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2540    Fee Address for Maintenance Fee Purposes [R-08.2012]

37 C.F.R. 1.363   Fee address for maintenance fee purposes.

  • (a) All notices, receipts, refunds, and other communications relating to payment or refund of maintenance fees will be directed to the correspondence address used during prosecution of the application as indicated in § 1.33(a) unless:
    • (1) A “fee address” for purposes of payment of maintenance fees is set forth when submitting the issue fee, or
    • (2) A change in the correspondence address for all purposes is filed after payment of the issue fee, or
    • (3) A “fee address” or a change in the “fee address” is filed for purposes of receiving notices, receipts and other correspondence relating to the payment of maintenance fees after the payment of the issue fee, in which instance, the latest such address will be used.
  • (b) An assignment of a patent application or patent does not result in a change of the “correspondence address” or “fee address” for maintenance fee purposes.
  • (c) A fee address must be an address associated with a Customer Number.

Generally, notices, receipts, and other communications relating to the payment of a maintenance fee will be directed to the correspondence address used during the prosecution of the application, unless a “fee address” for the purpose of payment of the maintenance fee has been designated or a change in the correspondence address has been made (see MPEP § 2542). 37 CFR 1.33(d) allows a correspondence address or change thereto to be filed during the enforceable life of the patent. Patentees should ensure that the Office is properly notified of the proper “fee address” to which all maintenance fee communications are to be directed.

Under the statutes and rules, the Office has no duty to notify patentee of the requirement to pay maintenance fees or to notify patentee when the maintenance fee is due. It is solely the responsibility of the patentee to ensure that the maintenance fee is paid timely to prevent expiration of the patent. The failure to receive the reminder notice will not shift the burden of monitoring the time for paying a maintenance fee from the patentee to the Office. The Office will attempt to assist patentees through the mailing of a Maintenance Fee Reminder in the grace period. However, the failure to receive a Maintenance Fee Reminder will not relieve the patentee of the obligation to timely pay the appropriate maintenance fee to prevent expiration of the patent, nor will it constitute unavoidable delay if the patentee seeks to reinstate the patent under 37 CFR 1.378(b). See In re Patent No. 4,409,763, 7 USPQ2d 1798 (Comm’r Pat. 1988), aff’d sub nom. Rydeenv.Quigg, 748 F. Supp. 900, 16 USPQ2d 1876 (D.D.C. 1990), aff’d, 937 F.2d 623 (Fed. Cir. 1991) (table), cert. denied, 502 U.S. 1075 (1992). Maintenance fee correspondence will not be directed to more than one address.

37 CFR 1.363(c) states that “[a] fee address must be an address associated with a Customer Number.” Only an address represented by a customer number can be established as the fee address for maintenance fee purposes. The use of the following form(s) is suggested when requesting establishment of a fee address: a current version of the "Fee Address" Indication Form (PTO/SB/47), and if necessary, a Request for Customer Number (PTO/SB/125). If a customer number was previously acquired from the Office for the address being designated as the fee address, that customer number should be entered on the "Fee Address" Indication Form (PTO/SB/47) to make the fee address designation. If no customer number was previously acquired from the Office for the address being designated as the fee address, then the "Fee Address" Indication Form (PTO/SB/47) should be accompanied by a completed Request for Customer Number (form PTO/SB/125). See MPEP § 403 concerning customer number practice.

It is recommended that only a current version of the "Fee Address" Indication Form (PTO/SB/47) available from the USPTO Web site (www.uspto.gov/web/forms/index.html#patent) be used when designating a fee address.

At the time of issue fee payment, applicants may designate a fee address by submitting a "Fee Address" Indication Form (PTO/SB/47) as an attachment to the Issue Fee Transmittal (PTOL-85B). After issue fee payment, applicants may designate a fee address by submitting a "Fee Address" Indication Form (PTO/SB/47), and if necessary, a Request for Customer Number (PTO/SB/125), to the address specified on the "Fee Address" Indication Form (PTO/SB/47).

All fee addresses established at the Office will be represented by a customer number, even if the fee address designation lacks an explicit request that a customer number be used for this purpose (e.g., in the event that an outdated "Fee Address" Indication Form (PTO/SB/47), or equivalent form, is submitted without an accompanying Request for Customer Number (PTO/SB/125)).

The current version of the "Fee Address" Indication Form (PTO/SB/47) is available upon request from the Maintenance Fee Branch and from the USPTO website (www.uspto.gov). The Request for Customer Number (PTO/SB/125) is available upon request from the Electronic Business Center and from the USPTO website (www.uspto.gov). Requests for the establishment of a fee address should be submitted to the Maintenance Fee Branch prior to or at the time of payment of maintenance fees in order to ensure that receipt of payment is directed to the fee address.

Additional patent numbers may be assigned to a customer number at any time, upon written request.

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Last Modified: 03/27/2014 10:10:34