2624 Correspondence [R-08.2012]
All requests for inter partes reexamination (original request papers) and all subsequent inter partes reexamination correspondence mailed to the U.S. Patent and Trademark Office via the U.S. Postal Service Mail, other than correspondence to the Office of the General Counsel pursuant to 37 CFR 1.1(a)(3) and 1.302(e), should be addressed:
Mail Stop “Inter
Attn: Central Reexamination Unit
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
All such correspondence hand carried to the Office, or submitted by delivery service (e.g., Federal Express, DHL, etc., which are commercial mail or delivery services) should be carried to:
Customer Service Window
401 Dulany Street
Alexandria, VA 22314
Hand-carried correspondence and correspondence submitted by delivery service should also be marked “Mail Stop Inter Partes Reexam.” Whether the correspondence is mailed via the U.S. Postal Service mail or is hand-carried to the Office, 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 request for inter partes reexamination may not be sent by facsimile transmission (FAX). See 37 CFR 1.6(d)(5). This is also true for a corrected/completed request sent in response to a notice that the original request was not filing date compliant, since the corrected/completed request stands in place of, or is a completion of, the original request papers. All subsequent inter partes reexamination correspondence, however, may be FAXed to:
Central Reexamination Unit
Effective July 9, 2007, the U.S. Patent and Trademark Office began accepting requests for reexamination, and “follow-on” papers (i.e., subsequent correspondence in reexamination proceedings) submitted via the Office’s Web-based electronic filing system (EFS-Web). The Office has updated the Legal Framework for EFS-Web (available at http://www.uspto.gov/ ebc/portal/efs/legal.htm) to set forth that requests for reexamination, and reexamination “follow-on” papers are permitted to be submitted using EFS-Web.
After the filing of the request for inter partes reexamination, any letters sent to the Office relating to the reexamination proceeding should identify the proceeding by the number of the patent undergoing reexamination, the reexamination request control number assigned, the name of the examiner, and the examiner’s Art Unit.
The certificate of mailing and transmission procedures (37 CFR 1.8) may be used to file any paper in an inter partes reexamination proceeding, except for a request for reexamination and a corrected/replacement request for reexamination. See MPEP § 512 as to the use of the certificate of mailing and transmission procedures. The “Express Mail” mailing procedure (37 CFR 1.10) may be used to file any paper in an inter partes reexamination proceeding. See MPEP § 513 as to the use of the “Express Mail” mailing procedure.
Communications from the Office to the patent owner will be directed to the correspondence address for the patent being reexamined. See 37 CFR 1.33(c).
Amendments and other papers filed on behalf of patent owners must be signed by the patent owners, or the registered attorney or agent of record in the patent file, or any registered attorney or agent acting in a representative capacity under 37 CFR 1.34.
Double correspondence with the patent owners and the attorney or agent normally will not be undertaken by the Office.
Where no correspondence address is otherwise specified, correspondence will be with the most recent attorney or agent made of record by the patent owner.
Note MPEP § 2620 for certificate of service.
See MPEP § 2224 for correspondence in ex parte reexamination proceedings.