USPTO eTEAS now accepting PDFs (partially)

Posted by Stephen M. Nipper at July 24, 2006 10:29 PM


PDF files for Response form: Except for mark image files, which the USPTO will continue to accept only in a JPG format, the USPTO has now enhanced the Response to Office Action (ROA) form* also to accept PDF files, specifically for the following:

foreign registration certificates
miscellaneous statements
signed declarations

WARNING: The USPTO will NOT permit submission of an overall response as a PDF file; i.e., the evidence section cannot be used to attach a multi-page document consisting of arguments, evidence, revised identifications of goods/services, additional statements, etc. Any portion of the ROA form that exists for a specific purpose must be used for that purpose, rather than trying to shoehorn a complete ROA within the PDF file.

Also, the submission must be complete within the "4 corners" of the actual transmitted document. Information only accessible through a link, but not part of the submission itself, will NOT be considered to be made of record. E.g., if you wish a catalogue to be considered as evidence, you must present the actual pages of the catalogue, and not merely reference that the catalogue is available for viewing at a particular URL. The examining attorney will NOT independently access any URL as part of the examination process, and any materials presented only "by reference" will not constitute part of the actual file.

* Throughout 2006-2007, the USPTO plans to enhance all other TEAS forms to allow for submission of PDF files, although again, the mark image will always be limited to a JPG file, due to constraints within other USPTO systems.

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