I received a "Notice to File Missing Parts of Nonprovisonal Application".

It states: "A mailing address for each inventor has not been submitted. A new application data sheet (ADS) ... is required"

My original ADS stated the inventors' mailing addresses (I used the online ADS form on EFS Web which autogenerates a PDF ADS form). For whatever reason, the USPTO only picked up the last inventor's address (out of 3 inventors).

I called the USPTO today, and they said these errors sometimes happen.

The missing parts notice further states: “”" Replies must be received in the USPTO within the set time period or must include a proper Certificate of Mailing or Transmission under 37 CFR 1.8 with a mailing or tramission date within the set time period. For more information and a suggested format, see Form PTO/SB/92 and MPEP 512.

Replies should be mailed to:

Registered users of EFS-Web may alternatively submit their reply to this notice via EFS-Web, including a copy of this Notice and selecting the document description "Applicant response to Pre-Exam Formalities Notice”. “”"

How do I properly a reply on EFS-Web?

I'm thinking I write a short letter saying I've attached a new ADS (despite my old ADS having the mailing addresses of all inventors). I add a copy of the notice to that letter. Then, I upload that as one PDF file under the document description “Applicant response to Pre-Exam Formalities Notice”.

Then, I upload a new ADS under the Application Part -> Application Data Sheet category.

I’m not sure if I can or should upload a Certificate of Transmission as well. I’ve only found the one for mailing (PTO/SB/92) and facsimile transmission (PTO/SB/97), not one for EFS-Web if I understand correctly.

In MPEP 512, there is a sentence saying "The correspondence includes a certificate for each piece of correspondence stating the date of deposit or transmission.", which may imply I need a Certificate of Transmission for each uploaded part? That seems wrong, though.



Certificate of transmission is for things you mail in or fax in not for EFS web. In order to submit by EFS-web you need to be a registered user with a customer #, pki security file and password. Otherwise it is the mail or fax.


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