PCT NEWSLETTER

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September 2018 | No. 09/2018

 

USPTO Procedure for Filing Patent Applications Electronically during a Designated Significant Unplanned Electronic Business Systems Outage

From 15 to 23 August 2018, the United States Patent and Trademark Office (USPTO) experienced a “significant unplanned electronic business system outage” which meant that PCT applicants may have been unable to file international applications with the USPTO as receiving Office (RO/US) using their electronic filing system.  As a consequence of this and in anticipation of any other future systems outages, the USPTO has issued a notice prescribing a procedure for filing patent applications by “alternative electronic means” during a designated significant unplanned electronic business system outage, including information on how to obtain reimbursement of (or avoid payment of, where it has not yet been paid) the non‑electronic filing fee portion of the transmittal fee prescribed by 37 CFR 1.445(a)(1)(ii)

The alternative filing methods concerned are those permitted by 37 CFR 1.6, such as Priority Mail Express® service1 of the U.S. Postal Service or hand delivery.  In addition, a copy of the application must be filed via EFS‑Web (or via the new “Patent Center”) within the appropriate time period.

If the RO/US issues the Notification of the International Application Number and of the International Filing Date (Form PCT/RO/105) with a Notification Concerning Payment of Prescribed Fees (Form PCT/RO/102) indicating that a fee is required, the copy of the application must be submitted as a follow-on document before the expiration of the time limit set out in Form PCT/RO/102.  Pursuant to PCT Rule 16bis.1(d), payment received by the RO/US before it sends an Invitation to Pay Prescribed Fees Together with Late Payment Fee (Form PCT/RO/133) shall be considered to have been received before the expiration of the time limit set out in Form PCT/RO/102.  The USPTO will treat a copy of the application submitted with payment of any fee deficiency before issuance of Form PCT/RO/133 as received before the expiration of the time limit set out in Form PCT/RO/102.

If the RO/US issues Form PCT/RO/105 with a Form PCT/RO/102 that does not indicate that a fee is required, the copy of the application must be submitted as a follow‑on document within one month from the date of issue of Form PCT/RO/105.

The copy of the international application filed via EFS‑Web (or via Patent Center) must be filed as a follow‑on paper in the application, and not as a new application, and must be accompanied by a statement that it is a true copy of the original application as filed by the alternative filing method during the designated significant unplanned electronic business system outage.  Form PTO/SB/448 has been developed for use in this procedure.  Note that the copy of the application should not be filed until the applicant has received Form PCT/RO105 identifying the PCT number assigned to the application.

An application filed by the alternative electronic means in such circumstances, and which meets the necessary requirements, will be considered to have been filed by the USPTO’s electronic filing system, and thus will not incur the non‑electronic filing fee portion of the transmittal fee mentioned above.  Note, however, that following the procedure outlined above does not result in any electronic filing discount in the international filing fee.

In the event of an electronic business system outage, applicants may wish to consider filing the international applications directly with the International Bureau as receiving Office, rather than with RO/US if the necessary foreign filing licenses have been obtained.

Further information concerning this procedure, including Form PTO/SB/448, can be found on the USPTO website at:

https://www.uspto.gov/patent/fees-payment-information/filing-patent-applications-electronically-during-designated

  1. Unless an application is filed using this service, the filing date of the application will be the date on which the application is received at the USPTO headquarters in Alexandria, Virginia.
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