Patent It Yourself - PDF Archive

ChAPtER 13 | GETTING THE PTO TO DELIVER | 387
In the last two cases—fax and mail—don’t forget to keep
an identical copy of your amendment in your file. The
PTO won’t return any paper you send them, although they
will make a copy of any paper or record for the per-sheet
photocopy charge in the Fee Schedule. Again, I recommend
using a word processor or typing the amendment on easily
erasable paper (ERP) on which you can readily make
corrections. If you use ERP, make a plain-paper photocopy
and file this because the PTO does not allow ERP to be
filed. If you mail it, don’t forget the postcard. The signatures
of all inventors must be on the copy you send to the PTO.
If you file the amendment by EFS-Web, the online forms
will provide a transmittal for the amendment. However
if you file the amendment on paper (by fax or by mail) no
transmittal letter is needed. If your amendment increases
the number of claims above what you originally paid for
when you filed the application, you have to pay for the extra
claims. It’s helpful (but not necessary) to attach a completed
form PTO/SB/06 to calculate the extra fee.
Documents With Copies of
Signatures Now Okay
The PTO now accepts documents which contain a copy
of any required signature, provided you retain a copy of
the document with an original signature, in case it’s ever
needed. (Original signatures are required only on (a) documents
involving the registration of an attorney or agent
and (b) certified copies.)
Certificate of Mailing
I hereby certify that this correspondence, and
attachments, if any, will be deposited with the United
States Postal Service by First Class Mail, postage
prepaid, in an envelope addressed to “Box Non-Fee
Amendments, Commissioner for Patents, P.O. Box 1450,
Alexandria, VA 22313-1450” on the date below.
Date:
Inventor’s Signature:
While all inventors must sign the amendment, only
one inventor need sign this certification. If you include
this certificate, you can fax or mail your amendment
even at 23:59 on the last day of your response period—it
doesn’t have to go out on the day it’s mailed. Even if you’re
mailing the amendment two months ahead of time you
should use the Certificate anyway, since if the amendment
is lost in the mail, causing your application technically
to go abandoned, you can get it revived easily by filing a
declaration stating the full facts and enclosing a photocopy
of the amendment with the Certificate of Mailing—see PTO
Rule 8(b). If you use mail, don’t forget to attach a postcard
to your amendment reading as in Fig. 13F. If you fax the
amendment, and your fax machine is programmed to
transmit your fax number, the PTO will send an immediate
faxback receipt.
If you intend to mail or fax your amendment, after your
signature add a “Certificate of Facsimile Transmission”
(preferable) or a “Certificate of Mailing” as required by Rule
8 (don’t use Express Mail as it isn’t necessary and the cost is
high) as follows.
Amendment A (5 pages) plus amended and red-marked
copies of sheet 2/4 of drawings in Application of John
A. Novel, Ser. Nr. 999,999, filed 20xx Jan. 9, received
today:
Certificate of Facsimile Transmission
I certify that on the date below I will fax this
communication, and attachments if any, to Group
of the Patent and Trademark Office at the
following number: 571-273-8300.
Date:
Inventor’s Signature:
Fig. 13F—Back of Receipt Postcard for Amendment