Department of Commerce
Patent and Trademark Office
37 CFR Parts 1, 5 and 10
[Docket No. 951006247-5247-01]
RIN 0651-AA70
Communications with the Patent and Trademark Office
Agency: Patent and Trademark Office, Commerce.
Action: Notice of Proposed Rulemaking.
Summary: The Patent and Trademark Office (Office) is proposing to amend
the rules of practice in patent and trademark cases to: (1) require that
patent-related mail be addressed to the Assistant Commissioner for
Patents; (2) require that most trademark-related mail be addressed to
the Assistant Commissioner for Trademarks; (3) specify a separate
address for mail related to disciplinary proceedings pending before the
Administrative Law Judge or the Commissioner in the Office of the
Solicitor; (4) provide a definition of "Federal holiday within the
District of Columbia"; and (5) delete the requirement for a certificate
for "Express Mail" in section 1.10 and incorporate requirements for the
resubmission of misplaced correspondence which parallel section 1.8.
Dates: Comments must be received by January 2, 1996. No hearing will be
held.
Addresses: Address written comments to Assistant Commissioner for
Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513, marked
to the attention of Lynne G. Beresford. In addition, written comments
may also be sent by facsimile transmission to (703) 308-7220 with a
confirmation copy mailed to the above address, or by electronic mail
messages over the Internet to mail-rule@uspto.gov.
Written comments will be available for public inspection on [ Insert
date 75 days after date of publication in the FEDERAL REGISTER], in the
Assistant Commissioner for Trademarks' suite on the 10th floor of the
South Tower Building, 2900 Crystal Drive, Arlington, Virginia 22202-3513.
For Further Information Contact: Lawrence E. Anderson (for
patent-related matters) by telephone at (703) 305-9285, by electronic
mail at landerso@uspto.gov, or by mail to his attention addressed to the
Assistant Commissioner for Patents, Box DAC, Washington, D.C. 20231; or
Lynne G. Beresford (for trademark-related matters) by telephone at (703)
308-8900, extension 44, or by mail marked to her attention and addressed
to the Assistant Commissioner for Trademarks, 2900 Crystal Drive,
Arlington, Virginia 22202-3513.
Supplementary Information: Addresses for correspondence with the Office
are proposed to be changed to reflect the creation of a mailroom site at
the South Tower Building for processing most trademark-related mail; to
distinguish correspondence intended for organizations reporting to the
Assistant Commissioner for Patents from other correspondence; and to add
a separate mailing address in the Office of the Solicitor for
disciplinary matters.
The proposed rulemaking entitled "Changes in Requirements for
Addressing Trademark Applications and Trademark-Related Papers"
(0651-AA73) has been merged with this notice of proposed rulemaking.
The Office will now have three separate general mailing addresses:
(1) Assistant Commissioner for Patents for correspondence processed by
organizations reporting to the Assistant Commissioner for Patents; (2)
Assistant Commissioner for Trademarks for all trademark-related mail,
except for trademark documents sent to the Assignment Division for
recordation and requests for certified and uncertified copies of
trademark documents which should be addressed to the Commissioner of
Patents and Trademarks; and (3) Commissioner of Patents and Trademarks
for all other correspondence. Notwithstanding the above, it is proposed
that there will be separate mailing addresses in the Office of the
Solicitor for certain disciplinary matters and cases involving pending
litigation.
Those who correspond with the Office are requested to use separate
envelopes directed to the different areas.
Because patent-related mail will be sent to the Assistant
Commissioner for Patents, the requirement to designate patent
application correspondence as "PATENT APPLICATION" is proposed to be
deleted from section 1.5(a).
In addition, it is proposed that "Federal holiday within the District
of Columbia" be defined as including Official closings.
It is further proposed that a "Certificate of Mailing by Express
Mail" (currently necessary to obtain the benefit of the date of deposit
with the United States Postal Service (U.S.P.S.) as the filing date of
the paper) no longer be required for correspondence actually received in
the Office.
PATENT-RELATED MAIL
Section 1.1 is proposed to be amended to provide for correspondence
which is processed by organizations reporting to the Assistant
Commissioner for Patents to be addressed to the "Assistant Commissioner
for Patents, Washington, D.C. 20231." The Office first announced the new
address for patent-related mail in a notice (Change of Address for
Patent Applications and Patent Related Papers) published in the Official
Gazette at 1173 Off. Gaz. Pat. Office 13 (April 4, 1995).
This change will affect correspondence such as: patent applications,
responses to notices of informality, requests for extension of time,
notices of appeal to the Board of Patent Appeals and Interferences (the
Board), briefs in support of an appeal to the Board, requests for oral
hearing before the Board, extensions of term of patent, requests for
reexamination, statutory disclaimers, certificates of correction,
petitions to the Commissioner, submission of information disclosure
statements, petitions to institute a public use proceeding, petitions to
revive abandoned patent applications, and other correspondence related
to patent applications and patents which is processed by organizations
reporting to the Assistant Commissioner for Patents. When patent-related
documents are filed with a certificate of mailing, pursuant to section
1.8, the certificate of mailing should be completed with the new
address: Assistant Commissioner for Patents, Washington, D.C. 20231.
Unless otherwise specified, correspondence not processed by
organizations reporting to the Assistant Commissioner for Patents, such
as communications with the Board, patent services including patent copy
sales, assignments, requests for lists of patents and SIRs in a
subclass, requests for the status of maintenance fee payments, as well
as patent practitioner enrollment matters including admission to
examination, registration to practice, certificates of good standing,
and financial service matters including establishing a deposit account
should continue to be addressed to the Commissioner of Patents and
Trademarks, Washington, D.C. 20231. Documents to be recorded with the
Assignment Division, except those filed with new applications, should be
addressed to: Box Assignment, Commissioner of Patents and Trademarks,
Washington, D.C. 20231. Orders for certified and uncertified copies of
Office documents should be addressed to: Box 10, Commissioner of Patents
and Trademarks, Washington, D.C. 20231.
Special Office mail boxes as currently listed in each issue of the
Official Gazette should continue to be used to allow forwarding of
particular types of mail to the appropriate areas as quickly as
possible. Use of special box designations will facilitate the Office's
timely and accurate identification and processing of the designated
correspondence.
Checks should continue to be made payable to the Commissioner of
Patents and Trademarks.
TRADEMARK-RELATED MAIL
Most trademark-related mail should be sent directly to the Trademark
Operation at: Assistant Commissioner for Trademarks, 2900 Crystal Drive,
Arlington, Virginia 22202-3513. When trademark-related documents are
filed with a certificate of mailing, pursuant to section 1.8, the
certificate of mailing should be completed with the new address:
Assistant Commissioner for Trademarks, 2900 Crystal Drive, Arlington,
Virginia 22202-3513. Use of the correct address will avoid processing
delays. Trademark documents to be recorded with the Assignment Division,
except those filed with new applications, should be addressed to: Box
Assignment, Commissioner of Patents and Trademarks, Washington, D.C.
20231. Orders for certified and uncertified copies of trademark
documents should be addressed to: Box 10, Commissioner of Patents and
Trademarks, Washington, D.C. 20231.
The Office announced the new address for trademark-related mail in a
notice (Change of Address for Trademark Applications and Trademark
Related Papers) published in the Federal Register at 59 FR 29275 (June
6, 1994) and in the Trademark Office Official Gazette at 1163 Off. Gaz.
Trademark Office 80 (June 28, 1994) (republished in 1170 Off. Gaz. Pat.
Office 303 (January 3, 1995)).
The Office will continue to maintain the special box designations and
FEE/NO FEE indicators for trademark mail as currently listed in each
issue of the Official Gazette. In addition to addressing
trademark-related mail as set forth above, the boxes should also be used
to allow forwarding of particular types of mail to the appropriate areas
as quickly as possible.
Checks should continue to be made payable to the Commissioner of
Patents and Trademarks.
Mail intended for the Trademark Trial and Appeal Board should be
addressed to: Assistant Commissioner for Trademarks, 2900 Crystal Drive,
Arlington, Virginia 22202-3513, including BOX TTAB/FEE or BOX TTAB/NO
FEE, whichever is applicable.
HAND-CARRIED CORRESPONDENCE
All correspondence with the Office, except for communications
relating to pending litigation as specified currently in section 1.1(g),
may continue to be filed directly at the Attorney's Window located in
Room 1B03 of Crystal Plaza Building 2, 2011 South Clark Place,
Arlington, Virginia. Trademark-related papers may also be filed at the
"walk-up" window located on the third floor of the South Tower Building,
2900 Crystal Drive, Arlington, Virginia.
FEDERAL HOLIDAYS WITHIN THE DISTRICT OF COLUMBIA
When the Patent and Trademark Office is officially closed for an
entire day (for reasons due to weather or other causes), the Office will
consider each such day a "Federal holiday within the District of
Columbia" under 35 U.S.C. 21. Any action or fee due on such a day may
be taken, or fee paid, on the next succeeding business day the Office is
open.
Legal holidays considered "Federal holidays within the District of
Columbia" are New Year's Day (January 1), Martin Luther King, Jr.'s
Birthday (third Monday in January), Presidential Inauguration Day,
Washington's Birthday (third Monday in February), Memorial Day (last
Monday in May), Independence Day (July 4), Labor Day (first Monday in
September), Columbus Day (second Monday in October), Veterans Day
(November 11), Thanksgiving Day (fourth Thursday in November) and
Christmas Day (December 25). In the past, the Office has published
notices concerning unscheduled closings. See, e.g., "Closing of Patent
and Trademark Office on Thursday, January 20, 1994 and Friday, February
11, 1994," 1161 Off. Gaz. Pat. Office 12 (April 5, 1994) (republished in
1170 Off. Gaz. Pat. Office 8 (January 3, 1995)) and "Filing of Papers
During Unscheduled Closings of the Patent and Trademark Office," 1097
Off. Gaz. Pat. Office 53 (December 20, 1988) (republished in 1170 Off.
Gaz. Pat. Office 8 (January 3, 1995)). The proposed rule change will
further implement the existing policy.
EXPRESS MAIL PROVISIONS
Section 1.10 is proposed to be amended by deleting the requirement
for a "Certificate of Mailing by Express Mail" to obtain the benefit of
the date of deposit with the United States Postal Service (U.S.P.S.) as
the filing date of the paper. The title of section 1.10 is proposed to
be revised and section 1.10 is also proposed to be amended to
incorporate requirements for the resubmission of misplaced
correspondence which parallel section 1.8.
Under the current rule, the filer is required to include a
Certificate of Mailing by Express Mail, certifying the date of deposit
as Express Mail. Some papers filed with the Office, although deposited
as Express Mail with the U.S.P.S., have been denied the filing date of
the date of deposit as Express Mail because the required Certificate of
Mailing by Express Mail was omitted or deficient. The lost filing date
for a significant number of these papers has resulted in the loss of
substantive rights. For example, a trademark registration may be
canceled if the required affidavit of continued use or excusable non-use
is not filed by the end of the sixth year of registration. 15 U.S.C.
1058.
In light of the problematic nature of the requirement for a
Certificate of Mailing by Express Mail, inasmuch as the date of deposit
has already been entered by a disinterested third party, the Office
proposes to delete this requirement from section 1.10.
MISCELLANEOUS CHANGES
Miscellaneous changes are proposed to change the word
"communications" to "correspondence" for purposes of consistency. Also,
since the certificate of mailing by "Express Mail" will no longer be a
requirement of the proposed rules, the provisions of Part 10 relating to
misconduct are proposed to be amended to delete reference to this
requirement.
DISCUSSION OF SPECIFIC RULES
If revised as proposed, the heading of section 1.1 will be changed to
state that the section contains the addresses for correspondence to the
Patent and Trademark Office.
Section 1.1 is proposed to be revised to set out all pertinent Office
mailing addresses in paragraph (a) and in added paragraphs (a)(1),
(a)(2), and (a)(3). It should be noted that the remaining paragraphs of
section 1.1 contain directions for using box designations rather than
addresses. Paragraph (a)(1) is proposed to be added to set out the new
mailing address to which most patent-related documents should be sent.
Paragraph (a)(2) is proposed to be added to set out the new mailing
address to which most trademark-related documents should be sent. The
Solicitor's mailing address, formerly set out in paragraph (g) of the
section is moved to a new paragraph (a)(3). Paragraph 1.1(g) is proposed
to be removed and reserved.
Sections 1.1 and 1.3 are proposed to be amended so that the word
"communications" is changed to "correspondence."
Section 1.5(a) is proposed to be amended by removing the requirement
of the words "PATENT APPLICATION" on letters concerning patent
applications.
Section 1.8 (a) is proposed to be revised to state that papers and
fees must be addressed as set out in section 1.1 (a). For the purposes
of 1.8 (a) (1) (i) (A) , first class mail is interpreted as including
"Express Mail" and "Priority Mail" deposited with the U.S.P.S.
Section 1.9 is proposed to be amended to add a definition of "Federal
holiday within the District of Columbia" to include Federal holidays and
days when the Patent and Trademark Office is officially closed for the
entire day (for reasons due to adverse weather or other causes).
Section 1.10 is proposed to be revised to state that "Express Mail"
must be addressed as set out in 1.1(a). The title of section 1.10 is
proposed to be revised to reflect this change. Further, for all
correspondence actually received in the Office, the Office will consider
the correspondence filed on the date shown by the "date in" notation on
the "Express Mail" label unless the "date in" is a Saturday, Sunday or
Federal holiday within the District of Columbia. Because of the reliance
on the "date in" marked by the Postal Service, correspondence should be
deposited directly with a person at the United States Postal Service,
rather than in a drop box, to ensure that the person making the deposit
receives a copy of the "Express Mail" label at the time of making the
deposit to verify that the "date in" is accurately and clearly written
by the Postal Service employee. Persons using an Express mail receptacle
(such as a drop box) do so at the risk of not receiving an accurate and
legible copy of the Express mail label at the time of deposit from which
the Office may determine the "Express mail" "date in," and, therefore,
may not later argue that they should be entitled to the date on which
they deposited the correspondence into a receptacle. Moreover, if the
"date in" is found to be illegible or unclear, a person dealing directly
with a Postal Service employee must take corrective action to ensure
that a clear and accurate date is marked at the time of deposit. Persons
choosing to use a receptacle (or the like) obviously do not oversee the
marking by a Postal Service employee and thus may not later argue for
the benefit of a section 1.10 filing date if the "date in" on the
"Express Mail" label is improperly or not clearly marked. The
determinative factor is when the Postal Service marks the "date in" and
the mere deposit into a receptacle does not entitle one to an "Express
Mail" "date in" under section 1.10.
Paragraph (b) of section 1.10 is proposed to be amended by deleting
the requirement for a "Certificate of Mailing by Express Mail" currently
necessary to obtain the benefit of the date of deposit with the United
States Postal Service (U.S.P.S.) express mail service as the filing date
of the paper.
Paragraph (c) of section 1.10 is proposed to be amended to set forth
the requirements for the treatment of correspondence not received by the
Office for which the "Express Mail" procedure was utilized.
Correspondence not received by the Office will be considered filed in
the Office on the date shown by the "date in" notation entered by the
Postal Service if the party who forwards the correspondence:
(1) Places the number of the "Express Mail" mailing label on the
correspondence prior to the original mailing by "Express Mail,"
(2) Informs the Office of the previous deposit of the correspondence
promptly after becoming aware that the Office has no evidence of receipt
of the correspondence,
(3) Supplies an additional copy of the previously deposited
correspondence showing the number of the "Express Mail" label thereon,
(4) Supplies a copy of the "Express Mail" label clearly displaying the
"date in" entered by the United States Postal Service, and
(5) Includes a statement which establishes, to the satisfaction of the
Commissioner, the previous deposit and that the copies of the
correspondence and "Express Mail" label are true copies of the original
correspondence and "Express Mail" label. Such statement must be on the
basis of personal knowledge, whenever possible, and must be a verified
statement if made by a person other than a practitioner as defined in
section 10.1(r) of this chapter.
In addition, although the requirement for a certificate of express
mail has been proposed to be eliminated from section 1.10, applicants
are strongly encouraged to continue using the certificate of express
mail, as well as the placement of the Express Mail label number in the
upper right corner of the first page of each separate piece of
correspondence and to retain a clearly marked Express Mail label, to
facilitate complying with the requirements of paragraph (c) if the
correspondence is not received in the Office or if reliance on the
U.S.P.S. "date in" is not possible. Moreover, paragraph (d) is proposed
to be added so that additional evidence may be required if the Office so
determines.
Section 5.33 (entitled "Correspondence") is proposed to be amended to
change the correspondence address to "Assistant Commissioner for Patents
(Attention: Licensing and Review), Washington, D.C. 20231."
Section 10.23(c)(9) is proposed to be revised to reflect the proposed
change to section 1.10 that the certificate of mailing by "Express Mail"
is no longer a requirement of the rules.
OTHER CONSIDERATIONS
The proposed rule changes are in conformity with the requirements of
the Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive Order
12612, and the Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et seq.
Information collection requirements are not affected by the change of
address. This proposed rule has been determined to not be significant
for the purposes of Executive Order 12866.
The Office has determined that this proposed rule change has no
Federalism implications affecting the relationship between the National
Government and the States as outlined in Executive Order 12612.
The Assistant General Counsel for Legislation and Regulation of the
Department of Commerce has certified to the Chief Counsel for Advocacy,
Small Business Administration, that the proposed rule changes would not
have a significant impact on a substantial number of small entities
(Regulatory Flexibility Act, 5 U.S.C. 605(b)). The proposed rule change
has no effect on patent fees.
These proposed rule changes contain collections of information
subject to the requirements of the Paperwork Reduction Act of 1980, 44
U.S.C. 3501 et seq., which are currently approved by the Office of
Management and Budget under Control No. 0651-0009 and 0651-0031. The
public reporting burden for these collections of information for
certificate of mailing is estimated to average six minutes per response,
including the time for reviewing instructions, searching existing data
sources, gathering and maintaining the data needed, and completing and
reviewing the collection of information. Send comments regarding this
burden estimate or any other aspect of this collection of information,
including suggestions for reducing this burden to the Office of System
Quality and Enhancement Division, Patent and Trademark Office,
Washington, D.C. 20231, and to the Office of Information and Regulatory
Affairs, Office of Management and Budget, Washington, D.C. 20503. (ATTN:
Paperwork Reduction Act Projects 0651-0009 and 0651-0031).
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Freedom of information,
Inventions and patents, Reporting and record keeping requirements.
37 CFR PART 5
Classified information, Foreign relations, Inventions and patents.
37 CFR PART 10
Administrative Practice and procedure, Conflicts of interest, Courts,
Inventions and patents, Lawyers.
For the reasons set forth in the preamble and under the authority
granted to the Commissioner of Patents and Trademarks by 35 U.S.C. 6 and
15 U.S.C. 1123, 37 CFR Parts 1, 5 and 10 are proposed to be amended as
follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 continues to read as follows:
Authority: 35 U.S.C. 6, unless otherwise noted.
2. Section 1.1 is proposed to be amended by removing and reserving
paragraph (g) and by revising the title and paragraph (a) to read as
follows:
1.1 Addresses for correspondence with the Patent and Trademark Office.
(a) Except for those documents identified in paragraphs (1), (2) and
(3) of this section, all correspondence intended for the Patent and
Trademark Office must be addressed to "Commissioner of Patents and
Trademarks, Washington, D.C. 20231." When appropriate, correspondence
should also be marked for the attention of a particular office or
individual.
(1) Patent correspondence. All correspondence concerning patent
matters processed by organizations reporting to the Assistant
Commissioner for Patents should be addressed to "Assistant Commissioner
for Patents, Washington, D.C. 20231."
(2) Trademark correspondence. All correspondence concerning trademark
matters, except for trademark-related documents sent to the Assignment
Division for recordation and requests for certified and uncertified
copies of trademark application and registration documents, should be
addressed to "Assistant Commissioner for Trademarks, 2900 Crystal Drive,
Arlington, Virginia 22202-3513." This includes correspondence intended
for the Trademark Trial and Appeal Board.
(3) Office of Solicitor correspondence.
(i) Correspondence relating to pending litigation required by court rule
or order to be served on the Solicitor shall be hand-delivered to the
Office of the Solicitor or shall be mailed to: Office of the Solicitor,
P.O. Box 15667, Arlington, Virginia 22215; or such other address as may
be designated in writing in the litigation. See 1.302(c) and
2.145(b)(3) for filing a notice of appeal to the U.S. Court of Appeals
for the Federal Circuit.
(ii) Correspondence relating to disciplinary proceedings pending before
an Administrative Law Judge or the Commissioner shall be mailed to:
Office of the Solicitor, P.O. Box 16116, Arlington, Virginia 22215.
(iii) All other correspondence to the Office of the Solicitor shall be
addressed to: Box 8, Commissioner of Patents and Trademarks, Washington,
D.C. 20231.
(iv) Correspondence addressed to the wrong Post Office Box will not be
filed elsewhere in the Patent and Trademark Office and might be returned.
*****
(g) [Reserved]
*****
3. Section 1.3 is proposed to be revised to read as follows:
1.3 Business to be conducted with decorum and courtesy.
Applicants and their attorneys or agents are required to conduct
their business with the Patent and Trademark Office with decorum and
courtesy. Papers presented in violation of this requirement will be
submitted to the Commissioner and will be returned by the Commissioner's
direct order. Complaints against examiners and other employees must be
made in correspondence separate from other papers.
4. Section 1.5(a) is proposed to be revised to read as follows:
1.5 Identification of application, patent, or registration.
(a) No correspondence relating to an application should be filed
prior to when notification of the application number is received from
the Patent and Trademark Office. When a letter directed to the Patent
and Trademark Office concerns a previously filed application for a
patent, it must identify on the top page in a conspicuous location, the
application number (consisting of the series code and the serial number;
e.g., 07/123,456), or the serial number and filing date assigned to that
application by the Patent and Trademark Office, or the international
application number of the international application. Any correspondence
not containing such identification will be returned to the sender where
a return address is available. The returned correspondence will be
accompanied with a cover letter which will indicate to the sender that
if the returned correspondence is resubmitted to the Patent and
Trademark Office within two weeks of the mail date on the cover letter,
the original date of receipt of the correspondence will be considered by
the Patent and Trademark Office as the date of receipt of the
correspondence. Applicants may use either the Certificate of Mailing or
Transmission procedure under 1.8 or the Express Mail procedure under
1.10 for resubmissions of returned correspondence if they desire to
have the benefit of the date of deposit in the United States Postal
Service. If the returned correspondence is not resubmitted within the
two-week period, the date of receipt of the resubmission will be
considered to be the date of receipt of the correspondence. The two-week
period to resubmit the returned correspondence will not be extended. If
for some reason returned correspondence is resubmitted with proper
identification later than two weeks after the return mailing by the
Patent and Trademark Office, the resubmitted correspondence will be
accepted but given its date of receipt. In addition to the application
number, all letters directed to the Patent and Trademark Office
concerning applications for patent should also state the name of the
applicant, the title of the invention, the date of filing the same, and,
if known, the group art unit or other unit within the Patent and
Trademark Office responsible for considering the letter and the name of
the examiner or other person to which it has been assigned.
5. Section 1.8(a)(1)(i)(A) is proposed to be revised to read as follows:
1.8 Certificate of mailing or transmission.
(a) ***
(1) ***
(i) ***
(A) Addressed as set out in 1.1(a) and deposited with the U.S. Postal
Service with sufficient postage as first class mail; or
*****
6. Section 1.9 is proposed to be revised by adding a new paragraph (h)
to read as follows:
1.9 Definitions.
*****
(h) A "Federal holiday within the District of Columbia" as used in
this chapter means any day, except Saturdays and Sundays, when the
Patent and Trademark Office is officially closed for business.
7. Section 1.10 is proposed to be revised to read as follows:
1.10 Filing of correspondence by "Express Mail."
(a) Any correspondence received by the Patent and Trademark Office
utilizing the "Express Mail Post Office to Addressee" service of the
United States Postal Service will be considered filed in the Office on
the date shown by the "date in" notation entered by the United States
Postal Service on the "Express Mail" label, unless the "date in" is a
Saturday, Sunday or Federal holiday within the District of Columbia. See
1.6(a). This procedure can be used to file any correspondence in the
Office.
(b) Any correspondence filed by "Express Mail" must be addressed as
set out in 1.1(a) and should be deposited directly with the United
States Postal Service to ensure that the person depositing the
correspondence receives a copy of the "Express Mail" label at the time
of deposit with the "date in" clearly marked thereon. Persons dealing
indirectly with the United States Postal Service (such as by deposit in
an Express Mail drop box) do so at the risk of not receiving their copy
of the "Express Mail" label with the "date in" clearly marked.
(c) Any correspondence mailed to the Patent and Trademark Office
utilizing the "Express Mail Post Office to Addressee" service of the
United States Postal Service, but not received by the Office, will be
considered filed in the Office on the date shown by the "date in"
notation entered by the United States Postal Service on the "Express
Mail" label, unless the "date in" is a Saturday, Sunday or Federal
holiday within the District of Columbia (see 1.6(a)), if the party
who forwarded such correspondence:
(1) Places the number of the "Express Mail" mailing label on the
correspondence prior to the original mailing by "Express Mail,"
(2) Informs the Office of the previous deposit of the correspondence
promptly after becoming aware that the Office has no evidence of receipt
of the correspondence,
(3) Supplies a copy of the previously deposited correspondence showing
the number of the "Express Mail" label thereon,
(4) Supplies a copy of the "Express Mail" label clearly displaying the
"date in" entered by the United States Postal Service, and
(5) Includes a statement which establishes, to the satisfaction of the
Commissioner, to the previous deposit and that the copies of the
correspondence and "Express Mail" label are true copies of the original
correspondence and "Express Mail" label. Such statement must be on the
basis of personal knowledge, whenever possible, and must be a verified
statement if made by a person other than a practitioner as defined in
10.1(r) of this chapter.
(d) The Office may require additional evidence to determine if the
correspondence was deposited as "Express Mail" with the United States
Postal Service on the date in question.
Part 5 - SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND FILE
APPLICATIONS IN FOREIGN COUNTRIES
8. The authority citation for 37 CFR Part 5 continues to read as follows:
Authority: 35 U.S.C. 6, 41, 181-188, as amended by the Patent Law
Foreign Filing Amendments Act of 1988, Pub. L. 100-418, 102 Stat. 1567;
the Arms Export Control Act, as amended, 22 U.S.C. 2751 et seq., the
Atomic Energy Act of 1954, as amended, 42 U.S.C. 2011 et seq., and the
Nuclear Non-Proliferation Act of 1978, 22 U.S.C. 3201 et seq., and the
delegations in the regulations under these acts to the Commissioner (15
CFR 370.10(j), 22 CFR 125.04, and 10 CFR 810.7).
9. Section 5.33 is proposed to be revised to read as follows:
5.33 Correspondence.
All correspondence in connection with this part, including petitions,
should be addressed to "Assistant Commissioner for Patents (Attention:
Licensing and Review), Washington, D.C. 20231."
Part 10 - REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK OFFICE
10. The authority citation for 37 CFR Part 10 continues to read as
follows:
Authority: 5 U.S.C. 500; 15 U.S.C. 1123; 35 U.S.C. 6, 31, 32, 41.
11. Section 10.23(c)(9) is proposed to be revised to read as follows:
10.23 Misconduct.
*****
(c) ***
*****
(9) Knowingly misusing a "Certificate of Mailing or Transmission" under
1.8 of this chapter.
October 26, 1995 BRUCE A. LEHMAN
Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks