2019-23139. Updated Legal Framework for Patent Electronic System

AGENCY:

United States Patent and Trademark Office, Department of Commerce.

ACTION:

Notice.

SUMMARY:

The United States Patent and Trademark Office (USPTO or Office) published on its website an updated legal framework for its Patent Electronic System. The updated legal framework provides guidance on the background statutes, regulations and policies that support the USPTO's Patent Electronic System. The Patent Electronic System currently comprises EFS-Web, which is the USPTO's web-based patent application and document submission system; and the Patent Application Information Retrieval (PAIR) system, which is the USPTO's web-based means for electronically viewing the status of, and documents filed in or associated with, patent applications and proceedings. The updated legal framework also discusses the two-step authentication method now in place for accessing the Patent Electronic System. The updated legal framework serves as a reference for applicants, parties in reexamination proceedings, attorneys, and agents.

DATES:

Applicability Date: October 23, 2019.

FOR FURTHER INFORMATION CONTACT:

Inquiries regarding the Patent Electronic System and other USPTO information technology (IT) systems may be directed to the Patent Electronic Business Center (Patent EBC), by telephone: [phone] (toll-free) and [phone], or by email: [e-mail].

Inquiries regarding IT policy for U.S. national patent applications may be directed to Mark Polutta, Senior Legal Advisor (telephone [phone]; email at [e-mail]), or Gena Jones, Senior Legal Advisor (telephone [phone]; email at [e-mail]), both with the Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy.

Inquiries regarding IT policy for international applications (PCT) may be directed to Tamara Graysay, Special Program Examiner (telephone [phone]; email at [e-mail]), and inquiries regarding IT policy for international design applications may be directed to Boris Milef, Senior Legal Examiner (telephone [phone]); email at [e-mail]), both with the Office of International Patent Legal Administration, Office of International Patent Cooperation.

SUPPLEMENTARY INFORMATION:

On October 23, 2019, the USPTO published on its website an updated legal framework for its Patent Electronic System. The updated legal framework is available at https://www.uspto.gov/​sites/​default/​files/​documents/​2019LegalFrameworkPES.pdf. The updated legal framework supersedes all prior versions of the legal framework and Manual of Patent Examining Procedure (MPEP) section 502.05, Ninth Edition, Rev. 08.2017 (January 2018). The following is a brief summary of the major differences introduced by the updated legal framework:

1. Section B has been revised to further clarify that third-party papers are generally prohibited from being filed via EFS-Web unless specifically authorized.

2. Section D has been revised to clarify that providing an incorrect application number and confirmation number when filing a follow-on document will result in the follow-on document being entered in the wrong application. This may result in either the unintentional abandonment of the intended application for failure to reply to an Office action (or notice) or a reduction in patent term adjustment for failure to take reasonable steps to conclude processing or examination of an application. This may result in applicant having to file a petition to revive an unintentionally abandoned application.

3. Section E has been rewritten to discuss the two-step authentication method now being used to log into EFS-Web and Private PAIR.^[1] The two-step authentication method replaced the prior use of Public Key Infrastructure (PKI) certificates to access the Patent Electronic System. PKI certificates were discontinued on July 2, 2019.

Dated: October 18, 2019.

Andrei Iancu,

Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.

Footnotes

1.  PAIR includes both Public PAIR and Private PAIR. Public PAIR provides access to all issued patents and published patent applications. Private PAIR allows registered users to access pending application information in addition to what is also available in Public PAIR. Two-step authentication is required for Private PAIR but not for Public PAIR.