[Patentcenter] Issue Fee Transmittal - Certificate of Service

Fri Nov 10 16:50:48 UTC 2023

Exactamundo.  I mentioned this the other day, but did not provide the citation as you done.

From: Patentcenter <patentcenter-bounces at oppedahl-lists.com> On Behalf Of James E. Lake via Patentcenter
Sent: Friday, November 10, 2023 11:48 AM
To: patentcenter at oppedahl-lists.com
Cc: James E. Lake <jel at randalldanskin.com>
Subject: Re: [Patentcenter] Issue Fee Transmittal - Certificate of Service

Remember to revise per 37 CFR 1.4(d)(5)

“(5) Forms. The Office provides forms for the public to use in certain situations to assist in the filing of correspondence for a certain purpose and to meet certain requirements for patent applications and proceedings. Use of the forms for purposes for which they were not designed is prohibited. No changes to certification statements on the Office forms (e.g., oath or declaration forms, terminal disclaimer forms, petition forms, and nonpublication request forms) may be made. The existing text of a form, other than a certification statement, may be modified, deleted, or added to, if all text identifying the form as an Office form is removed. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any Office form with text identifying the form as an Office form by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this chapter that the existing text and any certification statements on the form have not been altered other than permitted by EFS-Web customization.”

James Lake

From: Flash <guyvmann at flash.net>
Sent: Friday, November 10, 2023 8:10 AM
To: patentcenter at oppedahl-lists.com
Cc: James E. Lake <jel at randalldanskin.com>
Subject: Re: [Patentcenter] Issue Fee Transmittal - Certificate of Service

[External Email]
Or you can just use a PDF editor to type onto it what it needs to say.  That’s how I fill out the old 85b anyway.
I haven’t been correcting it for this issue until now, but I think I may start. No step to add something new.

Guy Vincent Manning
guyvmann at flash.net<mailto:guyvmann at flash.net>

On Nov 9, 2023, at 11:18 AM, James E. Lake via Patentcenter <patentcenter at oppedahl-lists.com<mailto:patentcenter at oppedahl-lists.com>> wrote:

If you need to use the 85b the PTO sent to you with the NOA instead of using the Patent Center Web 85b, then I suggest you prepare and upload PTO/SB/92 Certificate of Mailing or Transmission under 37 CFR 1.8 as a separate paper since the certificate on the old 85b is incorrect. SB92 expressly includes Patent Center.

James Lake

From: Patentcenter <patentcenter-bounces at oppedahl-lists.com<mailto:patentcenter-bounces at oppedahl-lists.com>> On Behalf Of Randall Svihla via Patentcenter
Sent: Wednesday, November 8, 2023 1:24 PM
To: patentcenter at oppedahl-lists.com<mailto:patentcenter at oppedahl-lists.com>
Cc: Randall Svihla <rsvihla at nsiplaw.com<mailto:rsvihla at nsiplaw.com>>
Subject: Re: [Patentcenter] Issue Fee Transmittal - Certificate of Service

[External Email]
Fairness, schmerness.  You can bet if your livelihood depends on it, the USPTO will throw you under the bus.

From: Patentcenter <patentcenter-bounces at oppedahl-lists.com<mailto:patentcenter-bounces at oppedahl-lists.com>> On Behalf Of Dale Quisenberry via Patentcenter
Sent: Wednesday, November 8, 2023 4:20 PM
To: Timothy Snowden <timothy at thompsonpatentlaw.com<mailto:timothy at thompsonpatentlaw.com>>; patentcenter at oppedahl-lists.com<mailto:patentcenter at oppedahl-lists.com>; Sarah Adriano <sbadriano at adrianoassociates.com<mailto:sbadriano at adrianoassociates.com>>
Cc: Dale Quisenberry <dale at quisenberrylaw.com<mailto:dale at quisenberrylaw.com>>
Subject: Re: [Patentcenter] Issue Fee Transmittal - Certificate of Service

Thanks, Tim.  I think what you and Sarah are saying are good arguments, and may very well be winning arguments.  As I think about it further, it would seem unfair for the USPTO to take the position that using the USPTO’s own form would not constitute an effective certificate, especially once we arrive in a Patent Center only world.

Dale

C. Dale Quisenberry
Quisenberry Law PLLC
13910 Champion Forest Drive, Suite 203
Houston, Texas 77069
(832) 680.5000 (office)
(832) 680.1000 (mobile)
(832) 680.5555 (facsimile)
www.quisenberrylaw.com<http://www.quisenberrylaw.com>

This email may contain information that is confidential and subject to the attorney-client privilege, work product doctrine and other applicable privileges.  This email is intended to be received only by those to whom it is specifically addressed.  Any receipt of this email by others is not intended to and shall not waive any applicable privilege.  If you have received this email in error, please delete it and immediately notify the sender by separate email.  Thank you.

From: Timothy Snowden <timothy at thompsonpatentlaw.com<mailto:timothy at thompsonpatentlaw.com>>
Date: Wednesday, November 8, 2023 at 3:11 PM
To: patentcenter at oppedahl-lists.com<mailto:patentcenter at oppedahl-lists.com> <patentcenter at oppedahl-lists.com<mailto:patentcenter at oppedahl-lists.com>>, Sarah Adriano <sbadriano at adrianoassociates.com<mailto:sbadriano at adrianoassociates.com>>
Cc: Dale Quisenberry <dale at quisenberrylaw.com<mailto:dale at quisenberrylaw.com>>
Subject: Re: [Patentcenter] Issue Fee Transmittal - Certificate of Service
I would argue a similar point to Sarah. However, for elimination of doubt (because Dale's view is arguable, and probably the most 'to the letter accurate'), I modify our Certificate to say "... EFS-Web/PatentCenter ..."
Part of the confusion is that USPTO has been a bit imprecise whether they refer to PatentCenter as an iteration of EFS-Web or a different system. I take the view that it's an iteration at least as far as the legal framework for the Certificate of Service goes. I know the USPTO hasn't updated it, but it seems like the only other option is to Fax / USPS, and that's clearly not the intent ... so clearly the practical intent of the USPTO is that PatentCenter is the next iteration of the USPTO's electronic filing system.

Not sure if that stream of consciousness helps, but there it is...

On 11/8/2023 2:48 PM, Dale Quisenberry via Patentcenter wrote:
Sarah,

My view is that the certificate below would not be effective for Patent Center unless it was changed from EFS-Web to Patent Center.

Dale

C. Dale Quisenberry
Quisenberry Law PLLC
13910 Champion Forest Drive, Suite 203
Houston, Texas 77069
(832) 680.5000 (office)
(832) 680.1000 (mobile)
(832) 680.5555 (facsimile)
www.quisenberrylaw.com<http://www.quisenberrylaw.com>

This email may contain information that is confidential and subject to the attorney-client privilege, work product doctrine and other applicable privileges.  This email is intended to be received only by those to whom it is specifically addressed.  Any receipt of this email by others is not intended to and shall not waive any applicable privilege.  If you have received this email in error, please delete it and immediately notify the sender by separate email.  Thank you.

From: Sarah Adriano <sbadriano at adrianoassociates.com><mailto:sbadriano at adrianoassociates.com>
Date: Wednesday, November 8, 2023 at 2:31 PM
To: users of Patentcenter <patentcenter at oppedahl-lists.com><mailto:patentcenter at oppedahl-lists.com>
Cc: Dale Quisenberry <dale at quisenberrylaw.com><mailto:dale at quisenberrylaw.com>
Subject: RE: Issue Fee Transmittal - Certificate of Service
Dale,

I saw EFS-web as a generic electronic filing system with species therein.  Filing via patent center was just another form of an electronic filing system via the web.  Comments?

Thanks, Sarah

CONFIDENTIALITY NOTICE--This email is intended only for the person(s) named in the message header.  Unless otherwise indicated, this email contains information that is confidential, privileged and/or exempt from disclosure under applicable law. If you have received this message in error, please notify the sender of the error and delete the message.  Even if you are an intended recipient of this E-Mail, the author requests that you not forward it to any other person without written prior consent. E-Mail is covered by the Electronic Communications Privacy Act, 18 U.S.C. Section 2510-2521 and is legally privileged. Thank you.

From: Patentcenter [mailto:patentcenter-bounces at oppedahl-lists.com] On Behalf Of Dale Quisenberry via Patentcenter
Sent: Friday, November 03, 2023 4:30 AM
To: users of Patentcenter <patentcenter at oppedahl-lists.com><mailto:patentcenter at oppedahl-lists.com>
Cc: Dale Quisenberry <dale at quisenberrylaw.com><mailto:dale at quisenberrylaw.com>
Subject: [Patentcenter] Issue Fee Transmittal - Certificate of Service

Listmates,

You have probably already noticed this, but just in case:

The “Certificate of Mailing or Transmission” on the Part B – FEE(S) TRANSMITTAL form for transmittal of an Issue Fee does not list transmission to USPTO via Patent Center.

<image001.png>

This form won’t work come November 8, agree?

Dale

C. Dale Quisenberry
Quisenberry Law PLLC
13910 Champion Forest Drive, Suite 203
Houston, Texas 77069
(832) 680.5000 (office)
(832) 680.1000 (mobile)
(832) 680.5555 (facsimile)
www.quisenberrylaw.com<http://www.quisenberrylaw.com>

This email may contain information that is confidential and subject to the attorney-client privilege, work product doctrine and other applicable privileges.  This email is intended to be received only by those to whom it is specifically addressed.  Any receipt of this email by others is not intended to and shall not waive any applicable privilege.  If you have received this email in error, please delete it and immediately notify the sender by separate email.  Thank you.

--
Patentcenter mailing list
Patentcenter at oppedahl-lists.com<mailto:Patentcenter at oppedahl-lists.com>
http://oppedahl-lists.com/mailman/listinfo/patentcenter_oppedahl-lists.com
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentcenter_oppedahl-lists.com/attachments/20231110/1cf0bd94/attachment.html>