Contesting inventorship via interference

From Patentbarquestions

Q) Facsimile Transmissions (10.02.49a)

49. In accordance with the MPEP and USPTO rules and procedure, correspondence transmitted to the USPTO

by facsimile is not permitted in certain situations. Which of the following facsimile transmissions to the USPTO

will be accorded a date of receipt by the USPTO?

(A) Facsimile transmission of a request for reexamination under 37 CFR 1.510 or 1.913.

(B) Facsimile transmission of drawings submitted under 37 CFR 1.81, 1.83

through 1.85, 1.152, 1.165, 1.174, or 1.437.

(C) Facsimile transmission of a response to a Notice of Incomplete Nonprovisional Application

for the purpose of obtaining an application filing date.

(D) Facsimile transmission of a correspondence to be filed in a patent application subject to a secrecy order

under 37 CFR 5.1 through 5.5 and directly related to the secrecy order content of the application.

(E) Facsimile transmission of a continued prosecution application under 37 CFR 1.53(d)

and an authorization to charge the basic filing fee to a deposit account.

49. ANSWER: Choice (E) is the correct answer. MPEP § 502.01, and 37 C.F.R. § 1.6(d)(3).

MPEP § 502.01 reads, “The date of receipt accorded to any correspondence permitted to be sent

by facsimile transmission, including a continued prosecution application (CPA) filed under 37

C.F.R. § 1.53(d), is the date the complete transmission is received by an Office facsimile

unit…An applicant filing a CPA by facsimile transmission must include an authorization to

charge the basic filing fee to a deposit account or to a credit card.” Choice (A) is incorrect

because 37 C.F.R. § 1.6(d) states, “Facsimile transmissions are not permitted and, if submitted,

will not be accorded a date of receipt in the following situations: …(5) A request for

reexamination under §1.510 or § 1.913.” Choice (B) is incorrect because 37 C.F.R. § 1.6(d) also

states, “Facsimile transmissions are not permitted and, if submitted, will not be accorded a date

of receipt in the following situations: …(4) Drawings submitted under §§ 1.81, 1.83 through

1.85, 1.152, 1.165, 1.174, 1.437, 2.51, 2.52, or 2.72.” Choice (C) is incorrect because 37 C.F.R.

§ 1.6(d) also states, “Facsimile transmissions are not permitted and, if submitted, will not be

accorded a date of receipt in the following situations: …(3) Correspondence which cannot

receive the benefit of the certificate of mailing or transmission as specified in 1.8(a)(2)(i)(A)…”

37 C.F.R. § 1.8(a)(2)(i)(A) reads, “The filing of a national patent application specification and

drawing or other correspondence for the purpose of obtaining an application filing date…”

Choice (D) is incorrect because 37 C.F.R. § 1.6(d) also states, “Facsimile transmissions are not

permitted and, if submitted, will not be accorded a date of receipt in the following situations:

…(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.”

• Facsimile transmissions not permitted and, if submitted, will NOT be accorded a date of receipt

in the following situations:

1)       Correspondence requiring a person’s signature

2)       filing of a national patent application specification and drawing or other correspondence 
         for the purpose of obtaining an application filing date, 

3)       request for a continued prosecution application under § 1.53(d); 

4)       Papers filed in contested cases before the Board of Patent Appeals and Interferences; 

5)       The filing of an international application for patent; The filing of a copy of the international 
         application and the basic national fee necessary to enter the national stage

6)       Color drawings

7)       A request for reexamination

8)       Correspondence to be filed in a patent application subject to a secrecy directly related to  
         the secrecy order content of the application

9)       In contested cases before the Board of Patent Appeals and Interferences except as the Board 
         may expressly authorize

EXCEPT that a continued prosecution application under § 1.53(d) may be transmitted to the Office by facsimile;