Bill Heinze has a post listing the most common e-filing mistakes according to the USPTO, namely:
- Not including all documents in the filing as would be done in paper.
- Not calling the Electronic Business Center when there is a question or when encountering a problem which leads to later filing dates and late fees/surcharges.
- Not indicating Customer Number as correspondence address in their attached documents such as the Transmittal letter, ADS, Oath/Declaration.
- Filing a continuation/continuation-in-part/divisional as follow-on submissions to priority application. You should file these as a new application.
- Changing the original font rather than embedding the font to fix a “non-embedded fonts” error message. You should: Use ABXPDF writer, Print to Image in Adobe Professional 7.0, Utilize the Adobe .JobOptions with Adobe Professional 8.0, Or contact the Electronic Business Center.
- Not choosing all fees that apply to the filing on the “Calculate fees” screen.
- Indicating the total amount of claims resulting in overcharging — You should indicate the amount of claims in excess of 20 total claims and 3 independent claims.
- Not indexing Amendment parts correctly — The cover sheet/transmittal letter should NOT be indexed using the Amendment type document descriptions (i.e. Amendment after Non-Final, Preliminary Amendment). The annotated application part should NOT be indexed using the document description “Applicant Arguments/Remarks Made in Amendment.” Only the formal “clean copy” of the application part should be indexed using the application part document descriptions (i.e. specification, claims, drawings).
- Not indexing RCE submissions correctly — This should be indexed under “Request for Continued Examination” instead of “Amendment Submitted/Entered with Filing of CPA/RCE.”
- Not including Provisional cover sheet with Provisional application filing. An ADS or Provisional cover sheet is required for provisional application filings and should be indexed under “General Transmittal – Transmittal of New Application” instead of “Miscellaneous. Incoming letter.”
Related posts:
It would be nice if the post indicated where the USPTO said these were mistakes, so we can read the original.
The last two entries in Section 8 are confusing, and I’m not sure, if these are errors, just what they’re saying is right:
The annotated application part should NOT be indexed using the document description “Applicant Arguments/Remarks Made in Amendment.”
OK, I’ll buy that. I’d assume that would mean that annotated application parts (”annotated” meaning “marked up to show changes”, I assume) should be indexed as whatever they are – claims as claims, specification as specification, etc. BUT look at the next line…
Only the formal “clean copy” of the application part should be indexed using the application part document
Take claims as an example – there’s no requirement to submit “clean” claims any more, so the only claims you submit with an office action reply are the marked-up ones (i.e. marked up with strikethrough and underline). We’ve always indexed those claims as “claims”, but this seems to say that since they’re annotated they shouldn’t be indexed as “claims”. OK, but the previous note said they’re not “Applicant Arguments/Remarks Made in Amendment.”, which seems right. So, if they’re not “claims” or “arguments”, what else should they be?