The United States Patent Office issued a final rule on the receipt date of patent correspondence officially submitted electronically using the Patent Office electronic filing system. The final rule became effective on December 19, 2022. The rulemaking states that the receipt date for correspondence is the date in the Eastern time zone of the United States (Eastern Time) when the Patent Office received the correspondence as opposed to the date on which the correspondence was received at the correspondence address in Alexandria, Virginia. The Patent Office indicated that this change is necessary because the Patent Office is expecting to provide servers for receiving electronic submissions in addition to the servers located at the Patent Office headquarters in Alexandria, Virginia.
The rulemaking will ensure consistency and predictability with respect to correspondence receipt dates, as the date of receipt assigned to correspondence submitted electronically will not depend on the time zone of the Patent Office servers. The rulemaking also provides other clarifying modifications for the receipt of electronic submissions, including a definition for Eastern Time.1
The Patent Office has indicated that this new definition of filing in the Eastern time zone will not have any effect on the use of a certificate of transmission based on the local time zone for patent filings. Specifically, there is no change being made to the certificate of mailing or transmission practice under 37 CFR §1.8. Applicants and representatives may still use a certificate of mailing or transmission under 37 CFR §1.8 for the filing of patent correspondence in patent applications where permitted. Note that the certificate of mailing or transmission practice under 37 CFR §1.8 does not apply to the filing of new patent applications or other patent correspondence necessary for the purpose of obtaining an application filing date.2
The new rule essentially maintains current electronic filing practice by requiring certificate of transmissions to be included to ensure the filing date of patent correspondence indicates the local time zone. As indicated above, applicants/representatives are cautioned that the certificate of mailing or transmission practice does not apply to the filing of new patent applications or other patent correspondence necessary for the purpose of obtaining an application filing date, and the actual receipt date at the U.S. Patent Office will be the date of filing for these documents.
Irah Donner is a partner in Manatt’s intellectual property practice and is the author of Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition, and Constructing and Deconstructing Patents, Second Edition, both published by Bloomberg Law.
1 The full text of the final rule in the Federal Register at Date of Receipt of Electronic Submissions of Patent Correspondence, 87 Fed. Reg. 68900 (November 17, 2022).
2 37 CFR §1.8.