint) being delivered to the 
Office via the U.S. Postal Service (USPS) must be 
addressed:

General Counsel

United States Patent and Trademark Office

P.O. Box 15667

Arlington, VA 22215

(B)Correspondence directed to the Office of 
Enrollment and Discipline (OED) Director relating to 
disciplinary proceedings pending before an Administrative 
Law Judge or the Director must be addressed:

Office of the Solicitor

P.O. Box 16116

Arlington, Virginia 22215

(C)Payments of maintenance fees in patents 
being delivered to the Office via the USPS should be 
addressed:

United States Patent and Trademark Office

P.O. Box 371611 

Pittsburgh, Pennsylvania 15250-1611

(D)A deposit account replenishment being delivered 
to the Office via the USPS should be addressed:

Director of the United States Patent and Trademark 
Office

P.O. Box 371279

Pittsburgh, PA 15251-7279

Persons filing correspondence with the Office 
should check the rules of practice, the Official 
Gazette, or the Office’s Internet Web site (http://
www.uspto.gov) to determine the appropriate mailing 
address for such correspondence.

III.HAND-DELIVERY OF PAPERS

Patent-related papers may be hand-carried to the 
Office. If the correspondence is hand-carried to the 
Office, with limited exceptions (see subsection I.A., 
above) it must be delivered to:






Customer Service Window

Randolph Building

401 Dulany Street

Alexandria, VA 22314

See MPEP § 502.

Trademark-related papers may be filed at the 
“walk-up” window located in the Trademark Assistance 
Center, Madison East, Concourse Level, Room 
C55, 600 Dulany Street, Alexandria, VA 22314.

 As provided in 37 CFR 1.4(c), matters that are to 
be considered by different branches or sections of the 
USPTO must be contained in separate papers. The following 
form paragraph may be used to notify the 
applicant of this requirement when the applicant has 
filed a single paper containing distinct subjects, 
inquiries, or orders.

¶ 5.01.01 Separate Paper Required

The [1] submitted [2] should have been submitted as a separate 
paper as required by 37 CFR 1.4(c). The paper has been entered. 
However, all future correspondence must comply with 37 CFR 
1.4.

Examiner Note:

1. In bracket 1, indicate the item required to be separately submitted, 
such as an affidavit, petition, or other appropriate document.


2. If the applicant is a pro se inventor, include a copy of the 
rule.

Those who correspond with the USPTO are 
strongly encouraged not to include correspondence 
which will have to be directed to different areas (e.g., 
Patents and Trademarks) of the Office in a single 
envelope. Including multiple papers in a single envelope 
increases the likelihood that one or more of the 
papers will be delayed before reaching the appropriate 
area. Placing the papers in separately addressed envelopes 
will reduce the number of actions being performed 
by the USPTO unnecessarily or 
inappropriately.

Pursuant to 37 CFR 1.1, correspondence intended 
for the USPTO must be mailed to P.O. Box 1450, 
Alexandria, VA 22313-1450, except as otherwise provided. 
Except for certain mail addressed incorrectly to 
the Office of the General Counsel (see 37 CFR 
1.1(a)(3)(v)), there will be no penalty for addressing a 
document to the wrong area within the Office, as long 
as one of the approved addresses is 
used. Use of the 
specific addresses listed within 37 
CFR 1.1 is strongly 
encouraged because it will facilitate the process both 
for the Office and the filer. Accordingly, a new application 
incorrectly addressed to the Director will be 
treated the same as if the application was addressed to 
the specific Commissioner.

All mailed communications are received by the 
Incoming-Mail Section of the Office of Initial Patent 
Examination (OIPE), which opens and distributes all 
official mail.

Special mail stops have been established to allow 
the forwarding of particular types of mail to appropriate 
areas of the Office as quickly as possible. A list of 
these mail stops is published weekly in the Official 
Gazette. Only the specified type of document for a 
particular mail stop should be placed in an envelope 
addressed to that mail stop.

If any documents other than the specified type identified 
for each department are addressed to that 
department, they will be significantly delayed in 
reaching the appropriate area for which they were 
intended.

502Depositing Correspondence [R-5]

37 CFR 1.5. Identification of patent, patent application, or 
patent-related proceeding.

(a)No correspondence relating to an application should be 
filed prior to receipt of the application number from the Patent and 
Trademark Office. When a letter directed to the Patent and Trademark 
Office concerns a previously filed application for a patent, it 
must identify on the top page in a conspicuous location, the application 
number (consisting of the series code and the serial number; 
e.g., 07/123,456), or the serial number and filing date 
assigned to that application by the Patent and Trademark Office, 
or the international application number of the international application. 
Any correspondence not containing such identification 
will be returned to the sender where a return address is available. 
The returned correspondence will be accompanied with a cover 
letter which will indicate to the sender that if the returned correspondence 
is resubmitted to the Patent and Trademark Office 
within two weeks of the mail date on the cover letter, the 
original 
date of receipt of the correspondence will be considered 
by the 
Patent and Trademark Office as the date of receipt of the 
correspondence. Applicants may use either the Certificate of 
Mailing or Transmission procedure under § 1.8 or the Express 
Mail procedure under § 1.10 for resubmissions of returned correspondence 
if they desire to have the benefit of the date of deposit 
in the United States Postal Service. If the returned correspondence 
is not resubmitted within the two-week period, the date of receipt 
of the resubmission will be considered to be the date of receipt of 
the correspondence. The two-week period to resubmit the returned 
correspondence will not be extended. In addition to the application 
number, all letters directed to the Patent and Trademark 
Office concerning applications for patent should also state the 
name of the applicant, the title of the invention, the date of filing 






the same, and, if known, the group art unit or other unit within the 
Patent and Trademark Office responsible for considering the letter 
and the name of the examiner or other person to which it has been 
assigned.

(b)When the letter concerns a patent other than for purposes 
of paying a maintenance fee, it should state the number and date 
of issue of the patent, the name of the patentee, and the title of the 
invention. For letters concerning payment of a maintenance fee in 
a patent, see the provisions of § 1.366(c).

(c)[Reserved]

(d)A letter relating to a reexamination proceeding should 
identify it as such by the number of the patent undergoing reexamination, 
the reexamination request control number assigned to 
such proceeding, and, if known, the group art unit and name of the 
examiner to which it been assigned.

(e)[Reserved]

(f)When a paper concerns a provisional application, it 
should identify the application as such and include the application 
number.

37 CFR 1.6. Receipt of correspondence. 

(a)Date of receipt and Express Mail date of deposit. Correspondence 
received in the Patent and Trademark Office is 
stamped with the date of receipt except as follows:

(1)The Patent and Trademark Office is not open for the 
filing of correspondence on any day that is a Saturday, Sunday, or 
Federal holiday within the District of Columbia. Except for correspondence 
transmitted by facsimile under paragraph (a)(3) of this 
section, or filed electronically under paragraph (a)(4) of this section, 
no correspondence is received in the Office on Saturdays, 
Sundays, or Federal holidays within the District of Columbia.

(2)Correspondence filed in accordance with §
 
1.10 will 
be stamped with the date of deposit as “Express Mail” with the 
United States Postal Service.

(3)Correspondence transmitted by facsimile to the Patent 
and Trademark Office will be stamped with the date on which the 
complete transmission is received in the Patent and Trademark 
Office unless that date is a Saturday, Sunday, or Federal holiday 
within the District of Columbia, in which case the date stamped 
will be the next succeeding day which is not a Saturday, Sunday, 
or Federal holiday within the District of Columbia.

(4)[Reserved]

(b)[Reserved]

(c)Correspondence delivered by hand. In addition to being 
mailed, correspondence may be delivered by hand during hours 
the Office is open to receive correspondence.

(d)Facsimile transmission. Except in the cases enumerated 
below, correspondence, including authorizations to charge a 
deposit account, may be transmitted by facsimile. The receipt date 
accorded to the correspondence will be the date on which the 
complete transmission is received in the United States Patent and 
Trademark Office, unless that date is a Saturday, Sunday, or Federal 
holiday within the District of Columbia. See §
 
1.6(a)(3). To 
facilitate proper processing, each transmission session should be 
limited to correspondence to be filed in a single application or 
other proceeding before the United States Patent and Trademark 
Office. The application number of a patent application, the control 
number of a reexamination proceeding, the interference number of 
an interference proceeding, or the patent number of a patent 
should be entered as a part of the sender’s identification on a facsimile 
cover sheet. Facsimile transmissions are not permitted and, 
if submitted, will not be accorded a date of receipt in the following 
situations:

(1)Correspondence as specified in § 1.4(e), requiring an 
original signature;

(2)Certified documents as specified in §
 
1.4(f);

(3)Correspondence which cannot receive the benefit of 
the certificate of mailing or transmission as specified in 
§
 
1.8(a)(2)(i)(A) through (D) and (F), and §
 
1.8(a)(2)(iii)(A), 
except that a continued prosecution application under §
 
1.53(d) 
may be transmitted to the Office by facsimile;

(4)Color drawings submitted under §§ 1.81, 1.83 through 
1.85, 1.152, 1.165, 1.173, or 1.437;

(5)A request for reexamination under §
 
1.510 or § 1.913;

(6)Correspondence to be filed in a patent application 
subject to a secrecy order under §§
 
5.1 through 5.5 of this chapter 
and directly related to the secrecy order content of the application;

(7)[Reserved]

(8)[Reserved]

(9)In contested cases before the Board of Patent Appeals 
and Interferences except as the Board may expressly authorize.

(e)[Reserved]

(f)Facsimile transmission of a patent application under 
§
 
1.53(d). In the event that the Office has no evidence of receipt of 
an application under §
 
1.53(d) (a continued prosecution application) 
transmitted to the Office by facsimile transmission, the party 
who transmitted the application under § 1.53(d) may petition the 
Director to accord the application under § 1.53(d) a filing date as 
of the date the application under § 1.53(d) is shown to have been 
transmitted to and received in the Office,

(1)Provided that the party who transmitted such application 
under § 1.53(d):

(i)Informs the Office of the previous transmission of 
the application under §
 
1.53(d) promptly after becoming aware 
that the Office has no evidence of receipt of the application under 
§ 1.53(d);

(ii)Supplies an additional copy of the previously 
transmitted application under § 1.53(d); and

(iii)Includes a statement which attests on a personal 
knowledge basis or to the satisfaction of the Director to the previous 
transmission of the application under §
 
1.53(d) and is accompanied 
by a copy of the sending unit’s report confirming 
transmission of the application under § 1.53(d) or evidence that 
came into being after the complete transmission and within one 
business day of the complete transmission of the application under 
§
 
1.53(d).

(2)The Office may require additional evidence to determine 
if the application under §
 
1.53(d) was transmitted to and 
received in the Office on the date in question.

All applications (provisional and nonprovisional) 
may be sent to the U.S. Patent and Trademark Office 
by mail (see MPEP § 501), or they may be hand-car







ried to the Customer Service Window. New utility 
patent applications and provisional applications can 
also be filed via the Office’s Electronic Filing System 
(EFS). See MPEP § 1730, subsection II.B. A continued 
prosecution application (CPA) filed under 
37 
CFR 1.53(d) (available for design applications 
only), amendments, and other papers may be sent to 
the U.S. Patent and Trademark Office by mail (see 
MPEP § 501), by facsimile (see MPEP §
 
502.01) or 
hand-carried to the Customer Service Window. Any 
correspondence sent to the U.S. Patent and Trademark 
Office should include the sender’s return address and 
ZIP Code designation. For correspondence hand-
delivered to the Office, see subsection II. below.

See 37 CFR 2.190 and MPEP § 501 for addresses 
pertaining to trademark correspondence.

All correspondence related to a national patent 
application already filed with the U.S. Patent and 
Trademark Office must include the identification of 
the application number or the serial number and the 
filing date assigned to the application by the Office. 
Any correspondence not containing the proper identification 
set forth in 37 CFR 1.5(a) will be returned to 
the sender by OIPE. Each paper should be inspected 
to assure that the papers being returned contain either 
an “Office Date” stamp or a TC date stamp. A minor 
error in the identification of the application can be 
corrected by the Office provided the correct identification 
can be quickly discovered. Examples of minor 
errors are transposed numbers, typographical errors, 
and listing the parent application number. The failure 
to give any application number is not a minor error. 
The Office often experiences difficulty in matching 
incoming papers with the application file to which 
they pertain because insufficient or erroneous information 
is given. This applies especially to amendments, 
powers of attorney, changes of address, status 
letters, petitions for extension of time, and other petitions.


It would be of great assistance to the Office if allincoming papers pertaining to a filed application carried 
the following items:

(A)Application number (checked for accuracy, 
including series code and serial no.).

(B)Art Unit number (copied from most recent 
Office communication).

(C)Filing date.

(D)Name of the examiner who prepared the most 
recent Office action.

(E)Title of invention.

(F)Confirmation number (see MPEP § 503).

Applicants may be reminded of this provision by 
including form paragraph 5.01.

¶ 5.01 Proper Heading for Incoming Papers

It would be of great assistance to the Office if all incoming 
papers pertaining to a filed application carried the following 
items:

1. Application number (checked for accuracy, including series 
code and serial no.).

2. Art Unit number (copied from most recent Office communication).


3. Filing date.

4. Name of the examiner who prepared the most recent Office 
action.

5. Title of invention.

6. Confirmation number (see MPEP § 503).

The Office prefers identifying indicia to be provided 
on the drawings. If such identifying indicia is 
provided, it must be placed on the front of each sheet 
of drawings within the top margin. See 37 CFR 
1.84(c). The identifying indicia should include the 
title of the invention, inventor’s name, application 
number, and confirmation number (see MPEP § 503). 
If the Office has not yet assigned an application number 
and confirmation number to the application, the 
docket number (if any) used by the applicant to track 
the application should be provided.

When the Office receives replacement sheets of 
drawings for patent applications after the application 
has been filed, a cover letter identifying the drawings 
by application number should accompany them. The 
application number and other identifying indicia 
should be placed on each sheet of drawings in accordance 
with 37 CFR 1.84(c). Each drawing sheet submitted 
after the filing date of the application must be 
identified as either “Replacement Sheet” or “New 
Sheet” pursuant to 37 CFR 1.121(d).

It is requested that the submission of additional or 
supplemental papers on a newly filed application be 
deferred until an application number has been 
received. 

Documents which have no particular time or 
sequence requirements should be filed in the Office 
with materials submitted in reply to the statutory or 
regulatory requirements. Examples are certified cop







ies of foreign documents to support priority in patent 
applications, changes of power of attorney, or changes 
in mailing address following first action.

All letters relating to a reexamination proceeding 
should identify the proceeding involved by patent 
number and reexamination request control number.

I.POST ALLOWANCE CORRESPONDENCE


 All post allowance correspondence, except for 
petitions under 37 CFR 1.313(c), should be addressed 
“Mail Stop Issue Fee.” Any petition filed under 37 
CFR 1.313(c) to withdraw an application from issue 
after payment of the issue fee should be clearly 
marked “Petition under 37 CFR 1.313(c)” and be 
either hand-carried to the Office of Petitions or submitted 
by facsimile to the Office of Petitions at (571) 
273-0025. All other types of petitions, if transmitted 
by facsimile transmission to the Office, must be 
directed to the central facsimile number ((571) 273-
8300).

Any paper filed after receiving the Issue notification 
should include the indicated patent number. 

Since an allowed application may be issued as a 
patent within about four weeks of payment of the 
issue fee, all post allowance correspondence should 
be filed prior to the date of issue fee payment to 
ensure the papers reach the appropriate USPTO official 
for consideration before the date the application 
issues as a patent. See MPEP § 2732 for a discussion 
of the patent term adjustment impact of submitting 
amendments or other papers after a notice of allowance 
has been mailed.

If the above suggestions are adopted, the processing 
of both new and allowed applications could proceed 
more efficiently and promptly through the U.S. 
Patent and Trademark Office.

II. HAND-DELIVERY OF PAPERS

No official paper which relates to a pending application 
may be personally delivered to a TC except 
papers that are directed to an application subject to a 
secrecy order pursuant to 35 U.S.C. 181, or are 
national security classified and that are directed to 
Licensing and Review. Effective December 1, 2003, 
all official patent application related correspondence 
for organizations reporting to the Commissioner for 
Patents (e.g., TCs, the Office of Patent Publication, 
and the Office of Petitions) that is hand-carried (or 
delivered by other delivery services) must be delivered 
to the Customer Service Window, with a few 
exceptions.

Correspondence for Which Centralized Delivery of 
Hand-Carried Papers Is Not Required

The following types of patent application related 
correspondence may be delivered to the specific location 
where they are processed instead of the Customer 
Service Window. Before hand-carrying papers to a 
specific location or a particular office within the 
USPTO, the office should be called to obtain its current 
location. Applicants should check the USPTO 
web site for the current telephone number. Any such 
correspondence carried to the Customer Service Window 
will be accepted and routed to the appropriate 
office, thereby incurring a delay before being processed. 
Correspondence which is not related to a specific 
patent or patent application, such as question on 
policy, on employment, or other general inquiry may 
be hand-carried to the current designated locations 
depending on the substance of the correspondence.

(A)Access Requests - Requests for access to 
patent application files may be hand-carried to the 
File Information Unit (FIU) in Room 2E04, 2900 
Crystal Drive (South Tower), Arlington, VA 22202. 
Requests for access to patent application files that are 
maintained in the Image File Wrapper system and that 
have not yet been published may also be hand-carried 
to the Public Search Facility on the 1st floor of the 
Madison East Building, 600 Dulany Street, Alexandria, 
VA 22314.

(B)Patent Term Extensions under 35 U.S.C. 156 - 
Applications for patent term extension under 
35 
U.S.C. 156 may be hand-carried to the Office of 
Patent Legal Administration (OPLA) in Room 07D85 
of the Madison West Building, 600 Dulany Street, 
Alexandria, VA 22314. At the guard station in Madison 
West, the security guard should call the OPLA at 
(571) 272-7701 or (571) 272-7746 for delivery 
assistance.

(C)Assignments to be Recorded - Assignments 
may be hand-carried to the Office of Public Records 
Customer Service Window on the 2nd floor of the 
South Tower Building, 2900 Crystal Drive, Arlington, 
VA 22202.






(D)Office of General Counsel - Correspondence 
for the Office of General Counsel may be hand-carried 
to the Office of General Counsel in Room 10C20 
of the Madison East Building, 600 Dulany Street, 
Alexandria, VA 22314. At the guard station in Madison 
East, the security guard should call the Office of 
General Counsel at (571) 272-7000 for delivery assistance.


(E)Solicitor’s Office - Correspondence for the 
Solicitor’s Office may be hand-carried to the Solicitor’s 
Office in Room 8C43-A of the Madison West 
Building, 600 Dulany Street, Alexandria, VA 22314. 
At the guard station in Madison West, the security 
guard should call the Solicitor’s Office at (571) 272-
9035 for delivery assistance.

(F)Interference Related Correspondence - Correspondence 
relating to interferences may be hand-carried 
to the 1st floor lobby of Madison East Building, 
600 Dulany Street, Alexandria, VA 22314, where a 
drop-off box for hand-carried documents to be filed 
with the Board of Patent Appeals and Interferences 
(Board) is located. Customers need to pass through 
the magnetometer and have the materials passed 
through the x-ray sensor before placing them in the 
drop-off box. The drop-off box is for Interference 
related correspondence only. Boxes are not permitted 
in the drop-off box. Box materials should be hand-
carried to Madison East, Room 9B55-A using the following 
procedures. At the guard station in Madison 
East, the security guard should call the Board at (571) 
272-9797 to obtain authorization to allow entry into 
the building for delivery to Room 9B55-A. Access to 
Room 9B55-A is available from 8:30 am to 4:45 pm 
only. Documents/boxes hand-carried to the drop-off 
box or to Room 9B55-A after 4:45 pm will receive the 
next day’s filing date. Customers desiring a stamped 
return receipt for their filing need to personally bring 
their filing and postcard to Room 9B55-A during the 
hours stated above, or leave the postcard with the filing 
(postcard must include correct postage mail stamp 
and the address where the postcard is to be mailed). 
The Board will stamp the filing date and mail the 
postcard to the customer.

(G)Secrecy Order - Applications subject to a 
secrecy order pursuant to 35 U.S.C. 181, or are 
national security classified, and correspondence 
related thereto, may be hand-carried to Licensing and 
Review in Room 4B31 of the Knox Building, 501 
Dulany Street, Alexandria, VA 22314. At the guard 
station in Knox, the security guard should call Licensing 
and Review at (571) 272-8203 for delivery assistance.


(H)Expedited Foreign Filing License Petitions - 
Petitions for foreign filing license pursuant to 37 CFR 
5.12(b) for which expedited handling is requested and 
petitions for retroactive license under 37 CFR 5.25may be hand-carried to a drop-off box located at 
the guard station at the lobby of the Knox Building, 
501 Dulany Street, Alexandria, VA 22314. Upon 
approaching the guard station, the delivery personnel 
should state their desire to drop off the request. Correspondence 
packages will be inspected/scanned before 
being placed in the drop-off box. All requests should 
identify a fax number, telephone number and mailing 
address. All responses to the request will be sent by 
fax, followed by a mailed copy. If a fax number is not 
available, a hardcopy will be mailed to the mailing 
address provided.

(I)Petitions to Withdraw from Issue - Petitions to 
withdraw from issue may be hand-carried to the 
Office of Petitions on the 7th floor of the Madison 
West Building, 600 Dulany Street, Alexandria, VA 
22314. At the guard station in Madison West, the 
security guard should call the Office of Petitions at 
(571) 272-3282 for delivery assistance. Hand-carried 
papers will be accepted between the hours of 8:30 am 
to 3:45 pm.

(J)Documents Requested by the Office of Patent 
Publication - Documents requested by the Office of 
Patent Publication may be hand-carried to the Office 
of Patent Publication in Room 8A24, 2900 Crystal 
Drive (South Tower Building), Arlington, VA 22202, 
during business hours.



(K)Office of Enrollment and Discipline (OED) – 
Correspondence for the Office of Enrollment and Discipline 
may be hand-carried to the receptionist at 
Room 8C43-B of the Madison West Building, 600 
Dulany Street, Alexandria, VA 22314. At the guard 
station in Madison West, the security guard should 
call the Office of Enrollment and Discipline at 571-
272-4097 for delivery assistance.

(L)Office of Finance – Refund requests, deposit 
account replenishments, and maintenance fee payments 
may be hand-carried to the Office of Finance 
receptionist in Suite 300 of the Carlyle Place Build







ing, 2051 Jamieson Ave., Alexandria, VA 22314. 
Hand-carried correspondence will only be accepted, 
and not processed. Although the receptionist will not 
process any correspondence, if the correspondence is 
delivered with an itemized postcard, the receptionist 
will provide a delivery receipt by date stamping the 
postcard. Depending on whether the correspondence 
is a refund request, deposit account related (e.g., a 
deposit account replenishment), or maintenance fee 
related (e.g., a maintenance fee payment), the correspondence 
should be placed in an envelope with 
REFUND, DEPOSIT ACCOUNT, or MAINTENANCE 
FEE written in dark ink across the envelope.

(M)Office of Public Records – Requests for certified 
copies of Office records including patent and 
trademark copies, applications-as-filed, file wrappers 
and contents, and assignment records may be hand-
carried to the Office of Public Records’ Customer 
Service Window on the 2nd floor of the South Tower 
Building, 2900 Crystal Drive, Arlington, VA 22202, 
during business hours.

III.“EXPRESS MAIL” SERVICE

There are two types of “Express Mail” delivery 
offered by the U.S. Postal Service — “Post Office to 
Addressee” and “Post Office to Post Office.” The only 
type of service which can be used for “Express Mail” 
directed to the U.S. Patent and Trademark Office is 
the “Post Office to Addressee” service of the U.S. 
Postal Service. 37 CFR 1.10. This service provides for 
the use of a mailing label which clearly indicates the 
date on which a particular paper or fee was deposited.

The addresses that should be used for “Express 
Mail” sent to the U.S. Patent and Trademark Office 
are set forth in 37 
CFR 1.1 (see MPEP § 501).

“Post Office to Post Office” Express Mail does notprovide for delivery but instead is retained at the 
postal facility of the addressee for pickup. The Postal 
Service does not notify the addressee that this type of 
Express Mail has been received and is awaiting 
pickup. If not picked up, this mail is held for 15 days 
and then returned to the sender.

Therefore, since the U.S. Patent and Trademark 
Office does not have resources for picking up any 
mail, including Express Mail, the “Post Office to Post 
Office” Express Mail will not reach the U.S. Patent 
and Trademark Office.

See MPEP § 513 for the use of the Express Mail 
Mailing procedure of 37 CFR 1.10. 

502.01Correspondence Transmitted byFacsimile [R-5]

37 CFR 1.6. Receipt of correspondence.



(d)Facsimile transmission. Except in the cases enumerated 
below, correspondence, including authorizations to charge a 
deposit account, may be transmitted by facsimile. The receipt date 
accorded to the correspondence will be the date on which the 
complete transmission is received in the United States Patent and 
Trademark Office, unless that date is a Saturday, Sunday, or Federal 
holiday within the District of Columbia. See §
 
1.6(a)(3). To 
facilitate proper processing, each transmission session should be 
limited to correspondence to be filed in a single application or 
other proceeding before the United States Patent and Trademark 
Office. The application number of a patent application, the control 
number of a reexamination proceeding, the interference number of 
an interference proceeding, or the patent number of a patent 
should be entered as a part of the sender’s identification on a facsimile 
cover sheet. Facsimile transmissions are not permitted and, 
if submitted, will not be accorded a date of receipt in the following 
situations:

(1)Correspondence as specified in § 1.4(e), requiring an 
original signature;

(2)Certified documents as specified in §
 
1.4(f);

(3)Correspondence which cannot receive the benefit of 
the certificate of mailing or transmission as specified in 
§
 
1.8(a)(2)(i)(A) through (D) and (F), and §
 
1.8(a)(2)(iii)(A), 
except that a continued prosecution application under §
 
1.53(d) 
may be transmitted to the Office by facsimile;

(4)Color drawings submitted under §§ 1.81, 1.83 through 
1.85, 1.152, 1.165, 1.173, or 1.437;

(5)A request for reexamination under §
 
1.510 or §
 
1.913;

(6)Correspondence to be filed in a patent application 
subject to a secrecy order under §§
 
5.1 through 5.5 of this chapter 
and directly related to the secrecy order content of the application;

(7)[Reserved]

(8)[Reserved]

(9)In contested cases before the Board of Patent Appeals 
and Interferences except as the Board may expressly authorize.



The date of receipt accorded to any correspondence 
permitted to be sent by facsimile transmission, including 
a continued prosecution application (CPA) filed 
under 37 
CFR 1.53(d) (for design applications only), 
is the date the complete transmission is received by an 
Office facsimile unit, unless the transmission is completed 
on a Saturday, Sunday, or Federal holiday 
within the District of Columbia. Correspondence for 






which transmission was completed on a Saturday, 
Sunday, or Federal holiday within the District of 
Columbia, will be accorded a receipt date of the next 
succeeding day which is not a Saturday, Sunday, or 
Federal holiday within the District of Columbia. For 
example, a facsimile transmission to the Office from 
California starting on a Friday at 8:45 p.m. Pacific 
time and taking 20 minutes, would be completed at 
9:05 p.m. Pacific time. The complete transmission 
would be received in the Office around 12:05 a.m. 
Eastern time on Saturday. The receipt date accorded 
to the correspondence is the 
date of the following 
business day, which in this case, would be Monday 
(assuming that Monday was not a Federal holiday 
within the District of Columbia). Note however, that 
if the Certificate of Transmission is available (for documents 
not proscribed by 37 
CFR 1.8(a)(2)), then the 
above facsimile may be considered timely filed on 
Friday if it contains a Certificate of Transmission and 
is in compliance with 37 
CFR 1.8(a)(1)(i)(B) and (ii).

37 CFR 1.6(d) specifies the types of correspondence 
which may be transmitted by facsimile. These 
would include CPAs filed under 37 CFR 1.53(d)
(available for design applications only), amendments, 
declarations, petitions, information disclosure statements 
(IDS), terminal disclaimers, notices of appeal 
and appeal briefs, requests for continued examination 
(RCEs) under 37 CFR 1.114, assignment documents, 
issue fee transmittals and authorizations to charge 
deposit accounts. The situations where transmissions 
by facsimile are prohibited are identified in 37 CFR 
1.6(d)(1)-(9). Prohibitions cover situations where 
originals are required as specified in 37 
CFR 1.4(e)
and (f), and situations where accepting a facsimile 
transmission would be unduly burdensome on the 
Office. As a courtesy, the Office will attempt to notify 
senders whenever correspondence is sent to the Office 
by facsimile transmission that falls within one of 
these prohibitions. Senders are cautioned against submitting 
correspondence by facsimile transmission 
which is not permitted under 37 CFR 1.6(d) since 
such correspondence will not be accorded a receipt 
date. 

An applicant filing a CPA for a design application 
only by facsimile transmission must include an authorization 
to charge the basic filing fee to a deposit 
account or to a credit card, or the application will be 
treated under 37 CFR 1.53(f) as having been filed 
without the basic filing fee (as fees cannot otherwise 
be transmitted by facsimile).

There is a special receipt procedure for filing a CPA 
by fax, whereby the Office will fax back a receipt of 
the CPA filing if applicant submits the Office receipt 
form along with the CPA filing.

37 CFR 1.6. Receipt of correspondence. 



(f)Facsimile transmission of a patent application under 
§
 
1.53(d). In the event that the Office has no evidence of receipt of 
an application under §
 
1.53(d) (a continued prosecution application) 
transmitted to the Office by facsimile transmission, the party 
who transmitted the application under § 1.53(d) may petition the 
Director to accord the application under § 1.53(d) a filing date as 
of the date the application under § 1.53(d) is shown to have been 
transmitted to and received in the Office,

(1)Provided that the party who transmitted such application 
under § 1.53(d):

(i)Informs the Office of the previous transmission of 
the application under §
 
1.53(d) promptly after becoming aware 
that the Office has no evidence of receipt of the application under 
§ 1.53(d);

(ii)Supplies an additional copy of the previously 
transmitted application under § 1.53(d); and

(iii)Includes a statement which attests on a personal 
knowledge basis or to the satisfaction of the Director to the previous 
transmission of the application under §
 
1.53(d) and is accompanied 
by a copy of the sending unit’s report confirming 
transmission of the application under § 1.53(d) or evidence that 
came into being after the complete transmission and within one 
business day of the complete transmission of the application under 
§
 
1.53(d).

(2)The Office may require additional evidence to determine 
if the application under §
 
1.53(d) was transmitted to and 
received in the Office on the date in question.

37 CFR 1.6(f) provides for the situation in which 
the Office has no evidence of receipt of a CPA transmitted 
to the Office by facsimile transmission. 
37 
CFR 1.6(f) requires a petition be filed requesting 
that the CPA be accorded a filing date as of the date 
the CPA is shown to have been transmitted to and 
received in the Office. The showing must include, 
inter alia, a copy of the sending unit’s report confirming 
transmission of the application or evidence that 
came into being after the complete transmission of the 
application and within one business day of the complete 
transmission of the application. 






I.CENTRALIZED FACSIMILE NUMBER 
FOR OFFICIAL PATENT APPLICATION 
RELATED CORRESPONDENCE

A.Central Number

Effective December 1, 2003, all patent application 
related correspondence transmitted by facsimile must 
be directed to the central facsimile number, with a few 
exceptions below. The central facsimile number is 
(571) 273-8300. Replies to Office actions including 
after-final amendments that are transmitted by facsimile 
must be directed to the central facsimile number. 
Unofficial correspondence such as draft proposed 
amendments for interviews may continue to be transmitted 
by facsimile to the Technology Centers (TCs). 
Office personnel should not use their personal facsimile 
numbers for official application related correspondence. 
Office personnel that inadvertently receive 
official application related correspondence on a personal 
facsimile number must either route (do not forward) 
the correspondence to the official central 
facsimile number or they may, with applicant’s (or 
applicant’s representative) permission, make the facsimile 
amendment part of an examiner’s amendment.

B.Correspondence Which May Be Sent by Facsimile 
to Other Than the Central Facsimile 
Number

For each Office location listed below, only the particular 
type of correspondence indicated may be transmitted 
to the specific facsimile number at that Office 
location. All other types of facsimile transmitted correspondence 
must be sent to the central facsimile 
number ((571) 273-8300).

(1) PCT Operations and PCT Legal Administration


Correspondence subsequent to filing in an international 
application before the U.S. Receiving Office, 
the U.S. International Searching Authority, or the U.S. 
International Preliminary Examining Authority:

-- Papers in international applications: (571) 273-
3201 facsimile number

-- Response to Decisions on Petition: (571) 273-
0459 facsimile number

Note: An international application for patent or a 
copy of the international application and the basic 
national fee necessary to enter national stage, as specified 
in 37 CFR 1.495(b), may not be submitted by 
facsimile. See 37 CFR 1.6(d)(3) (referencing 37 CFR 
1.8(a)(2)(i)(D) and (F)). Subsequent correspondence 
may be transmitted by facsimile in an application 
before the U.S. Receiving Office, the U.S. International 
Searching Authority, or the U.S. International 
Preliminary Examining Authority, but it will notreceive the benefit of any certificate of transmission 
(or mailing). See 37 CFR 1.8(a)(2)(i)(E). Correspondence 
during the national stage, subsequent to 
entry are handled in the same manner as a U.S. 
to national application. 

-- The PCT Help Desk: 

(571) 273-0419 facsimile number

(571) 272-4300 telephone number

(2) Office of Patent Publication

Payment of an issue fee and any required publication 
fee by authorization to charge a deposit account 
or credit card, and drawings: (571) 273-2885
facsimile number 

Note: Although submission of drawings by facsimile 
may reduce the quality of the drawings, the 
Office will generally print the drawings as received.

Office of Patent Publication telephone numbers 
to check on receipt of payment: (571) 272-4200 
or 1-888-786-0101

(3) Office of Pre-Grant Publication

Petitions for express abandonment to avoid publication 
under 37 CFR 1.138(c), and Requests for 
express abandonment under 37 CFR 1.138: (703) 
305-8568 facsimile number



(4) Electronic Business Center (EBC)

Requests for Customer Number Data Change 
(PTO/SB/124), and Requests for a Customer Number 
(PTO/SB/125): (571) 273-0177 facsimile number

Note: The EBC may also be reached by e-
mail at: ebc@uspto.gov. EBC telephone number for 
customer service and assistance: 866-217-9197






(5) Assignment Branch

Assignments or other documents affecting title: 
(571) 273-0140 facsimile number

Note: Customers may submit documents directly 
into the automated Patent and Trademark Assignment 
System and receive the resulting recordation notice at 
their facsimile machine. (Assignment documents submitted 
through the Electronic Patent Assignment System 
also permit the recordation notice to be faxed to 
customers.) Credit card payments to record assignment 
documents are acceptable, and use of the Credit 
Card form (PTO-2038) is required for the credit card 
information to be separated from the assignment 
records. Only documents with an identified patent 
application or patent number, a single cover sheet to 
record a single type of transaction, and the fee paid by 
an authorization to charge a USPTO deposit account 
or credit card may be submitted via facsimile. Additional 
information regarding the submission of assignment 
documents via facsimile may be obtained from 
the USPTO web site at http://www.uspto.gov/web/
offices/ac/ido/opr/ptasfax.pdf

Assignment Branch telephone number for 
assistance: (571) 272-3350

(6) Central Reexamination Unit (CRU)

Ex parte and Inter partes reexamination correspondence, 
except for the initial request: (571) 
273-9900 facsimile number

Note: Correspondence related to reexamination 
proceedings will be separately scanned in the 
CRU.

CRU telephone number for customer service 
and inquiries: (571) 272-7705



(7) Board of Patent Appeals and Interferences


Correspondence related to pending interferences 
permitted to be transmitted by facsimile (only where 
expressly authorized, see 37 CFR 1.6(d)(9)): (571) 
273-0042 facsimile number

Note: Correspondence should not be transmitted 
to this number if an interference has not yet been 
declared.



(8) Office of the General Counsel

Correspondence permitted to be transmitted by 
facsimile to the Office of the General Counsel: (571) 
273-0099 facsimile number



(9) Office of the Solicitor

Correspondence permitted to be transmitted by 
facsimile to the Office of the Solicitor: (571) 273-
0373 facsimile number



(10)  Licensing and Review

Petitions for a foreign filing license pursuant to 
37 
CFR 5.12(b), including a petition for a foreign filing 
license where there is no corresponding U.S. 
application (37 CFR 5.13): (571) 273-0185 facsimile 
number 

Note: Correspondence to be filed in a patent 
application subject to a secrecy order under 37 CFR 
5.1 to 5.5 and directly related to the secrecy order 
content of the application may not be transmitted via 
facsimile. See 37 CFR 1.6(d)(6).



(11)  Office of Petitions

Petitions to withdraw from issue: (571) 273-0025 
facsimile number

Note: All other types of petitions must be 
directed to the central facsimile number (571) 273-
8300. Petitions sent to the central facsimile number 
should be marked “Special Processing Submission.”



(12) Office of the Enrollment and Discipline

Correspondence permitted to be transmitted to 
the Office of the Enrollment and Discipline: (571) 
273-0074 facsimile number

(13) Office of Finance

Refund requests, deposit account inquiries, and 
maintenance fee payments: (571) 273-6500 facsimile 
number

Office of Finance telephone number for customer 
service and inquiries: (571) 272-6500

(14) Office of Public Records

Requests for certified copies of Office records 
may be transmitted to: (571) 273-3250 facsimile number


The Office of Public Records’ Document Services 
Division telephone number for customer service 
and inquiries: (571) 272-3150






II.CORRESPONDENCE RELATIVE TO 
PATENTS AND PATENT APPLICATIONS 
WHERE FILING BY FACSIMILE TRANSMISSION 
IS NOT PERMITTED

(A)A document that is required by statute to be 
certified;

(B)A national patent application specification 
and drawing (provisional or nonprovisional) or other 
correspondence for the purpose of obtaining an application 
filing date, other than a continued prosecution 
application filed under 37 CFR 1.53(d);

(C)Color drawings submitted under 37 CFR 
1.81, 1.83-1.85, 1.152, 1.165, 1.173, or 1.437;

(D)Correspondence in an interference which an 
Administrative Patent Judge orders to be filed by 
hand or “Express Mail”;

(E)Agreements between parties to an interference 
under 35 U.S.C. 135(c);

(F)Correspondence in contested cases before the 
Board of Patent Appeals and Interferences, unless 
expressly authorized by the Board;

(G)Correspondence to be filed in a patent application 
subject to a secrecy order under 37 CFR 5.1-
5.5 and directly related to the secrecy order content of 
the application;

(H)An international application for patent;

(I)A copy of the international application and 
the basic national fee necessary to enter the national 
stage, as specified in 37 CFR 1.495(b); 

(J)A request for reexamination under 37 CFR 
1.510 or 37 CFR 1.913.

Applicants are reminded that the facsimile process 
may reduce the quality of the drawings, and the Office 
will generally print the drawings as received.

See MPEP § 1834.01 for a discussion concerning 
facsimile transmissions in PCT applications.

502.02Correspondence Signature Requirements 
[R-5]

37 CFR 1.4. Nature of correspondence and signature 
requirements.



(d)(1)Handwritten signature. Each piece of correspondence, 
except as provided in paragraphs (d)(2), (d)(3), (e) and (f) of this 
section, filed in an application, patent file, or other proceeding in 
the Office which requires a person’s signature, must:

(i)Be an original, that is, have an original handwritten 
signature personally signed, in permanent dark ink or its equivalent, 
by that person; or

(ii)Be a direct or indirect copy, such as a photocopy or 
facsimile transmission (§ 1.6(d)), of an original. In the event that a 
copy of the original is filed, the original should be retained as evidence 
of authenticity. If a question of authenticity arises, the 
Office may require submission of the original.



(2) S-signature. An S-signature is a signature inserted 
between forward slash marks, but not a handwritten signature as 
defined by § 1.4(d)(1). An S-signature includes any signature 
made by electronic or mechanical means, and any other mode of 
making or applying a signature not covered by either a handwritten 
signature of § 1.4(d)(1) or an Office Electronic Filing System 
(EFS) character coded signature of §
 
1.4(d)(3). Correspondence 
being filed in the Office in paper, by facsimile transmission as 
provided in §
 
1.6(d), or via the Office Electronic Filing System as 
an EFS Tag(ged) Image File Format (TIFF) attachment, for a 
patent application, patent, or a reexamination proceeding may be 
S-signature signed instead of being personally signed (i.e., with a 
handwritten signature) as provided for in paragraph (d)(1) of this 
section. The requirements for an S-signature under this paragraph 
(d)(2) are as follows.

(i)The S-signature must consist only of letters, or 
Arabic numerals, or both, with appropriate spaces and commas, 
periods, apostrophes, or hyphens for punctuation, and the person 
signing the correspondence must insert his or her own S-signature 
with a first single forward slash mark before, and a second single 
forward slash mark after, the S-signature (e.g., /Dr. James T. 
Jones, Jr./); and



(ii)A patent practitioner (§ 1.32(a)(1)), signing pursuant 
to §§ 1.33(b)(1) or 1.33(b)(2), must supply his/her registration 
number either as part of the S-signature, or immediately below or 
adjacent to the S-signature. The number (#) character may be used 
only as part of the S-signature when appearing before a practitioner’s 
registration number; otherwise the number character may 
not be used in an S-signature. 

(iii)The signer’s name must be:

(A)Presented in printed or typed form preferably 
immediately below or adjacent the S-signature, and

(B)Reasonably specific enough so that the identity 
of the signer can be readily recognized.

(3) EFS character coded signature. Correspondence in 
character coded form being filed via the Office Electronic Filing 
System for a patent application or patent may be signed electronically. 
The electronic signature must consist only of letters of the 
English alphabet, or Arabic numerals, or both, with appropriate 
spaces and commas, periods, apostrophes, or hyphens for punctuation. 
The person signing the correspondence must personally 
insert the electronic signature with a first single forward slash 
mark before, and a second single forward slash mark after, the 
electronic signature (e.g., /Dr. James T. Jones, Jr./).

(4) Certifications. (i) Section 10.18 certifications: The 
presentation to the Office (whether by signing, filing, submitting, 
or later advocating) of any paper by a party, whether a practitioner 






or non-practitioner, constitutes a certification under § 10.18(b) of 
this chapter. Violations of § 10.18(b)(2) of this chapter by a party, 
whether a practitioner or non-practitioner, may result in the imposition 
of sanctions under § 10.18(c) of this chapter. Any practitioner 
violating § 10.18(b) of this chapter may also be subject to 
disciplinary action. See §§ 10.18(d) and 10.23(c)(15) of this chapter.


(ii) Certifications as to the signature: (A) Of another: 
A person submitting a document signed by another under paragraphs 
(d)(2) or (d)(3) of this section is obligated to have a reasonable 
basis to believe that the person whose signature is present on 
the document was actually inserted by that person, and should 
retain evidence of authenticity of the signature.

(B) Self certification: The person inserting a signature 
under paragraphs (d)(2) or (d)(3) of this section in a document 
submitted to the Office certifies that the inserted signature 
appearing in the document is his or her own signature.

(C) Sanctions: Violations of the certifications as to 
the signature of another or a person’s own signature, set forth in 
paragraphs (d)(4)(ii)(A) and (B) of this section, may result in the 
imposition of sanctions under § 10.18(c) and (d) of this chapter.

(e)Correspondence requiring a person’s signature and relating 
to registration practice before the Patent and Trademark Office 
in patent cases, enrollment and disciplinary investigations, or disciplinary 
proceedings must be submitted with an original hand 
written signature personally signed in permanent dark ink or its 
equivalent by that person.

(f)When a document that is required by statute to be certified 
must be filed, a copy, including a photocopy or facsimile 
transmission, of the certification is not acceptable.



(h)Ratification/confirmation/evidence of authenticity: The 
Office may require ratification, confirmation (which includes submission 
of a duplicate document but with a proper signature), or 
evidence of authenticity of a signature, such as when the Office 
has reasonable doubt as to the authenticity (veracity) of the signature, 
e.g., where there are variations of a signature, or where the 
signature and the typed or printed name, do not clearly identify 
the person signing.

Correspondence filed in the Office, which requires 
a person’s signature, may be filed with one of three 
types of signatures: (A) handwritten signature; (B) 
“S-signature;” and (C) Office Electronic Filing System 
(EFS) character coded signature. See 37 CFR 
1.4(d). 

I.HANDWRITTEN SIGNATURE

A person’s handwritten signature may be an original, 
or a copy thereof. The word original, as used 
herein, is defined as correspondence which is personally 
signed in permanent dark ink or its equivalent by 
the person whose signature appears thereon. Dark ink 
or equivalent permits traditional ink and newer non-
liquid gel type ink technologies. Since incoming correspondence 
is electronically stored and scanned as a 
black and white image, a dark color is required so that 
the scanned image is legible. Where copies of correspondence 
are acceptable, photocopies or facsimile 
transmissions may be filed. For example, a photocopy 
or facsimile transmission of an original of an amendment, 
declaration (e.g., under 37 CFR 1.63 or 1.67), 
petition, issue fee transmittal form, authorization to 
charge a deposit account or a credit card, may be submitted 
in a patent application. Where copies are permitted, 
second and further generation copies (i.e., 
copy of a copy) are acceptable. For example, a client 
may fax a paper to an attorney and the attorney may 
then fax the paper to the Office, provided the paper is 
eligible to be faxed (see MPEP § 502.01). The original, 
if not submitted to the Office, should be retained 
as evidence of proper execution in the event that questions 
arise as to the authenticity of the signature reproduced 
on the photocopy or facsimile-transmitted 
correspondence. If a question of authenticity arises, 
the Office may require submission of the original.

37 CFR 1.4(d)(1) covers all handwritten signatures, 
except for the handwritten signatures on the types of 
correspondence covered by 37 CFR 1.4(e). The 
requirement in 37 CFR 1.4(d)(1) of permanent dark 
ink or its equivalent relates to whether a handwritten 
signature is compliant and is not limiting on the type 
of handwritten signature that is covered by 37 
CFR 
1.4(d)(1). Thus, 37 CFR 1.4(d)(1) would cover handwritten 
signatures in red ink or in pencil; although, 
under 37 CFR 1.4(d)(1) neither would be acceptable 
since red ink is not dark, and pencil is not permanent. 
A scanned image of a document that contains a handwritten 
signature filed via the Office’s EFS is permitted 
as a copy under 37 CFR 1.4(d)(1)(ii). A signature 
applied by an electric or mechanical typewriter 
directly to paper is not a handwritten signature, which 
is applied by hand. Accordingly, if a typewriter 
applied signature is used, it must meet the requirements 
of 37 CFR 1.4(d)(2). Adding forward slashes to 
a handwritten (or hand-printed) ink signature that is 
personally applied will not cause the signature to be 
treated under 37 CFR 1.4(d)(2). Such a signature will 
be treated under 37 CFR 1.4(d)(1) or (e) with the 
slashes ignored. The end product from a manually 
applied hand stamp or from a signature replication or 
transfer means (such as by pen or by screen) appears 






to be a handwritten signature, but is not actually handwritten, 
and would be treated under 37 CFR 1.4(d)(2). 
An electronic reproduction of a handwritten signature, 
e.g., scanned, that is electronically applied to a document 
is not a personally signed original document 
under 37 CFR 1.4(d)(1)(i) and reproductions of such 
correspondence cannot be copies under 37 CFR 
1.4(d)(1)(ii).

II.S-SIGNATURE

The second type of signature is an S-signature. See 
37 CFR 1.4(d)(2). An S-signature is a signature 
inserted between forward slash marks, but not a handwritten 
signature as defined by 37 CFR 1.4(d)(1) or 
(e), or an EFS character coded signature as defined by 
37 CFR 1.4(d)(3). An S-signature includes any signature 
made by electronic or mechanical means, and any 
other mode of making or applying a signature not 
covered by either a handwritten signature of 37 CFR 
1.4(d)(1) or (e), or an EFS character coded signature 
of 37 CFR 1.4(d)(3). The S-signature can be used 
with correspondence filed in the Office in paper, by 
facsimile transmission as provided in 37 CFR 1.6(d), 
or via the Office EFS as an EFS Tag(ged) Image File 
Format (TIFF) attachment, for a patent application, a 
patent, or a reexamination proceeding. 37 CFR 1.4(d) 
does not authorize filing correspondence by e-mail.

An S-signature must consist only of letters, or Arabic 
numerals, or both, with appropriate spaces and 
punctuation (i.e., commas, periods, apostrophes, or 
hyphens). “Letters” include English and non- English 
alphabet letters, and text characters (e.g., Kanji). Non-
text, graphic characters (e.g., a smiley face created in 
the True Type Wing Dings font) are not permitted. 
“Arabic numerals” are the numerals 0, 1, 2, 3, 4, 5, 6, 
7, 8, and 9, which are the standard numerals used in 
the United States. To accommodate as many varieties 
of names as possible, a signer may select any combination 
of letters, Arabic numerals, or both, for his or 
her S-signature under 37 CFR 1.4(d)(2)(i). The person 
signing the correspondence must insert his or her own 
S-signature with a first single forward slash mark 
before, and a second single forward slash mark after, 
the S-signature (e.g., /Dr. James T. Jones, Jr./). Additional 
forward slashes are not permitted as part of the 
S-signature. The presentation of just letters and Arabic 
numerals as an S-signature without the S-signature 
being placed between two forward slashes will be 
treated as an unsigned document. 

Commas, periods, apostrophes, and hyphens are 
often found in names and will therefore be found in 
many S-signatures. These punctuation marks and 
appropriate spaces may be used with letters and Arabic 
numerals in an S-signature. A sample S-signature 
including punctuation marks and spaces, between two 
forward slashes, is: /John P. Doe/. Punctuation marks, 
per se, are not punctuation and are not permitted without 
proper association with letters and Arabic numerals. 
An S-signature of only punctuation marks would 
be improper (e.g., /- - -/). In addition, punctuation 
marks, such as question marks (e.g., /???/), are often 
utilized to represent an intent not to sign a document 
and may be interpreted to be a non-bona fide attempt 
at a signature, in addition to being improper.

Script fonts are not permitted for any portion of a 
document except the S-signature. See 37 CFR 
1.52(b)(2)(ii). Presentation of a typed name in a script 
font without the typed name being placed between the 
required slashes does not present the proper indicia 
manifesting an intent to sign and will be treated as an 
unsigned document.

37 CFR 1.4(d)(2)(i) also defines who can insert an 
S-signature into a document. 37 CFR 1.4(d)(2)(i) 
requires that a person, which includes a practitioner, 
must insert his or her own signature using letters and/
or Arabic numerals, with appropriate commas, periods, 
apostrophes, or hyphens as punctuation and 
spaces. The “must insert his or her own signature” 
requirement is met by the signer directly typing his or 
her own signature using a keyboard. The requirement 
does not permit one person (e.g., a secretary) to type 
in the signature of a second person (e.g., a practitioner) 
even if the second person directs the first person 
to do so. A person physically unable to use a keyboard, 
however, may, while simultaneously reviewing 
the document for signature, direct another person to 
press the appropriate keys to form the S-signature.

For consistency purposes, and to avoid raising a 
doubt as to who has signed, the same S-signature 
should be utilized each time, with variations of the 
signature being avoided. The signer should review 
any indicia of identity of the signer in the body of the 
document, including any printed or typed name and 
registration number, to ensure that the indicia of identity 
in the body of the document is consistent with 






how the document is S-signed. Knowingly adopting 
an S-signature of another is not permitted.

While an S-signature need not be the name of the 
signer of the document, the Office strongly suggests 
that each signer use an S-signature that has his or her 
full name. The Office expects that where persons do 
not sign with their name it will be because they are 
using an S-signature that is the usual S-signature for 
that person, which is his or her own signature, and not 
something that is employed to obfuscate or misidentify 
the signer. Titles may be used with the signer’s S-
signature and must be placed between the slash marks 
(e.g., /Dr. John Doe/), or with the printed or typed version 
of the name.

37 CFR 1.4(d)(2)(ii) requires that a practitioner 
(37 CFR 1.32(a)(1)) signing pursuant to 37 CFR 
1.33(b)(1) or (b)(2) must place his or her registration 
number, either as part of, or adjacent, his or her S-signature. 
A number character (#) may only be used in an 
S-signature if it is prior to a practitioner’s registration 
number that is part of the S-signature. When a practitioner 
is signing as an assignee, or as an applicant 
(inventor) pursuant to 37 
CFR 1.33(b)(3) or (b)(4), a 
registration number is not required and should not be 
supplied to avoid confusion as to which basis the 
practitioner is signing, e.g., as a practitioner or as the 
assignee.

The signer’s name must be (A) presented in printed 
or typed form preferably immediately below or adjacent 
the S-signature, and (B) reasonably specific 
enough so that the identity of the signer can be readily 
recognized. See 37 CFR 1.4(d)(2)(iii)(A). The printed 
or typed name requirement is intended to describe any 
manner of applying the signer’s name to the document, 
including by a typewriter or machine printer. It 
could include a printer (mechanical, electrical, optical, 
etc.) associated with a computer or a facsimile 
machine but would not include manual or hand printing. 
See 37 CFR 1.52(a)(1)(iv). The printed or typed 
name may be inserted before or after the S-signature 
is applied, and it does not have to be inserted by the S-
signer. A printed or typed name appearing in the letterhead 
or body of a document is not acceptable as the 
presentation of the name of the S-signer. 

III.EFS CHARACTER CODED SIGNATURE

The third type of an acceptable signature established 
by 37 CFR 1.4(d)(3) is the EFS character coded 
signature, which is an electronic signature, for correspondence 
submitted via EFS in character coded form 
for a patent application, e-IDS or an assignment cover 
sheet signed consistent with 37 CFR 3.31. The electronic 
signature must consist only of letters of the 
English alphabet, or Arabic numerals, or both, with 
appropriate spaces and commas, periods, apostrophes, 
and hyphens as punctuation. Letters of the English 
alphabet are the upper and lower case letters A 
through Z.

EFS character coded signatures are signatures 
inserted into EFS menus in the Office’s EFS software. 
The signature is inserted into transmittal, assignment, 
declaration, power of attorney, fee transmittal and e-
IDS forms. These forms are identified in the list of 
EFS files transmitted as XML files. Scanned images 
of oaths and declarations with ink signatures (37 CFR 
1.4(d)(1)) and S-signatures (37 CFR 1.4(d)(2)) may 
also be filed as an attachment in an EFS filing, 
and 
can be distinguished on the EFS file list as TIFF 
files.

IV.CERTIFICATIONS

37 CFR 1.4(d)(4)(i) establishes that the presentation 
to the Office (whether by signing, filing, submitting, 
or later advocating) of any paper by a party, 
whether a practitioner or non- practitioner, 
constitutes 
a certification under 37 CFR 10.18(b) of 
this chapter.

37 CFR 1.4(d)(4)(ii)(A) establishes certifications as 
to the signature of another for a person submitting a 
document signed by another under 37 CFR 1.4(d)(2) 
or (d)(3). Thus, the submitting person is obligated to 
have a reasonable basis to believe that the person 
whose signature is present on the document actually 
inserted the signature on the document. Such reasonable 
basis does not require an actual knowledge but 
does require some reason to believe the signature is 
appropriate. For example, where a practitioner e-mails 
a 37 CFR 1.63 declaration to an inventor for signature 
by the inventor and receives an executed declaration 
by the inventor in return from the inventor, reasonable 
basis would exist. Where an assignee was involved in 
the transmission of the declaration form and/or the 
executed declaration, an additional showing of chain 
of custody (e.g., e-mail chain with attached documents 
from the inventor to the assignee to the practitioner 
filing the declaration) involving the assignee 






would be required. Additionally, evidence of authenticity 
should be retained. This may involve retaining 
the e-mails sent to the inventor and any cover letter or 
e-mail (with the signed document as an attachment) 
back to the practitioner from the inventor in the example 
relating to execution of a 37 CFR 1.63 declaration. 

37 CFR 1.4(d)(4)(ii)(B) establishes that a person 
inserting a signature under 37 CFR 1.4(d)(2) or (d)(3) 
in a document submitted to the Office certifies that the 
inserted signature appearing in the document is his or 
her own signature. This is meant to prohibit a first 
person from requesting a second person to insert the 
first person’s signature in a document. While the certification 
is directed at the person inserting another S- 
signature, the person requesting the inappropriate 
insertion may also be subject to sanctions. 

37 CFR 1.4(d)(4)(ii)(C) establishes that violations 
of the certifications as to the signature of another or a 
person’s own signature, set forth in 37 CFR 
1.4(d)(4)(ii)(A) and (B), may result in the imposition 
of sanctions under 37 CFR 10.18(c) and (d).

V.RATIFICATION, CONFIRMATION, OR 
EVIDENCE OF AUTHENTICITY

Pursuant to 37 CFR 1.4(h), the Office may additionally 
inquire in regard to a signature so as to identify 
the signer and clarify the record where the 
identity of the signer is unclear. An example of when 
ratification or confirmation of a signature may be 
required is when there are variations in a signature or 
whenever a name in an S-signature is not exactly the 
same as the name indicated as an inventor, or a practitioner 
of record. Hence, whatever signature is adopted 
by a signer, that signature should be consistently used 
on all documents. Also addressed is the treatment of 
variations in a signature or where a printed or typed 
name accompanies the S-signature or the EFS character 
coded signature but the identity of the signer is 
unclear. In such cases, the Office may require ratification 
or confirmation of a signature. Ratification 
requires the person ratifying to state he/she personally 
signed the previously submitted document as well as, 
if needed, the submission of a compliant format of the 
signature. Confirmation includes submitting a duplicate 
document, which is compliantly signed if the previous 
signature was noncompliant (as opposed to 
unclear).

In lieu of ratification, the Office may require a 
resubmission of a properly signed duplicate document. 
Resubmission of a document may be required, 
for example, where ratification alone is inappropriate, 
such as where the image of the signature is of such 
poor quality (e.g., illegible font) that the Office is 
unable to store or reproduce the document with the 
signature image.

Ratification or confirmation alone does not provide 
a means for changing the name of a signer. For example, 
when an inventor changes her/his name and the 
inventor desires to change her/his name in the application, 
such change must be accompanied by a petition 
under 37 CFR 1.182 and, preferably, an 
Application Data Sheet (ADS). See MPEP 
§
 
605.04(c).

In addition, the Office may require evidence 
of 
authenticity where the Office has reasonable 
doubt 
as 
to the authenticity (veracity) of the signature. 
Evidence of authenticity may include evidence establishing 
a chain of custody of a document from the person 
signing the document to the person filing the 
document. Proper evidence of a chain of custody will 
aid in avoiding the impact of repudiation of a signature.


Where there has been a bona fide attempt to follow 
the rule, but where there is some doubt as to the identity 
of the signer of a signed document, the Office 
may require ratification of the signature. Note, ratification 
would only be an effective remedy if the signer 
was a proper party to have executed the document to 
be ratified. For example, a practitioner of record may 
ratify his or her signature on an amendment, but not 
the signature of a secretary who is not a practitioner or 
inventor in the application. A registered practitioner 
may, however, ratify the amendment made by another 
registered practitioner but may not ratify a document 
required to be signed by an inventor, such as a 
37 
CFR 1.63 declaration. Similarly, an inadvertent 
typographical error or simple misspelling of a name 
will be treated as a bona fide attempt to follow the 
rule, which would require ratification only where 
there is some doubt as to the identity of the signer 
rather than be treated as an unsigned paper requiring 
resubmission. Where there is an obvious typographical 
error so that the Office does not have some doubt 
as to the identity of the signer (and therefore notification 
to applicant is not needed), further action by 






applicant would not be required and, where appropriate, 
the obvious error will be noted in the record.

The inadvertent failure to follow the format and 
content of an S-signature will be treated as a bona fideattempt at a signature but the paper will be considered 
as being unsigned correspondence. Examples of correspondence 
that will be treated as unsigned are (A) 
the S-signature is not enclosed in forward slashes, (B) 
the S-signature is composed of non-text graphic characters 
(e.g., a smiley face) and not letters and numerals, 
and (C) the S-signature is not a name and there is 
no other accompanying name adjacent or below the S-
signature so that the identity of the signer cannot be 
readily recognized.

If the signer, after being required to ratify or resubmit 
a document with a compliant signature, repeats 
the same S-signature in reply without appropriate correction, 
the reply will not be considered to be a bona 
fide attempt to reply, and no additional time period 
will be given to submit a properly signed document.

VI.CERTIFICATION OF DOCUMENTS RE-
QUIRED BY STATUTE

When a document that is required by statute to be 
certified must be filed (such as a certified copy of a 
foreign patent application pursuant to 35 U.S.C. 119or a certified copy of an international application pursuant 
to 35 U.S.C. 365) a copy of the certification, 
including a photocopy or facsimile transmission, will 
not be acceptable. The requirement for an original 
certification does not apply to certifications such as 
required under 37 CFR 1.8 since these certifications 
are not required by statute.

502.03Communications via the Internet..
[R-2]

 The Office published a Patent Internet Usage Policy 
to 

(A)establish a policy for use of the Internet by 
the Patent Examining Corps and other organizations 
within the USPTO, 

(B)address use of the Internet to conduct interview-
like communications and other forms of formal 
and informal communications, 

(C)publish guidelines for locating, retrieving, citing, 
and properly documenting scientific and technical 
information sources on the Internet, 

(D)inform the public how the USPTO intends to 
use the Internet, and 

(E)establish a flexible Internet policy framework 
which can be modified, enhanced, and corrected as 
the USPTO, the public, and customers learn to use, 
and subsequently integrate, new and emerging Internet 
technology into existing business infrastructures 
and everyday activities to improve the patent application, 
examining, and granting functions. 

 See Internet Usage Policy, 64 FR 33056 (June 
21, 1999). The Articles of the Patent Internet Usage 
Policy pertinent to communications via electronic 
mail are summarized below. See MPEP § 904.02(c)
for information pertinent to Internet searching, and 
MPEP § 707.05(e) for information pertaining to the 
citation of electronic documents. See also MPEP 
§
 
713.04 for recordation of e-mail interviews.



I. CONFIDENTIALITY OF PROPRIETARY 
INFORMATION (ARTICLE 4)

 If security and confidentiality cannot be attained 
for a specific use, transaction, or activity, then that 
specific use, transaction, or activity shall NOT be 
undertaken/conducted.

 All use of the Internet by Patent Organization 
employees, contractors, and consultants shall be conducted 
in a manner that ensures compliance with confidentiality 
requirements in statutes, including 
35 
U.S.C. 122, and regulations. Where a written 
authorization is given by the applicant for the USPTO 
to communicate with the applicant via Internet e-mail, 
communications via Internet e-mail may be used.

Backup, archiving, and recovery of information 
sent or received via the Internet is the responsibility of 
individual users. The OCIO does not, and will not, as 
a normal practice, provide backup and recovery services 
for information produced, retrieved, stored, or 
transmitted to/from the Internet.



II. COMMUNICATIONS VIA THE INTERNET 
AND AUTHORIZATION (ARTICLE 
5)

 Communications via Internet e-mail are at the discretion 
of the applicant.






Without a written authorization by applicant in 
place, the USPTO will not respond via Internet e-mail 
to any Internet correspondence which contains information 
subject to the confidentiality requirement as 
set forth in 35 U.S.C. 122. A paper copy of such correspondence 
will be placed in the appropriate patent 
application.

The following is a sample authorization form which 
may be used by applicant:

 “Recognizing that Internet communications are not 
secure, I hereby authorize the USPTO to communicate 
with me concerning any subject matter of this 
application by electronic mail. I understand that a 
copy of these communications will be made of record 
in the application file.”

 A written authorization may be withdrawn by filing 
a signed paper clearly identifying the original 
authorization. The following is a sample form which 
may be used by applicant to withdraw the authorization:


 “The authorization given on______, to the USPTO 
to communicate with me via the Internet is hereby 
withdrawn. I 
understand that the withdrawal is effective 
when approved rather than when received.”

 Where a written authorization is given by the 
applicant, communications via Internet e-mail, other 
than those under 35 U.S.C. 132 or which otherwise 
require a signature, may be used. In such case, a 
printed copy of the Internet e-mail communications 
MUST be given a paper number, entered into the 
Patent Application Locating and Monitoring System 
(PALM) and entered in the patent application file. A 
reply to an Office action may NOT be communicated 
by applicant to the USPTO via Internet e-mail. If such 
a reply is submitted by applicant via Internet e-mail, a 
paper copy will be placed in the appropriate patent 
application file with an indication that the reply is 
NOT ENTERED. For Image File Wrapper (IFW) 
processing, see IFW Manual.

USPTO employees are NOT permitted to initiate 
communications with applicants via Internet e-mail 
unless there is a written authorization of record in the 
patent application by the applicant.

 All reissue applications are open to public inspection 
under 37 CFR 1.11(a) and all papers relating to a 
reexamination proceeding which have been entered 
of 
record in the patent or reexamination file are 
open 
to 
public inspection under 37 CFR 1.11(d). 
USPTO 
employees are NOT permitted to initiate 
communications with applicant in a reissue application 
or a patentee of a reexamination proceeding via 
Internet e-mail unless written authorization is given 
by the applicant or patentee.



III. AUTHENTICATION OF SENDER BY A 
PATENT ORGANIZATION RECIPIENT 
(ARTICLE 6)

The misrepresentation of a sender’s identity (i.e., 
spoofing) is a known risk when using electronic communications. 
Therefore, Patent Organization users 
have an obligation to be aware of this risk and conduct 
their Internet activities in compliance with established 
procedures.

Internet e-mail must be initiated by a registered 
practitioner, or an applicant in a pro se application, 
and sufficient information must be provided to show 
representative capacity in compliance with 37 CFR 
1.34. Examples of such information include the attorney 
registration number, attorney docket number, and 
patent application number.



IV. USE OF ELECTRONIC MAIL SERVICES 
(ARTICLE 
7)

Once e-mail correspondence has been received 
from the applicant, as set forth in Patent Internet 
Usage Policy Article 4, such correspondence must be 
responded to appropriately. The Patent Examiner may 
respond to an applicant’s e-mail correspondence by 
telephone, fax, or other appropriate means.



V. INTERVIEWS (ARTICLE 8)

Internet e-mail shall NOT be used to conduct an 
exchange of communications similar to those 
exchanged during telephone or personal interviews 
unless a written authorization has been given under 
Patent Internet Usage Policy Article 5 to use Internet 
e-mail. In such cases, a paper copy of the Internet e-
mail contents MUST be made and placed in the patent 
application file, as required by the Federal Records 
Act, in the same manner as an Examiner Interview 
Summary Form is entered.








VI. POLICY GUIDANCE AND CLARIFICATIONS 
(ARTICLE 13)

 Within the Patent Organization, any questions 
regarding Internet usage policy should be directed to 
the user’s immediate supervisor. Non-USPTO personnel 
should direct their questions to the Office of the 
Deputy Commissioner for Patent Examination Policy. 

502.04Duplicate Copies of Correspondence 
[R-2]

37 CFR 1.4. Nature of correspondence and signature 
requirements.



(b)Since each file must be complete in itself, a separate 
copy of every paper to be filed in a patent, patent file, or other proceeding 
must be furnished for each file to which the paper pertains, 
even though the contents of the papers filed in two or more 
files may be identical. The filing of duplicate copies of correspondence 
in the file of an application, patent, or other proceeding 
should be avoided, except in situations in which the Office 
requires the filing of duplicate copies. The Office may dispose of 
duplicate copies of correspondence in the file of an application, 
patent, or other proceeding.



When the Office does not require duplicate copies 
of a paper, the filing of multiple copies may cause a 
delay in processing by the Office. Accordingly, the 
Office may discard duplicate copies of correspondence 
filed in an application or patent file.

503Application Number and Filing 
Receipt [R-3]

37 CFR 1.54. Parts of application to be filed together; 
filing receipt.

(a)It is desirable that all parts of the complete application be 
deposited in the Office together; otherwise, a letter must accompany 
each part, accurately and clearly connecting it with the other 
parts of the application. See 
§
 
1.53(f) and (g) with regard to completion 
of an application.

(b)Applicant will be informed of the application number 
and filing date by a filing receipt, unless the application is an 
application filed under § 1.53(d).

Application numbers consisting of a series code 
and a serial number are assigned by the Office of Initial 
Patent Examination (OIPE) immediately after 
mail has been opened.

The following series codes are assigned to the 
applications identified below:

(A)01/ - 11/ - for nonprovisional applications 
(utility, plant, and reissue), 

 - The 01 series code was used from year 1925 to 
1934,

 02 – 1935 to 1947,

 03 – 1948 to 1959,

 04 – 1960 to 1969,

 05 – 1970 to 1978,

 06 – 1979 to 1986,

 07 – 1987 to 1992,

 08 – 1993 to 1997, 

 09 – 1998 to Nov. 2001, 

10 – Dec. 2001 to Nov. 2004, and

11 – Dec. 2004 to present;

(B)29/ - for design applications; 

(C)60/ - for provisional applications; 

(D)90/ - for ex parte reexamination proceedings; 
and

(E) 95/ - for inter partes reexamination proceedings.


If a self-addressed postcard is submitted with a 
patent application, that postcard will be provided with 
both the receipt date and application number prior to 
returning it to the addressee. The application number 
identified on such a postcard receipt is merely the preliminary 
assignment of an application number to the 
application, and should not be relied upon (e.g., with 
respect to foreign filings) as necessarily representing 
the application number assigned to such application. 
See 37 CFR 1.53(b). 

The identifying data on the postcard should 
include:

(A)applicant’s name(s);

(B)title of invention;

(C)number of pages of specification, claims (for 
nonprovisional applications), and sheets of drawing;

(D)whether oath or declaration is included; 

(E)a list of any additional forms included with 
the application (e.g., application transmittal form, 
application data sheet, fee transmittal form, and/or 
provisional application cover sheet); and 

(F)amount and manner of paying the fee.

A return postcard should be attached to each patent 
application for which a receipt is desired.






It is important that the return postcard itemize all of 
the components of the application. If the postcard 
does not itemize each of the components of the application, 
it will not serve as evidence that any component 
which was not itemized was received by the 
United States Patent and Trademark Office (USPTO).

It should be recognized that the identification of an 
application by application number does not necessarily 
signify that the USPTO has accepted the application 
as complete (37 CFR 1.53(a)).

OIPE mails a filing receipt to the attorney or agent, 
if any, otherwise to the applicant, for each application 
filed which meets the minimum requirements to 
receive a filing date. The filing receipt includes the 
application number, filing date, a confirmation number, 
a suggested class in the U.S. Patent Classification 
System (see MPEP § 902.01), and the number of an 
art unit where the application is likely to be examined. 
The filing receipt also includes other information 
about the application as applicable, such as continuing 
data, national stage data, foreign priority data, foreign 
filing license data, entity status information, and the 
date the Office anticipates publishing the application 
under 35 U.S.C. 122(b). The filing receipt represents 
the official assignment by the USPTO of a specific 
application number and confirmation number to a particular 
application. See 37 CFR 1.54(b). The application 
number officially assigned to an application on 
the filing receipt may differ from the application number 
identified on a postcard receipt submitted with 
such application, and, as between inconsistent filing 
receipts and postcard receipts, the application number 
on the filing receipt is controlling.

 The confirmation number is a four-digit number 
that is assigned to each newly filed application. The 
confirmation number, in combination with the application 
number, is used to verify the accuracy of the 
application number placed on correspondence filed 
with the Office to avoid misidentification of an application 
due to a transposition error in the application 
number. The confirmation number may be found in 
the upper left-hand corner of the filing receipt. The 
confirmation number will also be available 
through 
the Patent Application Information Retrieval (PAIR) 
system (http://pair.uspto.gov). The Office eventually 
plans to include the application’s confirmation number 
(in addition to the application number) on all 
Office actions and notices concerning the application. 
The confirmation number must be used when submitting 
an electronic filing system (EFS) copy of the 
application for publication to verify that the application 
number correctly identifies the application for 
which a copy is being submitted for 
publication. The 
Office also recommends that applicants include the 
application’s confirmation number (in addition to the 
application number) on all correspondence submitted 
to the Office concerning the application.

A continued prosecution application (CPA) filed 
under 37 CFR 1.53(d) (design applications only) will 
be assigned the application number of the prior application 
for identification purposes.

A nonprovisional application, other than a CPA 
filed under 37 CFR 1.53(d), is entitled to a filing date 
as of the date of receipt of the specification, including 
claims, and any required drawing. See 37 CFR 
1.53(b). The filing receipt will be mailed at the time a 
determination is made that the application meets the 
minimum requirements to receive a filing date. The 
oath or declaration , basic filing fee, and for nonprovisional 
applications filed on or after December 8, 
2004, search fee and examination fee as set forth in 
37 
CFR 1.16, may be filed later than the remaining 
application papers, but if so, they must be accompanied 
by the required surcharge (if appropriate, see 
MPEP § 506). See 37 CFR 1.53(f). If the oath or 
declaration, basic filing fee, and/or any 
required search fee and examination fee with the 
appropriate surcharge are not timely filed, the application 
will be abandoned.

A provisional application is entitled to a filing date 
as of the date of receipt of the specification and any 
required drawing(s). See 37 CFR 1.53(c). A cover 
sheet (37 CFR 1.51(c)(1)), which may be an application 
data sheet (37 CFR 1.76) or a cover letter, identifying 
the application as a provisional application is 
required to prevent the provisional application from 
being treated as a nonprovisional application. 37 CFR 
1.53(c)(1). 

Each application which meets the minimum 
requirements to receive a filing date is given a filing 
date. It is important, when referring to application 
files, to identify them by their filing dates and confirmation 
numbers as well as by application numbers.

Attorney docket numbers must be limited to a maximum 
of 12 characters to prevent truncation. The 
Patent Application Locating and Monitoring (PALM) 






system data base allows a maximum of 12 characters 
for the attorney docket numbers. Spaces, slashes, and 
hyphens will no longer be included in the entered 
docket number on the official filing receipt. In an 
application where CASE or NAVY-CASE appears 
before the first character in the docket number, only 
the characters after CASE or NAVY-CASE will be 
entered on the official filing receipt. 

The application papers are processed by OIPE 
and added to the Office’s Image File Wrapper (IFW) 
system.

Applications which are entitled to a filing date and 
are filed, whether by regular mail, by “Express 
Mail” under 37 
CFR 1.10, by hand-delivery, by the 
Office’s Electronic Filing System (EFS), or otherwise, 
will not be returned to applicant even if 
requested. See 37 CFR 1.59. Accordingly, applicants 
must be careful not to file applications which are not 
intended to be filed, e.g., duplicates of applications 
already filed. Note that 37 CFR 1.26(a) provides that 
a change of purpose after the payment of a fee, as 
when a party desires to withdraw the filing of a patent 
application for which the fee was paid, will not entitle 
the party to a refund of such fee. See MPEP § 607.02.

RETURN POSTCARD

If a receipt for any item (e.g., paper or fee) filed in 
the USPTO is desired, it may be obtained by enclosing 
with the paper a self-addressed postcard specifically 
identifying the item. To ensure the receipt of 
return receipt postcards, users must either: (A) purchase 
already stamped postcards from the United 
States Postal Service (USPS) or affix postage stamps 
to their postcards; or (B) if a postage meter is used, 
ensure that the meter postmark does not show the 
date. Any return receipt postcard containing a dated 
meter postmark may not be delivered by the USPS to 
the address provided on the postcard. Users are 
reminded that they are solely responsible for placing 
the proper postage on self-addressed postcards that 
are submitted to the USPTO for the purpose of obtaining 
a receipt for correspondence being filed in the 
USPTO. Users should check with the USPS regarding 
postage and what size cards are acceptable to the 
USPS. Any return receipt postcard that does not contain 
sufficient postage or is not acceptable may not be 
delivered by the USPS to the address provided on the 
postcard, and, if returned to the USPTO, may be discarded. 


The USPTO will stamp the receipt date on the 
postcard and place it in the outgoing mail. A postcard 
receipt which itemizes and properly identifies the 
items which are being filed serves as prima facie evidence 
of receipt in the USPTO of all the items 
listed 
thereon on the date stamped thereon by the 
USPTO.

 The identifying data on the postcard should be so 
complete as to clearly identify the item for which a 
receipt is requested. For example, the postcard should 
identify the applicant’s name, application number 
(if 
known), confirmation number (if known), filing 
date, interference number, title of the invention, etc. 
The postcard should also identify the type of paper 
being filed, e.g., new application, affidavit, amendment, 
notice of appeal, appeal brief, drawings, fees, 
motions, supplemental oath or declaration, petition, 
etc., and the number of pages being submitted. If 
a 
new application is being filed, all parts of the application 
being submitted should be separately listed on 
the postcard, e.g., the number of pages of specification 
(including written description, claims and 
abstract), number of claims, number of sheets of 
drawings, number of pages of oath/declaration, number 
of pages of cover sheet (provisional application).

The postcard receipt will not serve as prima facieevidence of receipt of any item which is not adequately 
itemized on the postcard. For example, 
merely listing on the postcard “a complete application” 
or “patent application” will not serve as a proper 
receipt for each of the required components of an 
application (e.g., specification (including claims), 
drawings (if necessary), oath or declaration and the 
application filing fee) or missing portions (e.g., pages, 
sheets of drawings) of an application if one of the 
components or portion of a component is found to be 
missing by the USPTO. Each separate component 
should be specifically and properly itemized on the 
postcard. Furthermore, merely incorporating by reference 
in the postcard receipt, the items listed in a transmittal 
letter will not serve as prima facie evidence of 
receipt of those items.

The person receiving the item(s) in the USPTO will 
check the listing on the postcard against the item(s) 
being filed to be sure they are properly identified and 
that all the items listed on the postcard are presently 






being submitted to the USPTO. If any of the items 
listed on the postcard are not being submitted to the 
USPTO, those items will be crossed off and the postcard 
initialed by the person receiving the items. 

Upon return of a postcard receipt from the USPTO, 
the postcard receipt should be promptly reviewed by 
the person who filed the items to ensure that every 
item specifically denoted on the postcard was 
received by the USPTO. If the postcard receipt has 
been annotated to indicate that a particular item 
denoted on the postcard was not received by the 
USPTO, the postcard receipt will not serve as prima 
facie evidence of receipt of that item in the USPTO. 

504Assignment of Application forExamination 

The Office of Initial Patent Examination assigns a 
nonprovisional application to the art unit to which it 
appears to belong. Provisional applications will not be 
examined.

505“Office Date” Stamp of Receipt[R-3]

37 CFR 1.6. Receipt of correspondence.

(a)Date of receipt and Express Mail date of deposit. Correspondence 
received in the Patent and Trademark Office is 
stamped with the date of receipt except as follows:

(1)The Patent and Trademark Office is not open for the 
filing of correspondence on any day that is a Saturday, Sunday, or 
Federal holiday within the District of Columbia. Except for correspondence 
transmitted by facsimile under paragraph (a)(3) of this 
section, or filed electronically under paragraph (a)(4) of this section, 
no correspondence is received in the Office on Saturdays, 
Sundays, or Federal holidays within the District of Columbia.

(2)Correspondence filed in accordance with § 1.10 will 
be stamped with the date of deposit as “Express Mail” with the 
United States Postal Service.

(3)Correspondence transmitted by facsimile to the Patent 
and Trademark Office will be stamped with the date on which the 
complete transmission is received in the Patent and Trademark 
Office unless that date is a Saturday, Sunday, or Federal holiday 
within the District of Columbia, in which case the date stamped 
will be the next succeeding day which is not a Saturday, Sunday, 
or Federal holiday within the District of Columbia. 

(4)[Reserved]



The United States Patent and Trademark Office 
(Office) stamps papers and fees with the date of their 
receipt in the Office. The stamp is referred to as the 
“Office Date” stamp.

When the last day for taking any action or paying 
any fee in the Office falls on a Saturday, Sunday, or a 
Federal holiday within the District of Columbia, the 
action or the fee is considered timely if the action is 
taken or the fee is paid on the next succeeding business 
day.

Effective November 29, 1999, Public Law 106-113 
amended 35 U.S.C. 119(e)(3) to extend the period 
of 
pendency of a provisional application to the next 
succeeding business day if the day that is 12 
months 
after the filing date of a provisional application falls 
on a Saturday, Sunday, or Federal holiday within the 
District of Columbia. See also 37 CFR 1.7(b). 
35 
U.S.C. 119(e)(3) as amended by Public Law 106-
113 applies to any provisional application filed on or 
after June 
8, 1995 but has no effect on any patent 
which is the subject of litigation in an action commenced 
before November 29, 1999. 

New patent applications filed in accordance with 
37 
CFR 1.10 will be stamped by the Office with the 
date of deposit as “Express Mail” with the United 
States Postal Service. For example, if a new patent 
application is deposited in “Express Mail” in accordance 
with 37 CFR 1.10 on a Saturday and the United 
States Postal Service gives it a date of deposit of Saturday, 
the Office will accord and stamp the correspondence 
with the Saturday date. 37 CFR 1.6(a)(2).

If an application includes the necessary components 
for a filing date (see 37 CFR 1.53(b)-(d) and 
MPEP § 506), the “Office Date” stamp establishes the 
“filing date.” Applications will not be accepted and 
stamped in the Technology Centers. They must be 
date stamped at the Customer Service Window. 
See MPEP § 502.

506Completeness of Original Application 
[R-5]

37 CFR 1.53. Application number, filing date, and 
completion of application.

(a)Application number. Any papers received in the Patent 
and Trademark Office which purport to be an application for a 
patent will be assigned an application number for identification 
purposes.

(b)Application filing requirements - Nonprovisional application. 
The filing date of an application for patent filed under this 
section, except for a provisional application under paragraph (c) 
of this section or a continued prosecution application under paragraph 
(d) of this section, is the date on which a specification as 
prescribed by 35 
U.S.C. 112 containing a description pursuant to 
§
 
1.71 and at least one claim pursuant to § 1.75, and any drawing 






required by §
 
1.81(a) are filed in the Patent and Trademark Office. 
No new matter may be introduced into an application after its filing 
date. A continuing application, which may be a continuation, 
divisional, or continuation-in-part application, may be filed under 
the conditions specified in 35 
U.S.C. 120, 121 or 365(c) and 
§
 
1.78(a).

(1)A continuation or divisional application that names as 
inventors the same or fewer than all of 
the inventors named in the 
prior application may be 
filed under this paragraph or paragraph 
(d) of this section.

(2)A continuation-in-part application (which may disclose 
and claim subject matter not disclosed in the prior application) 
or a continuation or divisional application naming an 
inventor not named in the prior application must be filed under 
this paragraph.

(c)Application filing requirements - Provisional application. 
The filing date of a provisional application is the date on 
which a specification as prescribed by the first paragraph of 
35 
U.S.C. 112, and any drawing required by §
 
1.81(a) are filed in 
the Patent and Trademark Office. No amendment, other than to 
make the provisional application comply with the patent statute 
and all applicable regulations, may be made to the provisional 
application after the filing date of the provisional application.

(1)A provisional application must also include the cover 
sheet required by § 1.51(c)(1), which may be an application data 
sheet (§ 1.76), or a cover letter identifying the application as a 
provisional application. Otherwise, the application will be treated 
as an application filed under paragraph (b) of this section.

(2)An application for patent filed under paragraph (b) of 
this section may be converted to a provisional application and be 
accorded the original filing date of the application filed under 
paragraph (b) of this section. The grant of such a request for conversion 
will not entitle applicant to a refund of the fees that were 
properly paid in the application filed under paragraph (b) of this 
section. Such a request for conversion must be accompanied by 
the processing fee set forth in § 1.17(q) and be filed prior to the 
earliest of:

(i)Abandonment of the application filed under paragraph 
(b) of this section;

(ii)Payment of the issue fee on the application filed 
under paragraph (b) of this section;

(iii)Expiration of twelve months after the filing date of 
the application filed under paragraph (b) of this section; or

(iv)The filing of a request for a statutory invention 
registration under § 1.293 in the application filed under paragraph 
(b) of this section.

(3)A provisional application filed under paragraph (c) of 
this section may be converted to a nonprovisional application filed 
under paragraph (b) of this section and accorded the original filing 
date of the provisional application. The conversion of a provisional 
application to a nonprovisional application will not result in 
either the refund of any fee properly paid in the provisional application 
or the application of any such fee to the filing fee, or any 
other fee, for the nonprovisional application. Conversion of a provisional 
application to a nonprovisional application under this 
paragraph will result in the term of any patent to issue from the 
application being measured from at least the filing date of the provisional 
application for which conversion is requested. Thus, 
applicants should consider avoiding this adverse patent term 
impact by filing a nonprovisional application claiming the benefit 
of the provisional application under 35 U.S.C. 119(e) (rather than 
converting the provisional application into a nonprovisional application 
pursuant to this paragraph). A request to convert a provisional 
application to a nonprovisional application must be 
accompanied by the fee set forth in §
 
1.17(i) and an amendment 
including at least one claim as prescribed by the second 
paragraph 
of 35 
U.S.C. 112, unless the provisional application 
under paragraph (c) of this section otherwise contains at least one 
claim as prescribed by the second paragraph of 35 U.S.C.112. The 
nonprovisional application resulting from conversion of a provisional 
application must also include the filing fee, search fee, and 
examination fee for a nonprovisional application, an oath or declaration 
by the applicant pursuant to §§ 1.63, 1.162, or 1.175, and 
the surcharge required by § 1.16(f) if either the basic filing fee for 
a nonprovisional application or the oath or declaration was not 
present on the filing date accorded the resulting nonprovisional 
application (i.e., the filing date of the original provisional application). 
A request to convert a provisional application to a nonprovisional 
application must also be filed prior to the earliest of:

(i)Abandonment of the provisional application filed 
under paragraph (c) of this section; or

(ii)Expiration of twelve months after the filing date of 
the provisional application filed under paragraph (c) of this section.


(4)A provisional application is not entitled to the right of 
priority under 35 
U.S.C. 119 or 365(a) or §
 
1.55, or to the benefit 
of an earlier filing date under 35 
U.S.C. 120, 121 or 365(c) or 
§
 
1.78 of any other application. No claim for priority under 
35 
U.S.C. 119(e) or §
 
1.78(a)(4) may be made in a design application 
based on a provisional application. No request under §
 
1.293for a statutory invention registration may be filed in a provisional 
application. The requirements of §§
 
1.821 through 1.825 regarding 
application disclosures containing nucleotide and/or amino 
acid sequences are not mandatory for provisional applications.

(d)Application filing requirements - Continued prosecution 
(nonprovisional) application.

(1)A continuation or divisional application (but not a 
continuation-in-part) of a prior nonprovisional application may be 
filed as a continued prosecution application under this paragraph, 
provided that:

(i)The application is for a design patent:

(ii)The prior nonprovisional application is a design 
application that is complete as defined by §
 
1.51(b); and

(iii)The application under this paragraph is filed 
before the earliest of:

(A)Payment of the issue fee on the prior application, 
unless a petition under §
 
1.313(c) is granted in the prior 
application;

(B)Abandonment of the prior application; or

(C)Termination of proceedings on the prior application.


(2)The filing date of a continued prosecution application 
is the date on which a request on a separate paper for an applica







tion under this paragraph is filed. An application filed under this 
paragraph:

(i)Must identify the prior application;

(ii)Discloses and claims only subject matter disclosed 
in the prior application;

(iii)Names as inventors the same inventors named in 
the prior application on the date the application under this paragraph 
was filed, except as provided in paragraph (d)(4) of this section;


(iv)Includes the request for an application under this 
paragraph, will utilize the file jacket and contents of the prior 
application, including the specification, drawings and oath or declaration 
from the prior application, to constitute the new application, 
and will be assigned the application number of the prior 
application for identification purposes; and

(v)Is a request to expressly abandon the prior application 
as of the filing date of the request for an application under this 
paragraph.

(3)The filing fee, search fee, and examination fee for a 
continued prosecution application filed under this paragraph are 
the basic filing fee as set forth in § 1.16(b), the search fee as set 
forth in § 1.16 (l), and the examination fee as set forth in 
§
 
1.16(p).

(4)An application filed under this paragraph may be filed 
by fewer than all the inventors named in the prior application, provided 
that the request for an application under this paragraph 
when filed is accompanied by a statement requesting deletion of 
the name or names of the person or persons who are not inventors 
of the invention being claimed in the new application. No person 
may be named as an inventor in an application filed under this 
paragraph who was not named as an inventor in the prior application 
on the date the application under this paragraph was filed, 
except by way of correction of inventorship under §
 
1.48.

(5)Any new change must be made in the form of an 
amendment to the prior application as it existed prior to the filing 
of an application under this paragraph. No amendment in an application 
under this paragraph (a continued prosecution application) 
may introduce new matter or matter that would have been new 
matter in the prior application. Any new specification filed with 
the request for an application under this paragraph will not be considered 
part of the original application papers, but will be treated 
as a substitute specification in accordance with §
 
1.125.

(6)The filing of a continued prosecution application 
under this paragraph will be construed to include a waiver of confidentiality 
by the applicant under 35 
U.S.C. 122 to the extent that 
any member of the public, who is entitled under the provisions of 
§
 
1.14 to access to, copies of, or information concerning either the 
prior application or any continuing application filed under the provisions 
of this paragraph, may be given similar access to, copies 
of, or similar information concerning the other application or 
applications in the file jacket.

(7)A request for an application under this paragraph is 
the specific reference required by 35 
U.S.C. 120 to every application 
assigned the application number identified in such request. 
No amendment in an application under this paragraph may delete 
this specific reference to any prior application.

(8)In addition to identifying the application number of 
the prior application, applicant should furnish in the request for 
an 
application under this paragraph the following information 
relating to the prior application to the best of his or her ability:

(i)Title of invention;

(ii)Name of applicant(s); and

(iii)Correspondence address.

(9)See § 1.103(b) for requesting a limited suspension of 
action in an application filed under this paragraph.

(e)Failure to meet filing date requirements.

(1)If an application deposited under paragraph (b), 
(c),
 
or 
(d) of this section does not meet the requirements of such 
paragraph to be entitled to a filing date, applicant will be so notified, 
if a correspondence address has been provided, and given a 
period of time within which to correct the filing error. If, however, 
a request for an application under paragraph (d) of this section 
does not meet the requirements of that paragraph because the 
application in which the request was filed is not a design application, 
and if the application in which the request was filed was 
itself filed on or after June 8, 1995, the request for an application 
under paragraph (d) of this section will be treated as a request for 
continued examination under § 1.114.

(2)Any request for review of a notification pursuant to 
paragraph (e)(1) of this section, or a notification that the original 
application papers lack a portion of the specification or drawing(
s), must be by way of a petition pursuant to this paragraph 
accompanied by the fee set forth in § 1.17(f). In the absence of a 
timely (§ 1.181(f)) petition pursuant to this paragraph, the filing 
date of an application in which the applicant was notified of a filing 
error pursuant to paragraph (e)(1) of this section will be the 
date the filing error is corrected.

(3)If an applicant is notified of a filing error pursuant to 
paragraph (e)(1) of this section, but fails to correct the filing error 
within the given time period or otherwise timely (§
 
1.181(f)) take 
action pursuant to this paragraph, proceedings in the application 
will be considered terminated. Where proceedings in an application 
are terminated pursuant to this paragraph, the application may 
be disposed of, and any filing fees, less the handling fee set forth 
in §
 
1.21(n), will be refunded.

(f)Completion of application subsequent to filing—Nonprovisional 
(including continued prosecution or reissue) application.

(1)If an application which has been accorded a filing date 
pursuant to paragraph (b) or (d) of this section does not include 
the basic filing fee, the search fee, or the examination fee, or if an 
application which has been accorded a filing date pursuant to 
paragraph (b) of this section does not include an oath or declaration 
by the applicant pursuant to §§ 1.63, 1.162 or § 1.175, and 
applicant has provided a correspondence address (§1.33(a)), 
applicant will be notified and given a period of time within which 
to pay the basic filing fee, search fee, and examination fee, file an 
oath or declaration in an application under paragraph (b) of this 
section, and pay the surcharge if required by § 1.16(f) to avoid 
abandonment.

(2)If an application which has been accorded a filing date 
pursuant to paragraph (b) of this section does not include the basic 
filing fee, the search fee, the examination fee, or an oath or declaration 
by the applicant pursuant to §§ 1.63, 1.162 or § 1.175, and 






applicant has not provided a correspondence address (§ 1.33(a)), 
applicant has two months from the filing date of the application 
within which to pay the basic filing fee, search fee, and examination 
fee, file an oath or declaration, and pay the surcharge required 
by § 1.16(f) to avoid abandonment.

(3)If the excess claims fees required by §§ 1.16(h) and 
(i) and multiple dependent claim fee required by § 1.16(j) are not 
paid on filing or on later presentation of the claims for which the 
excess claims or multiple dependent claim fees are due, the fees 
required by §§ 1.16(h), (i) and (j) must be paid or the claims canceled 
by amendment prior to the expiration of the time period set 
for reply by the Office in any notice of fee deficiency. If the application 
size fee required by § 1.16(s) (if any) is not paid on filing or 
on later presentation of the amendment necessitating a fee or additional 
fee under § 1.16(s), the fee required by § 1.16(s) must be 
paid prior to the expiration of the time period set for reply by the 
Office in any notice of fee deficiency in order to avoid abandonment.


(4)This paragraph applies to continuation or divisional 
applications under paragraphs (b) or (d) of this section and to continuation-
in-part applications under paragraph (b) of this section. 
See § 1.63(d) concerning the submission of a copy of the oath or 
declaration from the prior application for a continuation or divisional 
application under paragraph (b) of this section.

(5)If applicant does not pay the basic filing fee during 
the pendency of the application, the Office may dispose of the 
application.

(g)Completion of application subsequent to filing—Provisional 
application.

(1)If a provisional application which has been accorded a 
filing date pursuant to paragraph (c) of this section does not 
include the cover sheet required by § 1.51(c)(1) or the basic filing 
fee (§ 
  
1.16(d)), and applicant has provided a correspondence 
address (§ 1.33(a)), applicant will be notified and given a period 
of time within which to pay the basic filing fee, file a cover sheet 
(§ 1.51(c)(1)), and pay the surcharge required by § 1.16(g) to 
avoid abandonment.

(2)If a provisional application which has been accorded a 
filing date pursuant to paragraph (c)
 
of this section does not 
include the cover sheet 
required by § 1.51(c)(1) or the basic filing 
fee (§ 
  
1.16(d)), and applicant has not provided a correspondence 
address (§ 1.33(a)), applicant has two months from the filing date 
of the application within 
which to pay the basic filing fee, file a 
cover sheet (§
 
1.51(c)(1)), and pay the surcharge required by 
§
 
1.16(g) to avoid abandonment.

(3)If the application size fee required by § 1.16(s) (if 
any) is not paid on filing, the fee required by § 1.16(s) must be 
paid prior to the expiration of the time period set for reply by the 
Office in any notice of fee deficiency in order to avoid abandonment.


(4)If applicant does not pay the basic filing fee during 
the pendency of the application, the Office may dispose of the 
application.

(h)Subsequent treatment of application - Nonprovisional 
(including continued prosecution) application. An application for 
a patent filed under paragraphs (b) or (d) of this section will not be 
placed on the files for examination until all its required parts, 
complying with the rules relating thereto, are received, except that 
certain minor informalities may be waived subject to subsequent 
correction whenever required.

(i)Subsequent treatment of application - Provisional application. 
A provisional application for a patent filed under paragraph 
(c) of this section will not be placed on the files for 
examination and will become abandoned no later than twelve 
months after its filing date pursuant to 35 
U.S.C. 111(b)(1).

(j)Filing date of international application. The filing date 
of an international application designating the United States 
of 
America is treated as the filing date in the United States of 
America under PCT Article 11(3), except as provided in 
35 
U.S.C. 102(e).

I.INCOMPLETE NONPROVISIONAL AP-
LICATIONS FILED UNDER 37 CFR 
1.53(b)

If the nonprovisional application papers filed under 
37 
CFR 1.53(b) do not include at least a specification 
containing a description and at least one claim and a 
drawing, if necessary under 35 U.S.C. 113 (first sentence), 
or if the submitted application papers are too 
informal to be given a filing date, the case is held in 
the Office of Initial Patent Examination (OIPE) as an 
incomplete application and the applicant is informed 
of the shortcomings of the papers. No filing date is 
granted until the incompleteness is corrected.

A Notice of Incomplete Application is prepared and 
mailed by OIPE when nonprovisional application 
papers filed under 37 CFR 1.53(b) are deemed incomplete 
under 35 U.S.C. 111(a).

Such incompleteness may consist of the omission 
of any one of the following parts of an application. 
The component parts of a nonprovisional application 
filed under 37 
CFR 1.53(b) necessary to obtain a filing 
date are:

A specification as prescribed by 35 U.S.C. 112 and 
37 
CFR 1.71.

A claim as prescribed by 35 U.S.C. 112 and 
37 
CFR 1.75.

A drawing, if necessary under 35 U.S.C. 113 (first 
sentence) and 37 CFR 1.81(a). 

See 37 CFR 1.53(b).

Even though an application purports to include the 
component parts necessary to obtain a filing date, the 
application will still be held to be incomplete and a 
filing date will be refused if the component parts fail 
to satisfy the requirements set forth above. 






 For example, if the documents purporting to be a 
specification are so obviously informal and incoherent 
that they clearly do not constitute a specification as 
required by 35 U.S.C. 112 and 37 CFR 1.71, the 
application is not acceptable for examination and it 
will not be accorded a filing date until corrections are 
made. The filing date of the application will be the 
date the corrections are made. 

Filing dates are accorded to nonprovisional applications 
filed under 37 CFR 1.53(b) submitted without 
the names of all the inventors, the required fees (basic 
filing fee, and search and examination fees (for applications 
filed on or after December 8, 2004)) and/or 
the oath or declaration. In such cases, a notice is 
mailed by OIPE requiring the appropriate fees and the 
oath or declaration (which must include the names of 
all the inventors) be filed, accompanied by a surcharge 
(37 CFR 1.16(f)). For applications filed on or 
after December 8, 2004 but prior to July 1, 2005, 
which have been accorded a filing date under 37 CFR 
1.53(b), if the search and/or examination fees are paid 
on a date later than the filing date of the application, 
the surcharge under 37 CFR 1.16(f) is not required. 
For applications filed on or after July 1, 2005, which 
have been accorded a filing date under 37 CFR 
1.53(b), if any of the basic filing fee, the search fee, or 
the examination fee are paid on a date later than the 
filing date of the application, the surcharge under 37 
CFR 1.16(f) is required. In addition to the basic filing 
fee, the search fee, and the examination fee, 37 CFR 
1.16(s) sets forth the application size fee for any 
application (including any reissue applications) filed 
under 35 U.S.C. 111 on or after December 8, 2004 the 
specification and drawings of which, excluding a 
sequence listing or computer program listing filed in 
an electronic medium (see 37 CFR 1.52(f)), exceed 
100 sheets of paper. The application size fee does not 
apply to any applications filed before December 8, 
2004. The application size fee applies for each additional 
50 sheets or fraction thereof over 100 sheets of 
paper. Any sequence listing in an electronic medium 
in compliance with 37 CFR 1.52(e) and 37 CFR 
1.821(c) or (e), and any computer program listing 
filed in an electronic medium in compliance with 37 
CFR 1.52(e) and 1.96, will be excluded when determining 
the application size fee required by 37 CFR 
1.16(s). The application size fee required by 37 CFR 
1.16(s) must be paid prior to the expiration of the time 
period set for reply by the Office in any notice of fee 
deficiency in order to avoid abandonment (37 CFR 
1.53(f)(3)). See MPEP § 607 for additional information 
regarding fees. In addition to the basic filing fee, 
the search fee, the examination fee, and the application 
size fee required under 37 CFR 1.16, the prescribed 
filing fee (37 CFR 1.51(b)(4)) may include 
additional fees for filing more than 3 independent 
claims (37 CFR 1.16(h)), for filing a total of more 
than 20 claims (37 CFR 1.16(i)), or for filing a multiple 
dependent claim (37 CFR 1.16(j)). In those cases 
where the basic filing fee, the search fee, the examination 
fee, and the application size fee are paid, but 
additional fees are required, under 37 CFR 1.16, a 
notice is mailed by OIPE or the Technology Center 
(TC), requiring that the balance of the prescribed fee 
be paid.

Occasionally, nonprovisional applications filed 
under 37 
CFR 1.53(b) which have already been 
signed by the inventors contain informal claims that 
the attorney or agent feels should not be present in the 
application upon filing. However, since alteration 
after execution by the inventor and before filing is 
prohibited, such applications must be filed by the 
attorney or agent in the form in which they were executed 
by the inventors. A nonprovisional application 
filed under 37 CFR 1.53(b) may be filed with a preliminary 
amendment which is limited to the cancellation 
of claims. Any preliminary amendment, 
regardless of when it is filed, must be in compliance 
with 37 CFR 1.121, e.g., it must include a complete 
listing of all of the claims. Therefore, the Office 
strongly recommends that applicants file their applications 
with a specification containing only the 
desired set of claims, rather than filing the application 
with a preliminary amendment canceling claims. If 
such a preliminary amendment canceling claims is 
filed, it will diminish the number of claims to be considered 
for calculation of the filing fee. Any other 
changes to the application should be the subject of a 
separate amendment which may be entered after the 
filing fee has been calculated and the filing date 
granted. If a preliminary amendment which cancels 
claims does not accompany the application at the time 
the application is filed, the notification of insufficient 
fee will inform the inventor, attorney, or agent of the 
possibility of correcting the insufficient payment by 
either (1) paying the additional required fee amount, 






or (2) filing an amendment which cancels claims so 
that the remaining claims are covered by the fee submitted 
upon filing. However, no refund will be made 
once the fee for claims is properly paid, even though 
claims are later canceled , unless a petition for 
express abandonment under 37 CFR 1.138(d) is 
granted. See MPEP § 711.01.

In the past, OIPE has reviewed the claimed subject 
matter of newly filed nonprovisional applications to 
determine whether a filing date should be granted. 
Such applications included those drawn to perpetual 
motion devices and methods of doing business and 
applications for reissue signed by assignees or filed 
more than 2 years after the grant of the patent which 
appear to contain broadened reissue claims.

Under the current practice, a filing date is normally 
granted in such cases if the nonprovisional application 
filed under 37 CFR 1.53(b) is otherwise sufficient and 
then forwarded to the examiner for consideration and 
decision during the regular course of examination.

II.INCOMPLETE PROVISIONAL APPLICATIONS


If the provisional application papers do not include 
at least a specification containing a description and a 
drawing, if necessary under 35 U.S.C. 113 (first sentence) 
or if the submitted application papers are too 
informal to be given a filing date, the case is held in 
OIPE as an incomplete application and the applicant 
is informed of the shortcomings of the papers. No filing 
date is granted until the incompleteness is corrected.


Such incompleteness may consist of the omission 
of any one of the following parts of an application. 
The component parts of a provisional application necessary 
to obtain a filing date are:

A specification as prescribed by 35 U.S.C. 112, 
first paragraph, and 37 CFR 1.71.

A drawing, if necessary under 35 U.S.C. 113 (first 
sentence) and 37 CFR 1.81(a).

Even though an application purports to include the 
component parts necessary to obtain a filing date, the 
application will still be held to be incomplete and a 
filing date will be refused if the component parts fail 
to satisfy the requirements set forth above. For example, 
if the documents purporting to be a specification 
are so obviously informal and incoherent that they 
would clearly not constitute a specification as 
required by 35 U.S.C. 112, first paragraph, and 
37 
CFR 1.71, the application would not be acceptable 
and would not be accorded a filing date until corrections 
are made. The filing date of the application 
would be the date the corrections were made. A provisional 
application will not be examined. However, 
a 
provisional application which does not include 
a 
cover sheet (37 CFR 1.51(c)(1)), which may be 
an 
application data sheet (37 CFR 1.76) or a 
cover 
letter,
 
identifying the application as a provisional 
application, will be treated as a nonprovisional 
application filed under 37 CFR 1.53(b). See 37 CFR 
1.53(c)(1).

NOTE: No amendment, other than to make the 
provisional application comply with the patent statute 
and all applicable regulations, may be made to the 
provisional application after the filing date of the provisional 
application. See 37 CFR 1.53(c).

III.INFORMAL APPLICATIONS

An application is informal if it is typed on both 
sides of the paper, or is not permanent, legible, or 
reproducible. If such informalities are timely corrected, 
the application is given the filing date on 
which the original informal papers were filed.

OIPE accords a filing date, as of the date indicated 
by the “Office Date” stamp (see MPEP § 505), 
to 
application papers which include a specification 
containing a description and at least one claim (nonprovisional 
applications filed under 37 CFR 1.53(b)), 
and a drawing, if necessary under 35 U.S.C. 113 (first 
sentence) but are informal because they do not comply 
with the rules or notices. In such applications, 
OIPE prepares a Notice of Informal Application indicating 
the informality and places it in the file wrapper. 
The TC mails the letter to applicant. Failure to correct 
the informality within the specified time results in 
abandonment of the application.

The letter of transmittal accompanying the filing of 
continuing applications should include such additional 
information as the identification by application 
number of a provisional or parent application, its status, 
and location (if known) in the U.S. Patent and 
Trademark Office. The supplying of this information 
will simplify the processing of these applications.






506.02Review of Refusal To Accord 
Filing Date [R-3]

The filing date of the provisional or nonprovisional 
application is the date of receipt in the Office of the 
application which includes a specification containing 
description pursuant to 37 CFR 1.71 and at least one 
claim (required for nonprovisional applications only) 
pursuant to 37 CFR 1.75, and any drawings required 
by 37 CFR 1.81(a). See 37 CFR 1.53(b) and (c).

If any of these items are missing, applicant will be 
notified to file them and the filing date will be the date 
of receipt of the missing part(s). If the oath or declaration 
for a nonprovisional application was executed 
and filed with the application, a supplemental oath or 
declaration by the inventor is required in some circumstances, 
e.g., where the missing item is the claim, 
specification, or a drawing. The supplemental declaration 
must identify the missing item and indicate, 
as 
appropriate, that it accurately claims, describes, 
or 
illustrates applicant’s invention. See MPEP 
§
 
601.01(d)-(g) where the application is filed without 
all the pages of the specification, without at least one 
claim (nonprovisional application), without drawings, 
or without all the figures of the drawings. An error in 
or failure to identify inventorship does not raise a filing 
date issue.

Any review of the refusal to grant a filing date as of 
the date of deposit of the application would be by way 
of petition, accompanied by the petition fee (37 CFR 
1.17(f)). Petitioner should provide any arguments 
that he or she has that the items noted were not missing 
or that a filing date should be assigned in the 
absence of such items if they are believed to be 
unnecessary. If petitioner alleges that no defect exists, 
a request for refund of the petition fee may be 
included in the petition.

For applications properly filed under 37 CFR 1.10, 
the filing date is the date that the application was 
deposited as “Express Mail” in the U.S. Postal Service. 
For example, if a new patent application is 
deposited in “Express Mail” in accordance with 
37 
CFR 1.10 on a Saturday and the United States 
Postal Service gives it a date of deposit of Saturday, 
the Office will accord and stamp the correspondence 
with the Saturday date. 37 CFR 1.6(a)(2). If the 
proper procedures were not followed, the application 
will receive a filing date as of the date it was received 
in the Office. Any review of these matters would be 
by way of petition, accompanied by the petition fee 
(37 
CFR 1.17(f)), providing whatever arguments 
and evidence petitioner has that the application is 
entitled to a filing date as of the date it was deposited 
as “Express Mail.” See MPEP § 513.

 Petitions relating to the filing date accorded to 
patent applications under 37 CFR 1.53 are decided in 
the Office of the Deputy Commissioner for Patent 
Examination Policy (See MPEP § 1002.02(b)), with 
the exception of petitions relating to the filing date 
accorded to a design application, which are decided 
by the Director of Technology Center 2900. See 
MPEP § 1002.02(c)(3).

Any petition under this section should be marked to 
the attention of the Office of Petitions.

507Drawing Review in the Office of 
Initial Patent Examination [R-3]

 The Office has revised the drawing review process 
to implement the eighteen-month publication of 
patent applications. Under the revised drawing review 
process, the Office of Initial Patent Examination 
(OIPE) performs an initial review of drawings in new 
utility and plant patent applications filed on or after 
November 29, 2000 to see if the drawings can be 
effectively scanned for publication purposes. Design 
applications are not published. Therefore, drawings 
filed in design patent applications (whether filed 
before, on or after November 29, 2000) will be 
reviewed but not for publication purposes. The standard 
of review employed by OIPE is such that most 
drawings, including those that have been indicated by 
applicant to be informal drawings, will be accepted.

 OIPE inspects the drawings to see if they can be 
effectively scanned and adequately reproduced. If the 
drawings are not acceptable, OIPE will object to the 
drawings and notify applicant that a timely submission 
of acceptable drawings (e.g., drawings which can 
be scanned) is required. This initial review process in 
OIPE is necessary in order to ensure that applications 
can be timely published.

 Under the OIPE review process, OIPE may object 
to and require corrected drawings within a set time 
period, if the drawings:

(A)have a line quality that is too light to be reproduced 
(weight of all lines and letters must be heavy 






enough to permit adequate reproduction) or text that 
is illegible (reference characters, sheet numbers, and 
view numbers must be plain and legible). See 37 CFR 
1.84(l) and (p)(1);

(B)have missing lead lines. See 37 CFR 1.84(q). 
Lead lines are those lines between the reference characters 
and the details referred to;

(C)contain excessive text or text that is not in 
English (including, for example, a flow chart that was 
originally not in English that has been marked up to 
include the English text). See 37 CFR 1.84(o) and 
(p)(2) and 37 CFR 1.52(d)(1);

(D)do not have the appropriate margin or are not 
on the correct size paper. See 37 CFR 1.84(f) and (g). 
Each sheet must include a top margin of at least 2.5 
cm. (1 inch), a left size margin of at least 2.5 cm. (1 
inch), a right size margin of at least 1.5 cm. (5/8 inch), 
and a bottom margin of at least 1.0 cm. (3/8 inch). The 
size of the sheets on which drawings are made must 
be either 21.0 cm. by 29.7 cm. (DIN size A4) or 21.6 
cm. by 27.9 cm. (8-1/2 by 11 inches);

(E)have more than one figure and each figure is 
not labeled “Fig.” With a consecutive Arabic numeral 
(1, 2, etc.) or an Arabic numeral and capital letter in 
the English alphabet (A, B, etc.). See 37 CFR 
1.84(u)(1);

(F)include photographs of the claimed invention 
which are capable of illustration by other medium 
such as ink drawings, and which are illegible after 
scanning. See 37 CFR 1.84(b); and

(G)contain color drawings or color photographs, 
but not a petition to accept color drawings/photographs. 
Note that the requirement  for a black and 
white photocopy of any color drawings/photographs 
has been eliminated. 

 If OIPE objects to the drawings and sends applicant 
a Notice requiring submission of corrected drawings 
within a set time period (usually two months), 
corrected drawings must be filed, in paper, to the 
mailing address set forth in the Notice, along with any 
other items required by OIPE, to avoid abandonment 
of the application. No fee will be necessary for filing 
corrected drawings which are required by OIPE. Otherwise, 
in most situations, patent application publications 
and patents will reflect the quality of the 
drawings that are included with a patent application 
on filing unless applicant voluntarily submits better 
quality drawings as set forth in MPEP § 1121.



508Distribution [R-2]

All applications filed on or after June 30, 2003, 
are electronically scanned and loaded into the Image 
File Wrapper (IFW) system. Once documents are 
loaded into the IFW system, examiners, technical support 
staff, and other Office personnel will perform further 
processing and examination using the IFW 
system. 

For handling of models, exhibits, and specimen,
see MPEP § 608.03 and § 608.03(a).

508.01Papers Sent to Wrong Technology 
Center (TC) [R-2]

If drawings, amendments, or other papers are delivered 
to the wrong TC, the TC to which this application 
is assigned should be obtained from PALM and 
be placed on the paper and then forwarded to the 
appropriate TC. The TC to which the application is 
assigned as indicated by PALM may be verified by 
calling the TC as indicated before forwarding the 
paper. For Image File Wrapper (IFW) processing, 
see IFW Manual.

508.02Papers Received After Patenting 
or Abandonment [R-2]

After an application is patented or abandoned, any 
incoming communication which is not to become part 
of the record will be returned to the sender by the 
Technology Center. For Image File Wrapper (IFW) 
processing, see IFW Manual.

508.03Unmatched Papers [R-2]

For Image File Wrapper (IFW) processing, see 
IFW Manual. Effective December 1, 2003, no official 
paper which relates to a pending application may be 
personally delivered to a Technology Center (TC) 
except papers that are directed to an application subject 
to a secrecy order pursuant to 35 U.S.C. 181, or 
are national security classified and that are directed to 
Licensing and Review. See MPEP § 502.
Unmatched papers for nonprovisional applications 
(maintained in paper application files) within a 
TC should be frequently reviewed to determine 
which should be sent to the Paper Correlating Office 
(PCO).






Item I below treats the papers in the “Application 
number too high” category. Items II-VI below are 
directed to all other unmatched papers not in the 
“Application number too high” category. 

I.UNMATCHED PAPERS IN THE “APPLICATION 
NUMBER TOO HIGH” CATEGORY


This collection of papers being held by the TC 
should be reviewed at least once a week. Any paper 
having an application number which clearly should 
have already been received by the TC should be 
removed from this collection. Where the TC does not 
have a corresponding application for any of these 
papers, inquiry should be made of the Office of Initial 
Patent Examination (OIPE) to determine the TC of 
record. If another TC number is indicated, the paper 
should be forwarded to that TC. If OIPE does not 
yield a new TC number for the indicated application 
number, the paper should be sent to the PCO.

II.UNMATCHED PAPERS HAVING AN APPLICATION 
NUMBER

It can be assumed that either the TC number or the 
application number on these papers is incorrect. 
Inquiry should be made of the OIPE and PALM to 
determine the TC of record and the procedure set out 
in paragraph I above followed. An exception to this 
practice should be made where the paper has thereon 
the name of an examiner in the TC. In these situations, 
a careful check of the TC records and files as 
well as consultation with the indicated examiner 
should be made to determine the correct application 
number. If this does not yield a new application number, 
the paper should be sent to the PCO.

III.UNMATCHED PAPERS RELATING TO 
APPLICATIONS ABANDONED FROM TC

The application file should be ordered from Files 
Repository. If the file is not received therefrom, the 
paper should be forwarded to the PCO. 

IV.PAPERS FOR APPLICATIONS WHICH 
HAVE BEEN SENT TO PUBLISHING 
DIVISION 

All papers for applications which PALM indicates 
to be located in any of the locations 7400 through 
7650 should be forwarded to the Publishing Division.

The instructions of this paragraph (IV) apply to all 
files in issue including those which have been 
assigned a patent number and issue date. Papers 
requiring examiner review and action will be returned 
to the TC after Publishing Division personnel have 
matched the paper to the appropriate file.

V.PAPERS FOR APPLICATIONS WHICH 
HAVE BEEN SENT TO THE FILE INFORMATION 
UNIT (RECORD ROOM)

If PALM indicates that the application to which a 
paper relates is in the File Information Unit (Record 
Room) (location code 9210), the paper should be forwarded 
to the PCO for response.

VI.UNMATCHED PAPERS FOR APPLICATIONS 
WHICH ARE KNOWN TO BE 
PENDING IN THE TC BUT CANNOT BE 
LOCATED

Generally, these are applications which PALM indicates 
are present in the TC, but the file is not available. 
These papers should be retained in the TC for 
processing.

Each paper sent to the PCO must have a PCO 
Transmittal Form stapled thereto. Each form attached 
to a paper should be filled out as completely as possible. 
Transmittal Forms attached to papers of the type 
described in paragraph I and paragraph II above must 
have an indication of the information obtained from 
both OIPE and PALM. The PALM information should 
be inserted in the large space at the bottom of the 
form. This will help eliminate duplication of effort by 
PCO personnel. Papers received without transmittal 
forms or with incompletely filled out transmittal 
forms may be returned to the originating TC. 

508.04Unlocatable Patent or Application 
Files [R-3]

37 CFR 1.251. Unlocatable file.

(a)In the event that the Office cannot locate the file of an 
application, patent, or other patent-related proceeding after a rea







sonable search, the Office will notify the applicant or patentee and 
set a time period within which the applicant or patentee must comply 
with the notice in accordance with one of paragraphs (a)(1), 
(a)(2), or (a)(3) of this section.

(1)Applicant or patentee may comply with a notice under 
this section by providing:

(i)A copy of the applicant’s or patentee’s record (if 
any) of all of the correspondence between the Office and the 
applicant or patentee for such application, patent, or other proceeding 
(except for U.S. patent documents);

(ii)A list of such correspondence; and

(iii)A statement that the copy is a complete and accurate 
copy of the applicant’s or patentee’s record of all of the correspondence 
between the Office and the applicant or patentee for 
such application, patent, or other proceeding (except for U.S. 
patent documents), and whether applicant or patentee is aware of 
any correspondence between the Office and the applicant or patentee 
for such application, patent, or other proceeding that is not 
among applicant’s or patentee’s records.

(2)Applicant or patentee may comply with a notice under 
this section by:

(i)Producing the applicant’s or patentee’s record (if 
any) of all of the correspondence between the Office and the 
applicant or patentee for such application, patent, or other proceeding 
for the Office to copy (except for U.S. patent documents); 
and

(ii)Providing a statement that the papers produced by 
applicant or patentee are applicant’s or patentee’s complete record 
of all of the correspondence between the Office and the applicant 
or patentee for such application, patent, or other proceeding 
(except for U.S. patent documents), and whether applicant or patentee 
is aware of any correspondence between the Office and the 
applicant or patentee for such application, patent, or other proceeding 
that is not among applicant’s or patentee’s records.

(3)If applicant or patentee does not possess any record of 
the correspondence between the Office and the applicant or patentee 
for such application, patent, or other proceeding, applicant or 
patentee must comply with a notice under this section by providing 
a statement that applicant or patentee does not possess any 
record of the correspondence between the Office and the applicant 
or patentee for such application, patent, or other proceeding.

(b)With regard to a pending application, failure to comply 
with one of paragraphs (a)(1), (a)(2), or (a)(3) of this section 
within the time period set in the notice will result in abandonment 
of the application.

37 CFR 1.251 sets forth a procedure for the reconstruction 
of the file of a patent application, patent, or 
any other patent-related proceeding that cannot be 
located after a reasonable search. The phrase “an 
application” in 37 CFR 1.251 applies to any type of 
application (national or international), and regardless 
of the status (pending or abandoned) of the application.


37 CFR 1.251(a) provides that in the event the 
Office cannot locate the file of an application, patent, 
or any other patent-related proceeding after a reasonable 
search, the Office will notify the applicant or patentee 
and set a time period within which the applicant 
or patentee must comply with the notice. The applicant 
or patentee may comply with a notice under 
37 
CFR 1.251 by providing: (1)
 
a copy of his or her 
record (if any) of all of the correspondence 
between 
the Office and the applicant or patentee for 
such application, patent, or other proceeding (except 
for U.S. patent documents); (2)
 
a list of such correspondence; 
and (3)
 
a statement that the copy is a complete 
and accurate copy of the applicant’s or 
patentee’s record of all of the correspondence between 
the Office and the applicant or patentee for such application, 
patent, or other proceeding (except for U.S. 
patent documents), and whether applicant or patentee 
is aware of any correspondence between the Office 
and the applicant or patentee for such application, 
patent, or other proceeding that is not among applicant’s 
or patentee’s records (37 CFR 1.251(a)(1)). The 
applicant or patentee may also comply with a notice 
under 37 CFR 1.251 by: (1)
 
producing his or her 
record (if any) of all of the correspondence between 
the Office and the applicant or patentee for such application, 
patent, or other proceeding for the Office to 
copy (except for U.S. patent documents); and 
(2)
 
providing a statement that the papers produced by 
applicant or patentee are applicant’s or patentee’s 
complete record of all of the correspondence between 
the Office and the applicant or patentee for such application, 
patent, or other proceeding (except for U.S. 
patent documents), and whether applicant or patentee 
is aware of any correspondence between the Office 
and the applicant or patentee for such application, 
patent, or other proceeding that is not among applicant’s 
or patentee’s records (37 CFR 1.251(a)(2)). If 
applicant or patentee does not possess any record of 
the correspondence between the Office and the applicant 
or patentee for such application, patent, or other 
proceeding, the applicant or patentee must comply 
with a notice under 37 CFR 1.251 by providing a 
statement that applicant or patentee does not possess 
any record of the correspondence between the Office 
and the applicant or patentee for such application, 
patent, or other proceeding (37 CFR 1.251(a)(3)). 

According to 37 CFR 1.251(a), if the applicant or 
patentee possesses all or just some of the correspondence 
between the Office and the applicant or paten







tee for such application, patent, or other proceeding, 
the applicant or patentee is to reply by providing a 
copy of (or producing) his or her record of all of 
the 
correspondence between the Office and the applicant 
or patentee for such application, patent, or other 
proceeding (37 CFR 1.251(a)(1) or (a)(2)). If applicant 
or patentee does not possess any record of the 
correspondence between the Office and the applicant 
or patentee for such application, patent, or other proceeding, 
the applicant or patentee is to reply with a 
statement to that effect (37 CFR 1.251(a)(3)).

If an applicant or patentee decides to produce his or 
her record of the correspondence between the Office 
and the applicant or patentee for the application, 
patent, or other proceeding for copying by the Office 
under 37 CFR 1.251(a)(2) (rather than provide a copy 
under 37 CFR 1.251(a)(1)), the record should be 
brought to the Customer Service Center in the Office 
of Initial Patent Examination.

The Office will set a time period of three months 
for reply in a notice under 37 CFR 1.251 in an application. 
The time period will be extendable under 
37 
CFR 1.136(a) (unless the notice indicates otherwise) 
by three months up to a maximum period for 
reply of six months in an application. See 35 
U.S.C. 
133. If, however, an applicant fails to reply to a notice 
under 37 
CFR 1.251 within three months of its mailing 
date, any patent term adjustment under 35 
U.S.C. 
154(b) will be reduced by a period equal to the number 
of days (if any) beginning on the day after the date 
that is three months after the mailing date of the 
notice under 37 CFR 1.251 and ending on the date the 
reply to the notice under 37 CFR 1.251 was filed. See 
35 
U.S.C. 154(b)(2)(C)(ii) and 37 CFR 1.704(b). The 
Office will set a time period of six months for reply in 
a notice under 37 
CFR 1.251 in a patent. The time 
period will not be extendable under 37 CFR 1.136(a)
in a patent because 35 
U.S.C. 41(a)(8) only authorizes 
the Office to charge fees for extensions of time in proceedings 
involving an application.

37 CFR 1.251 generally applies only to situations 
in which the file of an application or patent (not just 
certain documents) is unlocatable. When a document 
is missing from an application, Office practice is to 
call the applicant’s representative and request submission 
(generally by facsimile) of a copy of the missing 
document. While the Office will generally treat missing 
documents in this relatively informal manner 
(rather than issuing a notice under 37 CFR 1.251), the 
Office may issue a notice under 37 CFR 1.251 to 
obtain a copy of a missing document if the Office’s 
informal attempts to obtain a copy of the document 
are unsuccessful. The notice under 37 CFR 1.251 will 
include a printout of the contents entries from the 
Office’s PALM system.

Any appendix or information disclosure statement 
submitted with an application is not contained in the 
Office’s PACR database. Therefore, the applicant or 
patentee must also provide a copy of any appendix or 
information disclosure statement (except in the limited 
circumstance discussed below) submitted with 
the application. Since the Office can obtain copies of 
U.S. patent documents (U.S. patent application publications 
and patents) from its internal databases, the 
Office is not requiring applicants or patentees to provide 
copies of U.S. patent application publications 
and patents that are among the applicant’s or patentee’s 
record of the correspondence between the Office 
and the applicant or patentee for the application, 
patent, or other proceeding.

37 CFR 1.251(b) provides that with regard to a 
pending application, the failure to provide a reply to 
such a notice within the time period set in the notice 
will result in abandonment of the application. While 
abandonment (or expiration or lapse) of a patent is not 
an issue if a patentee fails to timely comply with a 
notice under 37 CFR 1.251, in such a situation the 
only certified copy of the patent file that the Office 
will be able to produce will be a copy of the patent 
and a copy of the application-as-filed (which may 
have an adverse impact during attempts to enforce the 
patent). In addition, if the patent is involved in a proceeding 
before the Office, the Office may take action 
under 37 CFR 41.128 or 37 CFR 10.18.

509Payment of Fees [R-5]

The latest fee schedule is available by contacting 
the USPTO at 1-800-PTO(786)-9199 or 
(571) 272-
1000, or on the USPTO webpage 
at 
http://
www.uspto.gov.

37 CFR 1.22. Fees payable in advance.

(a)Patent fees and charges payable to the United States 
Patent and Trademark Office are required to be paid in advance; 
that is, at the time of requesting any action by the Office for which 
a fee or charge is payable with the exception that under § 1.53applications for patent may be assigned a filing date without payment 
of the basic filing fee.






(b)All fees paid to the United States Patent and Trademark 
Office must be itemized in each individual application, 
patent, or other proceeding in such a manner that it is clear for 
which purpose the fees are paid. The Office may return fees that 
are not itemized as required by this paragraph. The provisions of 
§
 
1.5(a) do not apply to the resubmission of fees returned pursuant 
to this paragraph.

37 CFR 1.23. Method of payment.

(a)All payments of money required for United States Patent 
and Trademark Office fees, including fees for the processing of 
international applications (§
 
1.445), shall be made in U.S. dollars 
and in the form of a cashier’s or certified check, Treasury note, 
national bank notes, or United States Postal Service money order. 
If sent in any other form, the Office may delay or cancel the credit 
until collection is made. Checks and money orders must be made 
payable to the Director of the United States Patent and Trademark 
Office. (Checks made payable to the Commissioner of Patents and 
Trademarks will continue to be accepted.) Payments from foreign 
countries must be payable and immediately negotiable in the 
United States for the full amount of the fee required. Money sent 
to the Office by mail will be at the risk of the sender, and letters 
containing money should be registered with the United States 
Postal Service.

(b)Payments of money required for United States Patent and 
Trademark Office fees may also be made by credit card, except 
for replenishing a deposit account. Payment of a fee by credit card 
must specify the amount to be charged to the credit card and such 
other information as is necessary to process the charge, and is subject 
to collection of the fee. The Office will not accept a general 
authorization to charge fees to a credit card. If credit card information 
is provided on a form or document other than a form provided 
by the Office for the payment of fees by credit card, the Office 
will not be liable if the credit card number becomes public knowledge.


37 CFR 1.26. Refunds.

(a)The Director may refund any fee paid by mistake or in 
excess of that required. A change of purpose after the payment of 
a fee, such as when a party desires to withdraw a patent filing for 
which the fee was paid, including an application, an appeal, or a 
request for an oral hearing, will not entitle a party to a refund of 
such fee. The Office will not refund amounts of twenty-five dollars 
or less unless a refund is specifically requested, and will not 
notify the payor of such amounts. If a party paying a fee or 
requesting a refund does not provide the banking information necessary 
for making refunds by electronic funds transfer (31 U.S.C. 
3332 and 31 CFR part 208), or instruct the Office that refunds are 
to be credited to a deposit account, the Director may require such 
information, or use the banking information on the payment 
instrument to make a refund. Any refund of a fee paid by credit 
card will be by a credit to the credit card account to which the fee 
was charged.

(b)Any request for refund must be filed within two years 
from the date the fee was paid, except as otherwise provided in 
this paragraph or in § 1.28(a). If the Office charges a deposit 
account by an amount other than an amount specifically indicated 
in an authorization (§ 1.25(b)), any request for refund based upon 
such charge must be filed within two years from the date of the 
deposit account statement indicating such charge, and include a 
copy of that deposit account statement. The time periods set forth 
in this paragraph are not extendable.

(c)If the Director decides not to institute a reexamination 
proceeding, for ex parte reexaminations filed under § 1.510, a 
refund of $1,690 will be made to the reexamination requester. For 
inter partes reexaminations filed under § 1.913, a refund of 
$7,970 will be made to the reexamination requester. The reexamination 
requester should indicate the form in which any refund 
should be made (e.g., by check, electronic funds transfer, credit to 
a deposit account, etc.). Generally, reexamination refunds will be 
issued in the form that the original payment was provided.

Where the Office has notified an applicant, in writing, 
that a fee is due and has specified a particular dollar 
amount for that fee, if the applicant timely submits 
the specified fee amount in response to the notice, the 
applicant should be considered to have complied with 
the notice so as to avoid abandonment of the application. 
If the fee paid by the applicant is insufficient, 
either because the notice specified an incorrect dollar 
amount for the fee or because of a fee increase effective 
after the mailing of the notice and before payment 
of the fee by the applicant, the applicant should be 
notified in writing by the Office of the fee insufficiency 
and given a new time period in which to submit 
the remaining balance. The written notification of 
the fee insufficiency should set forth the reason (i.e., 
the fee amount indicated by the Office in the earlier 
notice was incorrect or the fees have increased since 
the earlier notice was mailed) why applicant is being 
required to submit an additional fee.

37 CFR 1.22(b) sets forth that fees must be itemized 
in such a manner that it is clear for which purpose 
fees are paid. The Office may return fees that are 
not itemized. The intent of the fee itemization requirement 
is to encourage a better explanation by applicants 
of how fees being paid are to be applied by the 
Office. This will allow Office employees to properly 
account for the fees being paid by applicants. It 
should be noted that the language of 37 CFR 1.22 is 
not intended to create a problem when it is clear what 
fee is needed. A reference to “filing fee(s)” would be 
sufficient to cover filing fees (including search and 
examination fees) of all different types of applications 
and all types of claims. Further, in a paper submitted 
on a date later than the actual filing date, the reference 
to “filing fee(s)” would also be sufficient to cover the 
surcharge under 37 CFR 1.16, as the surcharge is also 






required to make the application complete. A reference 
to “any corresponding fee under 37 
CFR 1.16” 
would be sufficient to cover any 
fee (e.g., surcharge, 
application size fee, excess claims fees) under 37 
CFR 
1.16. In a petition for an extension of time filed without 
a specifically itemized fee, but with a general 
authorization to charge a deposit account, it is clear 
that a fee for an extension of time is needed and the 
deposit account should be charged the appropriate 
extension of time fee.

In situations in which a payment submitted for the 
fees due on filing in a nonprovisional application filed 
under 35 U.S.C. 111(a) is insufficient and the applicant 
has not specified the fees to which the payment is 
to be applied, the Office will apply the payment in the 
following order until the payment is expended:

(1)the basic filing fee (37 CFR 1.16(a), (b), (c), 
or (e));

(2)the application size fee (37 CFR 1.16(s));

(3)the late filing surcharge (37 CFR 1.16(f));

(4)the processing fee for an application filed in a 
language other than English (37 CFR 1.17(i));

(5)the search fee (37 CFR 1.16(k), (l), (m), or 
(n));

(6)the examination fee (37 CFR 1.16(o), (p), (q), 
or (r)); and

(7)the excess claims fee (37 CFR 1.16(h), (i), 
and (j)).

In situations in which a payment submitted for the 
fees due on filing in a provisional application filed 
under 35 U.S.C. 111(b) is insufficient and the applicant 
has not specified the fees to which the payment is 
to be applied, the Office will apply the payment in the 
following order until the payment is expended:

(1)the basic filing fee (37 CFR 1.16(d));

(2)the application size fee (37 CFR 1.16(s)); and 

(3)the late filing surcharge (37 CFR 1.16(g)).

See also MPEP § 607.

PAYMENT BY CREDIT CARD

Effective June 5, 2000, 37 CFR 1.23 was amended 
to permit payment of any patent process fee, trademark 
process fee, or information product fee by credit 
card, subject to actual collection of the fee. The Office 
currently accepts charges to the following credit 
cards: AMERICAN EXPRESS®, DISCOVER®, 
MASTER CARD®, and VISA®. 

Credit Card Payment Form (PTO-2038) should be 
used when paying a patent process or trademark process 
fee (or the fee for an information product) 
by 
credit card. Form PTO-2038 may be downloaded 
at http://www.uspto.gov/web/forms/2038.pdf. 
The 
Office will not include the Credit Card Payment 
Form (PTO-2038) among the records open to public 
inspection in the file of a patent, trademark registration, 
or other proceeding. The Office does not require 
customers to use this form when paying a patent process 
or trademark process fee by credit card. If a customer 
provides a credit card charge authorization in 
another form or document (e.g., a communication 
relating to the patent or trademark), the credit card 
information may become part of the record of an 
Office file that is open to public inspection. Thus, failure 
to use the Credit Card Payment Form (PTO-2038) 
when submitting a credit card payment may result in 
your credit card information becoming part of the 
record of an Office file that is open to public inspection.


Credit card payments by facsimile are permitted, 
except in situations in which facsimile submission of 
correspondence is not permitted in 37 CFR 1.6(d).

35 
U.S.C. 42(d) and 37 CFR 1.26 (which concern 
refund of patent and trademark fees) also apply to 
requests for refund of fees paid by credit card. Any 
refund of a fee paid by credit card will be by a credit 
to the credit card account to which the fee was 
charged. See 37 CFR 1.26(a).

See MPEP § 607.02 for returnability of fees.

Any payment of a patent process or trademark process 
fee by credit card must be in writing (see 37 CFR 
1.2), preferably on the Credit Card Payment Form 
(PTO-2038). If a Credit Card Payment Form or other 
document authorizing the Office to charge a patent 
process or trademark process fee to a credit card does 
not contain the information necessary to charge the 
fee to the credit card, the customer must submit a 
revised Credit Card Payment Form or document containing 
the necessary information. Office employees 
will not accept oral (telephonic) instructions to complete 
the Credit Card Payment Form or otherwise 
charge a patent process or trademark process fee (as 
opposed to information product or service fees) to a 
credit card. 






Beginning on January 28, 2006, credit card payment 
submissions made on the USPTO web site at 
www.uspto.gov must include the 3-digit or 4-digit 
security code associated with the credit card in addition 
to the credit card number. The security code will 
not be required when the paper Credit Card Payment 
Form (PTO-2038) or other written authorization is 
submitted. 

The security code is part of an authentication procedure 
established by credit card companies to further 
efforts towards reducing fraudulent or unauthorized 
credit card use for Internet payment transactions. The 
security code must be entered at the time of the Internet 
payment transaction to verify that the physical 
card is in the cardholder’s possession. The security 
code appears on all major credit cards and is not part 
of the credit card number itself. Each credit card company 
has its own name for the security code (such as 
CVV, CVV2, CVC2 or CID), but it functions the 
same for all major card types.

On DISCOVER®, MASTERCARD®, and VISA® 
credit cards, the security codes is a 3-digit code that is 
printed on the back of the card, often following the 
credit card number digits. For AMERICAN 
EXPRESS® credit cards, the security code is a 4-digit 
code that is printed on the front of the cards. If you 
cannot read the security code, you will have to contact 
the financial institution that issued your credit card. 
Effective January 28, 2006, the USPTO Internet credit 
card payment screen will include a mandatory field to 
enter the security code along with helpful information 
to locate the security code on the credit card.








Form PTO-2038. Credit Card Payment FormForm PTO-2038. Credit Card Payment Form







Instructions for Completing the Credit Card Payment Form







Instructions for Completing the Credit Card Payment Form









509.01Deposit Accounts [R-5]

37 CFR 1.25. Deposit accounts.

(a)For the convenience of attorneys, and the general public 
in paying any fees due, in ordering services offered by the Office, 
copies of records, etc. deposit accounts may be established in the 
Patent and Trademark Office upon payment of the fee for establishing 
a deposit account § 1.21(b)(1)). A minimum deposit of 
$1,000 is required for paying any fee due or in ordering any services 
offered by the Office. However, a minimum deposit of $300 
may be paid to establish a restricted subscription deposit account 
used exclusively for subscription order of patent copies as issued. 
At the end of each month, a deposit account statement will be rendered. 
A remittance must be made promptly upon receipt of the 
statement to cover the value of items or services charged to the 
account and thus restore the account to its established normal 
deposit value. An amount sufficient to cover all fees, services, 
copies, etc., requested must always be on deposit. Charges to 
accounts with insufficient funds will not be accepted. A service 
charge (§
 
1.21(b)(2)) will be assessed for each month that the balance 
at the end of the month is below $1,000. For restricted subscription 
deposit accounts, a service charge (§ 1.21(b)(3)) will be 
assessed for each month that the balance at the end of the month is 
below $300.

(b)Filing, issue, appeal, international-type search report, 
international application processing, petition, and post-issuance 
fees may be charged against these accounts if sufficient funds are 
on deposit to cover such fees. A general authorization to charge all 
fees, or only certain fees, set forth in §§ 1.16 to 1.18 to a deposit 
account containing sufficient funds may be filed in an individual 
application, either for the entire pendency of the application or 
with a particular paper filed. An authorization to charge fees under 
§ 1.16 in an international application entering the national stage 
under 35 U.S.C. 371 will be treated as an authorization to charge 
fees under § 1.492. An authorization to charge fees set forth in 
§
 
1.18 to a deposit account is subject to the provisions of 
§
 
1.311(b). An authorization to charge to a deposit account the fee 
for a request for reexamination pursuant to § 1.510 or § 1.913 and 
any other fees required in a reexamination proceeding in a patent 
may also be filed with the request for reexamination. An authorization 
to charge a fee to a deposit account will not be considered 
payment of the fee on the date the authorization to charge the fee 
is effective as to the particular fee to be charged unless sufficient 
funds are present in the account to cover the fee.

(c)A deposit account holder may replenish the deposit 
account by submitting a payment to the United States Patent and 
Trademark Office. A payment to replenish a deposit account must 
be submitted by one of the methods set forth in paragraphs (c)(1), 
(c)(2), (c)(3), or (c)(4) of this section.

(1)A payment to replenish a deposit account may be submitted 
by electronic funds transfer through the Federal Reserve 
Fedwire System, which requires that the following information be 
provided to the deposit account holder’s bank or financial institution:


(i)Name of the Bank, which is Treas NYC (Treasury 
New York City);

(ii)Bank Routing Code, which is 021030004;

(iii)United States Patent and Trademark Office 
account number with the Department of the Treasury, which is 
13100001; and

(iv)The deposit account holder’s company name 
and deposit account number.

(2)A payment to replenish a deposit account may be submitted 
by electronic funds transfer over the Office’s Internet Web 
site (www.uspto.gov).

(3)A payment to replenish a deposit account may be submitted 
by mail with the USPS to: Director of the United States 
Patent and Trademark Office, P.O. Box 70541, Chicago, Illinois 
60673.



(4)A payment to replenish a deposit account may be submitted 
by mail with a private delivery service or by hand-carrying 
the payment to: Director of the U.S. Patent and Trademark Office, 
Attn: Deposit Accounts, 2051 Jamieson Avenue, Suite 300, Alexandria, 
Virginia 22314.

An overdrawn account will be immediately suspended 
and no charges will be accepted against it until 
a proper balance is restored, together with a payment 
of $10 (37 
CFR 1.21(b)(1)) to cover the work done by 
the U.S. Patent and Trademark Office incident to suspending 
and reinstating the account and dealing with 
charges which may have been made in the meantime.

If there is an authorization to charge the basic filing 
fee (37 CFR 1.16(a), (b), (c), (d), or (e)) to a deposit 
account which is overdrawn or has insufficient funds, 
a surcharge (37 CFR 1.16(f)) is required in addition to 
payment of the basic filing fee (37 CFR 1.16(a), (b), 
(c), (d), or (e)). For applications filed on or after July 
1, 2005, which have been accorded a filing date under 
37 CFR 1.53(b) or (d), if there is an authorization to 
charge any of the basic filing fee, the search fee, or the 
examination fee to a deposit account which is overdrawn 
or has insufficient funds, a surcharge under 37 
CFR 1.16(f) is required in addition to payment of the 
required fee(s). Failure to timely pay the filing fee and 
surcharge will result in abandonment of the application.


It is expected, however, that reasonable precautions 
will be taken in all cases to avoid overdrafts, and if an 
account is suspended repeatedly it will be closed.

Similarly, because of the burden placed on the U.S. 
Patent and Trademark Office incident to the operation 
of deposit accounts, a charge of $10 (37 CFR 
1.21(b)(1)) will be made for opening each new 
account.






I.DEPOSIT ACCOUNT AUTHORIZATIONS

37 CFR 1.25(b) states that: 

A general authorization to charge all fees, or only certain 
fees, set forth in §§ 1.16 to 1.18 to a deposit account containing 
sufficient funds may be filed in an individual 
application, either for the entire pendency of the application 
or with respect to a particular paper filed.

As provided in 37 CFR 1.311(b), an authorization 
to charge the issue fee (37 CFR 1.18) to a deposit 
account may be filed in an individual application only 
after the mailing of the notice of allowance. 37 CFR 
1.25(b) also makes clear that a general authorization 
made prior to the mailing of a notice of allowance 
does not apply to issue fees under 37 CFR 1.18.

In addition, a general authorization does not apply 
to document supply fees under 37 CFR 1.19, such as 
those required for certified copies, to post issuance 
fees under 37 CFR 1.20, such as those required for 
maintenance fees, or to miscellaneous fees and 
charges under 37 CFR 1.21, such as assignment 
recording fees.

Many applications contain broad language authorizing 
any additional fees which might have been due 
to be charged to a deposit account. The U.S. Patent 
and Trademark Office will interpret such broad authorizations 
to include authorization to charge to a 
deposit account fees set forth in 37 CFR 1.16, and 
1.17. Fees under 37 CFR 1.19, 1.20, and 1.21 will not 
be charged as a result of a general authorization under 
37 CFR 1.25 except to cover the processing fee 
under 37 CFR 1.21(m) in the event a check or credit 
card payment is refused or charged back by a financial 
institution. Effective November 7, 2000, fees under 
37 CFR 1.18 will not be charged as a result of a preauthorization 
of issue fee payment.

An authorization to charge fees relating only to 
a specific paper,  could read “The Director is 
hereby authorized to charge any fees under 37 
CFR 
1.16 and 1.17 which may be required by this paper to 
Deposit Account No.———.” Such an authorization 
would cover situations in which a check to 
cover a filing and/or a processing fee under 37 CFR 
1.16 and 1.17 was omitted or was for an amount less 
than the amount required. An authorization covering 
any omission or deficiency in a check or credit card 
payment applies to the processing fee under 37 CFR 
1.21(m) in the event a check or credit card payment is 
refused or charged back by a financial institution, 
regardless of whether such deposit account authorization 
is limited to other fees (e.g., fees under 37 CFR 
1.16 and 1.17). If a check or credit card payment for 
the issue fee is refused or charged back by a financial 
institution, the application may be held abandoned for 
failure to pay the issue fee within the statutory period 
for reply. See MPEP § 1306.

It is extremely important that the authorization be 
clear and unambiguous. If applicants file authorizations 
which are ambiguous and deviate from the usual 
forms of authorizations, the Office may not interpret 
the authorizations in the manner applicants intend and 
may return the fees. As a result, applicants could be 
subject to further expenses, petitions, etc. in order to 
have a particular fee charged to a deposit account 
(which was not charged as intended) or to resubmit a 
fee(s) due to an ambiguous authorization.

When statutory fees are to be charged to a deposit 
account, the processing of the application can be facilitated 
by submitting the applicant’s transmittal letter 
or other correspondence specifying the account to be 
charged in duplicate. Submission of these documents 
in duplicate will eliminate the need for the Mail Center 
to photocopy the document and will thereby 
reduce the processing time of incoming mail.

The Office will treat a deposit account authorization 
to charge “the filing fee” as an authorization to 
charge the following applicable fees under 37 CFR 
1.16: basic filing fee; search fee; examination fee; any 
excess claims fees; and any application size fee. The 
Office will treat a deposit account authorization to 
charge “the basic filing fee” as an authorization to 
charge the following applicable fees under 37 CFR 
1.16: basic filing fee; search fee; and examination fee. 
Any deposit account authorization to charge the filing 
fee but not the search fee or examination fee must 
specifically limit the authorization by reference to one 
or more paragraphs (a)-(e) of 37 CFR 1.16.

37 CFR 1.25(b) further provides that an authorization 
to charge fees under 37 CFR 1.16 (which relates 
to national application filing fees) in an application 
filed under 35 U.S.C. 371 will be treated as an authorization 
to charge fees under 37 CFR 1.492 (which 
relates to national stage fees). Papers filed for the purpose 
of entering the national stage under 35 U.S.C. 
371 and 37 CFR 1.495 that include an authorization to 
charge fees under 37 CFR 1.16 are treated by the 
Office as an authorization to charge fees under 






37 
CFR 1.492 since: (1) timely payment of the appropriate 
national fee under 37 CFR 1.492 is necessary to 
avoid abandonment of the application as to the United 
States; and (2) the basic filing fee under 37 CFR 1.16is not applicable to such papers or applications.

II.DEPOSIT ACCOUNT REPLENISHMENTS


37 CFR 1.25(c) specifies how a deposit account 
holder may submit a payment to the Office to replenish 
the deposit account. A payment to replenish a 
deposit account may be submitted by:

(A)making the payment by electronic funds 
transfer through the Federal Reserve Fedwire System. 
Deposit account holders who use the Federal Reserve 
Fedwire System must provide the following information 
to their bank or financial institution: (1) Name of 
the Bank, which is Treas NYC (Treasury New York 
City); (2) Bank Routing Code, which is 021030004; 
(3) United States Patent and Trademark Office 
account number with the Department of Treasury, 
which is 13100001; and (4) the deposit account 
holder’s company name and deposit account number. 
The deposit account holder should inform his or her 
bank or financial institution to use due care to ensure 
that all pertinent account numbers are listed on the 
transaction because the failure to include the proper 
deposit account number will delay the processing of 
the replenishment; 

(B)electronic funds transfer over the Office’s 
Internet web site (www.uspto.gov); 

(C)mailing the payment with the United States 
Postal Service (USPS) to: Director of the United 
States Patent and Trademark Office, P.O. Box 
371279, Pittsburgh, PA 15251-7279; or

(D)mailing the payment with a private delivery 
service or hand-carrying the payment to: Director of 
the United States Patent and Trademark Office, 
Attn: Deposit Accounts, 2051 Jamieson Avenue, 
Suite 300, Alexandria, VA 22314.

In the event a payment to replenish a deposit 
account is refused (e.g., for insufficient funds or due 
to a stop payment order), the fee under 37 CFR 
1.21(m) for processing the payment refusal will be 
charged to the deposit account. Further information 
on deposit account replenishment may be obtained 
from the Office’s Internet web site or by contacting 
the Deposit Account Division at (571) 272-6500.

509.02Small Entity Status — 
Definitions [R-3]

Under 35 U.S.C. 41(h)(1), fees charged under 
35 
U.S.C. 41(a), (b) and (d)(1) shall be reduced 
by 50 percent 
with respect to their application to any 
small business concern as defined under section 3 of 
the Small Business Act, and to any independent 
inventor or nonprofit organization as defined in regulations 
issued by the Director.

The fees which are reduced include patent application 
filing fees including the basic filing fee, search 
fee, examination fee, application size fee, and excess 
claims fees (37 CFR 1.16), extension of time, 
revival, and appeal fees (37 CFR 1.17), patent issue 
fees (37 
CFR 1.18), statutory disclaimer fee (37 CFR 
1.20(d)), and maintenance fees on patents (37 CFR 
1.20). Other fees, established under section 41 (c) or 
(d)(2) of Title 35, United States Code, are not 
reduced for small entities since such a reduction is not 
permitted or authorized by 35 U.S.C. 41(h)(1).

Fees which are not reduced include petition and 
processing fees (other than revival), 37 CFR 
1.17(f)-(k), document supply fees, 37 CFR 1.19, 
certificate of correction fees, 37 
CFR 1.20(a), request 
for reexamination fees, 37 CFR 1.20(c), miscellaneous 
fees and charges, 37 CFR 1.21, and international 
application fees, 37 CFR 1.445.

The Consolidated Appropriations Act, 2005, provides 
that the filing fee charged under 35 U.S.C. 
41(a)(1)(A) shall be reduced by 75 percent with 
respect to its application to any small entity “if the 
application is filed by electronic means as prescribed 
by the Director” (35 U.S.C. 41(h)(3)). Therefore, the 
filing fee for a nonprovisional original utility application 
filed on or after December 8, 2004 by a small 
entity in compliance with the Office electronic filing 
system is reduced by 75 percent. See 37 CFR 
1.16(a)(1). The 75 percent reduction set forth in 
35 
U.S.C. 41(h)(3) does not apply to design applications, 
plant applications, reissue applications, or provisional 
applications. 

35 U.S.C. 41(h)(1) gives the Director the authority 
to establish regulations defining independent inventors 
and nonprofit organizations. The Small Business 
Administration was given authority to establish the 






definition of a small business concern. A small entity 
for purposes of paying reduced fees is defined in 
37 
CFR 1.27(a) as a person, a small business concern, 
or a nonprofit organization. The term “person” rather 
than “independent inventor” is used since individuals 
who are not inventors but who have received some 
rights in the invention are intended to be covered by 
37 CFR 1.27.

37 CFR 1.27. Definition of small entities and establishing 
status as a small entity to permit payment of small entity 
fees; when a determination of entitlement to small entity 
status and notification of loss of entitlement to small entity 
status are required; fraud on the Office.



(a)Definition of small entities. A small entity as used in this 
chapter means any party (person, small business concern, or nonprofit 
organization) under paragraphs (a)(1) through (a)(3) of this 
section.

(1)Person. A person, as used in paragraph (c) of this section, 
means any inventor or other individual (e.g., an individual to 
whom an inventor has transferred some rights in the invention) 
who has not assigned, granted, conveyed, or licensed, and is under 
no obligation under contract or law to assign, grant, convey, or 
license, any rights in the invention. An inventor or other individual 
who has transferred some rights in the invention to one or 
more parties, or is under an obligation to transfer some rights in 
the invention to one or more parties, can also qualify for small 
entity status if all the parties who have had rights in the invention 
transferred to them also qualify for small entity status either as a 
person, small business concern, or nonprofit organization under 
this section.

(2)Small business concern. A small business concern, as 
used in paragraph (c) of this section, means any business concern 
that:

(i)Has not assigned, granted, conveyed, or licensed, 
and is under no obligation under contract or law to assign, grant, 
convey, or license, any rights in the invention to any person, concern, 
or organization which would not qualify for small entity status 
as a person, small business concern, or nonprofit organization; 
and

(ii)Meets the size standards set forth in 13 CFR 
121.801 through 121.805 to be eligible for reduced patent fees. 
Questions related to standards for a small business concern may 
be directed to: Small Business Administration, Size Standards 
Staff, 409 Third Street, SW., Washington, DC 20416.

(3) Nonprofit Organization. A nonprofit organization, as 
used in paragraph (c) of this section, means any nonprofit organization 
that:

(i)Has not assigned, granted, conveyed, or licensed, 
and is under no obligation under contract or law to assign, grant, 
convey, or license, any rights in the invention to any person, concern, 
or organization which would not qualify as a person, small 
business concern, or a nonprofit organization; and

(ii)Is either:

(A)A university or other institution of higher education 
located in any country;

(B)An organization of the type described in section 
501(c)(3) of the Internal Revenue Code of 19 86 (26 U.S.C. 
501(c)(3)) and exempt from taxation under section 501(a) of the 
Internal Revenue Code (26 U.S.C. 501(a));

(C)Any nonprofit scientific or educational organization 
qualified under a nonprofit organization statute of a state of 
this country (35 U.S.C. 201 (i)); or

(D)Any nonprofit organization located in a foreign 
country which would qualify as a nonprofit organization under 
paragraphs (a)(3)(ii)(B) of this section or (a)(3)(ii)(C) of this section 
if it were located in this country.

(4) License to a Federal agency. (i) For persons under 
paragraph (a)(1) of this section, a license to the Government 
resulting from a rights determination under Executive Order 
10096 does not constitute a license so as to prohibit claiming 
small entity status.

(ii)For small business concerns and nonprofit organizations 
under paragraphs (a)(2) and (a)(3) of this section, a license 
to a Federal agency resulting from a funding agreement with that 
agency pursuant to 35 U.S.C. 202 (c)(4) does not constitute a 
license for the purposes of paragraphs (a)(2)(i) and (a)(3)(i) of this 
section. 

(5) Security Interest. A security interest does not involve 
an obligation to transfer rights in the invention for the purposes of 
paragraphs (a)(1) through (a)(3) of this section unless the security 
interest is defaulted upon.





I.PERSON

37 CFR 1.27(a)(1) defines a person as any inventor 
or other individual (e.g., an individual to whom an 
inventor has transferred some rights in the invention), 
who has not assigned, granted, conveyed, or licensed, 
and is under no obligation under contract or law to 
assign, grant, convey, or license, any rights in the 
invention. An inventor or other individual who has 
transferred some rights, or is under an obligation to 
transfer some rights in the invention to one or more 
parties, can also qualify for small entity status if all 
the parties who have had rights in the invention transferred 
to them also qualify for small entity status 
either as a person, small business concern, or nonprofit 
organization.

II.SMALL BUSINESS CONCERN

In order to be eligible for reduced patent fees as a 
“small business concern” under 37 CFR 1.27(a)(2), a 
business concern must meet the standards set forth in 






13 CFR 121.801 through 121.805. Questions 
relating to standards for a small business concern may 
be directed to:

Small Business Administration 

Office of Size Standards 

409 Third Street, S.W.

Washington, DC 20416

(202)205-6618

E-mail: sizestandards@sba.gov

III.NONPROFIT ORGANIZATIONS

37 CFR 1.27(a)(3) defines a nonprofit organization 
by utilizing and interpreting the definition contained 
in 35 U.S.C. 201(i). The term “university or other 
institution of higher education” as used in 37 CFR 
1.27(a)(3)(ii)(A) means an educational institution 
which 

(A)admits as regular students only persons having 
a certificate of graduation from a school providing 
secondary education, or the recognized equivalent of 
such a certificate, 

(B)is legally authorized within the jurisdiction in 
which it operates to provide a program of education 
beyond secondary education, 

(C)provides an educational program for which it 
awards a bachelor’s degree or provides not less than a 
2-year program which is acceptable for full credit 
toward such a degree, 

(D)is a public or other nonprofit institution, and 

(E)is accredited by a nationally recognized 
accrediting agency or association, or if not so accredited, 
is an institution that has been granted preaccreditation 
status by such agency or association that has 
been recognized by the Secretary for the granting of 
preaccreditation status, and the Secretary has determined 
that there is satisfactory assurance that the 
institution will meet the accreditation standards of 
such an agency or association within a reasonable 
time. 

The definition of “university or other institution of 
higher education” as set forth herein essentially follows 
the definition of “institution of higher education” 
contained in 20 
U.S.C. 1000. Institutions which 
are strictly research facilities, manufacturing facilities, 
service organizations, etc., are not intended to be 
included within the term “other institution of higher 
education” even though such institutions may perform 
an educational function or publish the results of their 
work.

Nonprofit organizations also include organizations 
of the type described in section 501(c)(3) of the Internal 
Revenue Code of 1986 (26 U.S.C. 501(c)(3)) and 
which are exempt from taxation under 26 U.S.C. 
501(a). Organizations described in 26 U.S.C. 
501(c)(3) include corporations, and any community 
chest, fund, or foundation, organized and operated 
exclusively for religious, charitable, scientific, testing 
for public safety, literary, or educational purposes, or 
to foster national or international amateur sports competition 
(but only if no part of its activities involve the 
provision of athletic facilities or equipment), or for 
the prevention of cruelty to children or animals, no 
part of the net earnings of which inures to the benefit 
of any private shareholder or individual, no substantial 
part of the activities of which is carrying on propaganda, 
or otherwise attempting to influence 
legislation (limited exceptions may apply under 
26 
U.S.C. 501(h)) and which does not participate in, 
or intervene in (including the publishing or distributing 
of statements), any political campaign on behalf 
of (or in opposition to) any candidate for public 
office. 

IV.LOCATION OF SMALL ENTITY

Small entities may claim reduced fees regardless of 
the country in which they are located. There is no 
restriction requiring that the person, small business 
concern, or nonprofit organization be located in the 
United States. The same definitions apply to all applicants 
equally in accordance with the Paris Convention 
for the Protection of Industrial Property.

V.RIGHTS IN THE INVENTION AND 
TRANSFER OF RIGHTS

The “rights in the invention” under 37 CFR 
1.27(a)(1), (a)(2)(i), and (a)(3)(i) are the rights in the 
United States. Rights in the invention include the right 
to exclude others from making, using, offering for 
sale, or selling the invention throughout the United 
States or importing the invention into the United 
States. Therefore, for example, status as a small entity 
is lost by an inventor who has transferred or has an 
obligation to transfer a shop right to an employer who 
could not qualify as a small entity.






Individual inventors (37 CFR 1.27(a)(1)), small 
business concerns (37 CFR 1.27(a)(2)), and nonprofit 
organizations (37 CFR 1.27(a)(3)) can make an 
assignment, grant, conveyance, or license of partial 
rights in the invention to another individual(s), small 
business concern, or nonprofit organization who 
could qualify as a person (37 CFR 1.27(a)(1)), small 
business concern, or nonprofit organization. Under 
the circumstances described, the individual inventor, 
small business concern, or nonprofit organization 
could still qualify for small entity status. However, if 
the individual inventor, small business concern, or 
nonprofit organization assigned, granted, conveyed, 
or licensed, or came under an obligation to assign, 
grant, convey, or license, any rights to the invention to 
any individual, small business concern, or nonprofit 
organization which would not qualify as a small entity 
(37 CFR 1.27(a)), then the inventor, small business 
concern, or nonprofit organization would no longer 
qualify for small entity status.

With regard to transfer of rights in the invention, 
the rights in question are those in the United States to 
be covered by an application or patent. Transfer of 
rights to a Japanese patent, for example, would not 
affect small entity status if no rights in the United 
States to a corresponding patent were likewise transferred.


The payment of reduced fees under 35 U.S.C. 41 is 
limited to those situations in which all of the rights in 
the invention are owned by small entities, i.e., persons, 
small business concerns, or nonprofit organizations. 
To do otherwise would be clearly contrary to 
the intended purpose of the legislation which contains 
no indication that fees are to be reduced in circumstances 
where rights are owned by non-small entities. 
For example, a non-small entity is not permitted to 
transfer patent rights to a small business concern 
which would pay the reduced fees and grant a license 
to the entity.

If rights transferred to a non-small entity are later 
returned to a small entity so that all rights are held by 
small entities, reduced fees may be claimed.

The term “license” in the definitions includes nonexclusive 
as well as exclusive licenses and royalty 
free as well as royalty generating licenses. Implied 
licenses to use and resell patented articles purchased 
from a small entity, however, will not preclude the 
proper claiming of small entity status. Likewise, an 
order by an applicant to a firm to build a prototype 
machine or product for the applicant’s own use is not 
considered to constitute a license for purposes of the 
definitions. A grant of a non-exclusive license to a 
non-small entity will disqualify applicant from 
claiming small entity status. See Ulead Systems, Inc. 
v. Lex Computer & Management Corp., 351 F.3d 
1139, 1142, 69 USPQ2d 1097, 1099 (Fed. Cir. 2003).

A security interest does not involve an obligation 
to transfer rights in the invention for the purposes of 
37 CFR 1.27(a)(1) through (a)(3) unless the security 
interest is defaulted upon. See 37 CFR 1.27(a)(5). For 
example, an applicant or patentee may take out a loan 
from a large entity banking institution and the loan 
may be secured with rights in a patent application or 
patent of the applicant or patentee, respectively. The 
granting of such a security interest to the banking 
institution is not a currently enforceable obligation to 
assign, grant, convey, or license any rights in the 
invention to the banking institution. Only if the loan is 
defaulted upon will the security interest permit a 
transfer of rights in the application or patent to the 
banking institution. Thus, where the banking institution 
is a large entity, the applicant or patentee would 
not be prohibited from claiming small entity status 
merely because the banking institution has been 
granted a security interest, but if the loan is defaulted 
upon, there would be a loss of entitlement to small 
entity status. Pursuant to 37 CFR 1.27(g), notification 
of the loss of entitlement due to default on the terms 
of the security interest would need to be filed in the 
application or patent prior to paying, or at the time of 
paying, the earliest of the issue fee or any maintenance 
fee due after the date on which small entity status 
is no longer appropriate. See MPEP § 509.03, 
subsection VII. Removal of Status.

VI.RIGHTS HELD BY GOVERNMENT 
ORGANIZATIONS

Also, although the Federal government agencies do 
not qualify as nonprofit organizations for paying 
reduced fees under the rules, a license to a Federal 
agency resulting from a funding agreement with the 
agency pursuant to 35 U.S.C. 202(c)(4) will not preclude 
the proper claiming of small entity status. Furthermore, 
a license to the Government resulting from 
a rights determination under Executive Order 10096 
does not constitute a license so as to prohibit claiming 






small entity status by a person under 37 CFR 
1.27(a)(1).

Public Law 96-517 added a new chapter 18 of Title 
35 of the United States Code entitled “Patent Rights in 
Inventions Made With Federal Assistance.” Under the 
provisions of the statute, each funding agreement 
between a Federal agency and an individual, small 
business firm, or nonprofit organization must provide, 
inter alia, that “. . . the Federal agency shall 
have a nonexclusive, nontransferable, irrevocable, 
paid-up license to practice or have practiced for or on 
behalf of the United States any subject invention . . .” 
See 35 U.S.C. 202(c)(4). The Federal agencies do not 
qualify as nonprofit organizations for paying reduced 
patent fees under the rules. Applying this construction 
to the licensing of an invention to a Federal agency by 
a person, small business concern, or nonprofit organization 
pursuant to a funding agreement under 
35 
U.S.C. 202(c)(4) would preclude their qualifying 
for paying reduced fees. This, however, would frustrate 
the intent of Public Law 97-247 and Public Law 
96-517 when taken together.

Government organizations as such, whether domestic 
or foreign, cannot qualify as nonprofit organizations 
as defined in 37 CFR 1.27(a)(3). Thus, for 
example, a government research facility or other government-
owned corporation could not qualify. 
37 
CFR 1.27(a)(3) was based upon 35 
U.S.C. 201(i), 
as established by Public Law 96-517. The limitation 
to “an organization of the type described in section 
501(c)(3) of the Internal Revenue Code of 1986 
(26 
U.S.C. 501(c)(3)) and exempt from taxation under 
section 501(a) of the Internal Revenue Code 
(26 
U.S.C. 501(a))” would by its nature exclude the 
U.S. government and its agencies and facilities, 
including research facilities and government corporations. 
State and foreign governments and governmental 
agencies and facilities would be similarly 
excluded. 37 CFR 1.27(a)(3) is not intended to 
include within the definition of a nonprofit organization 
government organizations of any kind located in 
any country. A university or other institution of 
higher education located in any country would qualify, 
however, as a “nonprofit organization” under 
37 
CFR 1.27(a)(3) even though it has some government 
affiliation since such institutions are specifically 
included.

A wholly owned subsidiary of a nonprofit organization 
or of a university is considered a part of the nonprofit 
organization or university and is not precluded 
from qualifying for small entity status. 

509.03Claiming Small Entity Status 
[R-3]

37 CFR 1.27. Definition of small entities and establishing 
status as a small entity to permit payment of small entity 
fees; when a determination of entitlement to small entity 
status and notification of loss of entitlement to small entity 
status are required; fraud on the Office.





(b)Establishment of small entity status permits payment of 
reduced fees.

(1)A small entity, as defined in paragraph (a) of this section, 
who has properly asserted entitlement to small entity status 
pursuant to paragraph (c) of this section will be accorded small 
entity status by the Office in the particular application or patent in 
which entitlement to small entity status was asserted. Establishment 
of small entity status allows the payment of certain reduced 
patent fees pursuant to 35 U.S.C. 41(h)(1).

(2)Submission of an original utility application in compliance 
with the Office electronic filing system by an applicant 
who has properly asserted entitlement to small entity status pursuant 
to paragraph (c) of this section in that application allows the 
payment of a reduced filing fee pursuant to 35 U.S.C. 41(h)(3).

(c)Assertion of small entity status. Any party (person, small 
business concern or nonprofit organization) should make a determination, 
pursuant to paragraph (f) of this section, of entitlement 
to be accorded small entity status based on the definitions set forth 
in paragraph (a) of this section, and must, in order to establish 
small entity status for the purpose of paying small entity fees, 
actually make an assertion of entitlement to small entity status, in 
the manner set forth in paragraphs (c)(1) or (c)(3) of this section, 
in the application or patent in which such small entity fees are to 
be paid.

(1)Assertion by writing. Small entity status may be established 
by a written assertion of entitlement to small entity status. 
A written assertion must:

(i)Be clearly identifiable;

(ii)Be signed (see paragraph (c)(2) of this section); 
and

(iii)Convey the concept of entitlement to small entity 
status, such as by stating that applicant is a small entity, or that 
small entity status is entitled to be asserted for the application or 
patent. While no specific words or wording are required to assert 
small entity status, the intent to assert small entity status must be 
clearly indicated in order to comply with the assertion requirement.


(2)Parties who can sign and file the written assertion. 
The written assertion can be signed by:






(i)One of the parties identified in § 
  
1.33(b) (e.g., an 
attorney or agent registered with the Office), § 3.73(b) of this 
chapter notwithstanding, who can also file the written assertion;

(ii)At least one of the individuals identified as an 
inventor (even though a § 1.63 executed oath or declaration has 
not been submitted), notwithstanding § 1.33(b)(4), who can also 
file the written assertion pursuant to the exception under § 1.33(b)
of this part; or

(iii)An assignee of an undivided part interest, notwithstanding 
§§ 1.33(b)(3) and 3.73(b) of this 
chapter, but the partial 
assignee cannot file the 
assertion without resort to a party identified 
under § 1.33(b) of this part.



(3) Assertion by payment of the small entity basic filing 
or basic national fee. The payment, by any party, of the exact 
amount of one of the small entity basic filing fees set forth in §§ 
1.16(a), 1.16(b), 1.16(c), 1.16(d), 1.16(e), or the small entity basic 
national fee set forth in § 1.492(a), will be treated as a written 
assertion of entitlement to small entity status even if the type of 
basic filing or basic national fee is inadvertently selected in error.

(i)If the Office accords small entity status based on 
payment of a small entity basic filing or basic national fee under 
paragraph (c)(3) of this section that is not applicable to that application, 
any balance of the small entity fee that is applicable to that 
application will be due along with the appropriate surcharge set 
forth in § 1.16(f), or § 1.16(g).

(ii)The payment of any small entity fee other than 
those set forth in paragraph (c)(3) of this section (whether in the 
exact fee amount or not) will not be treated as a written assertion 
of entitlement to small entity status and will not be sufficient to 
establish small entity status in an application or a patent.

(4)Assertion required in related, continuing, and reissue 
applications. Status as a small entity must be specifically established 
by an assertion in each related, continuing and reissue 
application in which status is appropriate and desired. Status as a 
small entity in one application or patent does not affect the status 
of any other application or patent, regardless of the relationship of 
the applications or patents. The refiling of an application under 
§
 
1.53 as a continuation, divisional, or continuation-in-part application 
(including a continued prosecution application under 
§
 
1.53(d)), or the filing of a reissue application, requires a new 
assertion as to continued entitlement to small entity status for the 
continuing or reissue application.

(d)When small entity fees can be paid. Any fee, other than 
the small entity basic filing fees and the small entity national fees 
of paragraph (c)(3) of this section, can be paid in the small entity 
amount only if 
it is submitted with, or subsequent to, the submission 
of a written assertion of entitlement to small 
entity status, 
except when refunds are permitted by §
 
1.28(a).

(e)Only one assertion required.

(1)An assertion of small entity status need only be filed 
once in an application or patent. Small entity status, once established, 
remains in effect until changed pursuant to paragraph 
(g)(1) of this section. Where an assignment of rights or an obligation 
to assign rights to other parties who are small entities occurs 
subsequent to an assertion of small entity status, a second assertion 
is not required.

(2)Once small entity status is withdrawn pursuant to 
paragraph (g)(2) of this section, a new written assertion is 
required to again obtain small entity status.

(f)Assertion requires a determination of entitlement to pay 
small entity fees. Prior to submitting an assertion of entitlement to 
small entity status in an application, including a related, continuing, 
or reissue application, a determination of such entitlement 
should be made pursuant to the requirements of paragraph (a) of 
this section. It should be determined that all parties holding rights 
in the invention qualify for small entity status. The Office will 
generally not question any assertion of small entity status that is 
made in accordance with the requirements of this section, but note 
paragraph (h) of this section.

(g)(1) New determination of entitlement to small entity status 
is needed when issue and maintenance fees are due. Once status 
as a small entity has been established in an application or patent, 
fees as a small entity may thereafter be paid in that application or 
patent without regard to a change in status until the issue fee is 
due or any maintenance fee is due.

(2)Notification of loss of entitlement to small entity status 
is required when issue and maintenance fees are due. Notification 
of a loss of entitlement to small entity status must be filed in 
the application or patent prior to paying, or at the time of paying, 
the earliest of the issue fee or any maintenance fee due after the 
date on which status as a small entity as defined in paragraph (a) 
of this section is no longer appropriate. The notification that small 
entity status is no longer appropriate must be signed by a party 
identified in § 1.33(b). Payment of a fee in other than the small 
entity amount is not sufficient notification that small entity status 
is no longer appropriate.

(h)Fraud attempted or practiced on the Office.

(1)Any attempt to fraudulently establish status as a small 
entity, or pay fees as a small entity, shall be considered as a fraud 
practiced or attempted on the Office.

(2)Improperly, and with intent to deceive, establishing 
status as a small entity, or paying fees as a small entity, shall be 
considered as a fraud practiced or attempted on the Office.

37 CFR 1.4. Nature of correspondence and signature 
requirements.





(d)(4) Certifications. (i) Section 10.18 certifications: The 
presentation to the Office (whether by signing, filing, submitting, 
or later advocating) of any paper by a party, whether a practitioner 
or non-practitioner, constitutes a certification under § 10.18(b) of 
this chapter. Violations of § 10.18(b)(2) of this chapter by a party, 
whether a practitioner or non-practitioner, may result in the imposition 
of sanctions under § 10.18(c) of this chapter. Any practitioner 
violating § 10.18(b) of this chapter may also be subject to 
disciplinary action. See §§ 10.18(d) and 10.23(c)(15) of this chapter.


(ii) Certifications as to the signature: (A) Of another: 
A person submitting a document signed by another under paragraphs 
(d)(2) or (d)(3) of this section is obligated to have a reasonable 
basis to believe that the person whose signature is present on 






the document was actually inserted by that person, and should 
retain evidence of authenticity of the signature.

(B) Self certification: The person inserting a signature 
under paragraphs (d)(2) or (d)(3) of this section in a document 
submitted to the Office certifies that the inserted signature 
appearing in the document is his or her own signature.

(C) Sanctions: Violations of the certifications as to 
the signature of another or a person’s own signature, set forth in 
paragraphs (d)(4)(ii)(A) and (B) of this section, may result in the 
imposition of sanctions under § 10.18(c) and (d) of this chapter.



37 CFR 10.18. Signature and certificate for 
correspondence filed in the Patent and Trademark Office.



(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, or 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, or the 
validity or enforceability of any patent, trademark registration, or 
certificate resulting therefrom; and

(2)To the best of the party’s knowledge, information and 
belief, formed after an inquiry reasonable under the circumstances, 
that —

(i)The paper is not being presented for any improper 
purpose, such as to harass someone or to cause unnecessary delay 
or needless increase in the cost of prosecution before the Office;

(ii)The claims and other legal contentions therein are 
warranted by existing law or by a nonfrivolous argument for the 
extension, modification, or reversal of existing law or the establishment 
of new law;

(iii)The allegations and other factual contentions have 
evidentiary support or, if specifically so identified, are likely to 
have evidentiary support after a reasonable opportunity for further 
investigation or discovery; and

(iv)The denials of factual contentions are warranted 
on the evidence, or if specifically so identified, are reasonably 
based on a lack of information or belief.



In order to establish small entity status for the purpose 
of paying small entity fees, any party (person, 
small business concern or nonprofit organization) 
must make an assertion of entitlement to small entity 
status in the manner set forth in 37 CFR 1.27(c)(1) or 
(c)(3), in the application or patent in which such small 
entity fees are to be paid. Under 37 CFR 1.27, as long 
as all of the rights remain in small entities, the fees 
established for a small entity can be paid. This 
includes circumstances where the rights were divided 
between a person, a small business concern, and a 
nonprofit organization, or any combination thereof.

Under 37 CFR 1.4(d)(4), an assertion of entitlement 
to small entity status, including the mere payment 
of an exact small entity basic filing fee, 
inherently contains a certification under 37 CFR 
10.18(b). It is not required that an assertion of entitlement 
to small entity status be filed with each fee paid. 
Rather, once status as a small entity has been established 
in an application or patent, fees as a small 
entity may thereafter be paid in that application or 
patent without regard to a change in status until the 
issue fee is due or any maintenance fee is due. 37 CFR 
1.27(g)(1). Notification of a loss of entitlement to 
small entity status must be filed in the application or 
patent prior to paying, or at the time of paying, the 
earliest of the issue fee or any maintenance fee due 
after the date on which status as a small entity is no 
longer appropriate. 37 CFR 1.27(g)(2).

Status as a small entity may be established in a provisional 
application by complying with 37 CFR 1.27.

Status as a small entity must be specifically established 
in each application or patent in which the status 
is available and desired. Status as a small entity in one 
application or patent does not affect any other application 
or patent, including applications or patents which 
are directly or indirectly dependent upon the application 
or patent in which the status has been established. 
The filing of an application under 37 CFR 1.53 as a 
continuation-in-part, continuation or division (including 
a continued prosecution application under 37 CFR 
1.53(d)), or the filing of a reissue application requires 
a new assertion as to continued entitlement to small 
entity status for the continuing or reissue application. 
Submission of a request for continued examination 
(RCE) under 37 CFR 1.114 does not require a new 
determination or assertion of entitlement to small 
entity status since it is not a new application.

Examiners may use the following form paragraph 
to notify applicant that he or she may qualify for small 
entity status.






¶ 5.05 Small Entity Status

 This application may qualify for “Small Entity Status” and, 
therefore, applicant may be entitled to the payment of reduced 
fees. In order to establish small entity status for the purpose of 
paying small entity fees, applicant must make a determination of 
entitlement to small entity status under 37 CFR 1.27(f) and make 
an assertion of entitlement to small entity status in the manner set 
forth in 37 CFR 1.27(c)(1) or 37 CFR 1.27(c)(3). Accordingly, if 
applicant meets the requirements of 37 CFR 1.27(a), applicant 
must submit a written assertion of entitlement to small entity status 
under 37 CFR 1.27(c) before fees can be paid in the small 
entity amount. See 37 CFR 1.27(d). The assertion must be signed, 
clearly identifiable, and convey the concept of entitlement to 
small entity status. See 37 CFR 1.27(c)(1). No particular form is 
required.

I.ASSERTION BY WRITING

Small entity status may be established by the submission 
of a simple written assertion of entitlement 
to 
small entity status. The assertion must be 
signed,
 
clearly identifiable, and convey the concept of 
entitlement to small entity status. 37 CFR 1.27(c)(1). 
The written assertion is not required to be presented in 
any particular form. Written assertions of small entity 
status or references to small entity fees will be liberally 
interpreted to represent the required assertion. 
The written assertion can be made in any paper filed 
in or with the application and need be no more than a 
simple sentence or a box checked on an application 
transmittal letter. 

Practitioners may continue to use former USPTO 
forms or similar forms if they believe such small 
entity forms serve an educational purpose for their clients.


II.PARTIES WHO CAN ASSERT AND SIGN 
AN ENTITLEMENT TO SMALL ENTITY 
STATUS BY WRITING

The parties who can assert entitlement to small 
entity status by writing include all parties permitted 
by 37 CFR 
1.33(b) to file a paper in an application, 
including a registered practitioner. 37 CFR 
1.27(c)(2)(i). Additionally, one of the individuals 
identified as an inventor, or a partial assignee, can 
also sign the written assertion. 37 CFR 1.27(c)(2)(ii)
and (iii). By way of example, in the case of three pro 
se inventors for a particular application, one of the 
three inventors upon filing the application can submit 
a written assertion of entitlement to small entity status 
and thereby establish small entity status for the application, 
(but see paragraph VI. below). Where rights 
are divided between a person, small business concern, 
and nonprofit organization, or any combination 
thereof, only one party is required to assert small 
entity status. For example, where one of two inventors 
has assigned his or her rights in the invention, it is sufficient 
if either of the two inventors or the assignee 
asserts entitlement to small entity status. 

Any inventor is permitted to submit a written assertion 
of small entity status, including individuals identified 
as inventors but who are not officially named of 
record as an executed oath or declaration under 
37 
CFR 1.63 has not yet been submitted. See 
37 
CFR 
1.41(a)(1). Where an application is filed 
without an executed oath or declaration pursuant to 
37 
CFR 
1.53(f), the Office will accept the written 
assertion of an individual who has merely been identified 
as an inventor on filing of the application (e.g., 
application transmittal letter) as opposed to having to 
be named as an inventor by the filing of an executed 
oath or declaration under 37 CFR 1.63 (37 CFR 
1.41(a)(1)). 
 
37 CFR 1.4(d)(4) and 37 CFR 
10.18(b) are seen as sufficient basis to permit any 
individual to provide a written assertion so long as the 
individual identifies himself or herself as an inventor. 
An actual inventor who has not been identified as an 
inventor (e.g., by way of application transmittal letter) 
or named as an inventor (i.e., executed 37 CFR 
1.63oath or declaration) in the file record may not file a 
written assertion as to small entity entitlement. 

Where an oath or declaration under 37 CFR 1.63 is 
later filed, any original written assertion as to small 
entity status (which has been previously appropriately 
submitted to the Office) will remain unless changed 
by an appropriate party under 37 CFR 
1.27(g)(2). 
Where a later-filed oath or declaration under 
37 
CFR 
1.63 sets forth an inventive entity that does 
not include the person who initially was identified as 
an inventor and who asserted small entity status, small 
entity status will also remain.

An assignee asserting small entity status is not 
required to submit a 37 CFR 3.73(b) certification 
whether the assignee is a partial assignee or an 
assignee of the entire right, title, and interest, (but see 
paragraph III. below). 






III.PARTIES WHO CAN FILE THE 
WRITTEN ASSERTION ONCE SIGNED

A distinction exists as to who can file a written 
assertion of entitlement to small entity status once the 
written assertion is signed. 37 CFR 1.27(c)(2)(ii) and 
37 CFR 1.33(b) permit one of several inventors to file 
as well as to sign a written assertion. The same is not 
true for a partial assignee. 37 CFR 1.27(c)(2)(iii). 
While a partial assignee may sign a written assertion, 
the written assertion must be filed by an appropriate 
party under 37 CFR 
1.33(b).

IV.ASSERTION BY PAYMENT OF SMALL 
ENTITY BASIC FILING OR BASIC 
NATIONAL FEE

The payment of an exact small entity basic filing 
(37 CFR 
1.16(a), (b), (c), (d), or (e)) 
or basic national fee (37 CFR 
1.492(a)) is also considered 
to be a sufficient assertion of entitlement to 
small entity status. 37 CFR 1.27(c)(3). An applicant 
filing a patent application and paying an exact small 
entity basic filing or basic national fee automatically 
establishes small entity status for the application even 
without any other assertion of small entity status. This 
is so even if an applicant inadvertently selects the 
wrong type of small entity basic filing or basic 
national fee for the application being filed (e.g., the 
exact small entity basic filing fee for a design application 
is selected but the application is a utility application). 
If small entity status was not established when 
the basic filing or basic national fee was paid, such as 
by payment of a non-small entity basic filing or 
basic national fee, a later claim to small entity status 
requires a written assertion under 37 CFR 1.27(c)(1). 
Payment of a small entity fee other than a small entity 
basic filing or basic national fee (e.g., extension of 
time fee, or issue fee) without inclusion of a written 
assertion is not sufficient. 

Even though applicants can assert small entity status 
only by payment of an exact small entity basic filing 
or basic national fee, the Office encourages 
applicants to also file a written assertion of small 
entity status as well as to pay the exact amount of the 
small entity basic filing or basic national fee. The 
Office’s application transmittal forms include a check 
box that can be used to submit a written assertion of 
small entity status. A written assertion will provide 
small entity status should applicant fail to pay the 
exact small entity basic filing or basic national fee. 
The provision providing for small entity status by 
payment of an exact small entity basic filing or basic 
national fee is intended to act as a safety net to avoid 
possible financial loss to inventors or small businesses 
that qualify for small entity status.

Even though small entity status is accorded where 
the wrong type of small entity basic filing fee or basic 
national fee is selected but the exact amount of the fee 
is paid, applicant still needs to pay the correct small 
entity amount for the basic filing or basic national fee 
where selection of the wrong type of fee results in a 
deficiency. While an accompanying general authorization 
to charge any additional fees suffices to pay the 
balance due of the proper small entity basic filing or 
basic national fee, specific authorizations to charge 
fees under 37 CFR 
1.17 or extension of time fees do 
not suffice to pay any balance due of the proper small 
entity basic filing or basic national fee because they 
do not actually authorize payment of small entity 
amounts. If payment is attempted of the proper type of 
basic filing or basic national fee (applicant correctly 
identifies the type of fee for the type of application 
being filed), but the amount of the fee paid is not the 
exact small entity fee required (an incorrect fee 
amount is supplied) and a written assertion of small 
entity status is not present, small entity status will not 
be accorded. The Office will mail a notice of insufficient 
basic filing or basic national fee with a surcharge 
due if an authorization to charge the basic filing or 
basic national fee is not present. The Office does not 
consider a basic filing or basic national fee submitted 
in an amount above the correct fee amount, but below 
the non-small entity fee amount, as a request to establish 
small entity status unless an additional written 
assertion is also present. The submission of a basic filing 
or basic national fee below the correct fee amount 
also does not serve to establish small entity status. 

Where an application is originally filed by a party, 
who is in fact a small entity, with an authorization to 
charge fees (including basic filing or national fees) 
and there is no indication (assertion) of entitlement to 
small entity status present, that authorization is not 
sufficient to establish small entity status unless the 
authorization is specifically directed to small entity 
basic filing or basic national fees. The general authorization 
to charge fees will continue to be acted upon 
immediately and the full (not small entity) basic filing 






or basic national fees will be charged. Applicant will 
have three months under 37 CFR 1.28 to request a 
refund by asserting entitlement to small entity status. 
This is so even if the application is a continuing application 
where small entity status had been established 
in the prior application.

V.PARTIES WHO CAN ASSERT AND FILE 
SMALL ENTITY STATUS BY PAYMENT

Where small entity status is sought by way of payment 
of the basic filing or basic national fee, any party 
(including a third party), may submit payment, such 
as by check, and small entity status will be accorded.

VI.CONTINUED OBLIGATIONS FOR 
THOROUGH INVESTIGATION OF 
SMALL ENTITY STATUS

While small entity status is not difficult to obtain, it 
should be clearly understood that applicants need to 
do a complete and thorough investigation of all facts 
and circumstances before making a determination of 
actual entitlement to small entity status. 37 CFR 
1.27(f). Where entitlement to small entity status is 
uncertain, it should not be claimed.

The assertion of small entity status (even by mere 
payment of the exact small entity basic filing fee) is 
not appropriate until such an investigation has been 
completed. For example, where there are three pro seinventors, before one of the inventors pays the 
small 
entity basic filing or basic national fee to establish 
small entity status, the single inventor asserting 
entitlement to small entity status should check with 
the other two inventors to determine whether small 
entity status is appropriate.

If small entity status is desired on the basis that the 
entity is a small business concern, the investigation 
should include a review of whether the business is a 
small business concern as defined by section 3 of the 
Small Business Act (Public Law 85-536 as amended 
by Public Law 106-50). Review of whether the business 
concern meets the size standards set forth in 
13 CFR 121.801 through 121.805 to be eligible 
for reduced patent fees is also appropriate. Additionally, 
if the business has assigned, granted, conveyed 
or licensed (or is under an obligation to do so) any 
rights in the invention to others directly or indirectly, 
the same review for each other entity would also be 
appropriate. 

Furthermore, once status as a small entity has been 
established in an application, a new determination of 
entitlement to small entity status is needed (1) when 
the issue fee is due and (2) when any maintenance fee 
is due. It should be appreciated that the costs incurred 
in appropriately conducting the initial and subsequent 
investigations may outweigh the benefit of claiming 
small entity status. For some applicants it may be 
desirable to file as a non-small entity (by not filing 
a written assertion of small entity status and by 
submitting non-small entity fees) rather than 
undertaking the appropriate investigations which may 
be both difficult and time-consuming and which may 
be cost effective only where several applications are 
involved. 

The intent of 37 CFR 
1.27 is that the person making 
the assertion of entitlement to small entity status is the 
person in a position to know the facts about whether 
or not status as a small entity can be properly established. 
That person, thus, has a duty to investigate the 
circumstances surrounding entitlement to small entity 
status to the fullest extent. It is important to note that 
small entity status must not be claimed unless the person 
or persons can unequivocally make the required 
self-certification. 

The U.S. Patent and Trademark Office does not 
give advisory opinions as to whether or not a specific 
individual or organization qualifies as a small entity. 
In establishing reduced fees for persons, small business 
concerns, and nonprofit organizations, the Congressional 
consideration of the legislation which 
became Public Law 97-247 indicated an intent that 
the U.S. Patent and Trademark Office rely exclusively 
on a self-certification that a patent applicant qualifies 
as an independent inventor (now person), small business 
concern, or nonprofit organization. In addition, it 
was also stated during Congressional consideration of 
the legislation that no additional resources would be 
required to administer the system whereby fees would 
be reduced for small entities.

In view of the intent expressed during Congressional 
consideration of the legislation, it would be 
inappropriate for the U.S. Patent and Trademark 
Office to give advisory opinions as to entitlement to 
small entity status. Accordingly, any individual seeking 
to establish status as a small entity for purposes of 
paying the fee in an application or patent must file the 






assertion required by 37 CFR 1.27 and in so doing is 
self-certifying entitlement to small entity status. 

Consistent with 37 CFR 
1.4(d)(4), the payment 
of a small entity basic filing or national fee constitutes 
a certification under 37 CFR 
10.18(b). Thus, a simple 
payment of the small entity basic filing or basic 
national fee, without a specific written assertion, activates 
the provisions of 
 
37 CFR 1.4(d)(4) and, by 
that, invokes the self-certification requirement set 
forth in 
37 CFR 10.18(b), regardless of whether the 
party is a practitioner or non-practitioner.

VII. REMOVAL OF STATUS

Once small entity status is established in an application 
or patent, fees as a small entity may thereafter 
be paid in that application or patent without regard to 
a change in status until the issue fee is due or any 
maintenance fee is due. 37 CFR 1.27(g)(1). 37 CFR 
1.27(g)(2) requires that notification of any change in 
status resulting in loss of entitlement to small entity 
status be filed in the application or patent prior to paying, 
or at the time of paying, the earliest of the issue 
fee or any maintenance fee due after the date on 
which status as a small entity is no longer appropriate. 
37 CFR 1.27(g)(2) also requires that the notification 
of loss of entitlement to small entity status be in the 
form of a specific written assertion to that extent, 
rather than only payment of a non-small entity 
fee. For example, when paying the issue fee in an 
application that has previously been accorded small 
entity status and the required new determination of 
continued entitlement to small entity status reveals 
that status has been lost, applicant should not just simply 
pay the non-small entity issue fee or cross out 
the recitation of small entity status on Part B of the 
Notice of Allowance and Fee(s) Due (PTOL-85), but 
should (A) check the appropriate box on Part B of 
the PTOL-85 form to indicate that there has been a 
change in entity status and applicant is no longer 
claiming small entity status, and (B) pay the fee 
amount for a non-small entity.

For correcting errors in small entity status, see 
paragraph X below. 

VIII.IMPROPERLY ESTABLISHING SMALL 
ENTITY STATUS

37 CFR 1.27(h) indicates that any attempt to fraudulently 
establish status as a small entity or pay fees as 
a small entity will be considered as a fraud practiced 
or attempted on the Office. Applicants should not rely 
on any oral advice inadvertently given by an Office 
employee as to entitlement to small entity status. In 
addition, improperly and with intent to deceive establishing 
status as a small entity or paying fees as a 
small entity will be considered as a fraud practiced or 
attempted on the Office. Normally, the Office will not 
question a claim to status as a small entity. 

IX.REFUNDS BASED ON LATER ESTABLISHMENT 
OF SMALL ENTITY STATUS

37 CFR 1.28. Refunds when small entity status is later 
established; how errors in small entity status are excused.

(a)Refunds based on later establishment of small entity status. 
A refund pursuant to § 1.26, based on establishment of small 
entity status, of a portion of fees timely paid in full prior to establishing 
status as a small entity may only be obtained if an assertion 
under § 1.27(c) and a request for a refund of the excess amount 
are filed within three months of the date of the timely payment 
of 
the full fee. The three-month time period is not extendable 
under § 1.136. Status as a small entity is waived for any fee by the 
failure to establish the status prior to paying, at the time of paying, 
or within three months of the date of payment of, the full fee.

(b)Date of payment. 

(1)The three-month period for requesting a refund, pursuant 
to paragraph (a) of this section, starts on the date that a full 
fee has been paid;

(2)The date when a deficiency payment is paid in full 
determines the amount of deficiency that is due, pursuant to paragraph 
(c) of this section.



37 CFR 1.28(a) provides a three-month time period 
for requesting a refund of a portion of a non-small
entity fee based on later establishment of small entity 
status. The start date of the three-month refund period 
of 37 CFR 1.28(a) is the date the full fee has been 
paid. See 37 CFR 1.28(b)(1). Payment by authorization 
to charge a deposit account is treated for refund 
purposes the same as payments by other means (e.g., 
check or credit card authorizations), with each being 
treated as paid (for refund purposes) on the date of 
receipt in the Office as defined by 37 CFR 1.6. Thus, 
the date of receipt of an authorization to charge fees 
starts the three-month period for refunds under 
37 
CFR 1.28(a), not the date of debit of the fee to a 
deposit account. If a payment is mailed with a Certificate 
of Mailing under 37 CFR 1.8, the three month 
period for requesting a refund will start on the actual 
date of receipt of the payment in the Office, and not 






the Certificate of Mailing date. If a payment is filed 
by Express Mail under 37 CFR 1.10, the date of 
deposit with the United States Postal Service (shown 
by the “date-in” on the Express Mail mailing label or 
other official USPS notation) is the date of receipt of 
the payment by the Office under 37 CFR 1.10(a) and 
the three month period for requesting a refund starts 
on the date shown by the “date-in” on the Express 
Mail mailing label rather than the date when the payment 
actually reaches the Office.

Request for refunds, along with the assertions 
under 37 CFR 1.27(c), should be addressed to Mail 
Stop 16, Director of the U.S. Patent and Trademark 
Office, P.O. Box 1450, Alexandria, VA 22313-1450.

X.CORRECTING ERRORS IN SMALL 
ENTITY STATUS

37 CFR 1.28. Refunds when small entity status is later 
established; how errors in small entity status are excused.



(c)How errors in small entity status are excused. If status as 
a small entity is established in good faith, and fees as a small 
entity are paid in good faith, in any application or patent, and it is 
later discovered that such status as a small entity was established 
in error, or that through error the Office was not notified of a loss 
of entitlement to small entity status as required by § 1.27(g)(2), 
the error will be excused upon: compliance with the separate submission 
and itemization requirements of paragraphs (c)(1) and 
(c)(2) of this section, and the deficiency payment requirement of 
paragraph (c)(2) of this section:

(1)Separate submission required for each application or 
patent. Any paper submitted under this paragraph must be limited 
to the deficiency payment (all fees paid in error), required by 
paragraph (c)(2) of this section, for one application or one patent. 
Where more than one application or patent is involved, separate 
submissions of deficiency payments (e.g., checks) and itemizations 
are required for each application or patent. See § 1.4(b).

(2)Payment of deficiency owed. The deficiency owed, 
resulting from the previous erroneous payment of small entity 
fees, must be paid.

(i)Calculation of the deficiency owed. The deficiency 
owed for each previous fee erroneously paid as a small entity is 
the difference between the current fee amount (for other than a 
small entity) on the date the deficiency is paid in full and the 
amount of the previous erroneous (small entity) fee payment. The 
total deficiency payment owed is the sum of the individual deficiency 
owed amounts for each fee amount previously erroneously 
paid as a small entity. Where a fee paid in error as a small entity 
was subject to a fee decrease between the time the fee was paid in 
error and the time the deficiency is paid in full, the deficiency 
owed is equal to the amount (previously) paid in error;

(ii)Itemization of the deficiency payment. An itemization 
of the total deficiency payment is required. The itemization 
must include the following information:

(A)Each particular type of fee that was erroneously 
paid as a small entity, (e.g., basic statutory filing fee, two-month 
extension of time fee) along with the current fee amount for a non-
small entity;

(B)The small entity fee actually paid, and when. 
This will permit the Office to differentiate, for example, between 
two one-month extension of time fees erroneously paid as a small 
entity but on different dates;

(C)The deficiency owed amount (for each fee erroneously 
paid); and

(D)The total deficiency payment owed, which is 
the sum or total of the individual deficiency owed amounts set 
forth in paragraph (c)(2)(ii)(C) of this section.

(3)Failure to comply with requirements. If the requirements 
of paragraphs (c)(1) and (c)(2) of this section are not complied 
with, such failure will either: be treated as an authorization 
for the Office to process the deficiency payment and charge the 
processing fee set forth in § 1.17(i), or result in a requirement for 
compliance within a one-month non-extendable time period under 
§ 1.136(a) to avoid the return of the fee deficiency paper, at the 
option of the Office.

(d)Payment of deficiency operates as notification of loss of 
status. Any deficiency payment (based on a previous erroneous 
payment of a small entity fee) submitted under paragraph (c) of 
this section will be treated under § 1.27(g)(2) as a notification of a 
loss of entitlement to small entity status.



37 
CFR 1.28(c) provides that if small entity status 
is established in good faith and the small entity fees 
are paid in good faith, and it is later discovered that 
such status as a small entity was established in error 
or through error the Office was not notified of a 
change of status, the error will be excused upon compliance 
with the separate submission and itemization 
requirements of 37 CFR 1.28(c)(1) and (c)(2), and 
the 
deficiency payment requirement of 37 CFR 
1.28(c)(2). The deficiency amount owed under 
37 
CFR 1.28(c) is calculated using the date on which 
the deficiency was paid in full. See 37 CFR 
1.28(b)(2).

37 CFR 1.28(c)(1) requires that a deficiency paper 
be limited to one application or patent file. Where, for 
example, the same set of facts has caused errors in 
payment in more than one application and/or patent 
file, a separate paper must be submitted in each file 
for which an error is to be excused.

37 CFR 1.28(c)(2) requires that for each fee that 
was erroneously paid as a small entity, the deficiencies 
owed must be paid, and the payment of the defi







ciencies must be itemized. The deficiency owed for 
each previous fee erroneously paid as a small entity is 
the difference between the current fee amount (for 
other than a small entity) on the date the deficiency is 
paid in full and the amount of the previous erroneous 
(small entity) fee payment. Where there has been a fee 
decrease, the deficiency owed is equal to the amount 
(previously) paid in error, not the difference between 
the amount (previously) paid in error and the new 
lower non-small entity fee. 37 CFR 1.28(c)(2)(ii) 
requires the following itemizations: (A) the particular 
fee involved (e.g., basic filing fee, extension of time 
fee); (B) the small entity fee amount actually paid and 
when (for example, distinguishing between two one-
month extension of time fees erroneously paid on two 
different dates); (C) the actual deficiency owed for 
each fee previously paid in error; and (D) the total 
deficiency owed (i.e., the sum of the individual deficiencies 
owed).

Under 37 CFR 1.28(c)(3), the failure to comply 
with the requirements of 37 CFR 1.28(c)(1) and (c)(2)
permits the Office at its option to either charge a processing 
fee (37 CFR 1.17(i)) to process the paper or 
require compliance within a one-month non-extendable 
time period to avoid return of the paper. 

Any paper submitted under 37 CFR 1.28(c) is 
treated as a notification of loss of small entity status 
under 37 CFR 1.27(g)(2). See 37 CFR 1.28(d).

A maintenance fee improperly paid as a small 
entity where small entity status has been established 
but is no longer appropriate will be treated as a matter 
under 37 CFR 1.28(c) and will not be considered to 
involve expiration of the patent under 37 
CFR 1.378. 
On the other hand, payment of a maintenance fee in 
the small entity amount where small entity status has 
not been established would result in the expiration of 
the patent under 37 CFR 1.378 unless the full maintenance 
fee due or a written assertion of small entity 
status is timely filed. 

510U.S. Patent and Trademark OfficeBusiness Hours [R-3]

 The U.S. Patent and Trademark Office (USPTO 
or Office) working hours are 8:30 a.m. to 5:00 p.m., 
Monday through Friday, excluding Federal holidays 
in the District of Columbia. Outside these hours, only 
USPTO employees are authorized to be in areas 
of the USPTO other than the Public Search 
Rooms.

The hours for the Public Search Facility in 
Alexandria are 8:00 a.m. to 8:00 p.m., and the hours 
for the Trademark Paper Facility in Arlington
are 8:00 a.m. to 5:00 p.m., Monday through Friday, 
excluding Federal holidays in the District of 
Columbia.

During working hours, all applicants, attorneys, 
and other members of the public should announce 
their presence to the Office personnel in the area of 
their visit. In the Technology Centers (TCs), visitors 
should inform the TC receptionist of their presence 
before visiting other areas of the TC.



I. FILING OF PAPERS DURING UNSCHEDULED 
CLOSINGS OF THE U.S. 
PATENT AND TRADEMARK OFFICE

37 CFR 1.9(h) provides that the definition of “Federal 
holiday within the District of Columbia” includes 
an official closing of the Office. When the entire 
USPTO is officially closed for business for an 
entire day, for reasons due to adverse weather or other 
causes, the Office will consider each such day a “Federal 
holiday within the District of Columbia” under 
35 U.S.C. 21. Any action or fee due on such a day 
may be taken, or fee paid, on the next succeeding 
business day the Office is open. In addition, 37 CFR 
1.6(a)(1) provides “[t]he Patent and Trademark Office 
is not open for the filing of correspondence on any 
day that is a Saturday, Sunday or Federal holiday 
within the District of Columbia” to clarify that any 
day that is a Saturday, Sunday or Federal holiday 
within the District of Columbia is a day that the 
USPTO is not open for the filing of applications 
within the meaning of Article 4(C)(3) of the Paris 
Convention. Note further that in accordance with 
37 
CFR 1.6(a)(2), even when the Office is not open 
for the filing of correspondence on any day that is a 
Saturday, Sunday or Federal holiday within the District 
of Columbia, correspondence deposited as 
Express Mail with the United States Postal Service in 
accordance with 37 CFR 1.10 will be considered filed 
on the date of its deposit, regardless of whether that 
date is a Saturday, Sunday or Federal holiday within 
the District of Columbia (under 35 U.S.C. 21(b) or 
37 CFR 1.7).






When the USPTO is open for business during 
any part of a business day between 8:30 a.m. and 5:00 
p.m., papers are due on that day even though the 
Office may be officially closed for some period of 
time during the business day because of an unscheduled 
event. The procedures of 37 CFR 1.10 may be 
used for filing applications.

Information regarding whether or not the Office is 
officially closed on any particular day may be 
obtained by calling 1-800-PTO(786)-9199 or 
(571) 272-1000.

Effective November 29, 1999, Public Law 106-113 
amended 35 U.S.C. 119(e)(3) to extend the period of 
pendency of a provisional application to the next succeeding 
business day if the day that is 12 months after 
the filing date of a provisional application falls on a 
Saturday, Sunday, or Federal holiday within the District 
of Columbia. 35 
U.S.C. 119(e)(3) as amended by 
Public Law 106-113 applies to any provisional applications 
filed on or after June 8, 1995 but has no effect 
on any patent which is the subject of litigation in an 
action commenced before November 29, 1999. See 
also 37 CFR 1.7(b).

New patent applications filed in accordance with 
37 
CFR 1.10 will be stamped by the Office with the 
date of deposit as “Express Mail” with the United 
States Postal Service. For example, if a new 
patent 
application is deposited in “Express Mail” in 
accordance with 37 CFR 1.10 on a Saturday and the 
United States Postal Service gives it a date of deposit 
of Saturday, the Office will accord and stamp the correspondence 
with the Saturday date. 37 CFR 
1.6(a)(2).



II. REGULATIONS FOR THE PUBLIC USE 
OF RECORDS IN THE PATENT SEARCH 
ROOM OF THE USPTO

The USPTO has established procedures and 
regulations for using the facilities of the Patent Search 
Room. The procedures for the Search Room include 
the requirement that users obtain and show, prior to 
entering the Search Room facilities, a User Pass. This 
pass can be obtained from the Office of Security 
next door to the Public Search Facility located on the 
first floor of the Madison East Building, 600 Dulany 
Street, Alexandria, VA 22314. User Passes will be 
issued to persons not under prohibition from using the 
search facilities who sign an application form and 
acknowledge receipt of a copy of the noted regulations. 
User Passes are nontransferable and are valid 
until reissue or revocation for cause. Office employees 
must show their building pass in order to enter the 
Patent Search Room. An On-line Service Card is 
required for access to all Public Search Facilities and 
on-line systems. On-line Service Cards are obtained at 
the Public Search Facility Receptionist Desk on a 
user’s first visit.

Persons exiting the Search Room will automatically 
pass electronic sensing equipment designed to detect 
any marked documents or materials being removed 
from the Search Room. The sensing equipment is 
capable of detecting marked documents and materials 
in briefcases and parcels and under clothing. The 
equipment does not use X-ray or other high energy 
radiation and is, therefore, completely safe and harmless 
to persons, photographic film, magnetic tape, and 
electronic or mechanical devices such as wrist 
watches.

Whenever a marked document is transported past 
the sensing equipment, U.S. Patent and Trademark 
Office officials and the security guards will be alerted 
to the removal of the document. Persons triggering the 
alarm will be asked to cooperate in identifying the 
source for the alarm. Failure to cooperate when the 
alarm is triggered could result in detention of the person, 
seizure of any briefcase or the like, or other legal 
measures deemed necessary and appropriate in the 
specific case.

The regulations for the Search Room are reprinted 
in a regulation brochure. It is available in the Search 
Room. In order to maintain an environment conducive 
to search, the regulations will be strictly enforced.

Although these procedures and regulations may 
cause some inconvenience, it is hoped that with 
understanding and cooperation they will result in 
improvement in search facilities which will benefit all 
participants in the U.S. patent system.

Persons violating the regulations may be denied the 
use of the facilities in the Patent Search Room, and 
may further be subjected to prosecution under the 
Criminal Code. Additionally, the name of any person 
violating these regulations who is registered to practice 
before the  Office may be forwarded to the 
Office of Enrollment and Discipline for appropriate 
action under 37 CFR Part 10.








III. USE OF TECHNOLOGY CENTER FACILITIES


Regulations appearing below were established 
for those authorized members of the public using the 
facilities of the TCs.



IV. REGULATIONS FOR USERS OF THE 
TECHNOLOGY CENTER  FACILITIES

(A)TC facilities are defined as those areas in 
Carlyle (Alexandria, VA) where the TCs are 
located.

(B)The use of the TC facilities  is strictly limited 
to  the regular business hours of the 
USPTO, between the hours of 8:45 a.m. and 4:45 
p.m. on regular business days.

(C)Authorized Officials, under these regulations, 
include Supervisory Patent Examiners and TC Directors.


(D)Under applicable statutes and regulations, 
including 40 U.S.C. 486(c); 41 CFR Subpart 101-
20.3; and appropriate Sections of Department Organization 
Orders 30-3A and 30-3B of the Department of 
Commerce, the regulations appearing below are 
established for those members of the public using the 
TC Facilities.

(1)All persons using these facilities are subject 
to the Regulations Governing Conduct on Federal 
Property, as specified in 41 CFR Subpart 101-20.3.

(2)All posted Official Notices are to be complied 
with.

(3)A valid User Pass must be prominently displayed 
when  in the TC Facilities. User Passes are 
nontransferable and must be surrendered upon request 
to authorized officials.

(4)All persons holding User Passes must register 
with the TC Receptionist, unless otherwise 
directed, in each TC .

(5)No  records, or other documents of the 
USPTO shall be removed from the TC Facilities 
except by express written authorization by an authorized 
official in the TC where the material resides. 

(6)Smoking is not permitted except in designated 
areas. 

(7)No food or beverages in any form are to be 
consumed except in designated areas.

(8)Loud talking, use of radios, and any other 
form of activity which may disturb other members of 
the public or Office personnel are forbidden.

(9)Children brought into the TC Facilities 
must not be allowed to disturb others.

(10) The presence or use of equipment such as 
dictation equipment, reproducing machines, typewriters, 
and photographic equipment is prohibited without 
prior permission from an authorized official in the TC 
where the use is intended and then is permitted where 
its use does not conflict with regulation (8) above.

(11) All packages, briefcases, or other personal 
effects brought into the TC Facilities are subject 
to search by authorized officials upon request and 
must be removed when leaving the TC Facilities.



(12) All verbal requests for compliance with 
these regulations or other posted USPTO Notices 
pertaining to activity in the TC Facilities, when made 
by authorized officials, must be promptly complied 
with.

(E)Persons violating these regulations may be 
denied the use of the facilities in the TC and Patent 
Search Room, and may further be subject to prosecution 
under the Criminal Code. Additionally, the name 
of any person violating these regulations who is registered 
to practice before the USPTO may be forwarded 
to the Office of Enrollment and Discipline for 
appropriate action under 37 CFR Part 10.

If any individual is observed in violation of any of 
the regulations, immediate compliance should be 
courteously requested. If a verbal request is not complied 
with, a note should be made of the individual’s 
name and User’s Pass number, if possible (the User’s 
Pass is required to be prominently displayed) and a 
report of the incident should be made to the Supervisory 
Patent Examiner, Supervisory Applications 
Examiner, or other appropriate supervisor who will 
take further action.

In addition, if any individual in TC Facilities
appears to be a stranger and is not wearing a User’s 
Pass, some identification, such as a Building or User’s 
Pass, should be requested. If the individual refuses, 
notify a supervisor. Consequently, all Office employees 
are expected to carry their Building Pass with 
them at all times.

Supervisors, when aware of violations of the posted 
regulations, should prepare a memorandum detailing 






the facts of the incident and forward this memorandum 
to the Deputy Commissioner for Patent Operations 
via their TC Director. Supervisory Patent 
Examiners and TC Directors are authorized to 
demand surrender of User Passes on-the-spot. If the 
Supervisory Patent Examiner exercises this function, 
the TC Director should be immediately notified, followed 
up by a memorandum as previously set forth.

511Postal Service Interruptions and 
Emergencies [R-3]

35 U.S.C. 21. Filing date and day for taking action.

(a)The Director may by rule prescribe that any paper or fee 
required to be filed in the Patent and Trademark Office will be 
considered filed in the Office on the date on which it was deposited 
with the United States Postal Service or would have been 
deposited with the United States Postal Service but for postal service 
interruptions or emergencies designated by the Director.





37 CFR 1.10. Filing of correspondence by “Express 
Mail.”



(g)Any person who mails correspondence addressed as set 
out in § 1.1 (a) to the Office with sufficient postage utilizing the 
“Express Mail Post Office to Addressee” service of the USPS, but 
has the correspondence returned by the USPS due to an interruption 
or emergency in “Express Mail” service, may petition the 
Director to consider such correspondence as filed on a particular 
date in the Office, provided that:

(1)The petition is filed promptly after the person 
becomes aware of the return of the correspondence;

(2)The number of the “Express Mail” mailing label was 
placed on the paper(s) or fee(s) that constitute the correspondence 
prior to the original mailing by “Express Mail”;

(3)The petition includes the original correspondence or a 
copy of the original correspondence showing the number of the 
“Express Mail” mailing label thereon and a copy of the “Express 
Mail” mailing label showing the “date-in”; and

(4)The petition includes a statement which establishes, to 
the satisfaction of the Director, the original deposit of the correspondence 
and that the correspondence or 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 “Express Mail” service.

(h)Any person who attempts to mail correspondence 
addressed asset out in § 1.1 (a) to the Office with sufficient postage 
utilizing the “Express Mail 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 “Express 
Mail” service, may petition the Director to consider such correspondence 
as filed on a particular date in the Office, provided that:

(1)The petition is filed promptly after the person 
becomes aware of the refusal of the correspondence;

(2)The number of the “Express Mail” mailing label was 
placed on the paper(s) or fee(s) that constitute the correspondence 
prior to the attempted mailing by “Express Mail”;

(3)The petition includes the original correspondence or a 
copy of the original correspondence showing the number of the 
“Express Mail” mailing label thereon; and

(4)The petition includes 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 “Express Mail” service.

(i)Any person attempting to file correspondence 
under this section that was unable to be deposited with the USPS 
due to an interruption or emergency in “Express Mail” 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, provided that:

(1)The petition is filed in a manner designated by the 
Director promptly after the person becomes aware of the designated 
interruption or emergency in “Express Mail” service;

(2)The petition includes the original correspondence or a 
copy of the original correspondence; and

(3)The petition includes 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 “Express Mail” 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.



In the event of a postal interruption or emergency, 
an announcement will be placed on the USPTO web 
site at www.uspto.gov and a notice will be published 
in the Official Gazette, providing instructions about 
the filing of patent applications, and other papers 
related to patent applications and patents.

37 CFR 1.10(i) provides a procedure under 
which applicant may petition the Director to have 
correspondence (papers and fees) which was unable to 
be deposited with the United States Postal Service 
(USPS) because of an interruption or emergency in 
“Express Mail” service which is so designated by 
the 
Director considered as having been filed on a par







ticular date in the Office. Authority for such a practice 
is found in 35 U.S.C. 21(a), as amended by 
Public 
Law 
97-247. In addition, the Director has designated 
certain events as a postal service interruption 
or emergency by rule (37 CFR 1.10(g) and (h)). 
37 
CFR 1.10(g) provides a procedure under which 
applicant may petition the Director to have correspondence 
that was returned by the USPS due to an interruption 
or emergency in “Express Mail” service 
considered as filed on a particular date in the Office. 
37 CFR 1.10(h) provides a procedure under which 
applicant may petition the Director to have correspondence 
that was refused by an employee of the USPS 
due to an interruption or emergency in “Express Mail”
service considered as filed on a particular date in the 
Office. For more information on filing a petition 
under 37 CFR 1.10(g), (h), or (i), see MPEP § 513.

Applicants are cautioned that the provisions of 
35 
U.S.C. 21(a) and 37 CFR 1.10(g) to (i) only 
apply to postal interruptions and emergencies. The 
provisions of 35 U.S.C. 21(a) and 37 CFR 1.10(g) 
to (i) do not provide for granting of a filing date to 
correspondence as of the date on which it would have 
been filed but for other exigencies, such as the 
unavailability of a computer or word processing 
equipment, or the inaccessibility of an office or building 
other than a USPS facility. 35 U.S.C. 21(a) 
requires, in part, that “any paper or fee required to be 
filed in the Patent and Trademark Office…would 
have been deposited with the United States Postal Service 
but for postal service interruptions or emergencies 
designated by the Director.” The statute requires 
that the correspondence was complete and ready to be 
deposited with the USPS on the filing date requested 
(e.g., complete application papers have been prepared 
and printed) and that the correspondence could not 
have been deposited with the USPS on the requested 
filing date for the sole reason that the postal service 
was not available due to the interruption or emergency 
designated by the Office.

In general, applicants should consider filing correspondence 
by facsimile when permitted. See 37 CFR 
1.6(d) and MPEP § 502.01. Applicants should also 
consider filing correspondence with a Certificate of 
Mailing or a Certificate of Transmission under 
37 
CFR 1.8 when permitted. See MPEP § 512. Even 
if the post office is closed due to an emergency, applicants 
should ordinarily be able to deposit correspondence 
in a mailbox for first class mail. New 
applications cannot be transmitted by facsimile and 
are not entitled to the benefit of a Certificate of Transmission 
under 37 CFR 1.8. A request for a continued 
prosecution application (CPA) filed under 37 CFR 
1.53(d) (available only for design applications) may 
be transmitted to the Office by facsimile (37 CFR 
1.6(d)(3)); however, it is not entitled to the benefit of 
a Certificate of Transmission (see 37 CFR 
1.8(a)(2)(i)(A)). The Office strongly recommends that 
applicants file new applications by “Express Mail” in 
accordance with 37 CFR 1.10 since such correspondence 
will be accorded the date of deposit in “Express 
Mail” with the USPS as the filing date. See 37 CFR 
1.6(a) and MPEP § 513. Applications that are not 
filed by “Express Mail” can only be accorded the date 
of receipt in the Office as the filing date (unless there 
is a postal interruption or emergency designated by 
the Office and applicants are instructed to file their 
applications in a manner other than by “Express 
Mail”). Any applicant who files an application by first 
class mail bears the risk of any delay in the delivery of 
the application to the Office, even if the delay is 
unusually significant due to some unforeseen event. 
New patent applications, computer readable format 
(CRF) biosequence listings, pre-grant publication 
submissions, and electronic information disclosure 
statements (e-IDS) may also be submitted to the 
USPTO via the Internet by using the Electronic Filing 
System (EFS). Information regarding EFS may be 
obtained via the USPTO web site at www.uspto.gov/
ebc/efs/index.html.

512Certificate of Mailing or Transmission 
[R-3]

37 CFR 1.8. Certificate of mailing or transmission.



(a)Except in the situations enumerated in paragraph (a)(2) 
of this section or as otherwise expressly excluded in this chapter, 
correspondence required to be filed in the U.S. Patent and Trademark 
Office within a set period of time will be considered as 
being timely filed if the procedure described in this section is followed. 
The actual date of receipt will be used for all other purposes.


(1)Correspondence will be considered as being timely 
filed if:

(i)The correspondence is mailed or transmitted prior 
to expiration of the set period of time by being:






(A)Addressed as set out in § 1.1(a) and deposited 
with the U.S. Postal Service with sufficient postage as first class 
mail; or

(B)Transmitted by facsimile to the Patent and 
Trademark Office in accordance with §
 
1.6(d); and

(ii)The correspondence includes a certificate for each 
piece of correspondence stating the date of deposit or transmission. 
The person signing the certificate should have reasonable 
basis to expect that the correspondence would be mailed or transmitted 
on or before the date indicated.

(2)The procedure described in paragraph (a)(1) of this 
section does not apply to, and no benefit will be given to a Certificate 
of Mailing or Transmission on, the following:

(i)Relative to Patents and Patent Applications—

(A)The filing of a national patent application specification 
and drawing or other correspondence for the purpose of 
obtaining an application filing date, including a request for a continued 
prosecution application under §
 
1.53(d);

(B)[Reserved]

(C)Papers filed in contested cases before the Board 
of Patent Appeals and Interferences, which are governed by 
§
 
41.106 (f) of this title;

(D)The filing of an international application for 
patent;

(E)The filing of correspondence in an international 
application before the U.S. Receiving Office, the U.S. International 
Searching Authority, or the U.S. International Preliminary 
Examining Authority;

(F)The filing of a copy of the international application 
and the basic national fee necessary to enter the national 
stage, as specified in § 1.495(b).

(ii)[Reserved]

(iii)Relative to Disciplinary Proceedings—

(A)Correspondence filed in connection with a disciplinary 
proceeding under part 10 of this chapter.

(B)[Reserved]

(b)In the event that correspondence is considered timely 
filed by being mailed or transmitted in accordance with paragraph 
(a) of this section, but not received in the U.S. Patent and Trademark 
Office after a reasonable amount of time has elapsed from 
the time of mailing or transmitting of the correspondence, or after 
the application is held to be abandoned, or after the proceeding is 
dismissed, terminated, or decided with prejudice, the correspondence 
will be considered timely if the party who forwarded such 
correspondence:

(1)Informs the Office of the previous mailing or transmission 
of the correspondence promptly after becoming aware 
that the Office has no evidence of receipt of the correspondence;

(2)Supplies an additional copy of the previously mailed 
or transmitted correspondence and certificate; and

(3)Includes a statement which attests on a personal 
knowledge basis or to the satisfaction of the Director to the previous 
timely mailing or transmission. If the correspondence was 
sent by facsimile transmission, a copy of the sending unit’s report 
confirming transmission may be used to support this statement.

(c)The Office may require additional evidence to determine 
if the correspondence was timely filed.

A suggested format for a Certificate of Mailing and 
a Certificate of Transmission under 37 CFR 1.8 to be 
included with the correspondence is reproduced 
below.

Certificate of Mailing 

I hereby certify that this correspondence is being deposited with 
the United States Postal Service with sufficient postage as first 
class mail in an envelope addressed to: 

Commissioner for Patents 

P.O. Box 1450

Alexandria, Virginia 22313-1450

on ___________. 

(Date) 

Typed or printed name of person signing this certificate

___________________________________________ 

Signature________________________________________ 

Certificate of Transmission 

I hereby certify that this correspondence is being facsimile transmitted 
to the U.S. Patent and Trademark Office (Fax No. 
(___)___-____) 

on____________. 

(Date) 

Typed or printed name of person signing this certificate

___________________________________________

Signature________________________________________ 



¶ 5.02 Format of Certificate of Mailing or Transmission

The following are suggested formats for either a Certificate of 
Mailing or Certificate of Transmission under 37 CFR 1.8(a). The 
certification may be included with all correspondence concerning 
this application or proceeding to establish a date of mailing or 
transmission under 37 CFR 1.8(a). Proper use of this procedure 
will result in such communication being considered as timely if 
the established date is within the required period for reply. The 
Certificate should be signed by the individual actually depositing 
or transmitting the correspondence or by an individual who, upon 
information and belief, expects the correspondence to be mailed 
or transmitted in the normal course of business by another no later 
than the date indicated.






Certificate of Mailing

I hereby certify that this correspondence is being deposited 
with the United States Postal Service with sufficient postage 
as first class mail in an envelope addressed to:

Commissioner for Patents

P.O. Box 1450

Alexandria, VA 22313-1450

on ___________. 

(Date) 

Typed or printed name of person signing this certificate:

_____________________________________________

Signature: ________________________________________

Registration Number: ______________________________

Certificate of Transmission

I hereby certify that this correspondence is being facsimile 
transmitted to the United States Patent and Trademark Office, 
Fax No. (___)_____ -_________ on _____________. (Date)

Typed or printed name of person signing this certificate:

_________________________________________

Signature: ________________________________________

Registration Number: ______________________________

Please refer to 37 CFR 1.6(d) and 1.8(a)(2) for filing limitations 
concerning facsimile transmissions and mailing, respectively. 




Under 37 CFR 1.8, a person may state on certain 
papers directed to the Office (some exceptions are 
stated in 37 CFR 1.8), the date on which the paper 
will be deposited in the United States Postal Service 
or transmitted by facsimile. If the date stated is within 
the period for reply, the reply in most instances will be 
considered to be timely. This is true even if the paper 
does not actually reach the Office until after the end of 
the period for reply. The Certificate of Mailing procedure 
does not apply to papers mailed in a foreign 
country.

The Certificate of Transmission procedure, however, 
also applies to papers transmitted to the Office 
from a foreign country provided that the correspondence 
being transmitted is not prohibited from being 
transmitted by facsimile and is not otherwise precluded 
from receiving the benefits under 37 CFR 1.8.

It should be noted, however, that the Office will 
continue its normal practice of stamping the date of 
receipt (“Office Date” Stamp) on all papers received 
through the mail or by facsimile except those filed 
under 37 CFR 1.10 (See MPEP § 513). The date 
stamped will also be the date which is entered on 
Office records and from which any subsequent periods 
are calculated. For example, 37 CFR 41.37
gives an appellant 2 months from the date of the 
appeal to file an appeal brief. For example, if the last 
day to reply to a final rejection was November 10, 
1997, and applicant deposited a Notice of Appeal with 
fee in the U.S. mail on November 10, 1997, and so 
certified, that appeal is timely even if it was not 
received in the U.S. Patent and Trademark Office 
until November 16, 1997. Since the date of receipt 
will be used to calculate the time at which the brief is 
due, the brief was due on January 16, 1998. This is 2 
months after the Mail Center date.

37 CFR 1.8(a)(2)(i)(A) specifically refers to a 
request for a continued prosecution application (CPA) 
filed under 37 CFR 1.53(d) (available only for design 
applications) as a correspondence filed for the purposes 
of obtaining an application filing date and the 
procedures and benefit set forth in 37 CFR 1.8(a)(1) 
are not applicable to a request for a CPA. The date on 
a certificate of mailing or transmission (37 CFR 
1.8(a)) of a CPA is not controlling or even relevant. A 
CPA filed by facsimile transmission will not be 
accorded a filing date as of the date on the certificate 
of transmission unless Office records indicate, or 
applicant otherwise establishes pursuant to 37 CFR 
1.6(f), receipt in the Office of the complete CPA on 
the date on the certificate of transmission and that 
date is not a Saturday, Sunday, or Federal holiday 
within the District of Columbia.

I.PROCEDURE BY APPLICANT

(A)The certification requires a signature. Specifically, 
if the certification appears on a paper that 
requires a signature, two signatures are required, one 
for the paper and one for the certification. Although 
not specifically required by 37 CFR 1.8, it is preferred 
that the certificate be signed by the applicant, 
assignee, or registered practitioner.






(B)When possible, the certification should 
appear on a portion of the paper being submitted. 
However, if there is insufficient space to make the 
certification on the same paper, the certification 
should be on a separate sheet securely attached to the 
paper.

(C)When the certification is presented on a separate 
sheet, that sheet must (1) be signed and (2) fully 
identify and be securely attached to the paper it 
accompanies. The required identification should 
include the application number and filing date of the 
application as well as the type of paper being filed, 
e.g., reply to rejection or refusal, Notice of Appeal, 
etc. An unsigned certification will not be considered 
acceptable.

Moreover, without the proper identifying data, a 
certification presented on a separate sheet will not be 
considered acceptable if there is any question or doubt 
concerning the connection between the sheet and the 
paper filed.

If the sheet should become detached from the 
paper and thereafter not associated with the appropriate 
file, evidence that this sheet was received in the 
Office can be supported by submitting a copy of a 
postcard receipt specifically identifying this sheet and 
the paper and by submitting a copy of the sheet as 
originally mailed. Attention is directed to MPEP 
§
 
503 relative to the use of postcards as receipts.

(D)In situations wherein the correspondence 
includes papers for more than one application (e.g., a 
single envelope containing separate papers responding 
to Office actions in different applications) or 
papers for various parts of the Office (e.g., a patent 
issue fee transmittal form PTOL-85B and an assignment), 
each paper must have its own certification as a 
part thereof or attached thereto.

Although Part B of Form PTOL-85, Notice of 
Allowance and Fee(s) Due, may contain a Certificate 
of Mailing thereon, a separate Certificate of Mailing 
is required for all papers included with this form, 
including replacement drawings. Checks submitted 
with the papers do not require certification.

(E)In situations wherein the correspondence 
includes several papers directed to the same area of 
the Office for the same application (for example, a 
proposed reply under 37 CFR 1.116 and a Notice of 
Appeal), each paper should have its own certification 
as a part thereof or attached thereto.

(F)For the purposes of 37 CFR 1.8(a)(1)(i)(A), 
first class mail is interpreted as including “Express 
Mail” and “Priority Mail” deposited with the U.S. 
Postal Service.

Alternatively, the correspondence may be submitted 
with a cover or transmittal letter which itemizes 
the papers and on which is placed the certificate under 
37 CFR 1.8.

II.USE OF STAMPED CERTIFICATION

Some practitioners place the certification language 
on the first page of a paper with an inked stamp. Such 
a practice is encouraged because the certification is 
not only readily visible but also forms an integral part 
of the paper.

III.OFFICE PROCEDURE

A.Mail Center of the Office of Initial Patent 
Examination

The Mail Center of the Office of Initial Patent 
Examination will continue to date stamp the actual 
date of receipt of all papers received by mail in the 
Office. No attempt will be made to retain the envelopes 
in which the papers are received or to indicate 
on the papers the postal cancellation date (postmark).

However, the benefits of 37 CFR 1.8 or 37 CFR 
1.10 apply only to documents delivered to the Office 
by the U.S. Postal Service. A number of instances 
have been uncovered where individuals are certifying 
that documents were deposited with the U.S. Postal 
Service when, in fact, the documents were hand-carried 
or delivered to the Office via commercial couriers, 
e.g., “Federal Express,” “DHL,” “Purolator,” “Air 
Borne,” “UPS.” In those instances where documents 
include a Certificate of Mailing under 37 CFR 1.8 or 
“Express Mail” mailing label (commonly used to 
comply with 37 CFR 1.10) but were delivered to the 
Office by other than the U.S. Postal Service, Mail 
Center personnel are placing a notice indicating that 
fact on the correspondence involved to alert Office 
personnel that the benefits of 37 CFR 1.8 or 37 CFR 
1.10 do not apply.

B.Processing Areas

When papers are received in a specific location of 
the Office (e.g., Pre-Grant Publication Division, 






Office of Patent Publication, Office of Petitions - see 
MPEP § 502 and § 502.01), the date of receipt in the 
Office is stamped on the papers in accordance with 
37 
CFR 1.6(a).

The date indicated on the Certificate of Mailing or 
of Transmission will be used by the Office only to 
determine if the paper was deposited in the United 
States Postal Service or transmitted by facsimile 
within the period for reply. If the paper was actually 
received in the Office within the period for reply, 
there is no need to refer to the Certificate. Note however, 
that 37 CFR 1.6(a)(3) provides that “[c]orrespondence 
transmitted by facsimile to the Patent and 
Trademark Office will be stamped with the date on 
which the complete transmission is received in the 
Patent and Trademark Office unless that date is a Saturday, 
Sunday, or Federal holiday within the District 
of Columbia, in which case the date stamped will be 
the next succeeding day which is not a Saturday, Sunday, 
or Federal holiday within the District of Columbia.”


If, however, the paper was received in the U.S. 
Patent and Trademark Office after the end of the 
period for reply, the paper should be inspected to 
determine if a Certificate of Mailing or of Transmission 
has been included. Where no such Certificate is 
found, the paper is untimely since applicant did not 
reply within the period for reply. This may result in 
abandonment of the application or other loss of rights.

In those instances where a Certificate of Mailing or 
of Transmission does appear in the paper or a cover 
letter thereto, a check should be made to determine 
whether the indicated date of deposit or transmission 
is within the period for reply. If the date indicated in 
the Certificate is after the end of the period for reply, 
the paper is untimely and no notation of the date need 
be made. Where the date indicated on the Certificate 
is within the period for reply, the paper should be considered 
to be timely filed. A notation should be made 
adjacent to the Office stamp indicating the date of 
receipt (“Office Date” Stamp) which notes the date 
stated on the Certificate. This notation should be “C 
of Mail” or “C of Fax” followed by the date. A paper 
with a certificate dated November 10, 1997, would be 
noted next to the “Office Date” Stamp “(C of Mail. 
11/10/97).” This notation should also appear on the 
“Contents” portion of the file wrapper. For Image File 
Wrapper (IFW) processing, see IFW Manual.

If the period set for taking an action in the U.S. 
Patent and Trademark Office ends on a Saturday, Sunday, 
or Federal holiday within the District of Columbia 
(37 CFR 1.7), the action will be considered to be 
timely if deposited in the United States mail or transmitted 
by facsimile and certified under 37 CFR 1.8(a)
on the next succeeding day which is not a Saturday, 
Sunday, or a Federal holiday.

It should be noted that the filing of a paper for the 
purpose of obtaining a continuation or division application 
under 37 CFR 1.53(d) (available only for 
design applications)  is excluded from the Certificate 
practice under 37 
CFR 1.8(a)(2)(i)(A) since it is 
considered to be the filing of a national patent application.


 Effective November 29, 1999, Public Law 106-113 
amended 35 U.S.C. 119(e)(3) to extend the period of 
pendency of a provisional application to the next succeeding 
business day if the day that is 12 months after 
the filing date of a provisional application falls on a 
Saturday, Sunday, or Federal holiday within the District 
of Columbia. See also 37 CFR 1.7(b). 35 U.S.C. 
119(e)(3) as amended by Public Law 106-113 applies 
to any provisional applications filed on or after June 
8, 1995 but has no effect on any patent which is the 
subject of litigation in an action commenced before 
November 29, 1999.

No benefit will be given to a Certificate of Mailing 
or Transmission relative to the filing of a national 
patent application specification and drawing or other 
correspondence for the purpose of obtaining an application 
filing date. However, note that new patent 
applications filed in accordance with 37 CFR 1.10will be stamped by the Office with the date of deposit 
as “Express Mail” with the United States Postal Service. 
For example, if a new patent application is 
deposited as “Express Mail” in accordance with 
37 
CFR 1.10 on a Saturday and the United States 
Postal Service gives it a date of deposit of Saturday, 
the Office will accord and stamp the correspondence 
with the Saturday date. 37 CFR 1.6(a)(2).

All Certificates of Mailing or Transmission filed in 
applications should be placed in the file wrappers 
directly below the papers to which they refer. For 
Image File Wrapper (IFW) processing, see IFW Manual.


Office personnel receiving a hand-delivered paper 
from other than U.S. Postal Service personnel 






should 
inspect the paper to ensure that the benefits of 
37 CFR 1.8 or “Express Mail” benefits under 37 CFR 
1.10 are not accorded in error. If the paper contains a 
certificate of mailing under 37 CFR 1.8 or “Express 
Mail” mailing label (commonly used to comply with 
37 CFR 1.10), the words “HAND DELIVERED” 
should be written adjacent to the date stamp.

Applicant should be notified in the next Office 
action when a paper containing a Certificate of Mailing 
has been denied the benefits under 37 CFR 1.8 or 
a paper containing an “Express Mail” mailing label 
(commonly used to comply with 37 CFR 1.10) is 
denied benefits under 37 CFR 1.10 by including, for 
example, form paragraph 5.04.

¶ 5.04 Benefit of Certificate of Mailing Denied

The [1] filed [2] is not entitled to the benefits of 37 CFR 1.[3]
since it was not deposited with the U. S. Postal Service for delivery 
to the U.S. Patent and Trademark Office. Therefore, the date 
of receipt in the U.S. Patent and Trademark Office has been used 
to determine the timeliness of the paper.

Examiner Note:

1.This form paragraph is to be used in those situations where 
correspondence contains a Certificate of Mailing under 37 CFR 
1.8 or requests the benefit of “Express Mail” under 37 CFR 1.10, 
but the correspondence was not actually deposited with the U. S. 
Postal Service.

2.In bracket 3, insert --8-- or --10--, as appropriate. 

Misuse of a Certificate of Mailing under 37 CFR 
1.8 or improperly claiming the benefit of 37 CFR 1.10which appears to be more than a one-time, inadvertent 
error should be brought to the attention of the Office 
of Enrollment and Discipline. 

IV.ORIGINAL MAILED PAPER NOT DELIVERED


Paragraphs (b) and (c) of 37 CFR 1.8 concern the 
situation where a paper containing a Certificate was 
timely deposited in the U.S. mail or transmitted by 
facsimile, but never received by the U.S. Patent and 
Trademark Office. In the TCs, all submissions under 
these paragraphs should be considered and the sufficiency 
thereof determined by the TC Director. The 
statement required by 37 
CFR 1.8(b)(3) is no longer 
required to be verified.

37 CFR 1.8(b) permits a party to notify the Office 
of a previous mailing, or transmitting, of correspondence 
when a reasonable amount of time has elapsed 
from the time of mailing or transmitting of the correspondence. 
In the event that correspondence may be 
considered timely filed because it was mailed or 
transmitted in accordance with 37 CFR 1.8(a), but 
was not received in the Office after a reasonable 
amount of time has elapsed, (e.g., more than one 
month from the time the correspondence was mailed), 
applicant is not required to wait until the end of the 
maximum extendable period for reply set in a prior 
Office action (for the Office to hold the application 
abandoned) before informing the Office of the previously 
submitted correspondence. Applicant may 
notify the Office of the previous mailing or transmission 
and supply a duplicate copy of the previously 
mailed or transmitted correspondence and a statement 
attesting on a personal knowledge basis or to the satisfaction 
of the Director to the previous timely mailing 
or transmission. If the person signing the statement 
did not sign the certificate of mailing, then the person 
signing the statement should explain how they have 
firsthand knowledge of the previous timely mailing or 
transmission. Such a statement should be filed 
promptly after the person becomes aware that the 
Office has not received the correspondence.

Before notifying the Office of a previously submitted 
correspondence that appears not to have been 
received by the Office, applicants are encouraged to 
check the private Patent Application Information 
Retrieval (PAIR) System to see if the correspondence 
has been entered into the application file.

513Deposit as Express Mail with U.S. 
Postal Service [R-3]

35 U.S.C. 21. Filing date and day for taking action.

(a)The Director may by rule prescribe that any paper or fee 
required to be filed in the Patent and Trademark Office will be 
considered filed in the Office on the date on which it was deposited 
with the United States Postal Service or would have been 
deposited with the United States Postal Service but for postal service 
interruptions or emergencies designated by the Director.



37 CFR 1.6. Receipt of correspondence.

(a)Date of receipt and Express Mail date of deposit. Correspondence 
received in the Patent and Trademark Office is 
stamped with the date of receipt except as follows:

(1)The Patent and Trademark Office is not open for the 
filing of correspondence on any day that is a Saturday, Sunday, 
or 
Federal holiday within the District of Columbia. Except for 
correspondence transmitted by facsimile under paragraph (a)(3) of 
this section, or filed electronically under paragraph (a)(4) of this 






section, no correspondence is received in the Office on Saturdays, 
Sundays, or Federal holidays within the District of Columbia.

(2)Correspondence filed in accordance with § 1.10 will 
be stamped with the date of deposit as “Express Mail” with the 
United States Postal Service.

(3)Correspondence transmitted by facsimile to the Patent 
and Trademark Office will be stamped with the date on which the 
complete transmission is received in the Patent and Trademark 
Office unless that date is a Saturday, Sunday, or Federal holiday 
within the District of Columbia, in which case the date stamped 
will be the next succeeding day which is not a Saturday, Sunday, 
or Federal holiday within the District of Columbia.

(4)[Reserved]



37 CFR 1.10. Filing of correspondence by “Express 
Mail”.

(a)(1)Any correspondence received by the U.S. Patent and 
Trademark Office (USPTO) that was delivered by the “Express 
Mail Post Office to Addressee” service of the United States Postal 
Service (USPS) will be considered filed with the USPTO on the 
date of deposit with the USPS.

(2)The date of deposit with USPS is shown by the “date 
in” on the “Express Mail” label or other official USPS notation. If 
the USPS deposit date cannot be determined, the correspondence 
will be accorded the USPTO receipt date as the filing date. See 
§
 
1.6(a).

(b)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 “Express Mail” 
mailing label with the “date-in” clearly marked. Persons dealing 
indirectly with the employees of the USPS (such as by deposit in 
an “Express Mail” drop box) do so at the risk of not receiving a 
copy of the “Express Mail” mailing label with the desired “date-
in” clearly marked. The paper(s) or fee(s) that constitute the correspondence 
should also include the “Express Mail” mailing label 
number thereon. See paragraphs (c), (d) and (e) of this section.

(c)Any person filing correspondence under this section that 
was received by the Office and delivered by the “Express Mail 
Post Office to Addressee” service of the USPS, who can show that 
there is a discrepancy between the filing date accorded by the 
Office to the correspondence and the date of deposit as shown by 
the “date-in” on the “Express Mail” mailing label or other official 
USPS notation, may petition the Director to accord the correspondence 
a filing date as of the “date-in” on the “Express Mail” mailing 
label or other official USPS notation, provided that:

(1)The petition is filed promptly after the person 
becomes aware that the Office has accorded, or will accord, a filing 
date other than the USPS deposit date;

(2)The number of the “Express Mail” mailing label was 
placed on the paper(s) or fee(s) that constitute the correspondence 
prior to the original mailing by “Express Mail;” and

(3)The petition includes a true copy of the “Express 
Mail” mailing label showing the “date-in,” and of any other official 
notation by the USPS relied upon to show the date of deposit.

(d)Any person filing correspondence under this section that 
was received by the Office and delivered by the “Express Mail 
Post Office to Addressee” service of the USPS, who can show that 
the “date-in” on the “Express Mail” mailing label or other official 
notation entered by the USPS was incorrectly entered or omitted 
by the USPS, may petition the Director to accord the correspondence 
a filing date as of the date the correspondence is shown to 
have been deposited with the USPS, provided that:

(1)The petition is 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;

(2)The number of the “Express Mail” mailing label was 
placed on the paper(s) or fee(s) that constitute the correspondence 
prior to the original mailing by “Express Mail”; and

(3)The petition includes a showing which establishes, to 
the satisfaction of the Director, that the requested filing date was 
the date the correspondence was deposited in the “Express Mail 
Post Office to Addressee” service prior to the last scheduled 
pickup for that day. Any showing pursuant to this paragraph must 
be corroborated by evidence from the USPS or that came into 
being after deposit and within one business day of the deposit of 
the correspondence in the “Express Mail Post Office to 
Addressee” service of the USPS.

(e)Any person mailing correspondence addressed as set out 
in § 1.1(a) to the Office with sufficient postage utilizing the 
“Express Mail Post Office to Addressee” service of the USPS but 
not received by the Office, may petition the Director to consider 
such correspondence filed in the Office on the USPS deposit date, 
provided that:

(1)The petition is filed promptly after the person 
becomes aware that the Office has no evidence of receipt of the 
correspondence;

(2)The number of the “Express Mail” mailing label was 
placed on the paper(s) or fee(s) that constitute the correspondence 
prior to the original mailing by ”Express Mail”;

(3)The petition includes a copy of the originally deposited 
paper(s) or fee(s) that constitute the correspondence showing 
the number of the “Express Mail” mailing label thereon, a copy of 
any returned postcard receipt, a copy of the “Express Mail” mailing 
label showing the “date-in,” a copy of any other official notation 
by the USPS relied upon to show the date of deposit, and, if 
the requested filing date is a date other than the “date-in” on the 
“Express Mail” mailing label or other official notation entered by 
the USPS, a showing pursuant to paragraph (d)(3) of this section 
that the requested filing date was the date the correspondence was 
deposited in the “Express Mail Post Office to Addressee” service 
prior to the last scheduled pickup for that day; and

(4)The petition includes a statement which establishes, to 
the satisfaction of the Director, the original deposit of the correspondence 
and that the copies of the correspondence, the copy 
of 
the “Express Mail” mailing label, the copy of any returned 
postcard receipt, and any official notation entered by the USPS are 
true copies of the originally mailed correspondence, original 
“Express Mail” mailing label, returned postcard receipt, and official 
notation entered by the USPS.






(f)The Office may require additional evidence to determine 
if the correspondence was deposited as “Express Mail” with the 
USPS on the date in question.



(g)Any person who mails correspondence addressed as set 
out in § 1.1 (a) to the Office with sufficient postage utilizing 
the 
“Express Mail Post Office to Addressee” service of the 
USPS,
 
but 
has the correspondence returned by the USPS due to an 
interruption or emergency in “Express Mail” service, may petition 
the Director to consider such correspondence as filed on a particular 
date in the Office, provided that:

(1)The petition is filed promptly after the person 
becomes aware of the return of the correspondence;

(2)The number of the “Express Mail” mailing label was 
placed on the paper(s) or fee(s) that constitute the correspondence 
prior to the original mailing by “Express Mail”;

(3)The petition includes the original correspondence or a 
copy of the original correspondence showing the number of the 
“Express Mail” mailing label thereon and a copy of the “Express 
Mail” mailing label showing the “date-in”; and

(4)The petition includes a statement which establishes, to 
the satisfaction of the Director, the original deposit of the correspondence 
and that the correspondence or 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 “Express Mail” service.

(h)Any person who attempts to mail correspondence 
addressed as set out in § 1.1 (a) to the Office with sufficient postage 
utilizing the “Express Mail 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 “Express 
Mail” service, may petition the Director to consider such correspondence 
as filed on a particular date in the Office, provided that:

(1)The petition is filed promptly after the person 
becomes aware of the refusal of the correspondence;

(2)The number of the “Express Mail” mailing label was 
placed on the paper(s) or fee(s) that constitute the correspondence 
prior to the attempted mailing by “Express Mail”;

(3)The petition includes the original correspondence or a 
copy of the original correspondence showing the number of the 
“Express Mail” mailing label thereon; and

(4)The petition includes 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 “Express Mail” service.

(i)Any person attempting to file correspondence under this 
sect ion that was unable to be deposited with the USPS due to an 
interruption or emergency in “Express Mail” 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, provided that:

(1)The petition is filed in a manner designated by the 
Director promptly after the person becomes aware of the designated 
interruption or emergency in “Express Mail” service;

(2)The petition includes the original correspondence or a 
copy of the original correspondence; and

(3)The petition includes 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 “Express Mail” 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.

The statutory authority for the granting of a filing 
date based on the date of deposit for correspondence 
sent by “Express Mail” 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 “Express Mail” (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 “Express Mail 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.

I.EFFECTIVE DATE, WEEKENDS & HOLIDAYS


Effective December 2, 1996, 37 CFR 1.6(a)(2) provides 
that correspondence deposited as “Express 
Mail” 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 “Express Mail” 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-in” on the “Express 
Mail” mailing label or other official USPS notation. 
This holds true for any day that the correspondence 
may be accepted as “Express Mail” 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 “Express Mail” 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-in” 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-IN, DIRECT DEPOSIT, “EXPRESS 
MAIL” BOX RECEPTACLES & LOG 
BOOKS

The procedure in 37 CFR 1.10(a) requires the use 
of the “Express Mail 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 “Express Mail Post Office to Addressee” 
service is considered filed in the Office on the “date-
in” entered by the USPS. The “date-in” on the 
“Express Mail” 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 “Express Mail” mailing 
label, and stamp the “date-in” or other official USPS 
notation as the filing date of the correspondence. 
Accordingly, if the USPS enters the deposit date as its 
“date-in,” 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 
“Express Mail” mailing label with the “date-in” 
clearly marked, and that persons dealing indirectly 
with the employees of the USPS (such as by depositing 
correspondence in an “Express Mail” drop box) 
do so at the risk of not receiving a copy of the 
“Express Mail” mailing label with the desired “date-
in” clearly marked. On petition, the failure to obtain 
an “Express Mail” receipt with the “date-in” 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 “Express Mail” correspondence in order to 
obtain a legible copy of the “Express Mail” mailing 
label, parties are not precluded from using “Express 
Mail” drop boxes, but do so at their own risk.

A paper or fee placed in an “Express Mail” 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-in”) indicated on the 
“Express Mail” mailing label by the Postal Service 
“Express Mail” acceptance clerk. 37 CFR 1.10(d) permits 
the Office to correct a USPS “date-in” error 
when the correspondence is deposited in an “Express 
Mail” drop box prior to last scheduled pick up of the 
day, that is, the time clearly marked on the “Express 
Mail” 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 “Express Mail” 
deposits in which notations are entered by the person 
who deposited the correspondence as “Express Mail” 
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 “Express Mail” may be in the form of a log book 
which contains information such as the “Express 
Mail” 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.“EXPRESS MAIL” MAILING LABEL 
NUMBER 

 Effective December 2, 1996, 37 CFR 1.10(b) no 
longer requires a certificate of mailing by “Express 
Mail” or that the “Express Mail” mailing label number 
be placed on the correspondence prior to mailing. 
Correspondence deposited with the USPS on or after 
December 2, 1996, and which is actually received by 
the Office will not be denied a filing date as of the 
“date-in” appearing on the “Express Mail” mailing 
label because the number of the “Express Mail” mailing 
label was not placed on the correspondence prior 
to the original mailing. However, 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 “Express Mail” 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, nor is such an 
inadvertent omission considered “unavoidable,” 
within the meaning of 15 U.S.C. 1062(b), 35 U.S.C. 
133, 37 CFR 1.137(a) or 37 CFR 2.66(a). 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); Nitto Chemical Industry. Co., Ltd. v. 
Comer, 39 USPQ2d 1778, 1782 (D.D.C. 1994) (Commissioner’s 
refusal to waive requirements of 37 CFR 
1.10 in order to grant priority filing date to patent 
application not arbitrary and capricious, because failure 
to comply with the requirements of 37 CFR 1.10is an “avoidable” oversight that could have been prevented 
by the exercise of ordinary care or diligence, 
and thus not an extraordinary situation under 37 CFR 
1.183.); Vincent v. Mossinghoff, 230 USPQ 621 
(D.D.C. 1985) (misunderstanding of 37 CFR 1.8 not 
unavoidable delay in responding to Office Action); 
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 “Express 
Mail.” Briefly, 37 CFR 1.10(c) applies where there is 
a discrepancy between the filing date accorded by the 
Office and the “date-in” entered by the USPS on the 
“Express Mail” mailing label or other official USPS 
notation; 37 CFR 1.10(d) applies where the “date-in” 
is incorrectly entered by the USPS;  37 CFR 1.10(e)
applies where correspondence deposited with the 
USPS as “Express Mail” 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 “Express Mail” 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 “Express Mail.” 37 CFR 
1.10(h) applies where correspondence was refused by 
an employee of the USPS due to an interruption or 
emergency in “Express Mail” 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 “Express Mail” service which has been 
so designated by the Director.

V.PETITION TO CORRECT FILING DATE 
AND DATE-IN 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-in” 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 
“Express Mail” mailing label was placed on each 
piece of correspondence prior to the original mailing; 
and 

(C)include a true copy of the “Express Mail” 
mailing label showing the “date-in” 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-
in” 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 
“Express Mail” 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 “Express Mail” 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 
“Express Mail.” Evidence from the USPS may be the 
“Express Mail” Corporate Account Mailing Statement. 
Evidence that came into being within one day 
after the deposit of the correspondence as “Express 
Mail” may be in the form of a log book which contains 
information such as the “Express Mail” 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 “Express 
Mail” is that this date has been verified by a disinterested 
USPS employee, through the insertion of a 
“date-in,” or other official USPS notation, on the 
“Express Mail” 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 “Express 
Mail.” 

 A petition alleging that the USPS erred in entering 
the “date-in” 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 “Express Mail” 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 “Express Mail” (e.g., 
an affidavit or declaration prepared more than one 
business day after the correspondence was deposited 
with the USPS as “Express Mail”).

On the other hand, a notation in a log book, entered 
after deposit by the person who deposited the correspondence 
as “Express Mail” 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 
“Express Mail” 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 “Express Mail” 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 
“Express Mail” 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 “Express 
Mail” mailing label thereon, a copy of any returned 
postcard receipt, a copy of the “Express Mail” mailing 
label showing the “date-in” or other official notation 
entered by the USPS; and 

(D)include a statement, signed by the person who 
deposited the documents as “Express Mail” with the 
USPS, setting forth the date and time of deposit, and 
declaring that the copies of the correspondence, 
“Express Mail” 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 “Express Mail” 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 “Express Mail” that is actually received by 
the Office will not be denied a filing date as of the 
date of deposit as “Express Mail” 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-in” on the “Express 
Mail” mailing label, the petition should include a 
showing under 37 CFR 1.10(d)(3), as discussed 
above, that the correspondence was deposited as 
“Express Mail” 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 “Express Mail” with 
the USPS on the date in question.








IX.PETITION FOR CORRESPONDENCE 
RETURNED DUE TO POSTAL INTER-
RUPTION 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 
“Express Mail Post Office to Addressee” service of 
the USPS, but has the correspondence returned by the 
USPS due to an interruption or emergency in 
“Express Mail” 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 
“Express Mail” mailing label was placed on the 
paper(s) or fee(s) that constitute the correspondence 
prior to the original mailing by “Express Mail;”

(C) include the original correspondence or a copy 
of the original correspondence showing the number of 
the “Express Mail” mailing label thereon and a copy 
of the “Express Mail” mailing label showing the 
“date-in;” 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 
“Express Mail” 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 
“Express Mail” service.

This procedure does not apply where the USPS 
returned the “Express Mail” for a reason other than an 
interruption or emergency in “Express Mail” service 
such as the address was incomplete or the correspondence 
included insufficient payment for the “Express 
Mail” 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 “Express Mail 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 “Express Mail” 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 
“Express Mail” mailing label was placed on the 
paper(s) or fee(s) that constitute the correspondence 
prior to the attempted mailing by “Express Mail;”

(C)include the original correspondence or a copy 
of the original correspondence showing the number of 
the “Express Mail” 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 “Express Mail” 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 “Express Mail” service.

This procedure does not apply where the USPS 
refused the “Express Mail” for a reason other than an 
interruption or emergency in “Express Mail” service 
such as the address was incomplete or the correspondence 
included insufficient payment for the “Express 
Mail” service. In addition, this procedure does not 
apply because an “Express Mail” 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 IN-
TERRUPTION OR EMERGENCY

37 CFR 1.10(i) provides that any person attempting 
to file correspondence by “Express Mail” that was 
unable to be deposited with the USPS due to an interruption 
or emergency in “Express Mail” 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 “Express 
Mail” 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 “Express 
Mail” 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 “Express 
Mail” 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 web site at www.uspto.gov and published 
in the Official Gazette.
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