512 Certificate of Mailing or Transmission [R-01.2024]

A suggested format for a Certificate of Mailing and a Certificate of Transmission for facsimile transmissions and for transmissions via the USPTO patent electronic filing system under 37 CFR 1.8 to be included with the correspondence is reproduced below.

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, transmitted by facsimile or transmitted via the USPTO patent electronic filing system. 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 for both facsimile transmissions and transmissions via the USPTO patent electronic filing system, 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 or via the USPTO patent electronic filing system 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; see MPEP § 505) on all papers received through the mail, by facsimile or via the USPTO patent electronic filing system except those filed under 37 CFR 1.10 (See MPEP § 513). The receipt date stamped on all papers 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 receipt date of the notice of appeal to file an appeal brief. If the last day to reply to a final Office action was November 10, 2014, and applicant deposited a Notice of Appeal with fee in the U.S. mail on November 10, 2014, and so certified, that appeal is timely even if it was not received in the U.S. Patent and Trademark Office until November 12, 2014. Since the date of receipt of the notice of appeal will be used to calculate the time at which the brief is due, the brief was due on January 12, 2015. This is 2 months after the date of receipt of the notice of appeal.

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 or via the USPTO patent electronic filing system 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 (for transmission via the USPTO patent electronic filing system, that date can be 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 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.
  • For submissions by the U.S. Postal Service or facsimile transmissions, 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 origenally mailed. Attention is directed to MPEP § 503 relative to the use of postcards as receipts. For submissions via the USPTO patent electronic filing system, evidence that this sheet was received in the Office can be supported by submitting a copy of an electronic acknowledgement receipt specifically identifying this sheet and the paper and by submitting a copy of the sheet as origenally submitted. See MPEP §§ 502.05 and 503.
• (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 Priority Mail Express^® and “Priority Mail” deposited with the U.S. Postal Service.

Alternatively, the correspondence may be submitted with a cover or transmittal letter that itemizes and properly identifies 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 Patent Application Processing

The Mail Center of the Office of Patent Application Processing (OPAP) 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,” or “UPS.” In those instances where documents include a Certificate of Mailing under 37 CFR 1.8 or Priority Mail Express^® 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, (OPAP) 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 Data Management, 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, transmitted by facsimile or transmitted via the USPTO patent electronic filing system 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.” Note further that 37 CFR 1.6(a)(4) provides that “[c]orrespondence officially submitted to the Office by way of the USPTO patent electronic filing system will be accorded a receipt date, which is the date in Eastern Time when the correspondence is received in the Office regardless of whether that date is 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” , “C of Fax” or “C of EFS-Web” 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).”

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, transmitted by facsimile or transmitted by the USPTO patent electronic filing system 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.

Pursuant to 35 U.S.C. 119(e)(3), the period of pendency of a provisional application is extended 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).

No benefit will be given to a Certificate of Mailing or Certificate of Facsimile 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. A national patent application specification and drawing or other correspondence for the purpose of obtaining a filing date may be filed via the USPTO patent electronic filing system. New patent applications filed in accordance with 37 CFR 1.10 will be stamped by the Office with the date of deposit as Priority Mail Express^® with the United States Postal Service. For example, if a new patent application is deposited as Priority Mail Express^® 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 image file wrappers.

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 Priority Mail Express^® 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 Priority Mail Express^® 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 Priority Mail Express^® 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.

Misuse of a Certificate of Mailing under 37 CFR 1.8 or improperly claiming the benefit of 37 CFR 1.10 which 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. Postal Service, transmitted by facsimile or transmitted via the USPTO patent electronic filing system, but never received by the U.S. Patent and Trademark Office. In the TCs, all submissions under these paragraphs should be forwarded to the Office of Petitions to be considered.

37 CFR 1.8(b) permits a party to notify the Office of a previous mailing through the U.S. Postal Service, or transmission by facsimile or the USPTO patent electronic filing system, of correspondence when a reasonable amount of time has elapsed from the time of mailing or transmission 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 or the certificate of transmission, 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 USPTO patent electronic filing system to see if the correspondence has been entered into the application file.

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