[Patentcenter] Issue Fee Transmittal - Certificate of Service

Fri Nov 10 19:33:06 UTC 2023

 The OMB control number notice is notice that the *agency* is authorized to
collect it from you.  It has nothing to do with whether you are authorized
to send it to them, or whether you have altered it.
https://www.law.cornell.edu/uscode/text/44/3512

On Fri, Nov 10, 2023 at 12:40 PM Timothy Snowden via Patentcenter <
patentcenter at oppedahl-lists.com> wrote:

> 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>
> <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>
> <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> <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> <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
>
>
>
> *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>
> *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
>
>
>
> *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>
> <sbadriano at adrianoassociates.com>
> *Date: *Wednesday, November 8, 2023 at 2:31 PM
> *To: *users of Patentcenter <patentcenter at oppedahl-lists.com>
> <patentcenter at oppedahl-lists.com>
> *Cc: *Dale Quisenberry <dale at quisenberrylaw.com> <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
> <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>
> <patentcenter at oppedahl-lists.com>
> *Cc:* Dale Quisenberry <dale at quisenberrylaw.com> <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
>
>
>
> *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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