WHAT IS A FILING RECEIPT?
Once a Patent Application has been filed, it is forwarded to the Office of Initial Patent Examination (OIPE) for initial review for completeness as well as for classification and assignment to an Art Unit for later Examination. The Initial Examination process is important, as it establishes whether the application is “complete” and whether it is entitled to a filing date.
In order to obtain a filing date, an application need contain only the Specification, Drawings (if appropriate) and at least one claim. A signed Declaration and the Filing Fee are not required for initial filing. Thus, the first job of OIPE is to establish whether the application contains sufficient elements to be entitled to a filing date.
If one of these essential elements is missing, or a portion of them is missing (e.g., pages missing from the application), a NOTICE OF INCOMPLETE APPLICATION may be sent to applicant. This is a pretty serious document that should not be treated lightly. In such a case, you may not be entitled to a filing date until all the basic elements of the application are received by the Patent Office.
If you are filing close to a “bar date” or foreign priority deadline, such a situation can be disastrous. For this reason, it is always a good idea to count the pages of your application two or three times before submitting it to insure that no pages were lost in the photocopier or otherwise forgotten. In many situations, if you have a date-stamped receipt card showing that all pages were submitted, you may be able to submit the missing pages (likely lost by the Patent Office) to correct the deficiency without losing your filing date.
Electronic Filing can eliminate a lot of the problems associated with old paper filings. Papers are less likely to get "lost" in an electronic file. However, you should carefully insure that the files you are uploading are the correct files and are complete.
If you filed the application without a signed Declaration and without the filing fee (which, as noted above, is clearly permitted) you will receive a NOTICE TO FILE MISSING PARTS (NTFMP). The NOTICE will state what fee should be paid and whether or not a signed declaration need be submitted. A time period for response (e.g., two months) is also stated on the NOTICE. Once a RESPONSE TO NOTICE TO FILE MISSING PARTS is submitted, the application is deemed “Complete” and ready for Examination.
In the Good Old Days, this is when the Official Filing Receipt would then be issued. They were always issued on blue colored paper and the issuance of an Official Filing Receipt was an indication that the application was complete, accorded a filing date, and ready for Examination. In recent years, however, the Patent Office has changed this procedure somewhat. The Filing Receipts are no longer blue, and are issued early on in the process – regardless of whether the application is complete and accorded a filing date.
In situations where a NOTICE OF INCOMPLETE APPLICATION or NOTICE TO FILE MISSING PARTS has been issued, you may receive multiple Filing Receipts, each updated as elements of the application are completed. This can get confusing. Just bear in mind that an Official Filing Receipt does not always mean the application is complete – you have to read it carefully to understand whether anything more is needed.
An UPDATED FILING RECEIPT is the only document you will receive after filing a RESPONSE TO NOTICE TO FILE MISSING PARTS. Unfortunately, because of historical precedent, it does not explicitly say that the declaration has been received. That's the government for you. They do show whether the filing fee is received, though. Why is this?
Historically, a filing receipt was NEVER SENT OUT until all parts of the application were received and the application was in form for examination. So back in the day, when you got a filing receipt, it meant the application was now complete.
Then some genius at the Patent Office decided that a filing receipt should be sent out even if the application required missing parts. So now we have the UPDATED FILING RECEIPT sent out when the missing parts are supplied. There is no government document that is sent out saying "all the missing parts are satisfied". But there should be.
If your RESPONSE to the NOTICE TO FILE MISSING PARTS was inadequate, then OIPE will send you a notice of this. But no explicit notice is sent saying "job well done!". You can check online on Private PAIR to see if the application has been sent to the group for docketing and examination, of course.
When studying the Filing Receipt, first carefully check the data on the Receipt to insure it is accurate and correct. The data printed on the Filing Receipt is taken directly from the Patent Application Location and Monitoring (PALM) system – the source of basic Patent Application data through the life of the application. If there is a typo here, it is best to fix it now rather than later. A Request for Corrected Filing Receipt can be filed explaining the error and requesting a correction. A Corrected filing Receipt may be subsequently issued, adding to your pile of Filing Receipts.
The top line of the Filing Receipt shows the basic application data – the Serial Number, filing date, attorney docket number, total number of claims, total number of drawing sheets, and total number of independent claims. In addition, this line shows the filing fee received and the initial Art Unit that the case has been assigned to. If you have not yet submitted the filing fee, this will be indicated on the sheet. The initial Art Unit is based upon initial classification of the invention. Classifiers have only brief minutes to review the application and assign it to a class and subclass (and thus an Art Unit and eventually an Examiner). Don’t be surprised if the application is later reassigned to a different unit before Examination commences.
The Filing Receipt also lists the inventor names as well as their City and State of residence. Again, check this data for errors and correct it now, rather than later. If you application claims priority from another U.S. Application (Utility or Provisional) or a Foreign Application, this data is also shown. Check this data carefully to insure there are no typographical errors – otherwise your priority claim may not be “perfected”. Note that an algorithm in the USPTO computer checks domestic priority claims Serial Numbers and Filing Dates for consistency and will note whether an error has occurred. On one occasion, the computer kept spitting out an “error” message when the Priority claim was indeed correct. A simple Request for Corrected Filing Receipt solved the problem.
The Filing Receipt also lists the Title of the Invention, projected publication date (if applicable) and whether a “Foreign Filing License” has been granted. This last item is a holdover from the Cold War, when Washington was concerned that the Russians would steal our defense secrets from U.S. Patents. Security Group reviews any cases which appear to have defense-related applications and grants (or denies) a foreign filing license based upon the sensitivity of the subject matter. It is very rare that a foreign filing license is not granted.
With regard to Patent filings overseas, a license is granted by the Patent Office for foreign filing. This appears on the filing receipt of the case, usually on the last page of the Filing Receipt. If the words IF REQUIRED, FOREIGN FILING LICENSE GRANTED appear on the filing receipt, you may foreign file at any time. Note that in many cases no date is listed, even though there is supposed to be one. However, if six months elapse from the filing data and no secrecy order is issued, then you can still file the case under 37 CFR 5.15(b) (See under the heading "NOT GRANTED" on the last page of the Filing Receipt).
If a Patent Application is possibly related to Defense or other "sensitive" areas, it may be forwarded to the Department of Defense (DoD), NASA, or the Department of Energy. If such is the case, you may find in the file wrapper (available online on PAIR) an L&R (Licensing and Review) sheet for the case. The application may be forwarded (electronically) to various agencies which have a time limit to review and sign off on the case. If a secrecy order issues in a case, then not only would we not be allowed to foreign file, but the case would be kicked up to Security Group and not allowed to be published or issue as a Patent until it was declassified. You have the right to foreign file under 37 CRF 5.15(b) if you file overseas more than 6 months from the date of the US case, unless a secrecy order is made.
You may notice a CONFIRMATION NUMBER on your filing receipt. This number is for electronic filing purposes (Electronic Filing System, or EFS). The CONFIRMATION NUMBER is a recent invention and is related to electronic filing. It is a clever idea. If you filed documents based on serial number alone, one slip of the digit and you'd be entering your data in someone else's file. The Confirmation number acts as a parity check (and I believe it is mathematically derived from the Serial Number using an algorithm). If I type in the serial number and confirmation number on the EFS system, and one of them is wrong, I get a "try again" message. So the confirmation number is for electronic filing purposes only, and it always is the same number, as it relates to the Serial Number.
If your Filing Receipt is accurate and complete, and all outstanding requirements of OIPE have been complied with, the application will be forwarded to the assigned Art Unit for assignment to an Examiner and eventual Examination. Senior Examiners in each Art Unit assign the cases based on subject matter and complexity to various Examiners in their Art Units. In many cases, they may transfer a case to another Art Unit more appropriate to the subject matter. Once assigned, the application is “docketed and ready for Examination”.
Now, here’s the bad news. As of the date of this writing (December 2003), the delay from docketing to a First Office Action on the Merits (FAOM) is at least a year or more in the mechanical groups and running 24-36 months (or more) in the Chemical and Electrical Groups.
Thus, once you have your Filing Receipt and the application has been docketed for Examination, there is nothing else to do but wait – and wait for a considerably long time.
Many inventors are discouraged by this delay. They ask me, “Should I wait for my Patent to issue before I market or promote my invention?” My answer is “No.” The success or failure of your invention is not going to depend upon the Patent, but on whether the invention has any marketable merit – in other words, whether people want to buy it. The Patent serves only to protect your idea, should it become successful and others copy it. So, there is no point is “waiting” for the Patent Office before proceeding with your invention.
Once a Patent Application has been filed, it is forwarded to the Office of Initial Patent Examination (OIPE) for initial review for completeness as well as for classification and assignment to an Art Unit for later Examination. The Initial Examination process is important, as it establishes whether the application is “complete” and whether it is entitled to a filing date.
In order to obtain a filing date, an application need contain only the Specification, Drawings (if appropriate) and at least one claim. A signed Declaration and the Filing Fee are not required for initial filing. Thus, the first job of OIPE is to establish whether the application contains sufficient elements to be entitled to a filing date.
If one of these essential elements is missing, or a portion of them is missing (e.g., pages missing from the application), a NOTICE OF INCOMPLETE APPLICATION may be sent to applicant. This is a pretty serious document that should not be treated lightly. In such a case, you may not be entitled to a filing date until all the basic elements of the application are received by the Patent Office.
If you are filing close to a “bar date” or foreign priority deadline, such a situation can be disastrous. For this reason, it is always a good idea to count the pages of your application two or three times before submitting it to insure that no pages were lost in the photocopier or otherwise forgotten. In many situations, if you have a date-stamped receipt card showing that all pages were submitted, you may be able to submit the missing pages (likely lost by the Patent Office) to correct the deficiency without losing your filing date.
Electronic Filing can eliminate a lot of the problems associated with old paper filings. Papers are less likely to get "lost" in an electronic file. However, you should carefully insure that the files you are uploading are the correct files and are complete.
If you filed the application without a signed Declaration and without the filing fee (which, as noted above, is clearly permitted) you will receive a NOTICE TO FILE MISSING PARTS (NTFMP). The NOTICE will state what fee should be paid and whether or not a signed declaration need be submitted. A time period for response (e.g., two months) is also stated on the NOTICE. Once a RESPONSE TO NOTICE TO FILE MISSING PARTS is submitted, the application is deemed “Complete” and ready for Examination.
In the Good Old Days, this is when the Official Filing Receipt would then be issued. They were always issued on blue colored paper and the issuance of an Official Filing Receipt was an indication that the application was complete, accorded a filing date, and ready for Examination. In recent years, however, the Patent Office has changed this procedure somewhat. The Filing Receipts are no longer blue, and are issued early on in the process – regardless of whether the application is complete and accorded a filing date.
In situations where a NOTICE OF INCOMPLETE APPLICATION or NOTICE TO FILE MISSING PARTS has been issued, you may receive multiple Filing Receipts, each updated as elements of the application are completed. This can get confusing. Just bear in mind that an Official Filing Receipt does not always mean the application is complete – you have to read it carefully to understand whether anything more is needed.
An UPDATED FILING RECEIPT is the only document you will receive after filing a RESPONSE TO NOTICE TO FILE MISSING PARTS. Unfortunately, because of historical precedent, it does not explicitly say that the declaration has been received. That's the government for you. They do show whether the filing fee is received, though. Why is this?
Historically, a filing receipt was NEVER SENT OUT until all parts of the application were received and the application was in form for examination. So back in the day, when you got a filing receipt, it meant the application was now complete.
Then some genius at the Patent Office decided that a filing receipt should be sent out even if the application required missing parts. So now we have the UPDATED FILING RECEIPT sent out when the missing parts are supplied. There is no government document that is sent out saying "all the missing parts are satisfied". But there should be.
If your RESPONSE to the NOTICE TO FILE MISSING PARTS was inadequate, then OIPE will send you a notice of this. But no explicit notice is sent saying "job well done!". You can check online on Private PAIR to see if the application has been sent to the group for docketing and examination, of course.
When studying the Filing Receipt, first carefully check the data on the Receipt to insure it is accurate and correct. The data printed on the Filing Receipt is taken directly from the Patent Application Location and Monitoring (PALM) system – the source of basic Patent Application data through the life of the application. If there is a typo here, it is best to fix it now rather than later. A Request for Corrected Filing Receipt can be filed explaining the error and requesting a correction. A Corrected filing Receipt may be subsequently issued, adding to your pile of Filing Receipts.
The top line of the Filing Receipt shows the basic application data – the Serial Number, filing date, attorney docket number, total number of claims, total number of drawing sheets, and total number of independent claims. In addition, this line shows the filing fee received and the initial Art Unit that the case has been assigned to. If you have not yet submitted the filing fee, this will be indicated on the sheet. The initial Art Unit is based upon initial classification of the invention. Classifiers have only brief minutes to review the application and assign it to a class and subclass (and thus an Art Unit and eventually an Examiner). Don’t be surprised if the application is later reassigned to a different unit before Examination commences.
The Filing Receipt also lists the inventor names as well as their City and State of residence. Again, check this data for errors and correct it now, rather than later. If you application claims priority from another U.S. Application (Utility or Provisional) or a Foreign Application, this data is also shown. Check this data carefully to insure there are no typographical errors – otherwise your priority claim may not be “perfected”. Note that an algorithm in the USPTO computer checks domestic priority claims Serial Numbers and Filing Dates for consistency and will note whether an error has occurred. On one occasion, the computer kept spitting out an “error” message when the Priority claim was indeed correct. A simple Request for Corrected Filing Receipt solved the problem.
The Filing Receipt also lists the Title of the Invention, projected publication date (if applicable) and whether a “Foreign Filing License” has been granted. This last item is a holdover from the Cold War, when Washington was concerned that the Russians would steal our defense secrets from U.S. Patents. Security Group reviews any cases which appear to have defense-related applications and grants (or denies) a foreign filing license based upon the sensitivity of the subject matter. It is very rare that a foreign filing license is not granted.
With regard to Patent filings overseas, a license is granted by the Patent Office for foreign filing. This appears on the filing receipt of the case, usually on the last page of the Filing Receipt. If the words IF REQUIRED, FOREIGN FILING LICENSE GRANTED appear on the filing receipt, you may foreign file at any time. Note that in many cases no date is listed, even though there is supposed to be one. However, if six months elapse from the filing data and no secrecy order is issued, then you can still file the case under 37 CFR 5.15(b) (See under the heading "NOT GRANTED" on the last page of the Filing Receipt).
If a Patent Application is possibly related to Defense or other "sensitive" areas, it may be forwarded to the Department of Defense (DoD), NASA, or the Department of Energy. If such is the case, you may find in the file wrapper (available online on PAIR) an L&R (Licensing and Review) sheet for the case. The application may be forwarded (electronically) to various agencies which have a time limit to review and sign off on the case. If a secrecy order issues in a case, then not only would we not be allowed to foreign file, but the case would be kicked up to Security Group and not allowed to be published or issue as a Patent until it was declassified. You have the right to foreign file under 37 CRF 5.15(b) if you file overseas more than 6 months from the date of the US case, unless a secrecy order is made.
You may notice a CONFIRMATION NUMBER on your filing receipt. This number is for electronic filing purposes (Electronic Filing System, or EFS). The CONFIRMATION NUMBER is a recent invention and is related to electronic filing. It is a clever idea. If you filed documents based on serial number alone, one slip of the digit and you'd be entering your data in someone else's file. The Confirmation number acts as a parity check (and I believe it is mathematically derived from the Serial Number using an algorithm). If I type in the serial number and confirmation number on the EFS system, and one of them is wrong, I get a "try again" message. So the confirmation number is for electronic filing purposes only, and it always is the same number, as it relates to the Serial Number.
If your Filing Receipt is accurate and complete, and all outstanding requirements of OIPE have been complied with, the application will be forwarded to the assigned Art Unit for assignment to an Examiner and eventual Examination. Senior Examiners in each Art Unit assign the cases based on subject matter and complexity to various Examiners in their Art Units. In many cases, they may transfer a case to another Art Unit more appropriate to the subject matter. Once assigned, the application is “docketed and ready for Examination”.
Now, here’s the bad news. As of the date of this writing (December 2003), the delay from docketing to a First Office Action on the Merits (FAOM) is at least a year or more in the mechanical groups and running 24-36 months (or more) in the Chemical and Electrical Groups.
Thus, once you have your Filing Receipt and the application has been docketed for Examination, there is nothing else to do but wait – and wait for a considerably long time.
Many inventors are discouraged by this delay. They ask me, “Should I wait for my Patent to issue before I market or promote my invention?” My answer is “No.” The success or failure of your invention is not going to depend upon the Patent, but on whether the invention has any marketable merit – in other words, whether people want to buy it. The Patent serves only to protect your idea, should it become successful and others copy it. So, there is no point is “waiting” for the Patent Office before proceeding with your invention.
