USPTO News: Jump on the e-Filing Bandwagon

    By Christopher P. Singer --

Given the growing popularity of the USPTO's web-based electronic filing system (EFS-Web) and the Office's continuing efforts to improve the system, there has never been a better time to start filing documents with the Patent Office electronically.  Many of the initial glitches have been resolved, and the electronic business center (EBC) has done a good job providing support for filers having questions or difficulties.  To help clarify a number of issues regarding e-filing, the EBC provides the "legal framework," which "provides guidance on the background statutes, regulations and policies that support the Electronic Filing System."

EFS-Web Tip:  Because the PTO can receive documents through the EFS-Web on weekends and Federal holidays, applicants can establish a filing date on such days.  While a number of provisions allow for applicants to file submissions (including the 1-year bar date for provisional applications) with due dates that fall on Saturday, Sunday, or a Federal holiday on the next business day, the ability to establish a filing date on a non-business day provides some potential benefit (or pitfalls).  As one example, if an inventor attends a weekend conference and gives a talk describing his or her invention in a way that jeopardizes absolute novelty, a patent application can be filed having that same date.  Further, the legal framework refers to Article 4(c)(3) of the Paris Convention which states:

If the last day of the period is an official holiday, or a day when the Office is not open for the filing of applications in the country where protection is claimed, the period shall be extended until the first following working day.

The PTO cautions of potential:

adverse consequences regarding the determination in other countries of priority periods under Article 4(C)(3) of the Paris Convention when filing international applications with the United States Receiving Office (RO/US).  Specifically, the ability to file applications electronically on weekends and holidays in the USPTO may result in loss of priority rights in foreign jurisdictions designated in international applications filed with the RO/US, if applicants elect, in accordance with 35 USC 21(b) or 119(e)(3), to file an international application on the next succeeding business day in the event that the twelve month Paris Convention priority period set out in Article 4(C)(1) falls on a Saturday, Sunday, or Federal Holiday.  In such circumstances, other Patent Offices may deny the priority claim on the basis that the international application was not timely filed if their national law strictly incorporates the provision of Paris Convention Article 4(c)(3) and considers the USPTO to be open for the filing of applications on weekends and holidays.

Thus, you may be stuck working on the weekend to file an application, to avoid relying on the "next business day" language, and ensure a restful night's sleep.

Comments

[Sean]

Another possible pitfall, with the wording of the US statutes/regulations anyway, is that in some cases they read that the filing is timely if filed "on the next business day." Therefore, a filing is NOT timely (by a strict reading) if it is due on a Saturday but is filed Sunday (which is before the next business day, but not "on" the next business day).

This is a recollection from a patent bar review course, and I haven't checked the specific wording, but nevertheless the point is to be cautious and follow the language of the statute/reg.

[Chris Singer]

Sean,
Thanks for the additional cautionary note. While I suppose the USPTO could try and make the argument you note in your comment, I imagine that a simple phone call to the Examiner or PTO would convince them to accept such a submission as timely. In the sea of potential issues that arise during prosecution, I don't imagine this would be one that an Examiner or the Office would want to push, or take to a review board or court.