From: Therkorn, Linda
Sent: Thrusday, October 21, 1999 7:51 AM
To: Bernstein, Hiram
Subject: pbg-npr comment
Something I read in the PTCJ using STIC's NPL page bothered me/ and I thought I would pass it on. It is not a MPEP issue necessarily.
In the Proposed Rulemaking on Changes to Implement the Patent Business Goals published at 64 Fed. Reg. 53772 October 4, 1999, I found that 37 CFR 1.63©(2) was proposed to be revised to state:
The mailing address and residence (if different from the mailing address) of each invernor: and
Where to start?
The distinction between "residence" and Post Office address should not be lost sight of. MPEP 719.02(b).
Applicant's place of residence, that is, the city and either state or foreign country, is required.... MPEP 605.02.
Therefore, a residence is the city and state, or the city and foreign country, each inventor considers to be home. We do not in fact care where an inventor actually lives, only where the inventor is resident and where the mail is to be directed (the post office address). The problem arises when we let the two get confused. Applicants will include a complete address as the residence, or state that it is the "same" as the postal address, or include terms superfluous to a statement of city and state or country. The person (s) who proposed the change to rule 63 is/are contemplating only domestic addresses in which, in most instances, the city and state of residence can be discerned.
However, our technical support staff and examiners and supervisors are not prepared to handle the variety of political systems around the world. When we do not unambiguously require that the residence be stated in the form of a city and state, or city and foreign country, our staff can (and does) record provinces of Australia, provinces of Japan, counties in England, just for examples from my personal experience, as the CITY of residence.
The residence does not appear to be a statutory requirement. Ultimately all I think we use it for is after inventor's names in the listing of inventors on an assigned patent. If we need it we should ask for it because we cannot always figure it out from the mailing address, and inventors need not be residents of the municipality where they get their mail.
(Someone will have to go through the MPEP and change every relevant instance of "Post Office" to "mailing" is this proposal goes through. Ha!)
United. State* Patent and Trademark Office
Primary Patent Examiner (Physics)
Technical Center 2800
Art Unit 2878