Updates to Method for Filing Certain Documents with the USPTO

Effective March 29, 2024, the U.S. Patent and Trademark Office (USPTO) issued a final rule to revise 37 C.F.R. §§ 90.2, 90.3, and 2.145 by updating how the following documents are to be filed with the USPTO Director:

·         notice of appeal,
·         notice of election to proceed by civil action in district court, and
·         request for extension of time to file a notice of appeal or commence a civil action.

The final rule specifies that these documents “must be filed by email at the email address indicated on the USPTO’s web page for the Office of the General Counsel for filing such notices and requests.”  U.S. Priority Mail Express® or “means at least as fast and reliable as Priority Mail Express®” may be used to file these documents “[i]f there is some circumstance in which email cannot be used.”  The USPTO does not specify what “means” qualify as being “at least as fast and reliable as Priority Mail Express®”, and does not specify what conditions constitute a “circumstance in which email cannot be used.” 

However, according to the USPTO, “[t]his change will ensure that the USPTO receives said notices and requests reliably and promptly.” 

The final rule is available here.