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2622    Address of Patent Owner [R-11.2013]

37 C.F.R. 1.33   Correspondence respecting patent applications, reexamination proceedings, and other proceedings.

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  • (c) All notices, official letters, and other communications for the patent owner or owners in a reexamination proceeding will be directed to the correspondence address. Amendments and other papers filed in a reexamination proceeding on behalf of the patent owner must be signed by the patent owner, or if there is more than one owner by all the owners, or by an attorney or agent of record in the patent file, or by a registered attorney or agent not of record who acts in a representative capacity under the provisions of § 1.34. Double correspondence with the patent owner or owners and the patent owner’s attorney or agent, or with more than one attorney or agent, will not be undertaken.

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Address of Patent Owner: The correspondence address for the patent to be reexamined, or being reexamined is the correct address for all notices, official letters, and other communications for patent owners in reexamination proceedings. See 37 CFR 1.33(c).

Representative of Patent Owner: As a general rule, the attorney-client relationship terminates when the purpose for which the attorney was employed is accomplished; e.g., the issuance of a patent to the client. However, under 37 CFR 11.104, as under former 37 CFR 10.23(c)(8), a practitioner should not fail to timely and adequately inform a client or former client of correspondence received from the Office in a proceeding before the Office or from the client’s or former client’s opponent in an inter partes proceeding before the Office when the correspondence (i) could have a significant effect on a matter pending before the Office, (ii) is received by the practitioner on behalf of a client or former client, and (iii) is correspondence of which a reasonable practitioner would believe under the circumstances the client or former client should be notified. This responsibility of a practitioner to a former client is not eliminated by withdrawing as an attorney or agent of record. See also 37 CFR 11.116(d). The practitioner if he/she so desires, can minimize the need for forwarding correspondence concerning issued patents by having the correspondence address changed after the patent issues if the correspondence address is the practitioner’s address, which frequently is the case where the practitioner is the attorney or agent of record.

If the patent owner desires that a different attorney or agent receive correspondence, then a new power of attorney must be filed. See MPEP § 324 for establishing an assignee’s right to take action when submitting a power of attorney in applications filed before September 16, 2012.

Submissions to the Office to change the correspondence address or power of attorney in the record of the patent should be addressed as follows:

Where a request for inter partes reexamination has been filed and a reexamination proceeding is accordingly pending as to a patent.

Mail Stop “Inter Partes Reexam”
Attn: Central Reexamination Unit
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

Where no request for reexamination has been filed and the patent is in storage:

Mail Stop Document Services
Director of the U.S. Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450

It is strongly recommended that the Mail Stop information be placed in a prominent position on the first page of each paper being filed utilizing a sufficiently large font size that will direct attention to it.

A sample form for changing correspondence address or power of attorney is set forth below.

PTO/SB/81. Power of Attorney or Revocation of Power of Attorney with a New Power of Attorney and Change of Correspondence Address
Privacy Act Statement

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