502.03 Communications via Internet Electronic Mail (email)  [R-07.2022]

502.03 Communications via Internet Electronic Mail (email)  [R-07.2022]

The Office published a Patent Internet Usage Policy to :

• (A) establish a policy for use of the Internet by the Patent Examining Corps and other organizations within the USPTO,
• (B) address use of the Internet to conduct interview-like communications and other forms of formal and informal communications,
• (C) publish guidelines for locating, retrieving, citing, and properly documenting scientific and technical information sources on the Internet,
• (D) inform the public how the USPTO intends to use the Internet, and
• (E) establish a flexible Internet policy framework which can be modified, enhanced, and corrected as the USPTO, the public, and customers learn to use, and subsequently integrate, new and emerging Internet technology into existing business infrastructures and everyday activities to improve the patent application, examining, and granting functions.

See Internet Usage Policy, 64 FR 33056 (June 21, 1999). The Articles of the Patent Internet Usage Policy pertinent to communications via electronic mail are summarized below. See MPEP § 904.02(c) for information pertinent to Internet searching, and MPEP § 707.05(e) for information pertaining to the citation of electronic documents. See also MPEP § 713.04 for recordation of email interviews.

I. CONFIDENTIALITY OF PROPRIETARY INFORMATION (ARTICLE 4)

If security and confidentiality cannot be attained for a specific use, transaction, or activity, then that specific use, transaction, or activity shall NOT be undertaken/conducted.

All use of the Internet by Patent Organization employees, contractors, and consultants shall be conducted in a manner that ensures compliance with confidentiality requirements in statutes, including 35 U.S.C. 122, and regulations. Where a written authorization is given by the applicant for the USPTO to communicate with the applicant via Internet email, communications via Internet email may be used.

Backup, archiving, and recovery of information sent or received via the Internet is the responsibility of individual users. The OCIO does not, and will not, as a normal practice, provide backup and recovery services for information produced, retrieved, stored, or transmitted to/from the Internet.

II. COMMUNICATIONS VIA THE INTERNET AND AUTHORIZATION (ARTICLE 5)

Communications via Internet email are at the discretion of the applicant. All Internet communications between USPTO employees and applicants must be made using USPTO tools.

Without a written authorization by applicant in place, the USPTO will not respond via Internet email to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122. A paper copy of such correspondence and response will be placed in the appropriate patent application by the examiner. Except for correspondence that only sets up an interview time, all correspondence between the Office and the applicant including applicant’s representative must be placed in the appropriate patent application. If an email contains any information beyond scheduling an interview, such as an interview agenda, it must be placed in the application. The written authorization may be submitted via EFS-Web, mail, or fax. It cannot be submitted by email .

For those applications where applicant wishes to communicate with the examiner via Internet communications, e.g., email or video conferencing tools, the following is a sample authorization form which may be used by applicant:

“Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.”

A written authorization for electronic communication may not be filed through an email communication. In limited circumstances the applicant may make an oral authorization for Internet communication. See MPEP § 713.01, subsection II.

A written authorization may be withdrawn by filing a signed paper clearly identifying the original authorization. The following is a sample form which may be used by applicant to withdraw the authorization:

“The authorization given on______, to the USPTO to communicate with any practitioner of record or acting in a representative capacity in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application via video conferencing, instant messaging, or electronic mail is hereby withdrawn.”

To facilitate processing of the internet communication authorization or withdraw of authorization, the Office strongly encourages use of Form PTO/SB/439, available at www.uspto.gov/patent/patents-forms. The form may be filed via EFS-Web using the document description Internet Communications Authorized or Internet Communications Authorization Withdrawn to facilitate processing. The internet authorization must be submitted on a separate paper to be entitled to acceptance in accordance with 37 CFR 1.4(c). The separate paper will facilitate processing and avoid confusion.

A reply to an Office action or a paper requiring a signature may NOT be communicated by applicant to the USPTO via Internet email even if written authorization is on record. In order to ensure security and authorization for replies to Office actions and papers that require a signature, such replies and papers must be filed electronically using the USPTO patent electronic filing system (see MPEP § 502.05) or in paper. Where a written authorization is given by the applicant, communications via Internet email, other than replies to Office Actions under 35 U.S.C. 132 or papers that require a signature, may be used. In such case, a printed copy of the Internet email communications MUST be entered into One Patent Service Gateway (via Patent Data Portal) and entered in the patent application file (Doc Code is EMAIL). If a reply to an Office action is improperly submitted by applicant via Internet email, the email submission will not be accepted as an adequate reply to avoid abandonment under 35 U.S.C. 133 and 37 CFR 1.135. A copy of the email submission will be placed in the appropriate patent application file with an indication that the reply is NOT ENTERED.

USPTO employees are NOT permitted to initiate communications with applicants via Internet email unless there is a written authorization of record in the patent application by the applicant.

If applicant has authorized Internet communications, USPTO employees may respond to Internet email and initiate communications with applicants via Internet email.

All reissue applications are open to public inspection under 37 CFR 1.11(a) and all papers relating to a reexamination proceeding which have been entered of record in the patent or reexamination file are open to public inspection under 37 CFR 1.11(d). USPTO employees are NOT permitted to initiate communications with applicant in a reissue application or a patentee of a reexamination proceeding via Internet email unless written authorization is given by the applicant or patentee.

III. AUTHENTICATION OF SENDER BY A PATENT ORGANIZATION RECIPIENT (ARTICLE 6)

The misrepresentation of a sender’s identity (i.e., spoofing) is a known risk when using electronic communications. Therefore, Patent Organization users have an obligation to be aware of this risk and conduct their Internet activities in compliance with established procedures.

Email must be initiated by a registered practitioner, or an applicant in a pro se application, and sufficient information must be provided to show representative capacity in compliance with 37 CFR 1.34. Examples of such information include the attorney registration number, attorney docket number, and patent application number.

Similar to the policy set forth in MPEP 100 for handling telephone calls, when responding to an email, no information should be disclosed until the identity of the requester can be adequately verified. Examiners should verify the identity of the person by checking Patent Data Portal or the application file, such as checking the email address previously provided in Patent Data Portal or the application.

IV. USE OF ELECTRONIC MAIL SERVICES (ARTICLE 7)

Once email correspondence has been received from the applicant, as set forth in Patent Internet Usage Policy Article 4, such correspondence must be responded to appropriately. The Patent Examiner may respond to an applicant’s email correspondence by telephone, fax, or other appropriate means.

V. INTERVIEWS (ARTICLE 8)

Email and instant messaging shall NOT be used to conduct an exchange of communications similar to those exchanged during telephone or personal interviews unless a written authorization has been given under Patent Internet Usage Policy Article 5 to use Internet email. In such cases, a paper copy of the Internet email or instant messaging contents MUST be made and placed in the patent application file, as required by the Federal Records Act, in the same manner as an Examiner Interview Summary Form is entered.

USPTO video conferencing tools may be used to conduct examiner interviews in both published and unpublished applications under the Patent Internet Usage Policy. Authorization by the practitioner is required and must be obtained prior to sending a meeting invite using an official USPTO communication link or tools. Authorization is required to confirm that the practitioner is able to conduct a video conferencing interview and to confirm the email address to which the invitation must be sent. The practitioner’s participation in the interview is considered consent to the use of the video conferencing tool for the interview.

All Internet communications between USPTO employees and applicants must be made using USPTO tools. Video conferencing communications must be hosted by USPTO personnel. All interviews done by video conference must originate from USPTO links provided by the examiner. Links provided by the applicant from non-USPTO video conferencing tools are not acceptable to use for an interview. No personal phones, email, PDAs, etc. may be used by USPTO employees for Official communications.

VI. POLICY GUIDANCE AND CLARIFICATIONS (ARTICLE 13)

Within the Patent Organization, any questions regarding Internet usage policy should be directed to the user’s immediate supervisor. Non-USPTO personnel should direct their questions to the Office of the Deputy Commissioner for Patent Examination Policy.