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I filed a US patent using EFS-Unregistered on June 1st, 2018 with request not to publish. I filed the related international ePCT on June 4th, 2018. I understood that I would need to rescind the request not to publish on my US filing so I filed form sb0036 "Rescission of Previous Nonpublication Request" on June 16th, 2018 through USPS first class mail. I wanted to use a tracked mail from USPS but the sb0036 form specifically instructed:

I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to: Mail Stop PG Pub, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, or facsimile transmitted to the U.S. Patent and Trademark Office on the date shown below.

Now the 45 day for rescission and notice is almost up (deadline will be July 18th, 2018), and I haven't heard back from USPTO yet. I used first class mail so I don't have a receipt or any way to show that the USPTO has received my mail.

  • What shall I do? Will USPTO mail me a response or just silently process it? I filed as unregistered. Is there any way to check if the request not to file is rescinded?
  • Or shall I fax the form again to USPTO with a new date? But use what fax number? The quoted instruction above mentioned fax but didn't give a number.

Thanks!

  • It might be possible to check if it was uploaded to private PAIR. have you checked? (I don't know if this works). – DonQuiKong Jul 10 '18 at 18:04
  • I filed as an unregistered user, so I don't have access to private PAIR. – Yan Li Jul 10 '18 at 19:28
  • @Yan Li. Transaction history and wrapper of private and public PAIR are same. You can check status at Public pair also. If you have filed yourself than better register yourself with EBC and get access to Private PAIR. That way you will feel sure about transmittal of documents and forms. – AD Adhikary Jul 11 '18 at 3:29
  • @ADAdhikary a filing with a non publication request won't be in public pair. Op: you can call the uspto and ask, might be faster. – DonQuiKong Jul 11 '18 at 3:42
  • I couldn't find my filing in public PAIR. I'm in the process of registering as an eFiler but that is still being processed. I'll call USPTO tomorrow and ask. – Yan Li Jul 11 '18 at 3:48
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Thanks for all the comments. Answering my own question. I first called the number of the Pre-Grant Publication Division at (703)605-4283 according to the SB/36 form, but that number turned out already invalidated. I then called the Application Assistance Unit (AAU) at 571-272-4000. After waiting for more than one hour, I finally reached to someone and they helped me to check that they had already received and scanned the SB/36 form, about a week after I mailed it out. So I shouldn't need to do anything more.

Lesson learned:

  • For time-sensitive matters, fax is better than mails because USPTO usually wouldn't be able to get back to you before your deadline, leaving you worried.
  • In order to check any time-sensitive matter on a filing of an unregistered eFiler, calling the AAU seems to be the only method. You are recommended to register and get a customer numebr/PKI ASAP and associate your previous filings with your customer number.

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