Do you use email for communications with the USPTO?

[xephay]

Do you use email when communicating with the Office, e.g., to send an agenda or proposed amendment in preparation for an interview?

MPEP 502.03 Communications via the Internet
USPTO employees are NOT permitted to initiate communications with applicants via
Internet e-mail unless there is a written authorization of record in the patent application by
the applicant.

I've never seen such "written authorization" in any application.

Fax is ok, but no email communications without prior authorization--today, in the age of the Internet, when phone, email, fax, SMS/text, twitter, etc. are among the numerous forms of communications!

[Examinerguy]

Sometimes I'll ask the attorney if I can send proposed examiner amendments via email to put the case in condition for allowance. It works well, the attorney either sends back his/her corrections to my proposed amendments or just sends back a, "looks good" message. Makes things a lot faster.

[klaviernista]

Do you use email when communicating with the Office, e.g., to send an agenda or proposed amendment in preparation for an interview?

MPEP 502.03 Communications via the Internet
USPTO employees are NOT permitted to initiate communications with applicants via
Internet e-mail unless there is a written authorization of record in the patent application by
the applicant.

I've never seen such "written authorization" in any application.

Fax is ok, but no email communications without prior authorization--today, in the age of the Internet, when phone, email, fax, SMS/text, twitter, etc. are among the numerous forms of communications!

Are you asking whether an attorney ever uses e-mail to communicate with an examiner, or vice versa?  The rule you quoted only applies to examiner communications to applicants.  It does not relate to applicant communications with the examiner.

I have used e-mail on several occasions to communicate with an examiner for the purposes you specified, e.g., proposing amendments for discussion.

[xephay]

I have used e-mail on several occasions to communicate with an examiner for the purposes you specified, e.g., proposing amendments for discussion.

Did you expect or receive any email from the examiner in response to your email?

With the new initiative for examiner-initated interviews, how do you expect proposed amendments from the examiner?  By phone only?

Thanks.



PS Here're the earlier paragraphs in the same section.

Without a written authorization by applicant in place, the USPTO will not respond via Internet e-mail to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122. A paper copy of such correspondence will be placed in the appropriate patent application.

The following is a sample authorization form which may be used by applicant:

"Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with me concerning any subject matter of this application by electronic mail. I understand that a copy of these communications will be made of record in the application file."
A written authorization may be withdrawn by filing a signed paper clearly identifying the original authorization. The following is a sample form which may be used by applicant to withdraw the authorization:

"The authorization given on______, to the USPTO to communicate with me via the Internet is hereby withdrawn. I understand that the withdrawal is effective when approved rather than when received."

Where a written authorization is given by the applicant, communications via Internet e-mail, other than those under 35 U.S.C. 132 or which otherwise require a signature, may be used. In such case, a printed copy of the Internet e-mail communications MUST be given a paper number, entered into the Patent Application Locating and Monitoring System (PALM) and entered in the patent application file. A reply to an Office action may NOT be communicated by applicant to the USPTO via Internet e-mail. If such a reply is submitted by applicant via Internet e-mail, a paper copy will be placed in the appropriate patent application file with an indication that the reply is NOT ENTERED. >For Image File Wrapper (IFW) processing, see IFW Manual.<

[klaviernista]

Did you expect or receive any email from the examiner in response to your email?

With the new initiative for examiner-initated interviews, how do you expect proposed amendments from the examiner?  By phone only?

I have expected (and have received) responses to my e-mail communications with the USPTO.  Of course, I included the authorization you mentioned in your previous post.

Also, there has long been support in the USPTO for examiner-initiated interviews.  The recent push simply reformulates that prior support into an articulated initiative.  When I was an examiner, I frequently initiated interviews to move the prosecution of a case forward.

[xephay]

i must not have paid attention.  i'd be interested in seeing an authorization in any application, just to satisfy my curiosity.  or most everyone else just use fax?

[harrywellskin]

Using an internet fax service, you can send fax documents in a nick of time.  Using your own email you can do internet faxing with using a fax machine at all.

[dab2d]

I don't know if it is true or not, but I heard somewhere if you use email to communicate with the PTO, you open yourself up to possible waiver of attorney-client privilege.... but you know how those patent law rumors get started.

[JimIvey]

I don't know if it is true or not, but I heard somewhere if you use email to communicate with the PTO, you open yourself up to possible waiver of attorney-client privilege.... but you know how those patent law rumors get started.

I remember that being a concern when e-mail was new.  Since then, I've been told (by litigators whom I trust) that e-mail is no more of a waiver than faxes or telephone conversations.  None of those methods is perfectly secure, but all are secure enough to give a reasonable expectation of privacy.

Of course, public PAIR probably discloses more than your e-mails would.

Moreover, my understanding (from the litigator who defended me in deposition) that there is no attorney-client privilege in patent prosecution outside of the Northern District of California.  I asked why not.  He said that patent prosecution is not in anticipation of litigation.  I had two follow up questions: 1. is that the same for any other kind of law, like contracts or estate law? (no) 2. What do you think the client will do with the patent once they get it?  (yeah, I know)

Lastly, I don't say anything in e-mail that I wouldn't say on the record.  Generally, I've only used e-mail to arrange interviews (by telephone or in person) or to send draft responses to be discussed in the interview.  The draft responses are ready-to-file, except for "DRAFT" all over them.

Where possible, it's good to designate drafts early on as "work product", giving you a second reason to avoid handing over drafts during litigation. 

Regards.

[patentsusa]

I remember those discussions too and having to argue with in-house counsel about email with inventors.  There are papers written on the topic.

I think now the big fear about email is more risk of non-receipt by the attorney resulting in loss of rights.  The USPTO has a program of notifying attorneys of office actions by email.  They have addressed this fear of attorneys by sending emails to up to three email addresses and also sending a postcard.  That was enough to address my fears and I am using that program.

As far as receiving emails from examiners goes, if it isn't a formal written action, I'd prefer a phone call to something potentially hastily and informally written that could end up being discoverable. 

When sending things to the examiner, the examiner's personal fax numbers work fine for me.  I have an account with metrofax that lets me send faxes from email and receive faxes as email.

[MYK]

Jim, any consideration to setting up your own website on which clients can securely (via https) submit documents and comments to you, and perhaps receive replies back in the same way?  The only issues then would be keeping your server secure (encrypted filesystem, perhaps), and of course ensuring that the client doesn't have some sort of spyware on his own machine.

I tend to use Knoppix or another Linux LiveCD, freshly rebooted to be sure nothing was hiding in memory, whenever I have to submit credit-card, SSN, or other information commonly stolen for fraud purposes.  That way, although the vendor might get compromised, at least I know *my* machine isn't going to burn me.

[JimIvey]

Jim, any consideration to setting up your own website on which clients can securely (via https) submit documents and comments to you, and perhaps receive replies back in the same way?  The only issues then would be keeping your server secure (encrypted filesystem, perhaps), and of course ensuring that the client doesn't have some sort of spyware on his own machine.

Well, we're getting off the topic of IP law and more into attorney-client privilege and computer security.  So, my thoughts on the topic aren't really based on any sort of expertise in the area(s).

There are two levels of security to be concerned about: (i) maintaining a reasonable expectation of privacy sufficient to avoid waiver of privilege and (ii) keeping important secrets from being accessed in fact.  I've already addressed the first for e-mail, and I don't see why a secure web connection (https, secure authentication, VPN, etc.) would be any different.

As for the second level of security, I'm not sure what to say.  I guess I take some comfort in that there are much more attractive targets out there than patent practitioners' client-confidential information -- though, we'd be relatively high up the list given how some segments of the software community feel about patents.  In the wake of more sensitive data repositories (thinking primarily of defense, government, and corporate systems), many very good tools trickle down to us.  So, typical tools for HTTPS, VPNs, and such are pretty good, from what I understand.

I tend to use Knoppix or another Linux LiveCD, freshly rebooted to be sure nothing was hiding in memory, whenever I have to submit credit-card, SSN, or other information commonly stolen for fraud purposes.  That way, although the vendor might get compromised, at least I know *my* machine isn't going to burn me.

Hmmm....  I'm not sure where you would keep all your electronic files or at least works in progress.  My stuff is way too large to fit on a thumb drive.  And, my preference is for the reliability of RAID systems which tend to be too big for any temporary connection to a clean system every day.

One thing I would suggest most people avoid is sole reliance on out-of-the-box Microsoft tools -- operating systems, server systems, etc.  I have 2 reasons to make this suggestion. 

First, MSFT is the largest install base and most crackers focus on cracking those systems. 

Second, Windows grew up from DOS, so much of the multi-user and security aspects (and GUI as well) were sort of retro-fitted on top -- not unlike building a secure military bunker by building on to a wooden fort built by 12-year-olds some 30 years ago.  Yes, I understand that all versions of Windows are now based on NT rather than DOS (last DOS descendant was WinME), but, if DOS is a mere babe and Unix is an adult, NT is like an adolescent.  At the very least, I still get the impression that MSFT is building computers for grandmothers to e-mail/chat with the grandkids and trying to stick enough seriousness into the OS that the computers can be used for business too.

If all your computing leaves absolutely no trace, I'd say your system/approach is over-kill.  But, that's just one person's opinion.  And, I think there is little doubt that leaving no trace is at least adequate.  The only more digitally secure is not using a computer at all.

Regards.