Whither USPTO’s Form PTO-1382?

A longstanding member of the PCT listserv asked:

It used to be that for a PCT, along with Request RO101, we would file a transmittal form for USPTO:  PTO-1382 (Rev. 04-2010).  Yet none of my readings about ePCT or your blog mentions that.  Has it gone away? 

His question certainly brought back memories for me.  In the old days when the only way to file a PCT application in RO/US was by means of Express Mail, in my office we always used Form PTO-1382.  But before today, I bet I had not looked at Form PTO-1382 in nine years.  (Nine years ago is when RO/US started accepting e-filed PCT applications.)

There were two main points to Form PTO-1382.  The first main point was to assist the filer in avoiding malpractice when attempting to make use of 37 CFR 1.10 (“the Express Mail Rule”).  The Rule required the filer to “place” the Express Mail tracking number on the topmost piece of paper in the envelope.  This Form PTO-1382 usefully provided a field where this number could be written, thus reminding the filer to do so.  A filer might be tempted to hand-write or typewrite the tracking number onto the Form PTO-1382.  This was of course begging for failure since the filer might get a digit wrong in which case the filer would risk losing the filing date and losing the ability to petition for the filing date.

Chance to win a prize.  Of course old-timers like me will recall that there was a way to avoid having to hand-write or typewrite the tracking number onto Form PTO-1382.  There was a way to guarantee that the tracking number “placed” onto Form PTO-1382 was accurate and free from error.  The first person posting a comment explaining how this was done will win a free copy of the Penaya Press reprint of USPTO’s Guide for Preparation of Patent Drawings. 

So the first point of Form PTO-1382 was to minimize the risk of forgetting to use the Express Mail Rule and to minimize the risk of failing to comply with the Express Mail Rule correctly.

The second point of Form PTO-1382 was to provide an itemized list of the papers and things that the filer claimed that he or she had placed into the Express Mail envelope.  The idea was that at the USPTO mail room, the mail room employee could check off these items one by one.  If for example you were including a PCT-Easy floppy disk or sequence listing floppy disk in your filing package, you would list it on the Form.  If at the mail room, the mail room employee had accidentally dropped the floppy disk on the floor or behind a desk, the checklist would prompt the employee to look around and find it and rejoin it with the rest of the submission package.  The goal would be to minimize the risk that some item in the filing package would get separated from the rest of the filing package and that you would later be blamed for supposedly having failed to provide that item.

The alert reader can guess where all of this is going.  If you are going to e-file your PCT application, you absolutely do not need this Form PTO-1382 any more.  By e-filing, you avoid having to worry about the Express Mail Rule.  And by e-filing, you avoid the risk of a mail room person dropping an item onto the floor or behind a desk.  It is pointless and a waste of time and mouse clicks to upload any checklist (including Form PTO-1382) in an EFS-Web filing package.  If you forgot to upload (say) the sequence listing, then no amount of pounding the table and arguing that your checklist listed the sequence listing is going to make your lapse go away.  Either you uploaded the file or you did not and the sequence listing will not change the situation.  The authoritative record of what you uploaded will be the Acknowledgment Receipt.

So is Form PTO-1382, along with the Express Mail Rule, destined for the dustbin of history?  Can we all abandon our new-employee training on the subject of “how to file a US patent application by going to the Post Office”?  You might think the answers are “yes”, but then recall that miserable day, May 14, 2014, when USPTO’s EFS-Web system crashed and the “EFS-Web contingency server” (the one that was supposedly guaranteed to work even if the main server had failed) also crashed.  (See blog.)  The failure that day lasted until midnight and beyond.  On that day most of our urgent filings were the kind that could be faxed to the USPTO.  But we had one urgent filing that was the kind where faxing is no good — a filing for which we had no choice but to comply with the Express Mail Rule.  This included “placing” the tracking number on the topmost page of the filing package, and physically driving to the Post Office to get a “date in”.

That particular urgent filing in our office was not a PCT application.  But if it had been, then we would have used Form PTO-1382, just as we did in 2005 and earlier years.

(Oh and to add insult to injury, USPTO charged us the $400 penalty for failing to e-file  that application.  This despite the fact that it was USPTO’s fault that e-filing was impossible that day.)

So to answer the listserv member’s original question.  No, the form has not gone away.  You might still find it handy if the USPTO’s e-filing systems crash again the way they did for eighteen hours starting on May 14, 2014.