[Patentcenter] Issue Fee Transmittal - Certificate of Service
Timothy Snowden
timothy at thompsonpatentlaw.com
Fri Nov 10 17:00:01 UTC 2023
Good point James --
You can also just modify the top to say "Practitioner Substitute of <form>"
Then it's no longer an Office form.
On 11/10/2023 10:47 AM, James E. Lake via Patentcenter wrote:
>
> 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
>
>
>
> On Nov 9, 2023, at 11:18 AM, James E. Lake via Patentcenter
> <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> *On
> Behalf Of *Randall Svihla via Patentcenter
> *Sent:* Wednesday, November 8, 2023 1:24 PM
> *To:* patentcenter at oppedahl-lists.com
> *Cc:* Randall Svihla <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> *On
> Behalf Of *Dale Quisenberry via Patentcenter
> *Sent:* Wednesday, November 8, 2023 4:20 PM
> *To:* Timothy Snowden <timothy at thompsonpatentlaw.com>;
> patentcenter at oppedahl-lists.com; Sarah Adriano
> <sbadriano at adrianoassociates.com>
> *Cc:* Dale Quisenberry <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
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> receipt of this email by others is not intended to and shall not
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>
> *From: *Timothy Snowden <timothy at thompsonpatentlaw.com>
> *Date: *Wednesday, November 8, 2023 at 3:11 PM
> *To: *patentcenter at oppedahl-lists.com
> <patentcenter at oppedahl-lists.com>, Sarah Adriano
> <sbadriano at adrianoassociates.com>
> *Cc: *Dale Quisenberry <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
>
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> *From:*Patentcenter
> [mailto:patentcenter-bounces at oppedahl-lists.com
> <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.*
>
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