United States Patent and Trademark Office OG Notices: 22 April 2003
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Parts 1, 2, 3, 4, 5, 102, 104, and 150
[Docket No.: 2003-P-011]
Correspondence with the United States Patent and Trademark Office
AGENCY: United States Patent and Trademark Office,
Commerce.
ACTION: Final rule; Nomenclature change.
SUMMARY: The United States Patent and Trademark Office
(Office) is revising the rules of practice to change the address for
certain correspondence with the Office. The Office is preparing to move
to Alexandria, Virginia. The Office is changing certain correspondence
addresses so that all correspondence with the Office will now be routed
through a United States Postal Service (USPS) facility that is more
conveniently located to the Office. In addition, the Office is also
changing the titles of Office officials as set forth in the rules of
practice for consistency with the titles provided in the American
Inventors Protection Act of 1999.
EFFECTIVE DATE: The changes in this final rule
are effective May 1, 2003.
FOR FURTHER INFORMATION CONTACT: Darnell M. Jayne,
Legal Advisor, Office of Patent Legal Administration, by telephone at
(703) 308-6906, or by facsimile at (703) 746-3580.
SUPPLEMENTARY INFORMATION: The Office changed the
address for trademark-related correspondence in December of 1996.
See Communications with the Patent and Trademark Office, 61
FR 56439 (Nov. 1, 1996), 1192 Off. Gaz. Pat. Office 95 (Nov.
26, 1996) (final rule). With this change, trademark-related
correspondence with the Office was routed through a USPS facility in
Virginia, and most other correspondence with the Office was routed
through a USPS facility in the District of Columbia. The Office is
currently in the process of moving its principal office from Arlington,
Virginia to Alexandria, Virginia. Since a USPS facility in Virginia is
more conveniently located to the site of the Office's future principal
office in Alexandria, Virginia, the Office is changing its
correspondence addresses (other than for trademark-related
correspondence) so that all correspondence with the Office will now be
routed through a USPS facility in Virginia. In addition, selection of a
USPS facility in Virginia as the new correspondence address is
appropriate because the Office maintains and will continue to maintain
its principal office in Northern Virginia.
General Mailing Addresses: The Office's three
separate general mailing addresses are now as follows: (1) For
correspondence processed by the organizations reporting to the
Commissioner for Patents: Commissioner for Patents, PO Box 1450,
Alexandria, Virginia 22313-1450; (2) For correspondence processed by
the organizations reporting to the Commissioner for Trademarks or the
Trademark Trial and Appeal Board: Commissioner for Trademarks, 2900
Crystal Drive, Arlington, Virginia 22202-3513; and (3) For other
correspondence (including patent and trademark documents sent to the
Assignment Division for recordation and requests for certified or
uncertified copies of patent or trademark documents): Director of the
United States Patent and Trademark Office, PO Box 1450, Alexandria,
Virginia 22313-1450.
The above addresses are the Office's three general mailing
addresses. The Office has separate mailing addresses for certain
correspondence: e.g., (1) Certain court-related
correspondence (e.g., a summons and complaint) being
delivered to the Office via the USPS must be addressed: General
Counsel, United States Patent and Trademark Office, PO Box 15667,
Arlington, Virginia 22215 ( 104.2); (2) correspondence directed to
the counsel for the Office of Enrollment and Discipline (OED) Director
relating to disciplinary proceedings pending before an Administrative
Law Judge or the Director must be addressed: Office of the Solicitor,
PO Box 16116, Arlington, Virginia 22215; (3) payments of maintenance
fees in patents being delivered to the Office via the USPS should be
addressed: United States Patent and Trademark Office, PO Box 371611,
Pittsburgh, Pennsylvania 15250-1611; and (4) a deposit account
replenishment being delivered to the Office via the USPS should be
addressed: Director of the United States Patent and Trademark Office,
PO Box 70541, Chicago, Illinois 60673. Persons filing correspondence
with the Office should check the rules of practice, the Official
Gazette, or the Office's Internet Web site
(http://www.uspto.gov) to determine the appropriate mailing
address for such correspondence.
The Office appreciates that it will take some period of time
before all persons filing correspondence with the Office become
accustomed to these address changes. The Office plans to arrange for
continued delivery of correspondence addressed to the Office's former
Washington, DC 20231 address as a courtesy for a limited period of
time. The Office, however, has been experiencing delays and other
problems with correspondence routed through the USPS facility at
Brentwood. See Processing of, and Requirements for, the Filing of
Duplicate Applications and Papers in Patent Applications in view of
USPS Mail Delays, 1254 Off. Gaz. Pat. Office 92 (Jan.
15, 2002). Any correspondence addressed to the Office's former
Washington, DC 20231 address that is delivered to the Office will still
be subject to the delays and other problems associated with
correspondence that is routed through the USPS facility at Brentwood.
In November of 2001, the Office also established a Post Office
Box in Arlington, Virginia (PO Box 2327, Arlington, Virginia 22202) for
use on an emergency basis, and indicated that it would continue to
accept patent-related correspondence at this Arlington, Virginia Post
Office Box and treat such correspondence as if it were addressed as set
forth in 37 CFR 1.1 for purposes of 37 CFR 1.8 and 1.10 until further
notice. See Termination of the Suspension of the "Express
Mail" Service of United States Postal Service for mail addressed to
ZIP Codes 202xx through 205xx, 1254 Off. Gaz. Pat. Office
33 (Jan. 1, 2002). The Office is hereby providing notice that
persons submitting correspondence to the Office should no longer use
this Arlington, Virginia Post Office Box for any correspondence
(including sequence listings in electronic format) after May 1, 2003.
In addition, the Office is changing the various special Box
designations to corresponding Mail Stop designations (e.g.,
"Box 4" will now be "Mail Stop 4"). Since the address for
certain correspondence includes a Post Office Box number, the continued
use of special Box designations in the address might have resulted in
confusion between the Post Office Box number and the special Box
designation (especially when the special Box designation is a box
number).
Finally, the titles "Commissioner of Patents and
Trademarks," "Assistant Commissioner for Patents," and
"Assistant Commissioner for Trademarks" were changed to "Under
Secretary of Commerce for Intellectual Property and Director of the
United States Patent and Trademark Office," "Commissioner for
Patents," and "Commissioner for Trademarks," respectively, in s
4713 of the American Inventors Protection Act of 1999 (AIPA). See
Pub. L. 106-113, 113 Stat. 1501, 1501A-575 through 1501A-577
(1999).
This final rule also revises the rules of practice (with the
exception of 37 CFR part 10) to reflect the current titles of Office
officials as provided for in the AIPA.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, is amended as
follows:
Part 1: Part 1 is amended to: (1) Change each
reference to "Commissioner" to read "Director"; and (2) change
each reference to "Commissioner's" to read "Director's".
Section 1.1 is amended to: (1) Change the address for general
correspondence to: Director of the United States Patent and Trademark
Office, PO. Box 1450, Alexandria, Virginia 22313-1450 (with Mail Stop
designations as appropriate); (2) change the address for patent-related
correspondence to: Commissioner for Patents, PO. Box 1450, Alexandria,
Virginia 22313-1450; and (3) add paragraph headings.
Section 1.1(a) is also amended to: (1) Place the mailing
address for all Office of Public Records correspondence concerning both
patents and trademarks (documents to be recorded by Assignment Services
Division and requests for certified or uncertified copies of patent or
trademark documents) in a new 1.1(a)(4); and (2) eliminate the
reference to the coupon orders as coupon practice was abolished in
November of 2000 (see Changes to Implement Eighteen-Month
Publication of Patent Applications, 65 FR 57023, 57030 (Sept. 20,
2000), 1239 Off. Gaz. Pat. Office 63, 69 (Oct. 10, 2000)
(final rule)).
Section 1.1(a) is also amended to provide that all
correspondence in an application involved in an appeal to the Board of
Patent Appeals and Interferences (Board) during the period from when an
appeal docketing notice is issued until a decision has been rendered by
the Board as well as any request for rehearing of a decision by the
Board should be mailed to: Board of Patent Appeals and Interferences,
United States Patent and Trademark Office, PO Box 1450, Alexandria,
Virginia 22313-1450. An appeal docketing notice is issued by the Board
to notify the applicant that an appeal is ready for docketing at the
Board. See Revised Docketing Procedures for Appeals Arriving at
the Board of Patent Appeals and Interferences, 1260 Off.
Gaz. Pat. Office 18 (July 2, 2002). Section 1.1(a) is also amended
to provide that notices of appeal, appeal briefs, reply briefs,
requests for oral hearing, as well as all other correspondence in an
application involved in an appeal to the Board not otherwise provided
for should be addressed as set out in 1.1(a)(1)(i) (i.e.,
Commissioner for Patents, PO Box 1450, Alexandria, Virginia
22313-1450). Section 1.1(a) is also amended to include the provisions
formerly located in 1.1(e) concerning patent interference
correspondence, namely that except as an administrative patent judge or
the Board may otherwise direct, all correspondence relating to patent
interferences, or relating to patent applications or patents involved
in an interference, should be mailed to: Mail Stop INTERFERENCE, Board
of Patent Appeals and Interferences, United States Patent and Trademark
Office, PO Box 1450, Alexandria, Virginia 22313-1450.
Sections 1.1(f) and 1.1(i) are redesignated as 1.1(e) and
1.19(f), respectively. As discussed above, the provisions of 1.1(e)
are now located in 1.1(a)(1)(iii). Section 1.1(g) was formerly
reserved and 1.1(h) is now deleted. Section 1.1(h) provided that an
applicant should use "Box ITU" as part of the address when an
applicant or the applicant's representative submits a statement of use
under 2.88, or a request for extension of time to file a statement
of use under 2.89. With this change, a statement of use and a
request for an extension of time to file a statement of use will be
considered properly filed if addressed to the general address for
trademark documents in compliance with 1.1(a)(2)(i): Commissioner
for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513. The
Office is eliminating Box ITU because the Office's experience has been
that the use of that box is not helpful in sorting mail.
Section 1.6(b) is removed and reserved. The USPS no longer
maintains a "pouch" for correspondence addressed to the United
States Patent and Trademark Office, and the USPS does not segregate
correspondence addressed to the United States Patent and Trademark
Office on the basis of the date of its receipt by the USPS.
Section 1.9 is amended to add a paragraph (j) to define
Director as used in 37 CFR chapter I, except for 37 CFR part 10, as
meaning the Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office. 37 CFR part
10 currently defines "Director" as meaning the Director of the
Office of Enrollment and Discipline. The Office plans to propose
changes to part 10 in a separate rule making, and also plans to change
the use of "Director" in part 10 for consistency with the remaining
provisions of 37 CFR chapter I as part of that rule making (at which
time the phrase "except for part 10" will be deleted from
1.9(j)).
Section 1.15 is removed and reserved as its provisions have
been supplanted by the provisions of part 102.
Section 1.25 is amended by adding a paragraph (c), which
specifies how a deposit account holder may submit a payment to the
Office to replenish the deposit account. A payment to replenish a
deposit account may be submitted by making the payment by electronic
funds transfer through the Federal Reserve Fedwire System. Deposit
account holders who want to use the Federal Reserve Fedwire System must
provide the following information to their bank or financial
institution: (1) Name of the Bank, which is Treas NYC (Treasury New
York City); (2) Bank Routing Code, which is 021030004; (3) United
States Patent and Trademark Office account number with the Department
of the Treasury, which is 13100001; and (4) the deposit account
holder's company name and deposit account number. The deposit account
holder should inform his or her bank or financial institution to use
due care to ensure that all pertinent account numbers are listed on the
transaction because the failure to include the proper deposit account
number will delay the processing of the replenishment. A second method
of making a payment to replenish a deposit account is by credit card or
electronic funds transfer over the Office's Internet Web site
(www.uspto.gov). Specifically, from the Office's Web site
homepage (www.uspto.gov), click on the "Online Business"
tab, and then click the "Revenue Accounting & Management" tab, and
then click the "Maintain USPTO Deposit Accounts" tab. A third
method of making a payment to replenish a deposit account is by mailing
the payment with the USPS to: Director of the United States Patent and
Trademark Office, PO Box 70541, Chicago, Illinois 60673. Finally, a
fourth method of making a payment to replenish a deposit account is by
mailing the payment with a private delivery service or hand-carrying
the payment to: Director of the United States Patent and Trademark
Office, Deposit Accounts, One Crystal Park, 2011 Crystal Drive, Suite
307, Arlington, Virginia 22202.
Further information on deposit account replenishment may be
obtained from the Office's Internet Web site
(http://ww.uspto.gov/web/offices/ac/comp/fin/electron.htm),
or by contacting the Deposit Account Division at 703-305-4631.
Section 1.51(a) is amended to change "Commissioner of Patents
and Trademarks" to "Director of the United States Patent and
Trademark Office" for consistency with the change in nomenclature.
Sections 1.53(d)(9), 1.417, and 1.434(a) are amended to change
their special Box designations to corresponding Mail Stop designations.
Section 1.302(c) is amended to provide that notices of appeal
directed to the Director shall be mailed to or served by hand on the
General Counsel as provided in 104.2.
Section 1.434(d)(2) is amended to correct a grammatical error.
Section 1.480(b) is amended to change its special Box
designation to a corresponding Mail Stop designation. Section 1.480(b)
is also amended to add a reference to PCT Rule 53 (which provides for
Demands under the PCT).
Section 1.627(a) is amended to change the reference to
1.1(e) to a reference to 1.1(a)(1)(iii) for consistency with the
changes to 1.1.
Section 1.676(d) is amended to change the address to the
correspondence address set out in 1.1(a)(1)(iii).
Section 1.740(a)(13) is amended to change "Commissioner of
Patents and Trademarks" to "Director of the United States Patent
and Trademark Office" for consistency with the change in
nomenclature.
Part 2: Part 2 is amended to change each reference
to "Commissioner" to read "Director".
Section 2.123(f)(2) is amended to change "address the
package, and forward the same to the Commissioner of Patents and
Trademarks" to "promptly forward the package to the address set out
in 1.1(a)(2)(i)".
Section 2.145(b)(3) is amended to provide that notices of
appeal directed to the Director shall be mailed to or served by hand on
the General Counsel as provided in 104.2.
Part 3: Part 3 is amended to change each reference
to "Commissioner of Patents and Trademarks" or "Commissioner"
to read "Director".
Section 3.27 is amended to change the address to: Mail Stop
Assignment Recordation Services, Director of the United States Patent
and Trademark Office, PO Box 1450, Alexandria, Virginia 22313-1450.
Part 4: Section 4.3(c) is amended to change the
address for complaints concerning invention promoters to: Mail Stop 24,
Commissioner for Patents, PO Box 1450, Alexandria, Virginia 22313-1450.
Section 4.6 is amended to change the address for complaints
concerning registered patent attorneys or agents to: Mail Stop OED,
Director of the United States Patent and Trademark Office, PO Box 1450,
Alexandria, Virginia 22313-1450.
Part 5: Part 5 is amended to change each reference
to "Commissioner of Patents and Trademarks" or "Commissioner"
to read "Commissioner for Patents". Section 4732(a)(10)(B) of the
AIPA amended 35 U.S.C. chapter 17 to change "Commissioner" to
"Commissioner of Patents" (sic) rather than
"Director". See 113 Stat. at 1501A-582. Therefore, the
Office is amending part 5 to change each reference to "Commissioner
of Patents and Trademarks" or "Commissioner" to read
"Commissioner for Patents" (rather than "Director") for
consistency with section 4732(a)(10)(B) of the AIPA.
Section 5.1(a) is amended to change the address to:
Commissioner for Patents (Attention Licensing and Review), PO Box 1450,
Alexandria, Virginia 22313-1450.
Part 102: Sections 102.1(b), 102.4(a), 102.10(b),
102.23(a), 102.24(a), and 102.29(b) are amended to change the address
to: United States Patent and Trademark Office, PO Box 1450, Alexandria,
Virginia 22313-1450 (with headings as appropriate). Sections 102.1(b),
102.23(a), and 102.24(a) are also amended to indicate that
correspondence being delivered by hand should be delivered to Two
Crystal Park, 2121 Crystal Drive, Suite 905, Arlington, Virginia.
Part 104: Section 104.1 is amended to define
"Director" as meaning the Under Secretary of Commerce for
Intellectual Property and Director of the United States Patent and
Trademark Office for consistency with 1.9(j).
Part 150: Part 150 is amended to change each
reference to "Commissioner" to read "Director'.
Section 150.1 is amended to define "Director" as meaning
the Under Secretary of Commerce for Intellectual Property and Director
of the United States Patent and Trademark Office for consistency with
1.9(j).
Section 150.6 is amended to change the address to: Mail Stop 4,
Director of the United States Patent and Trademark Office, PO Box 1450,
Alexandria, Virginia 22313-1450.
Classification
Administrative Procedure Act: Since this final rule
is directed to changing the address for filing certain correspondence
with the Office and changes in the titles of Office officials for
consistency with the titles as provided in the AIPA, this final rule
merely involves rules of agency organization, procedure, or practice
within the meaning of 5 U.S.C. 553(b)(A). Accordingly, this final rule
may be adopted without prior notice and opportunity for public comment
under 5 U.S.C. 553(b) and (c), or thirty-day advance publication under
5 U.S.C. 553(d).
Regulatory Flexibility Act: As prior notice and an
opportunity for public comment are not required pursuant to 5 U.S.C.
553 (or any other law), a regulatory flexibility analysis under the
Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is not
required. See 5 U.S.C. 603.
Executive Order 13132: This rule making does not
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under Executive Order 13132
(Aug. 4, 1999).
Executive Order 12866: This rule making has been
determined to be not significant for purposes of Executive Order 12866
(Sept. 30, 1993).
Paperwork Reduction Act: This rule making does not
create any information collection requirements under the Paperwork
Reduction Act of 1995 (44 U.S.C. 3501 et seq.).
Notwithstanding any other provision of law, no person is
required to respond to nor shall a person be subject to a penalty for
failure to comply with a collection of information subject to the
requirements of the Paperwork Reduction Act unless that collection of
information displays a currently valid OMB control number.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Courts, Inventions and
patents, Reporting and record keeping requirements, Small Businesses.
37 CFR Part 2
Administrative practice and procedure, Courts, Lawyers,
Trademarks.
CFR Part 3
Administrative practice and procedure, Inventions and patents,
Reporting and record keeping requirements.
CFR Part 4
Administrative practice and procedure, Inventions and patents.
CFR Part 5
Classified information, Foreign relations, Inventions and
patents.
CFR Part 102
Administrative practice and procedure, Freedom of information,
Privacy, Public information.
CFR Part 104
Administrative practice and procedure, Claims, Courts, Freedom
of information, Inventions and patents, Tort claims, Trademarks.
CFR Part 150
Administrative practice and procedure, Authority delegations,
Semiconductor chips, Mask works.
For the reasons set forth in the preamble, 37 CFR parts 1, 2,
3, 4, 5, 102, 104, and 150 are 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. 2(b)(2).
2. In 37 CFR part 1, except for 1.23, revise all references
to "Commissioner" to read "Director".
3. In 37 CFR part 1, revise all references to
"Commissioner's" to read "Director's".
4. Section 1.1 is revised to read as follows:
1.1 Addresses for correspondence with the United States
Patent and Trademark Office.
(a) In general. Except as provided in paragraphs
(a)(3)(i), (a)(3)(ii) and (d)(1) of this section, all correspondence
intended for the United States Patent and Trademark Office must be
addressed to either "Director of the United States Patent and
Trademark Office, PO Box 1450, Alexandria, Virginia 22313-1450" or to
specific areas within the Office as set out in paragraphs (a)(1),
(a)(2) and (a)(3)(iii) of this section. When appropriate,
correspondence should also be marked for the attention of a particular
office or individual.
(1) Patent correspondence. (i) In
general. All correspondence concerning patent matters processed by
organizations reporting to the Commissioner for Patents should be
addressed to: Commissioner for Patents, PO Box 1450, Alexandria,
Virginia 22313-1450.
(ii) Board of Patent Appeals and Interferences:
Appeals. All correspondence in an application involved in an
appeal to the Board of Patent Appeals and Interferences during the
period beginning when an appeal docketing notice is issued and ending
when a decision has been rendered by the Board of Patent Appeals and
Interferences, as well as any request for rehearing of a decision by
the Board of Patent Appeals and Interferences, should be mailed to:
Board of Patent Appeals and Interferences, United States Patent and
Trademark Office, PO Box 1450, Alexandria, Virginia 22313-1450. Notices
of appeal, appeal briefs, reply briefs, requests for oral hearing, as
well as all other correspondence in an application involved in an
appeal to the Board of Patent Appeals and Interferences for which an
address is not otherwise specified, should be addressed as set out in
paragraph (a)(1)(i) of this section.
(iii) Board of Patent Appeals and Interferences:
Interferences. Except as an administrative patent judge or the
Board may otherwise direct, all correspondence relating to patent
interferences, or relating to patent applications or patents involved
in an interference, should be mailed to: Mail Stop INTERFERENCE, Board
of Patent Appeals and Interferences, United States Patent and Trademark
Office, PO Box 1450, Alexandria, Virginia 22313-1450.
(2) Trademark correspondence. - (i) In
general. All trademark-related documents filed on paper, except
documents sent to the Assignment Services Division for recordation and
requests for copies of trademark documents, should be addressed to:
Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia
22202-3513.
(ii) Electronic applications. An applicant may
transmit an application for trademark registration electronically, but
only if the applicant uses the Office's electronic form.
(3) Office of General Counsel correspondence. - (i)
Litigation and service. Correspondence relating to
pending litigation or otherwise within the scope of part 104 of this
title shall be addressed as provided in 104.2.
(ii) Disciplinary proceedings. Correspondence to
counsel for the Director of the Office of Enrollment and Discipline
relating to disciplinary proceedings pending before an Administrative
Law Judge or the Director shall be mailed to: Office of the Solicitor,
PO Box 16116, Arlington, Virginia 22215.
(iii) Solicitor, in general. Correspondence to the
Office of the Solicitor not otherwise provided for shall be addressed
to: Mail Stop 8, Director of the United States Patent and Trademark
Office, PO Box 1450, Alexandria, Virginia 22313-1450.
(iv) General Counsel. Correspondence to the Office
of the General Counsel not otherwise provided for, including
correspondence to the General Counsel relating to disciplinary
proceedings, shall be addressed to: General Counsel, United States
Patent and Trademark Office, PO Box 1450, Alexandria, Virginia
22313-1450.
(v) Improper correspondence. Correspondence
improperly addressed to a Post Office Box specified in paragraphs
(a)(3)(i) and(a)(3)(ii) of this section will not be filed elsewhere in
the United States Patent and Trademark Office, and may be returned.
(4) Office of Public Records correspondence. - (i)
Assignments. All patent-related or trademark-related
documents to be recorded by Assignment Services Division, except for
documents filed together with a new application or under 3.81 of
this chapter, should be addressed to: Mail Stop Assignment Recordation
Services, Director of the United States Patent and Trademark Office, PO
Box 1450, Alexandria, Virginia 22313-1450. See 3.27.
(ii) Documents. All requests for certified or
uncertified copies of patent or trademark documents should be addressed
to: Mail Stop Document Services, Director of the United States Patent
and Trademark Office, PO Box 1450, Alexandria, Virginia 22313-1450.
(b) Patent Cooperation Treaty. Letters and other
communications relating to international applications during the
international stage and prior to the assignment of a national serial
number should be additionally marked "Mail Stop PCT."
(c) Reexamination. Requests for reexamination should
be additionally marked "Mail Stop Reexam."
(d) Maintenance fee correspondence. - (1)
Payments. Payments of maintenance fees in patents not
submitted electronically should be mailed to: United States Patent and
Trademark Office, P.O. Box 371611, Pittsburgh, Pennsylvania 15250-1611.
(2) Other correspondence. Correspondence related to
maintenance fees other than payments of maintenance fees in patents is
not to be mailed to P.O. Box 371611, Pittsburgh, Pennsylvania
15250-1611, but must be mailed to: Mail Stop M Correspondence, Director
of the United States Patent and Trademark Office, P.O. Box 1450,
Alexandria, Virginia 22313-1450.
(e) Patent term extension. All applications for
extension of patent term under 35 U.S.C. 156 and any communications
relating thereto intended for the United States Patent and Trademark
Office should be additionally marked "Mail Stop Patent Ext." When
appropriate, the communication should also be marked to the attention
of a particular individual, as where a decision has been rendered.
(f) Provisional applications. The filing of all
provisional applications and any communications relating thereto should
be additionally marked "Mail Stop Provisional Patent Application."
Note: Sections 1.1 to 1.26 are applicable to
trademark cases as well as to national and international patent cases
except for provisions specifically directed to patent cases. See 1.9
for definitions of "national application" and "international
application."
5. Section 1.6 is amended by removing and reserving
paragraph (b).
1.6 Receipt of correspondence.
* * * * *
(b) [Reserved]
* * * * *
6. Section 1.9 is amended by adding a new paragraph (j) to read
as follows:
1.9 Definitions.
* * * * *
(j) Director as used in this chapter, except for part 10 of
this section, means the Under Secretary of Commerce for Intellectual
Property and Director of the United States Patent and Trademark Office.
1.15 [Removed and Reserved]
7. Section 1.15 is removed and reserved.
8. Section 1.25 is amended by adding paragraph (c) to read as
follows:
1.25 Deposit accounts.
* * * * *
(c) A deposit account holder may replenish the deposit account
by submitting a payment to the United States Patent and Trademark
Office. A payment to replenish a deposit account must be submitted by
one of the methods set forth in paragraphs (c)(1), (c)(2), (c)(3), or
(c)(4) of this section.
(1) A payment to replenish a deposit account may be submitted
by electronic funds transfer through the Federal Reserve Fedwire
System, which requires that the following information be provided to
the deposit account holder's bank or financial institution:
(i) Name of the Bank, which is Treas NYC (Treasury New York
City);
(ii) Bank Routing Code, which is 021030004;
(iii) United States Patent and Trademark Office account number
with the Department of the Treasury, which is 13100001; and
(iv) The deposit account holder's company name and deposit
account number.
(2) A payment to replenish a deposit account may be submitted
by credit card or electronic funds transfer over the Office's Internet
Web site (www.uspto.gov).
(3) A payment to replenish a deposit account may be submitted
by mail with the USPS to: Director of the United States Patent and
Trademark Office, P.O. Box 70541, Chicago, Illinois 60673.
(4) A payment to replenish a deposit account may be submitted
by mail with a private delivery service or hand-carrying the payment
to: Director of the United States Patent and Trademark Office, Deposit
Accounts, One Crystal Park, 2011 Crystal Drive, Suite 307, Arlington,
Virginia 22202.
9. Section 1.51 is amended by revising paragraph (a) to read as
follows:
1.51 General requisites of an application.
(a) Applications for patents must be made to the Director of
the United States Patent and Trademark Office.
* * * * *
10. Section 1.53 is amended by revising paragraph (d)(9) to
read as follows:
1.53 Application number, filing date, and completion
of application.
* * * * *
(d) * * *
(9) Envelopes containing only requests and fees for filing an
application under this paragraph should be marked "Mail Stop CPA."
Requests for an application under this paragraph filed by facsimile
transmission should be clearly marked "Mail Stop CPA."
* * * * *
11. The undesignated center heading in Subpart B immediately
before 1.181 is revised to read as follows:
Petitions and Action by the Director
12. Section 1.302 is amended by revising paragraph (c) to read
as follows:
1.302 Notice of appeal.
* * * * *
(c) Notices of appeal directed to the Director shall be mailed
to or served by hand on the General Counsel as provided in 104.2.
13. Section 1.417 is revised to read as follows:
1.417 Submission of translation of international
publication.
The submission of the international publication or an English
language translation of an international application pursuant to 35
U.S.C. 154(d)(4) must clearly identify the international application to
which it pertains ( 1.5(a)) and, unless it is being submitted
pursuant to 1.495, be clearly identified as a submission pursuant to
35 U.S.C. 154(d)(4). Otherwise, the submission will be treated as a
filing under 35 U.S.C. 111(a). Such submissions should be marked
"Mail Stop PCT."
14. Section 1.434 is amended by revising paragraphs (a) and
(d)(2) to read as follows:
1.434 The request.
(a) The request shall be made on a standardized form (PCT Rules
3 and 4). Copies of printed Request forms are available from the United
States Patent and Trademark Office. Letters requesting printed forms
should be marked "Mail Stop PCT."
* * * * *
(d) * * *
(2) Shall include a reference to any prior-filed national
application or international application designating the United States
of America, if the benefit of the filing date for the prior-filed
application is to be claimed; and
* * * * *
15. Section 1.480 is amended by revising paragraph (b) to read
as follows:
1.480 Demand for international preliminary examination.
* * * * *
(b) The Demand shall be made on a standardized form (PCT Rule
53). Copies of the printed Demand forms are available from the United
States Patent and Trademark Office. Letters requesting printed Demand
forms should be marked "Mail Stop PCT."
* * * * *
16. Section 1.627 is amended by revising paragraph (a) to read
as follows:
1.627 Preliminary statement, sealing before filing,
opening of statement.
(a) The preliminary statement and copies of any drawing or
written description shall be filed in a sealed envelope bearing only
the name of the party filing the statement and the style
(e.g., Jones v. Smith) and number of the interference. The
sealed envelope should contain only the preliminary statement and
copies of any drawing or written description. If the preliminary
statement is filed through the mail, the sealed envelope should be
enclosed in an outer envelope addressed in accordance with
1.1(a)(1)(iii).
* * * * *
17. Section 1.676 is amended by revising the introductory text
of paragraph (d) to read as follows:
1.676 Certification and filing by officer, marking
exhibits.
* * * * *
(d) Unless the parties agree otherwise in writing or on the
record at the deposition, the officer shall securely seal the certified
transcript in an envelope endorsed with the style of the interference
(e.g., Smith v. Jones), the interference number, the name of the
witness, and the date of sealing and shall promptly forward the
envelope to the address set out in 1.1(a)(1)(iii). Documents and
things produced for inspection during the examination of a witness,
shall, upon request of a party, be marked for identification and
annexed to the certified transcript, and may be inspected and copied by
any party, except that if the person producing the documents and things
desires to retain them, the person may:
* * * * *
18. Section 1.740 is amended by revising paragraph (a)(13) to
read as follows:
1.740 Formal requirements for application for extension
of patent term; correction of informalities.
(a) * * *
(13) A statement that applicant acknowledges a duty to disclose
to the Director of the United States Patent and Trademark Office and
the Secretary of Health and Human Services or the Secretary of
Agriculture any information which is material to the determination of
entitlement to the extension sought (see 1.765);
* * * * *
PART 2 - RULES OF PRACTICE IN TRADEMARK CASES
19. The authority citation for 37 CFR part 2 is revised to read
as follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 2(b)(2).
20. In 37 CFR part 2, revise all references to
"Commissioner" to read "Director".
21. Section 2.123 is amended by revising paragraph (f)(2) to
read as follows:
2.123 Trial testimony in inter partes cases.
* * * * *
(f) * * *
(2) If any of the foregoing requirements in paragraph (f)(1) of
this section are waived, the certificate shall so state. The officer
shall sign the certificate and affix thereto his seal of office, if he
has such a seal. Unless waived on the record by an agreement, he shall
then securely seal in an envelope all the evidence, notices, and paper
exhibits, inscribe upon the envelope a certificate giving the number
and title of the case, the name of each witness, and the date of
sealing. The officer or the party taking the deposition, or its
attorney or other authorized representative, shall then promptly
forward the package to the address set out in 1.1(a)(2)(i). If the
weight or bulk of an exhibit shall exclude it from the envelope, it
shall, unless waived on the record by agreement of all parties, be
authenticated by the officer and transmitted by the officer or the
party taking the deposition, or its attorney or other authorized
representative, in a separate package marked and addressed as provided
in this section.
* * * * *
22. Section 2.145 is amended by revising paragraph (b)(3) to
read as follows:
2.145 Appeal to court and civil action.
* * * * *
(b) * * *
(3) Notices of appeal directed to the Director shall be mailed
to or served by hand on the General Counsel as provided in 104.2.
* * * * *
23. The undesignated center heading immediately before 2.146
is revised to read as follows:
Petitions and Action by the Director
PART 3 - ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
24. The authority citation for 37 CFR part 3 continues to read
as follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 2(b)(2).
25. In 37 CFR part 3, revise all references to
"Commissioner" or "Commissioner of Patents and Trademarks" to
read "Director".
26. Section 3.27 is revised to read as follows:
3.27 Mailing address for submitting documents to be
recorded.
Documents and cover sheets to be recorded should be addressed
to Mail Stop Assignment Recordation Services, Director of the United
States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia
22313-1450, unless they are filed together with new applications or
with a request under 3.81.
PART 4 - COMPLAINTS REGARDING INVENTION PROMOTERS
27. The authority citation for 37 CFR part 4 is revised to read
as follows:
Authority: 35 U.S.C. 2(b)(2) and 297.
28. Section 4.3 is amended by revising paragraph (c) to read as
follows:
4.3 Submitting Complaints.
* * * * *
(c) The complaint should fairly summarize the action of the
invention promoter about which the person complains. Additionally, the
complaint should include names and addresses of persons believed to be
associated with the invention promoter. Complaints, and any replies,
must be addressed to: Mail Stop 24, Commissioner for Patents, P.O. Box
1450, Alexandria, Virginia 22313-1450.
* * * * *
29. Section 4.6 is revised to read as follows:
4.6 Attorneys and Agents.
Complaints against registered patent attorneys and agents will
not be treated under this section, unless a complaint fairly
demonstrates that invention promotion services are involved. Persons
having complaints about registered patent attorneys or agents should
contact the Office of Enrollment and Discipline at Mail Stop OED,
Director of the United States Patent and Trademark Office, PO Box 1450,
Alexandria, Virginia 22313-1450, and the attorney discipline section of
the attorney's state licensing bar if an attorney is involved.
PART 5 - SECRECY OF CERTAIN INVENTIONS AND LICENSES TO
EXPORT AND FILE APPLICATIONS IN FOREIGN COUNTRIES
30. The authority citation for 37 CFR Part 5 is revised to read
as follows:
Authority: 35 U.S.C. 2(b)(2), 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.; 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 Director (15 CFR
370.10(j), 22 CFR 125.04, and 10 CFR 810.7).
31. In 37 CFR part 5, revise all references to
"Commissioner" or "Commissioner of Patents and Trademarks" to
read "Commissioner for Patents".
32. Section 5.1 is amended by revising paragraph (a) to read as
follows:
5.1 Applications and correspondence involving national
security.
(a) All correspondence in connection with this part, including
petitions, should be addressed to: Commissioner for Patents (Attention
Licensing and Review), P.O. Box 1450, Alexandria, Virginia 22313-1450.
* * * * *
PART 102 - DISCLOSURE OF GOVERNMENT INFORMATION
33. The authority citation for 37 CFR part 102 continues to
read as follows:
Authority: 5 U.S.C. 552; 5 U.S.C. 552a; 5 U.S.C.
553; 31 U.S.C. 3717; 35 U.S.C. 2(b)(2), 21, 41, 42, 122; 44 U.S.C.
3101.
34. Section 102.1 is amended by revising paragraph (b) to read
as follows:
102.1 General.
* * * * *
(b) As used in this subpart, FOIA Officer means the
USPTO employee designated to administer FOIA for USPTO. To ensure
prompt processing of a request, correspondence should be addressed to
the FOIA Officer, United States Patent and Trademark Office, PO Box
1450, Alexandria, Virginia 22313-1450, or delivered by hand to Two
Crystal Park, 2121 Crystal Drive, Suite 905, Arlington, Virginia.
35. Section 102.4 is amended by revising paragraph (a) to read
as follows:
102.4 Requirements for making requests.
(a) A request for USPTO records that are not customarily made
available to the public as part of USPTO's regular informational
services must be in writing, and shall be processed under FOIA,
regardless of whether FOIA is mentioned in the request. Requests should
be sent to the USPTO FOIA Officer, United States Patent and Trademark
Office, P.O. Box 1450, Alexandria, Virginia 22313-1450 (records FOIA
requires to be made regularly available for public inspection and
copying are addressed in 102.2(c)). For the quickest handling, the
request letter and envelope should be marked "Freedom of Information
Act Request." For requests for records about oneself, 102.24
contains additional requirements. For requests for records about
another individual, either a written authorization signed by that
individual permitting disclosure of those records to the requester or
proof that individual is deceased (for example, a copy of a death
certificate or an obituary) facilitates processing the request.
* * * * *
36. Section 102.10 is amended by revising paragraph (b) to read
as follows:
102.10 Appeals from initial determinations or untimely
delays.
* * * * *
(b) Appeals shall be decided by a Deputy General Counsel.
Appeals should be addressed to the General Counsel, United States
Patent and Trademark Office, PO Box 1450, Alexandria, Virginia
22313-1450. Both the letter and the appeal envelope should be clearly
marked "Freedom of Information Appeal". The appeal must include a
copy of the original request and the initial denial, if any, and may
include a statement of the reasons why the records requested should be
made available and why the initial denial, if any, was in error. No
opportunity for personal appearance, oral argument or hearing on appeal
is provided.
* * * * *
37. Section 102.23 is amended by revising paragraph (a) to read
as follows:
102.23 Procedures for making inquiries.
(a) Any individual, regardless of age, who is a citizen of the
United States or an alien lawfully admitted for permanent residence
into the United States may submit an inquiry to USPTO. The inquiry
should be made either in person at Two Crystal Park, 2121 Crystal
Drive, Suite 905, Arlington, Virginia, or by mail addressed to the
Privacy Officer, United States Patent and Trademark Office, PO Box
1450, Alexandria, Virginia 22313-1450, or to the official identified in
the notification procedures paragraph of the systems of records notice
published in the Federal Register. If an individual believes
USPTO maintains a record pertaining to that individual but does not
know which system of records might contain such a record, the USPTO
Privacy Officer will provide assistance in person or by mail.
* * * * *
38. Section 102.24 is amended by revising paragraph (a) to read
as follows:
102.24 Procedures for making requests for records.
(a) Any individual, regardless of age, who is a citizen of the
United States or an alien lawfully admitted for permanent residence
into the United States may submit a request for access to records to
USPTO. The request should be made either in person at Two Crystal Park,
2121 Crystal Drive, Suite 905, Arlington, Virginia, or by mail
addressed to the Privacy Officer, United States Patent and Trademark
Office, PO Box 1450, Alexandria, Virginia 22313-1450.
* * * * *
39. Section 102.29 is amended by revising paragraph (b) to read
as follows:
102.29 Appeal of initial adverse determination on
correction or amendment.
* * * * *
(b) An appeal should be addressed to the General Counsel,
United States Patent and Trademark Office, PO Box 1450, Alexandria,
Virginia 22313-1450. An appeal should include the words "PRIVACY
APPEAL" in capital letters at the top of the letter and on the face
of the envelope. An appeal not addressed and marked as provided herein
will be so marked by USPTO personnel when it is so identified and will
be forwarded immediately to the General Counsel. An appeal which is not
properly addressed by the individual will not be deemed to have been
"received" for purposes of measuring the time periods in this
section until actual receipt by the General Counsel. In each instance
when an appeal so forwarded is received, the General Counsel shall
notify the individual that his or her appeal was improperly addressed
and the date when the appeal was received at the proper address.
* * * * *
PART 104 - LEGAL PROCESSES
40. The authority citation for 37 CFR part 104 continues to
read as follows:
Authority: 35 U.S.C. 2(b)(2), 10, 23, 25; 44 U.S.C.
3101.
41. Section 104.1 is amended by revising the second sentence to
read as follows:
104.1 Definitions.
* * * * *
Director means the Under Secretary of Commerce for
Intellectual Property and Director of the United States Patent and
Trademark Office (see 1.9(j)).
* * * * *
PART 150 - REQUESTS FOR PRESIDENTIAL PROCLAMATIONS PURSUANT
TO 17 U.S.C. 902(a)(2)
42. The authority citation for 37 CFR part 150 is revised to
read as follows:
Authority: 35 U.S.C. 2(b)(2); E.O. 12504, 50 FR
4849; 3 CFR, 1985 Comp., p. 335.
43. In 37 CFR part 150, revise all references to
"Commissioner" to read "Director".
44. Section 150.1 is amended by revising paragraph (a) to read
as follows:
150.1 Definitions.
(a) Director means the Under Secretary of Commerce
for Intellectual Property and Director of the United States Patent and
Trademark Office (see 1.9(j)).
* * * * *
45. Section 150.6 is revised to read as follows:
150.6 Mailing address.
Requests and all correspondence pursuant to these guidelines
shall be addressed to: Mail Stop 4, Director of the United States
Patent and Trademark Office, PO Box 1450, Alexandria, Virginia
22313-1450.
March 19, 2003 JAMES E. ROGAN
Under Secretary of Commerce for Intellectual
Property and Director of the United States
Patent and Trademark Office