What caption to use when responding to a patent Office Action?

Most of us, when we were learning how to prepare a response to a patent Office Action in the USPTO, were taught to load up the caption with every conceivable piece of information.  When I was first in practice I was taught to provide not only the application number but also the art unit, the Examiner’s name, the filing date, and the title of the invention.  Some years later the USPTO introduced the “confirmation number” and this, too, went into the caption. Now I skip all of this and I use the application number and nothing else in the caption.  Why?

I guess the starting point of the discussion is, why was it ever necessary to provide five or more pieces of information?

The answer, of course, was that it would save work for the USPTO in carrying out the paper flow.  In those old days the USPTO’s files were physical paper files.  Likely as not at the time that someone was getting ready to send a response to the USPTO, the physical file would be in the Art Unit somewhere.  So it was helpful for the filer to include the Art Unit in the caption so that a clerk with a four-wheeled cart would know where to drop off the document.  MPEP section 502 details USPTO’s suggestions as to what should go into a caption.

A further problem for which a multi-item caption was the intended solution was the problem of a USPTO clerk punching two holes in the document and then inserting it into the wrong physical file.  The idea was that even if the clerk were to misread the application number, the filing date might serve as a double-check as to whether the physical file into which the clerk was about to insert the file was the correct file.

Not only that, in those old days nobody actually paid attention to series codes.  Practitioners often listed only the serial number (six digits) and not the complete application number (eight digits) in the caption.  The color of the physical file denoted the series code for that file and the filing date being old or new told the clerk whether the physical file needed to be one color or the other to be the correct file.

The filing date is not, of course, a really good cross-check for a misread digit of the application number.  If the misread digit happens to be the last digit for example, the filing date will probably not reveal the imminent filing mistake.  What USPTO finally came up with was the “confirmation number”.  This four-digit number appeared on the physical file and the practitioner was urged to include it in the caption.  The USPTO clerk could then check the confirmation number as part of trying to avoid accidentally sticking a document into the wrong file.

But then EFS-Web happened.  And all of these things stopped being important.  If you e-file something with EFS-Web, it simply gets into the correct file and that is the end of the matter.  With a document filed in EFS-Web, there is simply no opportunity for a clerk pushing a four-wheeled cart to get slowed down because a document failed to pinpoint the destination art unit for the document.  Because the document will never sit in a four-wheeled cart.  With a document filed in EFS-Web, there is simply no opportunity for a clerk to punch two holes in a document and then stick it into the wrong physical file.  Because the document does not go into a physical file — it goes into IFW which is the official file.  And so long as the filer entered the correct application number in EFS-Web, the document will get into the correct file.  (Note that the EFS-Web system does require the filer to enter the confirmation number and will refuse to proceed if the confirmation number and application number fail to match.)

So nowadays what do you really need for a caption?  MPEP section 502 actually says that you only need to list the application number in the caption.  Nothing else is required.  And for the reasons discussed above, nothing else is actually needed any more.

Meanwhile there are probably traditionalists among the profession who stick to the old ways, always including six or more pieces of information in each caption.  In my view this is a mistake.  It’s jut an opportunity to make a bad impression with an Examiner by misspelling his or her name, for example.  And it uses up valuable time that could be spent some other way.

How about it?  Does this blog posting convince you to cut your captions back to simply an application number and nothing else?

10 thoughts on “What caption to use when responding to a patent Office Action?

  1. If you are preparing the response in Word, there is an easy way of supplying all the information anyone could want – at no risk of annoying the examiner.

    Simply go to privatePAIR, and use the “screen clipping tool” (little camera with a + sign) and paste a picture copy of the application data page as the header of your response. (You should already be there in privatePAIR to be checking if anything else has happened in the case before preparing the response – so it is a process that takes a few seconds).

    That way no possibility of mis-spelling the Examiner’s name – unless the USPTO already has.

  2. Carl, as always — another great post. I never really thought much about this b/c its been my experience to include multiple pieces of information in the caption (call me a traditionalist). You do bring up a valid point, EFS-Web has made it easier for filers to enter both the application number and confirmation number, so follow-on documents should make it into the right IFW. If its okay, I will post this blog piece on the “Patent and IP Paralegals” group on LinkedIn for comments (please feel free to join – selfish plug).

  3. You have solved a mystery. I found it weird when I was told all that stuff had to be added to the header. I am dropping it down to the serial number and confirmation number – just so I have it handy when I am filing in EFS. (I am a very solo solo.)

  4. I will change what I have in the headers from now on. But I think you should at least include the serial number, inventor name and docket number. This way, it will be easier for you to know where to file things. BTW, the USPTO ought to use consistent headers on all their forms and correspondence. The maintenance fee reminders are particularly bad in this respect.

  5. Carl, do you also omit Mail Stop for the same reasons?

    I resisted your suggestions here for a few weeks, but I’m finally going to adopt them for my personal response template. The firm template will stay the same for a while – people had a fit when I tried to take out the mailing address of the USPTO. I’m still not sure why they thought a document filed in EFS needed to include a mailing address.

    • My view is yes you can omit the Mail Stop for papers that are being e-filed in EFS-Web. I believe that USPTO pays no attention to the “mail stop” if provided, for e-filed papers.

  6. I know this is a late comment but, as I was looking for just this answer, I might as well ask another question along the lines of old habits. Application Number or Serial Number? I seem to recall years ago, the USPTO used “Serial Number” and somewhere in the last decade they switched to “Application Number” but many practitioners have continued (or switched back to) “Serial Number”. Which is preferred (or proper)?

    • “Serial” means “a thing composed of numerical digits that increments one at a time”. So by definition if a thing that we are discussing has stuff in it that is not numerical digits, it cannot properly be termed a “serial number”. Inspired by your comment, I have blogged about this here: https://blog.oppedahl.com/?p=2661 .

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