MPEP Summary Chapter 500

There are proper methods for sending documents to the PTO in order to insure that the documents are received on time. An applicant may choose to send in a facsimile, hand deliver the document or use the "Express Mailing" or Certificate of Mailing procedure. Some of these methods are appropriate for any document, others may only be available as a proper means of sending certain documents. For example, facsimile's may not be used to send in documents that will be used to receive a filing date (i.e., a nonprovisional application).

Additionally, certain applications will qualify for discounted fees due to particulars about the inventor(s). These particulars will determine whether the application may qualify for small entity status.

This chapter is tested at a fairly high frequency on the patent bar exam. You can expect to answer a question or two pertaining to small entity status and proper mailing procedures.

501 Filing papers with the U.S. Patent and Trademark Office
patent related correspondence includes:
patent applications, replies to notices of informality, requests for extension of time, notices of appeal to the Board, briefs in support of an appeal to the Board, requests for oral hearing before the Board, extensions of term of patent, requests for publication of Statutory Invention Registration, requests for reexamination, statutory disclaimers, certificates of correction, petitions to the Assistant Commissioner for Patents, submission of IDS, 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 Assistant Commissioner for Patents

persons who correspond with the USPTO are encouraged not to include correspondence which will have to be directed to different areas of the Office in a single envelope:
by including multiple papers in a single envelope, the likelihood that one or more of the papers will be delayed before reaching the appropriate area is increased

patentrelated papers, other than those requiring immediate attention, may be hand delivered to the Office to the Customer Window

Appropriate Delivery Methods to PTO

502 Depositing correspondence
Rules for identifying patent related materials:
In order to correctly identify the application certain documents relate to, proper labeling procedures must be followed when submitting any documents to be added to an already existing patent file. These procedures are outlined in 37 C.F.R. 1.5.

§ 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 twoweek period, the date of receipt of the resubmission will be considered to be the date of receipt of the correspondence. The twoweek 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.

New utility applications and provisional application's can also be filed via the office's EFS (electronic filing system)

anything sent to the PTO in reference to an existing application must include the following information:
an application number (must be on the top page and conspicuous)
the name of the applicant
the title of the invention
the date of filing
a group art unit
the name of the examiner

all correspondence must list the application number in order for the PTO to match the correspondence documents with existing application documents:
if there is no application number, the paperwork will be returned
the applicant will have two weeks to find the correct application number, document it on the paperwork and send it back to PTO to qualify for the original date the document was sent in

if an applicant recently filed an application and has not yet received an application number, the applicant should not send in any correspondence relating to that application until he or she has received the application number

on the back of all drawing related materials, the applicant should list the: applicant's name
docket number
title of the invention

the PTO will now fax back a receipt of a CPA filing if the applicant submits the Office receipt form along with the CPA filing

Application Details

503 Application number and filing receipt
This section indicates that all parts of a completed application should be sent in together or it should be made obvious that they belong together (label with the application number).

§ 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(1) 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).

self addressed postcards:
the PTO will stamp it with a receipt date and an application number

what to put on the postcard:
applicant's name invention title
number of pages in specification, claim(s) and drawings
if oath or declaration included
amount of fee

incorporating by reference the items listed in a transmittal letter in the postcard receipt will not serve as prima facie evidence of a receipt of those items

506 Completeness of original application
This section touches on the requirements in order for particular application types to receive filing dates. It also provides a discussion of what happens if the application doesn 't have all the necessary information.

§ 1.53 Application number, filing date, and completion of application.
(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(0) 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 § 1.53 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.

For nonprovisional applications filed on or after December 8, 2004, search and examination fees are required in addition to the basic filing fee

Requirements for an application to receive a filing date:
Nonprovisional applications must contain:
at least one claim
a specification as prescribed by 35 U.S.C. 112 any required drawings
a filing fee and an oath/declaration
although these may be given at a later date

Provisional applications must contain:
a specification as prescribed by 35 U.S.C. 112
any required drawings
a cover letter stating it is a provisional application

Rules for filing dates:
the following is not required with the application in order to receive a filing date:
an oath or declaration the fee
an English translation
Information Disclosure Statements

an application can never be returned to an applicant after it receives a filing date, however, it can be abandoned
an error in or failure to identify inventorship does not raise a filing date issue

Completeness of continued prosecution applications (CPA):
the original, nonprovisional application that the continued prosecution application stems from must be:
complete
in the national stage

the continued (application) must be filed before the following in regards to the original application:
payment of issue fee (or petition fee)
abandonment
termination of proceedings on the original application

the contents of the continued prosecution application must include:
the identification of the prior application
the same inventors, although there may be less
a request to share the same file wrapper as prior application
a request to abandon the prior application (if applicable) as of the filing date of the request

Incomplete applications:

an applicant will usually receive a two month, extendible Notice of Missing Parts when their application is incomplete
it will become abandoned unless the Notice of Missing Parts is addressed
the PTO may treat the application as a provisional application in certain instances

a nonprovisional application filed without at least one claim is regarded as incomplete and will not be accorded a filing date

Fees

509 Payment of Fees
Yes, even this somewhat trivial point is complicated by the PTO. Pay attention to small entity status, it will almost certainly be tested. In addition, the patent bar exam usually has one question related to refunds and the fact that you pretty much aren't ever going to get one. The only exception to this is when the regular fees are paid and then the application gains small entity status. A refund may be granted if the proper petition is filed within 3 months of paying the full fee.

fees should be:
paid in advance
itemized so the PTO can determine what the fees are being paid for

the Office charges a fee for processing a fee paid by a check that has been refused

Specific rules about fees:
a nonprovisional application based on the conversion of a provisional application must include the filing fee for the nonprovisional application:
a properly paid basic filing fee for a provisional application is not applied to the filing or other fees due for a nonprovisional application resulting from the conversion of a provisional application

the fee an applicant must pay to request a continuing examination of an application is set to an amount equal to the basic filing fee the applicant must pay for a utility patent application

the following do not require an immediate fee:
protest filing
petitions to make special
access for abandoned patents
a timely response to Official Action
a timely filing of an IDS
requesting an interview
Certificate of corrections for PTO mistake
supplemental declaration/supplemental amendment a petition requesting withdrawal of abandonment decision
a response to examiner's reasons for allowance
citation of prior art under 35 U.S.C. 301

Deposit accounts:
an applicant may establish a deposit account that the PTO can deduct fees from
in the case of insufficient funds in a deposit account:
a stiff surcharge will be applied
additional extensions of time may be required
an authorization to charge the issue fee to a deposit account may be filed in an individual application only after the mailing of the notice of allowance

Fee methodology:
filing fee methodology consists of a:
basic fee
charge for independent claims in excess of three
charge for independent or dependent claims in excess of twenty
surcharge for any multiple dependent claims
surcharge for the late filing of the oath, declaration, or filing fee
the Commissioner is authorized to refund a fee at his or her discretion if:
the applicant can show that the fee was paid by mistake or in excess of the amount required by law

Small Entities Discounted Fees

509.02 Small entity status
If a patent application qualifies for small entity status, the payment of certain fees will be cut in half.

The details:
the fees reduced by 50% include:
application filing fees
extension of time, revival, and appeal fees
patent issue fees
statutory disclaimer fees
maintenance fees

some fees are not reduced, these include:
petition and processing fees
document supply fees
certificate of correction fees
request for reexamination fees
miscellaneous fees
international application fees

the owner or officer of an application may sign a statement declaring small entity status the registered attorney or agent cannot sign this form

Who qualifies for small entity status?
independent inventors:
they may not have assigned, granted, conveyed or licensed the invention
small businesses with less than 500 employees
nonprofit organizations:
universities or other institutions of higher education in any country
organizations exempt from taxation
nonprofit scientific or educational organizations

a nonsmall entity is not allowed to transfer the rights of an invention to a small entity in order to receive reduced fees (of course the PTO already thought of that one)

a small business will get discounted fees if they license to the federal government or one of its agencies
there is no discount to large corporations other than the government

if small entity status is properly established at the time of filing, the inventor is entitled to maintain small entity status until any issue fee is due

Request for refund due to small entity status:
a request for a refund based on an excess amount paid before the establishment of small entity status must be filed within three months of the date of the timely payment of the full fee must file a petition under 37 C.F.R. 1.28(a)(b)
the threemonth time period is not extendible under 37 C.F.R. 1.136

an inventor does not have to retroactively pay a large entity filing fee due to changes in small entity status after the application is filed
fees are never due retroactively if the inventor's status changes during the prosecution, future payments are just calculated under the new status

510 U.S. Patent and Trademark Office business hours
the PTO is open Monday through Friday: 8:30 a.m. to 5:00 p.m. excluding Federal holidays

individuals will need a user pass for the patent search room

511 Postal service interruptions and emergencies
in the event of a postal interruption or emergency, an announcement will be posted on the USPTO website providing instructions on the filing of patent applications and other papers related to patent applications and patents

Proof of Mailing or Faxing

512 Certificate of mailing or transmission
This section is a little tricky. The PTO will ask questions asking you to determine if the method of sending in the particular document will result in the document arriving before the deadline. You will need to know what can and cannot be sent via facsimile or a Certificate of Mailing.

Rules related to facsimiles

§ 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(1)
(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) Drawings submitted under §§ 1.81, 1.83 through 1.85, 1.152, 1.165, 1.174, 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) Correspondence to be filed in an interference proceeding which consists of a preliminary statement under § 1.621; a transcript of a deposition under § 1.676 or of interrogatories, or crossinterrogatories; or an evidentiary record and exhibits under § 1.653.
(e) Interruptions in U.S. Postal Service. If interruptions or emergencies in the United States Postal Service which have been so designated by the Director occur, the Patent and Trademark Office will consider as filed on a particular date in the Office any correspondence which is:
(1) Promptly filed after the ending of the designated interruption or emergency; and
(2) Accompanied by a statement indicating that such correspondence would have been filed on that particular date if it were not for the designated interruption or emergency in the United States Postal Service.
(1) 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.

fax correspondence will be stamped with the date the complete transmission is received to the PTO unless that is a Sat, Sun or Federal Holiday
in that case it will be stamped the next working day

What can be sent via a facsimile?
papers sent from a foreign country
a request for continued examination
a reply under 37 C.F.R. 1.111 in a nonprovisional patent application
faxing an amendment under 37 C.F.R. 1.111 to the PTO on the last day of the period for a reply set by an examiner with a proper Certificate of Transmission is acceptable CIP applications

What cannot be sent via facsimile?
correspondence requiring an original signature
drawings
requests for reexamination
applications under secrecy order
requests for cancellation
some papers involved in interference proceedings international applications
documents that need to be certified
a national patent application specification
papers that will obtain an application filing date
the filing date for national patent applications filed under 37 C.F.R. 1.53(b)

37 C.F.R. 1.53 rules:
a facsimile cannot be used for addressing rule 1.53(b)
a facsimile can however be used for addressing rule 1.53(d)
the definition of an original document is:
a piece of correspondence that is personally signed
copies are acceptable for some things, but the applicant should always save the original document
oCertificate of mailing or Certificate of transmission
A Certificate of transmission is associated with facsimiles. It serves as proof that the fax was transmitted to the PTO. This section describes the rules associated with these certificates.
§ 1.8 Certificate of mailing or transmission.
(a) Except in the cases enumerated in paragraph (a)(2) of this section, correspondence required to be filed in the 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) The filing of correspondence in an interference which an examinerinchief orders to be filed by hand or "Express Mail";
(C) The filing of agreements between parties to an interference under 35 U.S.C. 135(c);
(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 Patent and Trademark Office, and the application is held to be abandoned or 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.

Rules for a Certificate of Transmission:
an individual may state the date on which the paper will be transmitted by facsimile: if the date stated is within the period of reply, the reply will in most cases be considered timely
this is true even if the paper does not actually reach the Office until after the end of the period for reply
the filing date is based on the time sent when using a Certificate of Transmission, never when it is received (they get the earlier date)
if a Certificate of Transmission (proof that the facsimile was sent) is available, then the faxed documents will be considered as filed on that date

When to use a Certificate of Mailing?
a request for a continued examination
a reply under 37 C.F.R. 1.111 in a nonprovisional patent application

A Certificate of Mailing cannot be used for:
papers mailed from a foreign country
the filing of an international application or correspondence in reference to an international application
any of the 37 C.F.R. 1.53 rules
the filing of a national patent application, specification and drawing or other correspondence for the purposes of obtaining an application filing date, including a request for a continuing prosecution application under 1.53(d)
orders to be filed by hand or "Express Mail"
agreements between parties involved in an interference

Rules for Certificate of Mailing:
correspondence will be considered timely filed if it:
is addressed correctly and there is enough postage for first class mail status
includes a dated certificate of mailing with each piece of correspondence listed

procedures to follow for the Certificate of Mailing:
a signature is required; it is best if it is signed by the applicant, assignee or registered practitioner
if possible, it should be placed directly on the paper being submitted
it may be on a separate sheet only if securely attached:
it should include the serial number, filing date and the type of form being filed
it will not be accepted unless this is absolutely clear

when using a Certificate of mailing, the filing date is based on the date the correspondence is sent, never on the date it was received

no benefit is accorded to a Certificate of mailing date, the effective date is the actual date of receipt and not the Certificate of mailing date

"Express Mail"

513 Deposit as "Express Mail" with U.S. Postal Service
"Express Mail" is a reliable and easy way to file papers with the PTO. You may use it for sending any type of document and any type of application. The filing date for the specific document is the date on a correctly labeled "Express Mail" mailing label filed with the United States Postal Service (USPS).

§ 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 "datein" 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 "datein" 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 "datein" 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 "datein" 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 "datein" 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 "datein," 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 "datein" 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.

the "Express Mail" procedures are limited to correspondence deposited in the "Express Mail Post Office to Addressee" service of the U.S. Postal Service (U.S.P.S.) and that no similar benefit can be obtained for correspondence for International "Express Mail"

A few facts about "Express Mail"
"Express Mail" can always be used for filing papers with the PTO
a separate Certification of Mailing is not required when "Express Mail" is used effective 12/02/96, the "Express Mail" mailing label number does not need to be placed on the correspondence prior to mailing

For "Express Mail" directed to the PTO:
it must only be the "Express Mail Post Office to Addressee" service of the U.S. Postal Service (U.S.P.S.)
it must have its "datein" properly entered by the USPS
the "Express Mail" mailing label must be completed by the USPS, not the applicant

Date of correspondence:
Any correspondence that is sent via "Express Mail" will be stamped, and considered as filed on the date of deposit, regardless of the day that falls on.

the "date in" on the Express Mailing label is the filing date

How to make date corrections if using "Express Mail":
if a mistake is made with an "Express Mail" date, the applicant may petition if:
the petition is promptly filed
the number located on the "Express Mail" mailing label is placed on the paper or fee that constitutes the correspondence prior to the original mailing by "Express Mail"
a true copy of the "Express Mail" mailing label is included and shows that the "datein" or any other official notation by the U.S.P.S. was earlier than the date the PTO recorded as the filing date
a true copy of any returned postcard receipt is relied upon to show the date of deposit

"Express mail" drop boxes:
parties using "Express mail" drop boxes do so at their own risk:
the operative date is the date stamped by the U.S. Postal Service
failure to obtain an "Express mail" receipt with the "date in" clearly marked may be considered an omission that could have been avoided by exercise of due care in other words, this excuse may not count for unavoidable delay

for parties who use drop boxes:
they should protect themselves by maintaining a log where notations are entered by the person depositing correspondence as "Express Mail" within 1 business day after deposit with the USPS
this evidence could be useful to support petition under 37 C.F.R. 1.10(c)(d)(e)

Hand delivery:
handdelivery of papers:
is possible during PTO office hours
the PTO is not open for the filing of correspondence on Saturday, Sunday or Federal holidays within the District of Columbia
ask for a receipt when hand delivering papers

Internet correspondence:
internet correspondence is not OK unless the applicant gives written authority