On March 24, 2006, AIPLA presented an online program entitled “What you need to know about EFS-Web”
Participants were able to type questions. Not all of the questions were answered during the program. This document is intended to answer most of the remaining questions.
Q: For electronic signatures, does the attorney need to type his/her signature personally?
A. I assume you are talking about the virgule signature (what USPTO sometimes calls an “S-signature”). The attorney should personally type his or her virgule signature.
Q: If I have adobe Acrobat Professional, and use the PTO “joboptions” file, do I still need to worry about image-based vs. text-based PDF?
A. Regardless of the particular combination of authoring tool and PDF tool you choose to use, it is prudent either to preview the submission before submitting it, or to view it in IFW after filing. That way you can check to see that everything got into the IFW system as you intended. Give particular attention to symbols, Greek letters, chemical structures, and mathematical formulas.
Be prepared to revert to an image-based PDF file if you find any problems.
Once you have gained familiarity with a particular combination of authoring tool and PDF tool, you can decide for yourself whether to skip the previewing step and whether to skip the step of checking the IFW contents. I recommend that you at least spot-check the IFW contents for every filing you do.
Q: No mention has been made about continuation/divisional/CIP applications
A. You can file continuations, divisionals, and CIP applications through EFS-Web. The preferred way to communicate the continuity data to the USPTO is by means of an EFS-Web Application Data Sheet, completed by means of Acrobat 7.0.5. See http://www.uspto.gov/ebc/portal/efs/US_ADS_Form_SB_14.pdf .
Also be sure to include the first sentence of the specification reciting the continuity data.
Q: How do you file a follow-up document via EFS for an earlier paper-filed application, which does not have a confirmation no.?
A. Every US patent application has a confirmation number. You can find the CN on any printed document that the USPTO has mailed to you (e.g. filing receipt, office action, notice of missing parts). You can also obtain the CN from Private PAIR or (for published applications) from Public PAIR.
Q: If a new application is a child of an older application not linked to my user account, what will I need to do?
A. Use EFS-Web to send the same things you would have sent in a paper filing. For example, include the bibliographic data in the opening sentence of the specification. Provide an Application Data Sheet. Preferably, use an ADS that is the EFS-Web form-fillable ADS. See http://www.uspto.gov/ebc/portal/efs/US_ADS_Form_SB_14.pdf .
Q: Must the drawings be with the patent application?
Q: Do the figures need to be included in the pdf along with the spec or can they be separate pdf files?
A. I think you are asking, is the filer required to include the drawings in the same file as the patent specification? The answer is no, you can use one PDF (containing spec, drawings, claims, abstract) or four separate PDFs, or any combination in between.
Q: how did you get your drawings and your text into the same pdf?
A. I was using OpenOffice. I simply copied the drawings from their source, and pasted them into the OpenOffice document.
Q: Should a patent secretary log in as a registered user under the attorney's certificate and then pick the box saying she/he is under the authority of the attorney?
A. Yes, that is correct.
Q: Can one have two customer numbers associated with an patent application (e.g., the customer number from outside IP counsel and the customer number from the patent owner organization)?
A. At the present time, access to a pending and nonpublished application is defined by the single customer number that is the “correspondence address” for that application. There is room in the USPTO system for only one customer number in the “correspondence address” field.
The right way to deal with this need is to set up a new customer number that is associated with all of the practitioner numbers of outside IP counsel as well as all of the practitioner numbers from the patent owner organization. Our firm has done this with several clients and it works well, providing PAIR access to the outside IP firm as well as to the patent owner.
USPTO is aware that filers are interested in associating more than one customer number with a particular application, and is considering possible ways to do this in future.
Q: Does the USPTO confirm fee amounts that you indicate?
A. If you file on paper, sending a check or a credit card form (PTO-2038), USPTO personnel independently calculate the fees due and they compare it with the amount of money paid. The same steps are carried out in the case of an EFS-Web filing. Of course the fee sheet generated by EFS-Web, which contains numeric fee codes, is helpful to USPTO personnel as they carry out these calcualtions.
Q: Is there a set time one has to complete an EFS filing before being timed-out by the PTO server?
A. Yes. At the present, the system times out after an hour of keyboard/mouse inactivity. For this reason it is prudent to save your submission from time to time, within the EFS-Web system.
Q: Can you attach two separate .PDF files with one for the patent application and one for the FIGS?
A. Yes.
Q: The Spec didn't have paragraph numbers - you don't need them?
The rules say that an application “should” have paragraph numbers but do not require them. In the demonstration filing that I performed, I did not include paragraph numbers simply because that PDF file was a convenient source for the demo filing.
Q: Under what authority of 37 CFR do we get a filing date?
A. The rules governing the grant of a filing date are identical for paper filings and for EFS-Web filings. For example, for a US utility application, there must be at least one claim. That requirement (and the other requirements for a filing date) is checked by OIPE personnel for an EFS-Web filing just as for a paper filing.
Q: What happens to a saved submission after 4 days, if there is no submission?
A. At midnight Eastern Time, it disappears.
Q: Your demo filing contained only a specification and claims and drawings and abstract. What about all of the other papers which may form part of a new utility filing?
For example:
Cover letter
Utility Patent Application Transmittal Form (PTO/SB/05)
Fee Transmittal Form (PTO/SB/17)
Credit Card Payment Form (PTO-2038)
Transmittal Form (PTO/SB/05)
Authorization to Treat a Reply As Incorporating An Extension of Time Under 37 C.F.R. § 1.136(a)(3)
An Application Data Sheet (37 C.F.R. § 1.76)
A copy of the original executed Declaration
Assignment
Assignment recordation fee
Assignment recordation cover sheet
Non-Publication Request Under 35 U.S.C. § 122(b)(2)(B)(i)
Two (2) return postcards
You are certainly permitted to submit any and all of these papers through EFS-Web. Of course each one must be provided as a PDF file or part of a multipart PDF file.
It is important to appreciate that if your reason for submitting the assignment is to get it recorded, you will not accomplish this goal through EFS-Web. You should submit it through EPAS (electronic patent assignment system).
If your reason for submitting the assignment is to make it “of record” (e.g. for purposes of establishing entitlement to act) then EFS-Web may be used. Such an assignment, however, should also be recorded through EPAS.
I recommend not submitting Form PTO-2038 (the credit card firm) through EFS-Web, for the simple reason that it would reveal your credit card number, billing address, and signature to the general public. Instead, use the payment mechanism of EFS-Web, which protects your card number and does not reveal it publicly.
I see little point in submitting PDF images of return post cards. USPTO will not mail these PDF images of post cards back to the filer. Instead, the Acknowledgment Receipt is intended to serve to provide the same legal protections as would be provided by a stamped return post card.
In my daily practice, I have ceased providing cover letters or transmittal letters in EFS-Web filings. This is, of course, a matter of personal choice. One reason to include a cover letter or transmittal might be to give an Authorization to Treat a Reply As Incorporating An Extension of Time Under 37 C.F.R. § 1.136(a)(3).
As for the Fee Transmittal Form (PTO/SB/17), keep in mind that EFS-Web automatically generates a fee sheet.
The most common way to provide the executed inventor's Oath or Declaration would be by means of an image-based PDF file. The rules, however, permit the use of a character-based file with a virgule signature (which is then converted to a PDF file).
One could include a Non-Publication Request Under 35 U.S.C. § 122(b)(2)(B)(i) as a PDF file.
Q: How do I find the crypto certificate on my drive? I have access to private pair.
A. One way is to search the entirety of your hard drive for files ending in “epf”.
If you installed USPTO Direct using the default path, the certificate is probably in c:\program files\USPTO .
Q: Can the IDS be filed with the new application (i.e. simultaneously)?
A. Yes and in fact that is the preferred time to file an IDS.
Q: Do we need to file an application data sheet when filing an application?
A. You are not required to provide an ADS as a condition of obtaining a filing date. It is, however, preferable to provide an ADS with the filing. The potential benefits of providing an ADS are twofold.
First, you can use the type of inventor's declaration (the one at http://www.uspto.gov/web/forms/sb0001A_fill.pdf ) that has an ADS.
Second, if you choose to use the special EFS-Web ADS (the one at http://www.uspto.gov/ebc/portal/efs/US_ADS_Form_SB_14.pdf ) you will find that the EFS-Web system automatically populates the bibliographic data fields of Palm. This gives you an error-free Filing Receipt.
Q: Where do you get a crypto certificate?
A. See http://www.uspto.gov/ebc/documents/certificateactionform.pdf and http://www.uspto.gov/ebc/portal/infocustomernumber.htm .
Q: is there a limit on the size of the PDF files that can be submitted?
A. Each PDF file is limited to 25 megabytes.
Up to sixty PDF files can be included in a submission.
Up to twenty PDF files can be uploaded in a single click of the “upload” button.
Q: Is there any way to claim priority and cite prior related applications when making the filing?
A. The usual way to do this would be to provide an Application Data Sheet. This can be the official EFS-Web ADS (from http://www.uspto.gov/ebc/portal/efs/US_ADS_Form_SB_14.pdf ) or it can be an ADS prepared in any other way.
Of course it is also important to provide the continuity data in the first sentence of the patent specification.
Finally, the priority claim may be made in a long-form inventor's Oath or Declaration.
Q: Does the system allow section 1.34 filers (not of record but authorized) to file documents in non-public applications?
A. The system permits anyone who (a) has a crypto certificate, and (b) knows the confirmation number, to file any paper in a non-public application. Of course the same could be done by means of a fax or paper filing.
The practitioner making such a filing is, of course, representing that he or she has authority to file. Such a representation needs to be true for an EFS-Web filing just as for a paper or fax filing.
Q: How do you prepare drawings for e-filing?
A. In our office, we have some drawings made by a pen-and-ink draftsperson. In that case we scan the drawings in a scanner at 600 dots per inch, generally in A4 format (because that format works in USPTO as well as in PCT and EPO).
We sometimes have other drawings provided from drawing tools such as OpenOffice Draw or Visio. In such a case we use CutePDF to “print” the drawings to PDF files.
Q: For a provisional application, can the required Cover Sheet be generated on line or does a separate Cover Sheet need to be filed?
The substantive content of the Cover Sheet must, of course, be provided in some fashion. Preferably you would provide that content on filing day, perhaps by means of an Application Data Sheet or a Provisional Cover Sheet. Otherwise, if you do not provide it on filing day, you will need to provide it later.
Q: Attorneys in our very large patent office have more than one person handling filings (both secretaries and paralegals) on their behalf...yet only one extra person can be on a certificate...how do we get around this?
A. In our office, we put everybody's crypto certificate on a shared network drive, and the associated passwords are posted to an intranet. Thus, anybody can use anybody's crypto certificate.
Q: Could the USPTO please post guidance on how to tweak MS Word to avoid font problems and export USPTO viable .pdf files?
A. Our approach, which has always worked just fine, is simply to download and install CutePDF (www.cutepdf.com) and use that as a print driver to generate PDF files.
Q: Is there is a way for EFS to remember the path to the crypto certificate in my computer? Instead of hunting through my computer to get it every time?
A. We wonder this too. For now, we (like you) are stuck having to mouse around through a file browser session every time it is necessary to log in.
Q: Will this allow foreign attorneys to file applications for their foreign clients directly from their offices abroad (i.e., without having to use a US attorney residing in the US)?
A. EFS-Web does change anything about what is legal or illegal as compared with a paper filing. Thus, anything that may legally be filed on paper may likewise be filed through EFS-Web. Anything that would not be legal if done on paper would likewise be illegal if filed through EFS-Web.
Q: Does the application have to be filed as a PDF?
A. Yes. Other formats such as Microsoft Word or WordPerfect are not accepted.
Q: What is the effective filing time for EFS filing?
A. The effective time is Eastern Time. A filer who is in California will need to complete the filing by 9:00 PM Pacific Time to secure a same-day filing date.
Q: Can we click on a link to do a test run of a sample application. What is that link?
See the “simulated EFS” links at http://www.uspto.gov/ebc/portal/tutorials.htm .
Q: What do you do if your file is more than 25 MB?
Break it up into several smaller files, and submit them one by one.
Q: Does PTO use the PDF of the application to prepare the final patent publication?
A. Indirectly, yes. The EFS-Web system converts the PDF file into a multiplicity of single-page TIF images. When the time comes to publish the application (at 18 months) or to issue the patent, the publishing contractor draws upon the TIF images to perform OCR (optical character recognition) and to typeset the published document.
Q: Do we attach the Declaration and Power of Attorney form with the specification, etc. documents?
A. Yes, you may. It will need to be a PDF file, or more than one PDF file as the case may be. The PDF file can portray a pen-and-ink signature or a virgule signature.
Q: If you pay by credit card, how do you correlate the charge to the particular client/matter?
A. In our office, what we find is that the credit card bill lists the serial number next to each USPTO charge. This permits us to match up the credit card charges with the client and matter.
Q: as with filing trademark applications when you electronically file, you get a filing receipt by e-mail, will we get this fiing receipt by e-mail or will we continue to get a paper filing receipt ?
A. The requirements of 37 CFR section 1.14 are such that USPTO cannot email an acknowledgment receipt or serial number or filing receipt.
The easiest way to gain access to your acknowledgment receipt is to log in to EFS-Web (using your crypto certificate) and you can see the most recent twenty ARs that were obtained using that crypto certificate.
The AR is also visible in IFW within a few minutes of filing.
The filing receipt is received by mail, just as it would be with a paper filing, except of course that you will likely receive it several weeks sooner than with a paper filing.
Q: Does that mean that you can file at 11:30pm on a due date? That is great for alleviating filing a post office and getting a stamped confirmation
A. Yes, but of course the controlling time is Eastern Time.
Q: Do you still have to submit a Petition for Extension of Time for an Amendment if you pay the extension fee online?
A. No, you need not. Merely paying the extension fee (which you can do in an automated way through EFS-Web) counts as having requested the extension.
Q: is there a screen where you can claim priority ?
A. Not really. The priority claim may be made using the official EFS-Web Application Data Sheet, completed by means of Acrobat 7.0.5. See http://www.uspto.gov/ebc/portal/efs/US_ADS_Form_SB_14.pdf . Alternatively it may be made in an ADS generated by other means. Finally, it may be made in a long-form inventor's Oath or Declaration.
Q: Can you show us the 1449 form you are submitting?
A. I used the form from http://www.uspto.gov/ebc/portal/efs/US_IDS_Form__SB_08a.pdf .
Q: What if more than 50 US patent documents, e.g.?
A. Break up the filing into more than one submission. Do them all the same day.
Q: Does the system allow for the submission of an statement concerning materiality of references in the IDS or other statements in addtion to the 1449 form
A. Yes. Present that as a PDF file and index it as “information disclosure statement”.
Q: is there any way to electronically review the specification that will be PRINTED on the application before the contractor reformats the text. Often times the PTO messes up in printing and we are faced with filing certificate of corrections.
A. EFS-Web merely gets images into IFW, just as a paper filing would. Once the images are there, they are handled in a way that is independent of whether the filing was via EFS-Web or on paper. So nothing about EFS-Web will make any difference in the mistakes, if any, made by USPTO in printing the patent or publication.
Q: can you store in your computer what you filed?
A. Yes. The easiest and best way to do it is to download the submission from IFW.
Q: Can you file follow up papers (IDS, office action response, etc.) if you filed a patent application with ABX or on paper?
A. Yes.
Q: When filing IDS', Responses etc., do you need a Transmittal Letter?
A. This is a matter of personal preference. In my firm we have discontinued the use of transmittal letters. Indeed when we enter the US national stage from a PCT we do not even use Form 1390.
Q. If an extension is needed, you submit that just like you would if it was paper?
A. You may. It is a matter of personal preference. In my firm we have stopped filing papers specifically reciting the extension. We simply pay the extension fee.
Q: What is auto-uploaded from the IDS form?
A. If you file an IDS from http://www.uspto.gov/ebc/portal/efs/US_IDS_Form__SB_08a.pdf , the US patent and US publication information is auto-loaded into a system that makes it easy for the Examiner to click and view each US patent and publication.
Q: How are foreign and literature references uploaded.
A. They are uploaded as PDF files. They are indexed as “foreign reference” or “non-patent literature”.
Q: For an IDS - Is there a cover pleading required, such as to include a certification, or other text?
A. It depends. If you are using the official EFS-Web IDS (from http://www.uspto.gov/ebc/portal/efs/US_IDS_Form__SB_08a.pdf ) then there is a way to do the certification right there in the PDF fillable form.
If you do an IDS on a form of your own choosing, then you will probably choose to provide a certification on a separate sheet. Keep in mind you can use a virgule signature for the certification.
Q: Can you submit a searchable PDF?
A. Yes, you can. But USPTO discards all of the character (searchable) data in the PDF. USPTO converts each searchable PDF into a pure image file.
Q: Will drawings filed in color PDF, be retained in color in the IFW?
A. No. They are converted to gray scale.
Q: Our site did not receive the Appendix that Carl keeps referring to. Is it available online?
A. Yes. You can get it from www.oppedahl.com/efsweb/online .
Q: Is there a printable list of the Document ID names available for me to print out?
Yes, it is in the Appendix at pages 20-39.
Edward Hoffman - 12:34 pm
Q: Can a non-patent attorney get a digital certificate?
A. Yes. USPTO crypto certificates are available to (a) registered patent attorneys, (b) registered patent agents, and (c) individual inventors.
In addition, an assistant or secretary or paralegal can use, with permission, the crypto certificate of a registered attorney or agent.
Q: Can we attach Sequence Listings?
A. No. Use ePave to e-file Sequence Listings.
Q: is there any way to do a post-allowance review before the application is published
A. USPTO beta-tested such a program a few years ago. There is not presently any system for doing this. EFS-Web is of no help with this need.
Q: Have you seen a faster turn around time for examining using EFS?
A. No, not for time to first Office Action. But for submissions after first office action, I believe the second office action often comes much faster if the response is e-filed rather than paper-filed.
I also find that submissions after final office action seem to get consider faster if they are e-filed.
Q: does a digital certificate on a shared drive need to have read and write access by all users?
A. Yes. The reason is that if USPTO updates the certificate (which could happen at any time, without warning, to whoever happens to be using it when USPTO decides to update it) the update needs to be able to finish.
Q: Can two people simultaneously use the same digital certificate to file two applications at the same time?
A. Our experience is that it is indeed possible. As far as we can tell, nothing in the EFS-Web system detects duplicate logins.
Q: Will paper filing receipts still be sent out?
A. Yes.
Q. How about foreign filing licenses, by post?
A. Yes.
Q: Can you PDF an entire paper filing and submit it via e-file with proper indexing? One PDF for the entire filing!
A. Yes you can, so long as the file does not exceed the 25 megabyte size limit.
Q: Does it matter whether the pdf file is for letter size images or A4 size images?
A. Either will work fine. In our office we try to do A4 for any document that may later get used for PCT or EPO filings.
Q: If your information disclosure statement contains more than 60 references (i.e. 60 pdf files), how should you file it?
A. In two submissions, done the same day. One fee will cover both.
Q: what resolution works best for pdf format while using scanning?
A. Our habit is to use 300 dots per inch.
Q: Re document categories, why if your reply to office action does not include amendments? Is there an index option for argument only?
A. Yes. It is called response to non-final office action, or response after final.
Q: Is the USPTO likely to give a discount for electronic filing like WIPO?
A. USPTO already does. The filing fee for a small entity is cut in half for e-filing.
Q: Are you able to obtain a receipt showing the individual charges made to the Deposit Account?
A. Yes, the fee sheet that EFS-Web generates automatically will detail the charges. You can download it from IFW when the filing is done.
Q: To allow certification of an IDS, will our separate transmittal sheet be necessary or will the fee calculation portion of EFS Web accommodate this?
A. If you use the http://www.uspto.gov/ebc/portal/efs/US_IDS_Form__SB_08a.pdf form, it contains a certification if needed.
Q: Do the drawings need to meet the margin requirements for paper filed drawings? How about the other drafting requirements for drawings?
A. Yes, they need to meet those requirements.
Q: why should an e-filer pay on-line through EFS-Web instead of directing the PTO to charge the deposit account within a transmittal letter that is part of the submission?
A. One reason is so that you can get bonus miles on your credit card.
Another reason is that if there were a deficiency in the deposit account balance, and if you use a means other than the EFS-Web mechanism to pay, you risk finding out later that you did not have enough money in the account. The EFS-Web mechanism confirms the sufficiency of the balance in real time.
Q: If you accidentally click on the wrong pdf file and you submit it, can that be unfiled?
A. No, not after you have clicked the “submit” button.
This is why it is prudent to preview the PDF files prior to clicking the submit button.
Q: Is there a functional equivalent for a Cert. of Transmission/Mailing as in filing a response to Office Action? or has this essentially been become less important b/c of the reduced time delay b/w filing and receiving the receipt.
A. You may, if you wish, include a Certificate of Transmission under Rule 8. We have discontinued this. We simply rely upon the Ack Receipt and the later viewing in IFW.
Q: For scanned PDFs, is there a restriction on resolution. For example, I prefer to scan at 600dpi for clarity, but this can make the file size quite large.
A. There is no limit to the resolution, so far as EFS-Web is concerned. But of course you must keep each PDF file to no more than 25 megabytes in size. And our experience suggests that USPTO discards the resolution beyond 600 dots per inch.
Q: What is the procedure if the pdf file somehow does become corrupted before reaching the IFW, especially if the problem is not discovered the same day?
A. First, you have no one but yourself to blame if you do not preview the files before clicking “submit”. This simple preview will tell you if a file has gotten corrupted on its way to the USPTO.
Second, you have no one but yourself to blame if you do not check the files a few minutes later in IFW.
Q: Would you file a petition to withdraw from issue through EFS-Web?
A. You can but I would use the procedure set forth on the USPTO web site, hand-delivering the paper and placing as many followup calls as are needed to receive confirmation that USPTO has withdrawn the issuance.
Q: How do we attach forms signed by clients such as decs and non-pubs?
A. One choice is to create them as text files (e.g. in Notepad) and let the client sign with a virgule signature.
Another choice is to create them as word processor files (e.g. OpenOffice, WordPerfect, Microsoft Word) and let the client sign them with a virgule signature.
Yet another is to have the client sign with pen and ink and fax it or scan it.
Q: I didn't see a place to enter the applicant's (assignee) name during the demo. Is there, or would that go in an ADS?
A. Yes, that goes into the ADS.
Q: Is there a way to save and preview your fees before submitting a filing electronically?
A. Yes.
Q: can multiple people logged onto the EFS system using the same digital certificate filing applications at the same time
A. Our experience is that this is possible. We do it all the time.
Q: Why is it recommended NOT to file a Notice of Appeal via EFS web?
A. You lose a few days of time to prepare the appeal brief.
Q: If we file a seq list through E-Pave and include the EFS serial number will the USPTO consider the filing of the sequence listing to be the same day as the filing of the application and does this eliminate the need to submit a diskette.
A. Yes.
Q: Can the PTO acknowledgement be sent to our docket e-mail address directly [as is done in TEAS?
A. No. 37 CFR section 1.14 forbids the USPTO from doing this.
Q: I assume that the acknowledge receipt does not include a foreign filing receipt and that you still need to wait for it in the normal course of time.
A. Yes, you are right about that.