Sending Email to Examiners at the U.S. Patent Office

Patent applicants may use email and other Internet technologies (e.g., uploading documents into the record of patent applications) to communicate with the U.S. Patent Office. MPEP 502.03.(I), titled  CONFIDENTIALITY OF PROPRIETARY INFORMATION, requires that “[a]ll use of the Internet by Patent Organization employees . . . shall be conducted in a manner that ensures compliance with confidentiality requirements” in statutes.

For now, lets ignore that some “use” of the Internet (e.g., email) is not very confidential as it is routed from sender to receiver. MPEP 502.03.(I) appears to require “written authorization” from the applicant where “confidentiality” is required. MPEP 502.03.(II) states that without “a written authorization by applicant in place, the USPTO will not respond via Internet e-mail to any Internet correspondence” that is subject to the confidentiality requirement.

MPEP 502.03.(II) states that a “reply to an Office action may NOT be communicated by applicant to the USPTO via Internet e-mail.” If an applicant submits a reply to an Office action, “a paper copy will be placed in the appropriate patent application file with an indication that the reply is NOT ENTERED.” Applicants must upload their responses or replies to Office actions through the electronic filing system or EFS.

However, I have found that patent Examiners respond to requests sent via email to set up Examiner Interviews. MPEP 502.03(B) specifically allows such communications. This part of the MPEP states that the Internet may be used “to conduct interview-like communications and other forms of formal and informal communications.” It is a good idea to put a statement like “Do not place in File” at the top of any communication sent by email (including in the body of the email message) so that documents and messages are not improperly or accidentally placed in the official and public record of your patent application.