[Patentcenter] Issue Fee Transmittal - Certificate of Service
Timothy Snowden
timothy at thompsonpatentlaw.com
Fri Nov 10 17:39:47 UTC 2023
Right -- so if you modify it to say "Practitioner Substitute of <Name of
USPTO form>" than you have technically removed all text identifying it
as a USPTO form because all that text now identifies it as a
practitioner form that substitutes for the USPTO form ...
I called and checked on this years ago with the Office, and since then
have seen it multiple times -- something like "Practitioner Generated
<xyz> form substitute for <USPTO form number>"
For safety, I suppose you can also just block out the form number.
Perhaps more to your point, you'd need to block out the OMB number /
statement.
When I've modified forms, I've normally just re-built them in a WORD
document leaving out all the USPTO language except a note that this form
is a substitute for USPTO Form Number XYZ.
On 11/10/2023 11:29 AM, Randall Svihla wrote:
>
> "if all text identifying the form as an Office form is removed"
>
> *From:*Patentcenter <patentcenter-bounces at oppedahl-lists.com> *On
> Behalf Of *Timothy Snowden via Patentcenter
> *Sent:* Friday, November 10, 2023 12:00 PM
> *To:* patentcenter at oppedahl-lists.com
> *Cc:* Timothy Snowden <timothy at thompsonpatentlaw.com>
> *Subject:* Re: [Patentcenter] Issue Fee Transmittal - Certificate of
> Service
>
> 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> <mailto: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>
> <mailto: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
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> doctrine and other applicable privileges. This email is
> intended to be received only by those to whom it is
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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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