96-28088. Communications With the Patent and Trademark Office  

  • [Federal Register Volume 61, Number 213 (Friday, November 1, 1996)]
    [Rules and Regulations]
    [Pages 56439-56448]
    From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
    [FR Doc No: 96-28088]
    
    
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    DEPARTMENT OF COMMERCE
    
    Patent and Trademark Office
    
    37 CFR Parts 1, 5 and 10
    
    [Docket No. 951006247-6255-02]
    RIN 0651-AA70
    
    
    Communications With the Patent and Trademark Office
    
    AGENCY: Patent and Trademark Office, Commerce.
    
    ACTION: Final rule.
    
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    SUMMARY: The Patent and Trademark Office (Office) is amending its rules 
    of practice to specify addresses for agency mail to expedite mail 
    delivery, define ``Federal holiday within the District of Columbia,'' 
    clarify and simplify procedures for filing papers and fees by ``Express 
    Mail,'' and remove certain exclusions from Sec. 1.8(a)(2)(ii) to permit 
    additional trademark documents to be considered timely filed if they 
    are mailed or transmitted by the due date and in compliance with 
    Sec. 1.8(a)(1).
    
    EFFECTIVE DATE: December 2, 1996.
    
    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, DC 20231; or 
    Nancy L. Omelko (for trademark-related matters) by telephone at (703) 
    308-8910, extension 39, or by mail marked to her attention and 
    addressed to the Assistant Commissioner for Trademarks, 2900 Crystal 
    Drive, Arlington, Virginia 22202-3513.
    
    SUPPLEMENTARY INFORMATION: In a Notice of Proposed Rulemaking published 
    in the Federal Register at 57 FR 55691 (November 2, 1995) and in the 
    Patent and Trademark Office Official Gazette at 1180 Off. Gaz. Pat. 
    Office 122 (November 28, 1995), the Office proposed to change addresses 
    for correspondence with the Office 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; to add a separate mailing address in the Office 
    of the Solicitor for disciplinary matters; and to delete the 
    requirement for a certificate of mailing by Express Mail from 
    Sec. 1.10(b).
        The following includes a discussion of the rules being changed, the 
    reasons for those changes, and an analysis of the comments received in 
    response to the Notice of Proposed Rulemaking.
    
    General Mailing Addresses
    
        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, 
    except for patent documents sent to the Assignment Division for 
    recordation and requests for certified and uncertified copies of patent 
    documents, which should be addressed to the Commissioner of Patents and 
    Trademarks; (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. In addition, there 
    will be separate mailing addresses in the Office of the Solicitor for 
    certain disciplinary matters and cases involving pending litigation. 
    These addresses are set forth and discussed below.
        Those who correspond with the Office are requested to use separate 
    envelopes directed to the different areas.
    
    [[Page 56440]]
    
    Patent-Related Mail
    
        Section 1.1 is 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, DC 20231.'' The Office first announced the new address for 
    patent-related mail in a notice entitled ``Change of Address for Patent 
    Applications and Patent Related Papers,'' published in the Patents 
    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 Sec. 1.8, the certificate of mailing should be 
    completed with the new address: Assistant Commissioner for Patents, 
    Washington, DC 20231.
        Unless otherwise specified, correspondence not processed by 
    organizations reporting to the Assistant Commissioner for Patents, such 
    as communications with the Board (excluding Notices of Appeal and 
    appeal briefs), 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, DC 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, 
    DC 20231. Orders for certified and uncertified copies of Office 
    documents should be addressed to: Box 10, Commissioner of Patents and 
    Trademarks, Washington, DC 20231.
        Special Office mail boxes as currently listed in each issue of the 
    Patents 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 
    Sec. 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 entitled ``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 Trademarks Official Gazette at 1163 
    Off. Gaz. Trademark Office 80 (June 28, 1994) (republished at 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 Trademarks Official Gazette. Use of the boxes is 
    encouraged, to expedite processing of incoming mail.
        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 in amended 
    Sec. 1.1(a)(3)(i), 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. Hand delivery 
    of trademark papers and fees directly to the South Tower Building is 
    recommended, to expedite processing.
    
    Trademark Documents Filed with Certificates of Mailing or Transmission 
    Under Sec. 1.8
    
        The Office is amending Sec. 1.8(a)(2) to remove the exclusions 
    listed in Sec. 1.8(a)(2)(ii)(B) through (F). This will permit the 
    following trademark documents to be considered timely filed if they are 
    mailed or transmitted by the due date and in compliance with 
    Sec. 1.8(a)(1): (1) affidavits of continued use or excusable nonuse, 
    under 15 U.S.C. 1058; (2) renewal applications, under 15 U.S.C. 1059; 
    (3) amendments to allege use, under 15 U.S.C. 1051(c); (4) statements 
    of use, under 15 U.S.C. 1051(d)(1); (5) requests for extensions of time 
    to file a statement of use, under 15 U.S.C. 1051(d)(2); and (6) 
    petitions to cancel registered marks, under 15 U.S.C. 1064. This change 
    is intended to make filing easier and less expensive because a 
    significantly larger number of documents will be considered timely 
    filed using the simpler, less expensive first class mailing provisions 
    of Sec. 1.8.
        Section 2.165(a)(1), dealing with affidavits of use or excusable 
    non-use filed under Section 8 of the Trademark Act, is amended by 
    deleting the last sentence referencing the inapplicability of 
    certificates of mailing provided by Sec. 1.8.
        It should be noted that Sec. 1.6(d)(8), which provides that 
    correspondence other than notices of ex parte appeal may not be 
    transmitted by facsimile to the Trademark Trial and Appeal Board, will 
    not change. Thus, while a cancellation petitioner may now ensure timely 
    filing with the certificate of mailing procedure set forth in 
    Sec. 1.8(a)(1), the petitioner may not transmit the above-mentioned 
    documents directed to the Trademark Trial and Appeal Board by fax or 
    ensure timely filing with the certificate of facsimile transmission.
    
    [[Page 56441]]
    
        Section 1.8(a)(2)(ii)(A), which states that the Certificate of 
    Mailing or Transmission Procedure does not apply to the filing of 
    applications for registration of marks, will not change. The filing 
    date of an application is considered to be much more critical than the 
    filing dates of the papers accepted under Sec. 1.8. For example, in 
    Trademark applications, the granting of a filing date to an application 
    potentially establishes a date of constructive use of the mark, and is 
    also critical for determining whether foreign priority can be claimed 
    under 15 U.S.C. 1126(d); therefore, entry of the date of deposit by a 
    disinterested USPS employee is required.
    
    Express Mail
    
        Section 1.10 is being amended to simplify and clarify the 
    procedures for filing correspondence by the ``Express Mail Post Office 
    to Addressee'' (Express Mail) service of the United States Postal 
    Service (USPS), by deleting the requirement for a Certificate of 
    Mailing by Express Mail.
        Section 1.10 was promulgated to implement 35 U.S.C. 21, under which 
    the Commissioner may ``by rule prescribe that any paper or fee required 
    to be filed in the Patent and Trademark Office will be considered filed 
    in the Office on the date on which it was deposited with the United 
    States Postal Service.''
        Under the prior rule, the filer was required to include a 
    Certificate of Mailing by Express Mail, certifying the date of deposit 
    as Express Mail. Papers which did not include this certificate, or 
    which included a certificate that did not meet the requirements of the 
    rule, were given a filing date as of the date received in the Office 
    rather than the date of deposit as Express Mail. The lost filing date 
    for a significant number of these papers resulted in the loss of 
    substantive rights. In light of the problematic nature of the 
    requirement for a Certificate of Mailing by Express Mail and its 
    apparent redundancy in purpose, inasmuch as the date of deposit has 
    already been entered by a disinterested third party, the Office has 
    deleted this requirement from Sec. 1.10(b).
        Under the new rule, Office personnel will routinely look to the 
    Express Mail mailing label, and stamp the ``date-in'' or other official 
    USPS notation as the filing date of the correspondence. If the USPS 
    deposit date cannot be determined, the correspondence will be accorded 
    the date of receipt in the Office as the filing date.
        Section 1.10(b), as amended, provides that the Express Mail mailing 
    label number should be placed on correspondence filed by Express Mail 
    under Sec. 1.10 prior to the original mailing. Correspondence actually 
    received by the Office will not be denied a filing date as of the date 
    of deposit with the USPS because the Express Mail mailing label number 
    was not placed thereon prior to its original mailing. However, the 
    absence of the number of the Express Mail mailing label will preclude a 
    party from obtaining relief on petition, under Sec. 1.10 (c) through 
    (e).
        Section 1.10(b) also provides that correspondence should be 
    deposited directly with an employee of the USPS to ensure that the 
    person depositing the correspondence receives a legible copy of the 
    Express Mail mailing label with the ``date-in'' clearly marked, and 
    that persons dealing indirectly with the employees of the USPS (such as 
    by deposit in an Express Mail drop box) do so at the risk of not 
    receiving a copy of the Express Mail mailing label with the desired 
    ``date-in'' clearly marked.
        Sections 1.10(c) through 1.10(e) set forth procedures for 
    petitioning the Commissioner to accord a filing date as of the date of 
    deposit as Express Mail. Section 1.10(c) applies where there is a 
    discrepancy between the filing date accorded by the Office and the 
    ``date-in'' or other official notation entered by the USPS on the 
    Express Mail mailing label; Sec. 1.10(d) applies where the ``date-in'' 
    is incorrectly entered by the USPS; and Sec. 1.10(e) applies where 
    correspondence deposited with the USPS as Express Mail is not received 
    by the Office.
    
    Miscellaneous Changes
    
        Sections 1.3 and 5.33 are also being amended to change 
    ``communications'' to ``correspondence,'' and for consistency with 
    Secs. 1.1, 1.6, and 1.8.
        Section 1.6(a)(2) is amended to provide that correspondence 
    deposited as Express Mail in accordance with Sec. 1.10 will be 
    considered filed on the date of its deposit, regardless of whether that 
    date is a Saturday, Sunday or Federal holiday within the District of 
    Columbia.
        Section 1.9 is amended to add a definition of a ``Federal holiday 
    within the District of Columbia'' to include an official closing of the 
    Office.
        Since the certificate of mailing by Express Mail is no longer a 
    requirement of Sec. 1.10, the provisions of Part 10 relating to 
    misconduct have been amended to delete reference to this requirement.
    
    Discussion of Specific Rules
    
        The heading of Sec. 1.1 is amended to state that the section 
    contains the addresses for correspondence to the Patent and Trademark 
    Office.
        Section 1.1 is amended to set out all pertinent Office mailing 
    addresses in paragraph (a) and in added paragraphs (a)(1), (a)(2), and 
    (a)(3). The remaining paragraphs of Sec. 1.1 contain directions for 
    using box designations rather than addresses. Paragraph (a)(1) sets 
    forth the new mailing address to which most patent-related documents 
    should be sent. Paragraph (a)(2) sets forth the new mailing address to 
    which most trademark-related documents should be sent. It is noted that 
    correspondence not addressed according to (a)(1) and (a)(2), but sent 
    instead to the Commissioner of Patents and Trademarks, will not be 
    refused consideration but may be delayed in processing. 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 removed and 
    reserved.
        Sections 1.1 and 1.3 are amended so that the word 
    ``communications'' is changed to ``correspondence.''
        Section 1.5(a) is amended by removing the requirement that the 
    words ``PATENT APPLICATION'' appear on letters concerning patent 
    applications. The remainder of the section remains unchanged.
        Section 1.6(a)(1) is amended to add the sentence ``[t]he Patent and 
    Trademark Office is not open for the filing of correspondence on any 
    day that is a Saturday, Sunday or Federal holiday within the District 
    of Columbia.'' In addition, Sec. 1.6(a)(1) is further amended to add 
    the phrase ``[e]xcept for correspondence transmitted by facsimile as 
    provided for in paragraph (a)(3) of this section'' to the beginning of 
    the sentence ``[n]o correspondence is received in the Patent and 
    Trademark Office on Saturdays, Sundays or Federal holidays within the 
    District of Columbia.'' Since the Office may ``receive'' a facsimile 
    transmission under Sec. 1.6(a)(3) on a Saturday, Sunday or Federal 
    holiday within the District of Columbia, Sec. 1.6(a)(1) is amended to 
    add the phrase ``[e]xcept for correspondence transmitted by facsimile 
    as provided for in paragraph (a)(3) of this section'' for clarity and 
    consistency with Sec. 1.6(a)(3). In addition, Sec. 1.6(a)(1) is amended 
    to begin with the sentence ``[t]he Patent and Trademark Office is not 
    open for the filing of correspondence on any day that is a Saturday, 
    Sunday or Federal holiday within the District of Columbia'' to clarify 
    that any day that is a Saturday, Sunday or Federal holiday within the 
    District of Columbia is a day that the Patent and Trademark Office is 
    not open for the filing of applications within the meaning of Article 
    4(C)(3) of the Paris Convention.
    
    [[Page 56442]]
    
        Section 1.6(a)(2) is amended to delete the phrase ``unless the date 
    of deposit is a Saturday, Sunday or Federal holiday within the District 
    of Columbia in which case the date stamped will be the succeeding day 
    which is not a Saturday, Sunday or Federal holiday within the District 
    of Columbia.'' Thus, Sec. 1.6(a)(1) will provide that the Office is not 
    open for the filing of correspondence on any day that is a Saturday, 
    Sunday or Federal holiday within the District of Columbia, but that 
    correspondence deposited as Express Mail with the USPS in accordance 
    with Sec. 1.10 will be considered filed on the date of its deposit, 
    regardless of whether that date is a Saturday, Sunday or Federal 
    holiday within the District of Columbia (under 35 U.S.C. 21(b) or 
    Sec. 1.7).
        Section 1.8(a)(1)(i)(A) is revised to state that papers and fees 
    must be addressed as set out in Sec. 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 USPS.
        Section 1.8(a)(2)(ii) is revised to remove and reserve paragraphs 
    (a)(2)(ii)(B) through (a)(2)(ii)(F). This will permit the following 
    items to be filed in accordance with the procedures set forth in 
    Sec. 1.8(a): (1) an affidavit of continued use or excusable nonuse 
    under section 8 (a) or (b) or section 12(c) of the Trademark Act, 15 
    U.S.C. 1058(a), 1058(b), 1062(c); (2) an application for renewal of a 
    registration under section 9 of the Trademark Act, 15 U.S.C. 1059; (3) 
    a petition to cancel a registration of a mark under section 14, 
    subsection (1) or (2) of the Trademark Act, 15 U.S.C. 1064; (4) in an 
    application under section 1(b) of the Trademark Act, 15 U.S.C. 1051(b), 
    an amendment to allege use in commerce under section 1(c) of the 
    Trademark Act, 15 U.S.C. 1051(c), or a statement of use under section 
    1(d)(1) of the Trademark Act, 15 U.S.C. 1051(d)(1); and (5) in an 
    application under section 1(b) of the Trademark Act, 15 U.S.C. 1051(b), 
    a request under section 1(d)(2) of the Trademark Act, 15 U.S.C. 
    1051(d)(2), for an extension of time to file a statement of use under 
    section 1(d)(1) of the Trademark Act, 15 U.S.C. 1051(d)(1).
        Section 1.9 is amended to add a definition of ``Federal holiday 
    within the District of Columbia'' to include an official closing of the 
    Office. When the entire Patent and Trademark Office is officially 
    closed for business for an entire day, for reasons due to adverse 
    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.
        This provision implements existing policy. In the past, the Office 
    has published notices concerning unscheduled closings, stating that 
    correspondence due on the date of the unscheduled closing would be 
    deemed timely if filed on the next succeeding business day that the 
    Office is open. See, e.g., ``Closing of Patent and Trademark Office on 
    Thursday, January 20, 1994 and Friday, February 11, 1994'' published in 
    the Patent Official Gazette at 1161 Off. Gaz. Pat. Office 12 (April 5, 
    1994) (republished at 1170 Off. Gaz. Pat. Office 8 (January 3, 1995)) 
    and ``Filing of Papers During Unscheduled Closings of the Patent and 
    Trademark Office'' published in the Patent Official Gazette at 1097 
    Off. Gaz. Pat. Office 53 (December 20, 1988) (republished at 1170 Off. 
    Gaz. Pat. Office 8 (January 3, 1995)).
        Other legal 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).
        The title of Sec. 1.10 is revised to: (1) change ``papers and 
    fees'' to ``correspondence'' and (2) remove the reference to a 
    ``certificate.'' These changes are for consistency with the amendment 
    to Sec. 1.10 in this final rulemaking.
        Section 1.10(a) is amended to provide that: (1) any correspondence 
    received by the Office that was delivered by the ``Express Mail Post 
    Office to Addressee'' (Express Mail) service of the USPS will be 
    considered filed in the Office on the date of deposit with the USPS, 
    (2) the date of deposit with the USPS is the ``date-in'' or other 
    official USPS notation on the Express Mail mailing label, and (3) if 
    the USPS deposit date cannot be determined, the correspondence will be 
    accorded a filing date as of the date of receipt in the Office.
        The date of deposit or mailing with the USPS is defined by the USPS 
    as: (1) For correspondence that is paid for at the time of deposit--the 
    date the correspondence is presented and accepted for Express Mail 
    delivery at designated post offices, branches, or stations, and (2) For 
    correspondence that is prepaid (i.e., with a completed mailing label 
    and postage affixed)--the date the prepaid correspondence is accepted 
    by the USPS collection employees or the USPS pickup service. USPS 
    Domestic Mail Manual (DMM) 49, at D-38 (Sept. 1, 1995).
        Section 1.10(b) is amended by deleting the requirement for a 
    certificate of mailing by Express Mail. As amended, Sec. 1.10(b) 
    provides that the number of the Express Mail mailing label should be 
    placed on each piece of correspondence prior to the original mailing. 
    Correspondence that is actually received by the Office will not be 
    denied a filing date as of the date of deposit because the number of 
    the Express Mail mailing label was not placed thereon prior to the 
    original mailing. However, if the number of the mailing label did not 
    appear on the correspondence as originally filed, relief will not be 
    granted on petition under Secs. 1.10(c) through (e), even if the party 
    who filed the correspondence satisfies the other requirements of 
    Sec. 1.10(c), Sec. 1.10(d) or Sec. 1.10(e).
        Since the filing of correspondence under Sec. 1.10 without the 
    number of the Express Mail mailing label thereon is an oversight that 
    can be avoided by the exercise of reasonable care, requests for waiver 
    of this requirement will not be granted on petition. A party's 
    inadvertent failure to comply with the requirements of a rule is not 
    deemed to be an extraordinary situation that would warrant waiver of a 
    rule under Secs. 1.183, 2.146(a)(5) or 2.148, nor is such an 
    inadvertent omission considered to be an ``unavoidable delay,'' within 
    the meaning of 15 U.S.C. 1062(b), 35 U.S.C. 133, Sec. 1.137(a) or 
    Sec. 2.66(a). See Honigsbaum v. Lehman, 903 F. Supp. 8, 37 USPQ2d 1799 
    (D.D.C. 1995) (Commissioner did not abuse his discretion in refusing to 
    waive requirements of Sec. 1.10(c) in order to grant filing date to 
    patent application, where applicant failed to produce Express Mail 
    customer receipt or any other evidence that application was actually 
    deposited with USPS as Express Mail); Nitto Chemical Industry. Co., 
    Ltd. v. Comer, No. 93-1378, 1994 U.S. Dist. LEXIS 19211, at *13-14 
    (D.D.C. Mar. 7, 1994) (Commissioner's refusal to waive requirements of 
    Sec. 1.10 in order to grant priority filing date to patent application 
    not arbitrary and capricious, because failure to comply with the 
    requirements of Sec. 1.10 is an ``avoidable'' oversight that could have 
    been prevented by the exercise of ordinary care or diligence, and thus 
    not an extraordinary situation under Sec. 1.183); Vincent v. 
    Mossinghoff, 230 USPQ 621 (D.D.C. 1985) (Misunderstanding of Sec. 1.8 
    not
    
    [[Page 56443]]
    
    unavoidable delay in responding to Office Action); Gustafson v. 
    Strange, 227 USPQ 174 (Comm'r Pats. 1985) (Counsel's unawareness of 
    Sec. 1.8 not extraordinary situation warranting waiver of a rule); In 
    re Chicago Historical Antique Automobile Museum, Inc., 197 USPQ 289 
    (Comm'r Pats. 1978) (Since certificate of mailing procedure under 
    Sec. 1.8 was available to petitioner, lateness due to mail delay not 
    deemed to be extraordinary situation).
        Section 1.10(b) further provides that correspondence should be 
    deposited directly with an employee of the USPS to ensure that the 
    person depositing the correspondence receives a legible copy of the 
    Express Mail mailing label with the ``date-in'' clearly marked, and 
    that persons dealing indirectly with the employees of the USPS (such as 
    by depositing correspondence in an Express Mail drop box) do so at the 
    risk of not receiving a copy of the Express Mail mailing label with the 
    desired ``date-in'' clearly marked. On petition, the failure to obtain 
    an Express Mail mailing label with the ``date-in'' clearly marked will 
    be considered an omission that could have been avoided by the exercise 
    of due care, as discussed above.
        Sections 1.10(c) through 1.10(e) set forth procedures for 
    petitioning the Commissioner to accord a filing date as of the date of 
    deposit as Express Mail. Such petitions are filed under Sec. 1.181 for 
    patent correspondence and Sec. 2.146 for trademark correspondence. 
    Section 1.10(c) sets forth procedures for filing a petition to the 
    Commissioner for a filing date as of the date of deposit with the USPS, 
    where there is a discrepancy between the filing date initially accorded 
    by the Office and the ``date-in'' entered by the USPS. Such a petition 
    should: (1) be filed promptly after the person becomes aware that the 
    Office has accorded, or will accord, a filing date other than the USPS 
    deposit date, (2) include a showing that the number of the Express Mail 
    mailing label was placed on each piece of correspondence prior to the 
    original mailing, and (3) include a true copy of the Express Mail 
    mailing label showing the ``date-in'' or other official notation by the 
    USPS.
        Section 1.10(d) sets forth procedures for filing a petition to the 
    Commissioner to accord a filing date as of the actual date of deposit 
    with the USPS, where the ``date-in'' or other official notation is 
    incorrectly entered by the USPS. Such a petition should: (1) be filed 
    promptly after the person becomes aware that the Office has accorded, 
    or will accord, a filing date based upon an incorrect entry by the 
    USPS, (2) include a showing that the number of the Express Mail mailing 
    label was placed on each piece of correspondence prior to the original 
    mailing, and (3) include a showing that the correspondence was 
    deposited as Express Mail prior to the last scheduled pickup on the 
    requested filing date. The showing under Section 1.10(d) must be 
    corroborated by (1) evidence from the USPS, or (2) evidence that came 
    into being after deposit and within one business day of the deposit of 
    the correspondence as Express Mail. Evidence that came into being 
    within one day after the deposit of the correspondence as Express Mail 
    may be in the form of a log book which contains information such as the 
    Express Mail number; the application number, attorney docket number or 
    other such file identification number; the place, date and time of 
    deposit; the time of the last scheduled pick-up for that date and place 
    of deposit; the depositor's initials or signature; and the date and 
    time of entry in the log. Any statement submitted in support of such a 
    showing must be verified if made by a person other than an employee of 
    the USPS or a practitioner as defined in Sec. 10.1(r) of this chapter.
        The reason the Office considers correspondence to have been filed 
    as of the date of deposit as Express Mail is that this date has been 
    verified by a disinterested USPS employee, through the insertion of a 
    ``date-in,'' or other official USPS notation, on the Express Mail 
    mailing label. Due to the questionable reliability of evidence from a 
    party other than the USPS that did not come into being 
    contemporaneously with the deposit of the correspondence with the USPS, 
    Sec. 1.10(d) specifically requires that any petition under Sec. 1.10(d) 
    be corroborated either by evidence from the USPS, or by evidence that 
    came into being after deposit and within one business day after the 
    deposit of the correspondence as Express Mail. A petition alleging that 
    the USPS erred in entering the ``date-in'' will be denied if it is 
    supported only by evidence (other than from the USPS) which was: (1) 
    created prior to the deposit of the correspondence as Express Mail with 
    the USPS (e.g., an application transmittal cover letter, or a client 
    letter prepared prior to the deposit of the correspondence), or (2) 
    created more than one business day after the deposit of the 
    correspondence as Express Mail (e.g., an affidavit or declaration 
    prepared more than one business day after the correspondence was 
    deposited with the USPS as Express Mail). On the other hand, a notation 
    in a log book, entered by the person who deposited the correspondence 
    as Express Mail within one business day after such deposit, setting 
    forth the items indicated above would be deemed on petition to be an 
    adequate showing of the date of deposit under Sec. 1.10(d)(3).
        Section 1.10(d)(3) further provides that a party must show that 
    correspondence was deposited as Express Mail before the last scheduled 
    pickup on the requested filing date in order to obtain a filing date as 
    of that date. This incorporates existing practice, as set forth in the 
    Manual of Patent Examining Procedure (6th ed., January, 1995) Sec. 513, 
    and Trademark Manual of Examining Procedure (2nd ed., May, 1993) 
    Sec. 702.02(e) into the rule.
        Section 1.10(e) sets forth procedures for filing a petition to the 
    Commissioner to accord a filing date as of the date of deposit with the 
    USPS, where correspondence deposited as Express Mail is never received 
    by the Office. Such a petition should: (1) be filed promptly after the 
    person becomes aware that the Office has no evidence of receipt of the 
    correspondence, (2) include a showing that the number of the Express 
    Mail mailing label was placed on each piece of correspondence prior to 
    the original mailing, (3) include a true copy of the originally 
    deposited correspondence showing the number of the Express Mail mailing 
    label thereon, a copy of any returned postcard receipt, a copy of the 
    Express Mail mailing label showing the ``date-in'' or other official 
    notation entered by the USPS, and (4) include a statement, signed by 
    the person who deposited the documents as Express Mail with the USPS, 
    setting forth the date and time of deposit, and declaring that the 
    copies of the correspondence, Express Mail mailing label, and returned 
    postcard receipt accompanying the petition are true copies of the 
    correspondence, mailing label and returned postcard receipt originally 
    mailed or received. Any statement in support of a petition under 
    Sec. 1.10(e) must be verified if made by a person other than a 
    practitioner as defined in Sec. 10.1(r) of this chapter.
        Section 1.10(e) provides for the filing of a petition to accord 
    correspondence a filing date as of the date of deposit with the USPS as 
    Express Mail only where the correspondence was mailed with sufficient 
    postage and addressed as set out in Sec. 1.1(a). There is no 
    corresponding provision that correspondence be properly addressed and 
    mailed with sufficient postage in Secs. 1.10(a), (c) and (d), because 
    these sections apply only to correspondence that is actually received 
    by the Office. Correspondence mailed by Express Mail that is actually 
    received by the Office will not be denied a filing date as of the date 
    of deposit as Express Mail simply
    
    [[Page 56444]]
    
    because the correspondence was not mailed with sufficient postage or 
    not addressed as set out in Sec. 1.1(a).
        Section 1.10(e)(3) provides that if the requested filing date is a 
    date other than the ``date-in'' on the Express Mail mailing label, the 
    petition should include a showing under Sec. 1.10(d)(3), as discussed 
    above, that the correspondence was deposited as Express Mail before the 
    last scheduled pickup on the requested filing date in order to obtain a 
    filing date as of that date.
        Section 1.10(f) provides that the Office may require additional 
    evidence to determine whether the correspondence was deposited as 
    Express Mail with the USPS on the date in question.
        Section 2.165(a)(1), dealing with affidavits of use or excusable 
    non-use filed under Section 8 of the Trademark Act, is amended by 
    deleting the last sentence referencing the inapplicability of 
    certificates of mailing provided by Sec. 1.8.
        Section 5.33 (entitled ``Correspondence'') is 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 revised to reflect the fact that the 
    certificate of mailing by Express Mail is no longer a requirement of 
    Sec. 1.10.
    
    Response to Comments on the Rules
    
        The comments received in response to the notice of proposed 
    rulemaking have been given careful consideration and a number of the 
    suggested modifications have been adopted. The comments and responses 
    are discussed below.
        Comment 1: One comment suggested that the Office return to a single 
    mailing address.
        Response: Addressing correspondence to specific areas within the 
    agency, in accordance with Sec. 1.1, reduces the amount of sorting 
    required. Except as set out in Sec. 1.1(a)(3)(iv), mail will be 
    delivered within the Office regardless of how it is addressed. 
    Nevertheless, use of a specific address should produce faster results 
    for correspondents and savings to the Office in terms of reduced time 
    and cost. The suggestion to address mail to a single mailing address 
    will not be adopted.
        Comment 2: Three comments requested a clarification of the 
    reference to ``organizations reporting to the Assistant Commissioner 
    for Patents'' in Sec. 1.1(a)(1), suggested that each organization be 
    identified, and noted that the change of address from ``Commissioner of 
    Patents and Trademarks'' to ``Assistant Commissioner for Patents'' is 
    confusing.
        Response: Section 1.1(a)(1) has not been amended to list 
    ``organizations reporting to the Assistant Commissioner for Patents.'' 
    The vast majority of mail to be addressed to the Assistant Commissioner 
    is intended for the Examining Groups. Furthermore, once a list of 
    organizations is established in the rule, amendment to such a list 
    would require implementation of a rule change. However, a list of 
    papers that should be addressed to the Assistant Commissioner for 
    Patents appears under the heading ``Patent-Related Mail'' in the 
    Supplementary Information section.
        Comment 3: Two comments requested clarification concerning how a 
    new application incorrectly addressed to the Commissioner of Patents 
    and Trademarks, Washington, D.C. 20231, will be treated. Two comments 
    opposed the address change in Sec. 1.1, if the benefit of obtaining a 
    filing date is conditioned upon the correspondence address being 
    addressed correctly.
        Response: Except for certain mail addressed incorrectly to the 
    Office of the Solicitor, there will be no penalty for addressing a 
    document to the wrong area within the Office, as long as one of the 
    approved addresses is used. Use of the specific addresses listed within 
    Sec. 1.1 is strongly encouraged because it will facilitate the process 
    both for the Office and the filer. Accordingly, a new application 
    incorrectly addressed to the Commissioner will be treated the same as 
    if the application was addressed to the specific Assistant 
    Commissioner.
        Comment 4: One comment supported the separate mailing addresses for 
    mail directed to the Assistant Commissioner for Patents, Assistant 
    Commissioner for Trademarks, Solicitor and the Commissioner, but viewed 
    the practice under Sec. 1.1(a)(3) with respect to correspondence to the 
    Office of the Solicitor as a penalty for correspondents who misaddress 
    mail.
        Response: While the language in the proposed rule was based on the 
    existing rule, 37 CFR 1.1(g) (1996), which has been in effect since 
    1988, Sec. 1(a)(3)(iv) has been reworded in the final rule to state 
    that improperly addressed correspondence ``may be returned.'' This 
    language better represents the intent of the rule. The Post Office 
    boxes are located off-site and mail to these boxes is handled directly 
    by the Office of the Solicitor. The Office of the Solicitor cannot 
    handle large volumes of mail from users who choose not to follow Office 
    mailing rules.
        Comment 5: One comment requested clarification on the distinction 
    between Sec. 1.1(a) which states that mail ``must'' be addressed to the 
    Assistant Commissioner for Patents and Sec. 1.1(a)(1) which states that 
    mail ``should'' be addressed to the Assistant Commissioner for Patents, 
    if any.
        Response: The language of 1.1(a) has been amended to indicate that 
    all correspondence must be addressed either to the ``Commissioner of 
    Patents and Trademarks, Washington, D.C. 20231'' or to specific areas 
    within the Office as set out in paragraphs (a)(1), (2) and (3) of 
    Sec. 1.1.
        Comment 6: One comment questioned why it is now merely permissible 
    to identify a patent application by its serial number and filing date 
    whereas such information was previously mandatory.
        Response: The only change to Sec. 1.5 is the elimination of the 
    requirement to include the words ``PATENT APPLICATION'' on letters 
    concerning patent applications. Section 1.5 both before and after the 
    proposed amendment provides that ``[w]hen a letter . . . 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. . . .'' 
    Accordingly, correspondence must continue to identify a previously 
    filed patent application by either (1) the application number, or (2) 
    the serial number and filing date. The combination of the serial number 
    and filing date is unique by itself.
        Comment 7: One comment objected to the return of correspondence 
    pertaining to an application that had not yet been accorded an 
    application number because some correspondence may require immediate 
    action. This person suggested that the Office search the computerized 
    records given sufficient other identifying information, instead of 
    returning the correspondence.
        Response: If the correspondence is returned for failure to identify 
    the correspondence with the appropriate information, the applicant has 
    the option to return the correspondence with the appropriate 
    information within two weeks of the date of the cover letter from the 
    Office by utilizing the Certificate of Mailing or Transmission 
    procedure under Sec. 1.8 or the Express Mail procedure under Sec. 1.10 
    to obtain the benefit of the date of deposit with the USPS. There does 
    not appear to be any situation where a file would require immediate 
    action in applications where the application number had not been 
    assigned. If an application number has already been assigned, it is 
    within the
    
    [[Page 56445]]
    
    filer's control to supply that information and avoid delays.
        Comment 8: Seven comments opposed the addition of unscheduled 
    closings of the Office to the definition of ``Federal holidays within 
    the District of Columbia.'' The comments noted that substantive rights 
    would be at risk for persons filing provisional patent applications and 
    applications asserting priority claims based on foreign applications 
    should the date on which an application must be filed fall on a day 
    that the Office is closed for unforeseen reasons. One comment noted 
    that the substantive rights of applicants seeking to secure a filing 
    date prior to divulging an invention may lose rights if a later filing 
    date, resulting from an unscheduled closing of the Office, is 
    subsequent to the date of divulgence. Some of the comments suggested 
    amending Sec. 1.9 to make an exception for provisional patent 
    applications and applications asserting a claim of priority based on a 
    foreign application so that the filing date would not be affected by an 
    unscheduled closing of the Office. One comment also suggested that 
    Sec. 1.9 be amended to distinguish between the filing of applications 
    and the filing of responses. One comment suggested that the 
    Commissioner allow for filing of a non-provisional patent application 
    on Federal holidays where the one year anniversary of the provisional 
    application falls on a Federal holiday.
        Response: Section 1.6(a)(2) is being amended to delete the phrase 
    ``unless the date of deposit is a Saturday, Sunday or Federal holiday 
    within the District of Columbia in which case the date stamped will be 
    the succeeding day which is not a Saturday, Sunday or Federal holiday 
    in the District of Columbia.'' Section 1.6(a)(2) now provides that even 
    if the Office is closed because it is a Saturday, Sunday or Federal 
    holiday in the District of Columbia, correspondence deposited in the 
    ``Express Mail Post Office to Addressee'' service of the USPS in 
    accordance with Sec. 1.10 will be considered filed on the date of 
    deposit regardless of whether that date is Saturday, Sunday or a 
    Federal holiday within the District of Columbia. Therefore, in light of 
    the option to file an application under Sec. 1.10 on any day and the 
    amendment to Sec. 1.6(a)(2), no substantive rights would be at risk, 
    and the suggestions, set forth in the comments and noted above, have 
    not been adopted.
        Comment 9: Several comments objected to the requirement set forth 
    in proposed Sec. 1.10(b) which required deposit of Express Mail 
    correspondence directly with the United States Postal Service (USPS) to 
    ensure that a copy of the Express Mail label marked with the ``date 
    in'' is received at the time of deposit. The reasons generally 
    expressed by commenters were: (1) Practitioners and applicants feel 
    compelled to oversee the work of the USPS employee to make certain that 
    the ``date in'' is marked accurately, legibly and in a timely fashion 
    and perceive a loss of control over the filing of the document under 
    Sec. 1.10 as a result; (2) inefficiency and burden are imposed upon 
    persons filing who must actually go to the post office, stand in line 
    and generally be confined to fewer hours during the day to deposit the 
    Express Mail correspondence directly with the USPS than the hours 
    available for deposit in the Express Mail drop box; and (3) inequality 
    of opportunity to deposit directly with the USPS for individual 
    practitioners and small firms which employ fewer people than larger 
    firms to handle. Two comments questioned the Office's use of the term 
    ``deposit'' and whether the Office exceeded any authority in the 
    perceived understanding that the proposed rule was requiring the 
    applicants or practitioners to do something beyond ``depositing'' the 
    correspondence with the USPS, namely, overseeing the act of acceptance 
    of the Express Mail correspondence by the USPS.
        Response: Section 1.10(b) has been amended so that direct deposit 
    of correspondence with the USPS is a recommendation, rather than a 
    requirement. While the Office strongly urges direct deposit of Express 
    Mail correspondence in order to obtain a legible copy of the Express 
    Mail mailing label, parties are not precluded from using Express Mail 
    drop boxes. Parties who do use drop boxes can protect themselves from 
    uncertainty due to illegible mailing labels by routinely maintaining a 
    log of Express Mail deposits in which notations are entered by the 
    person who deposited the correspondence as Express Mail within one 
    business day after deposit with the USPS in a petition filed under 
    Sec. 1.10 (c), (d) or (e). Evidence that came into being within one day 
    after the deposit of the correspondence as Express Mail may be in the 
    form of a log book which contains information such as the Express Mail 
    number; the application number, attorney docket number or other such 
    file identification number; the place, date and time of deposit; the 
    time of the last scheduled pick-up for that date and place of deposit; 
    the depositor's initials or signature; and the date and time of entry 
    in the log. Any statement submitted in support of such a showing must 
    be verified if made by a person other than an employee of the USPS or a 
    practitioner as defined in Sec. 10.1(r) of this chapter.
        Comment 10: Several comments opposed the elimination of the 
    certificate of mailing by ``Express Mail'' because it would eliminate a 
    reliable mode of proving the date of deposit with the USPS.
        Response: The elimination of the requirement for the certificate of 
    mailing is adopted primarily to streamline the Office's processing of 
    Express Mail correspondence. Under the old rule, the Office was 
    required to scrutinize the certificate as well as the Express Mail 
    label. Under the new rule, the ``date in'' on the Express Mail label 
    would be the only date that the Office would look for to determine the 
    filing date. Under the prior rule, the certificate of mailing by 
    Express Mail only served as proof of a date of deposit when the 
    certificate date was the same as the ``date in'' on the Express Mail 
    label. The certificate did not afford protection to an applicant in the 
    event that the certificate date differed from the Express Mail label 
    date. Therefore, the elimination of the certificate of mailing 
    requirement would not eliminate a reliable mode of proving the date of 
    deposit.
        Comment 11: Four comments suggested allowing Express Mail Corporate 
    Account Mailing Statement of the USPS to serve as additional proof of 
    the date of deposit.
        Response: This suggestion has been adopted. Such records would be 
    acceptable as additional proof of the date of deposit.
        Comment 12: One comment requested clarification concerning whether 
    deposit of correspondence as Express Mail in the Express Mail drop box 
    must be done prior to the last scheduled pickup of the day in order to 
    be entitled to the deposit date as the filing date of the 
    correspondence.
        Response: Correspondence sent by the ``Express Mail Post Office to 
    Addressee'' service is considered filed in the Office on the ``date-
    in'' entered by the USPS. Accordingly, if the USPS enters the deposit 
    date as its ``date-in,'' the correspondence will receive the deposit 
    date as its filing date. However, if the USPS enters a date later than 
    the deposit date as its ``date-in,'' the correspondence will receive 
    the later date as its filing date. Section 1.10(d) permits the Office 
    to correct a USPS ``date-in'' error when the correspondence is 
    deposited in an Express Mail drop box prior to last scheduled pick up 
    of the day, that is, the time clearly marked on the Express Mail drop 
    box indicating when the box
    
    [[Page 56446]]
    
    will be cleared for the last time on the date of deposit. Section 
    1.10(d) sets forth the procedures to be followed to be entitled to such 
    a correction.
    
    Other Considerations
    
        The 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 1995 (44 U.S.C. 3501 et 
    seq.). This rule has been determined to not be significant for the 
    purposes of Executive Order 12866.
        The Office has determined that this 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 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 rule change has no 
    effect on patent fees.
        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.
        This rule change contains a collection of information subject to 
    the requirements of the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 
    et seq.), which is currently approved by the Office of Management and 
    Budget under Control No. 0651-0031. The public reporting burden for the 
    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, DC 
    20503. (ATTN: Paperwork Reduction Act Project 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 2
    
        Administrative practice and procedure, Courts, Lawyers, Trademarks.
    
    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, 2, 5 and 10 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. 6, unless otherwise noted.
    
        2. Section 1.1 is amended by removing and reserving paragraph (g) 
    and by revising the heading and paragraph (a) to read as follows:
    
    
    Sec. 1.1  Addresses for correspondence with the Patent and Trademark 
    Office.
    
        (a) Except for Sec. 1.1(a)(3) (i) and (ii), all correspondence 
    intended for the Patent and Trademark Office must be addressed to 
    either ``Commissioner of Patents and Trademarks, Washington, D.C. 
    20231'' or to specific areas within the Office as set out in paragraphs 
    (a) (1), (2) and (3)(iii) of this section. 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 Secs. 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 improperly addressed to a Post Office Box 
    specified in paragraphs (a)(3) (i) and (ii) of this section will not be 
    filed elsewhere in the Patent and Trademark Office, and may be 
    returned.
    * * * * *
        (g) [Reserved]
    * * * * *
        3. Section 1.3 is revised to read as follows:
    
    
    Sec. 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 is amended by revising paragraph (a) to read as 
    follows:
    
    
    Sec. 1.5  Identification of application, patent, or registration.
    
        (a) No correspondence relating to an application should be filed 
    prior to receipt of the application number 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),
    
    [[Page 56447]]
    
    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 by 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 mailing 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 Sec. 1.8 or the Express Mail procedure 
    under Sec. 1.10 for resubmissions of returned correspondence if they 
    desire to have the benefit of the date of deposit with 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. In addition to the application 
    number, all letters directed to the Patent and Trademark Office 
    concerning applications for patents 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 1.6 is amended by revising paragraph (a) to read as 
    follows:
    
    
    Sec. 1.6  Receipt of correspondence.
    
        (a) Date of receipt and Express Mail date of deposit. 
    Correspondence received in the Patent and Trademark Office is stamped 
    with the date of receipt except as follows:
        (1) The Patent and Trademark Office is not open for the filing of 
    correspondence on any day that is a Saturday, Sunday or Federal holiday 
    within the District of Columbia. Except for correspondence transmitted 
    by facsimile as provided for in paragraph (a)(3) of this section, no 
    correspondence is received in the Patent and Trademark Office on 
    Saturdays, Sundays or Federal holidays within the District of Columbia.
        (2) Correspondence filed in accordance with Sec. 1.10 will be 
    stamped with the date of deposit as ``Express Mail'' with the United 
    States Postal Service.
        (3) Correspondence transmitted by facsimile to the Patent and 
    Trademark Office will be stamped with the date on which the complete 
    transmission is received in the Patent and Trademark Office unless that 
    date is a Saturday, Sunday, or Federal holiday within the District of 
    Columbia, in which case the date stamped will be the next succeeding 
    day which is not a Saturday, Sunday, or Federal holiday within the 
    District of Columbia.
    * * * * *
        6. Section 1.8 is amended by revising paragraphs (a)(1)(i)(A) and 
    (a)(2)(ii) to read as follows:
    
    
    Sec. 1.8  Certificate of mailing or transmission.
    
        (a) * * *
        (1) * * *
        (i) * * *
        (A) Addressed as set out in Sec. 1.1(a) and deposited with the U.S. 
    Postal Service with sufficient postage as first class mail; or
    * * * * *
        (2) * * *
        (i) * * *
        (ii) Relative to Trademark Registrations and Trademark 
    Applications:
        (A) The filing of a trademark application.
        (B) [Reserved]
        (C) [Reserved]
        (D) [Reserved]
        (E) [Reserved]
        (F) [Reserved]
    * * * * *
        7. Section 1.9 is amended by adding a new paragraph (h) to read as 
    follows:
    
    
    Sec. 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 for the 
    entire day.
        8. Section 1.10 is revised to read as follows:
    
    
    Sec. 1.10  Filing of correspondence by ``Express Mail.''
    
        (a) Any correspondence received by the Patent and Trademark Office 
    (Office) that was delivered by the ``Express Mail Post Office to 
    Addressee'' service of the United States Postal Service (USPS) will be 
    considered filed in the Office on the date of deposit with the USPS. 
    The date of deposit with the USPS is shown by the ``date-in'' on the 
    ``Express Mail'' mailing label or other official USPS notation. If the 
    USPS deposit date cannot be determined, the correspondence will be 
    accorded the Office receipt date as the filing date. See Sec. 1.6(a).
        (b) Correspondence should be deposited directly with an employee of 
    the USPS to ensure that the person depositing the correspondence 
    receives a legible copy of the ``Express Mail'' mailing label with the 
    ``date-in'' clearly marked. Persons dealing indirectly with the 
    employees of the USPS (such as by deposit in an ``Express Mail'' drop 
    box) do so at the risk of not receiving a copy of the ``Express Mail'' 
    mailing label with the desired ``date-in'' clearly marked. The paper(s) 
    or fee(s) that constitute the correspondence should also include the 
    ``Express Mail'' mailing label number thereon. See paragraphs (c), (d) 
    and (e) of this section.
        (c) Any person filing correspondence under this section that was 
    received by the Office and delivered by the ``Express Mail Post Office 
    to Addressee'' service of the USPS, who can show that there is a 
    discrepancy between the filing date accorded by the Office to the 
    correspondence and the date of deposit as shown by the ``date-in'' on 
    the ``Express Mail'' mailing label or other official USPS notation, may 
    petition the Commissioner to accord the correspondence a filing date as 
    of the ``date-in'' on the ``Express Mail'' mailing label or other 
    official USPS notation, provided that:
        (1) The petition is filed promptly after the person becomes aware 
    that the Office has accorded, or will accord, a filing date other than 
    the USPS deposit date;
        (2) The number of the ``Express Mail'' mailing label was placed on 
    the paper(s) or fee(s) that constitute the correspondence prior to the 
    original mailing by ``Express Mail;'' and
        (3) The petition includes a true copy of the ``Express Mail'' 
    mailing label showing the ``date-in,'' and of any other official 
    notation by the USPS relied upon to show the date of deposit.
        (d) Any person filing correspondence under this section that was 
    received by the Office and delivered by the ``Express Mail Post Office 
    to Addressee'' service of the USPS, who can show that the ``date-in'' 
    on the ``Express Mail'' mailing label or other official notation 
    entered by the USPS was incorrectly entered or omitted by the USPS, may 
    petition the Commissioner to accord the correspondence a filing date as 
    of the date the correspondence is shown to have been deposited with the 
    USPS, provided that:
    
    [[Page 56448]]
    
        (1) The petition is filed promptly after the person becomes aware 
    that the Office has accorded, or will accord, a filing date based upon 
    an incorrect entry by the USPS;
        (2) The number of the ``Express Mail'' mailing label was placed on 
    the paper(s) or fee(s) that constitute the correspondence prior to the 
    original mailing by ``Express Mail''; and
        (3) The petition includes a showing which establishes, to the 
    satisfaction of the Commissioner, that the requested filing date was 
    the date the correspondence was deposited in ``Express Mail Post Office 
    to Addressee'' service prior to the last scheduled pickup for that day. 
    Any showing pursuant to this paragraph must be corroborated by evidence 
    from the USPS or that came into being after deposit and within one 
    business day of the deposit of the correspondence in the ``Express Mail 
    Post Office to Addressee'' service of the USPS. Any statement submitted 
    in support of such a showing pursuant to this paragraph must be a 
    verified statement if made by a person other than an employee of the 
    USPS or a practitioner as defined in Sec. 10.1(r) of this chapter.
        (e) Any person mailing correspondence addressed as set out in 
    Sec. 1.1(a) to the Office with sufficient postage utilizing the 
    ``Express Mail Post Office to Addressee'' service of the USPS but not 
    received by the Office, may petition the Commissioner to consider such 
    correspondence filed in the Office on the USPS deposit date, provided 
    that:
        (1) The petition is filed promptly after the person becomes aware 
    that the Office has no evidence of receipt of the correspondence;
        (2) The number of the ``Express Mail'' mailing label was placed on 
    the paper(s) or fee(s) that constitute the correspondence prior to the 
    original mailing by ``Express Mail;''
        (3) The petition includes a copy of the originally deposited 
    paper(s) or fee(s) that constitute the correspondence showing the 
    number of the ``Express Mail'' mailing label thereon, a copy of any 
    returned postcard receipt, a copy of the ``Express Mail'' mailing label 
    showing the ``date-in,'' a copy of any other official notation by the 
    USPS relied upon to show the date of deposit, and, if the requested 
    filing date is a date other than the ``date-in'' on the ``Express 
    Mail'' mailing label or other official notation entered by the USPS, a 
    showing pursuant to paragraph (d)(3) of this section that the requested 
    filing date was the date the correspondence was deposited in ``Express 
    Mail Post Office to Addressee'' service prior to the last scheduled 
    pickup for that day; and
        (4) The petition includes a statement which establishes, to the 
    satisfaction of the Commissioner, the original deposit of the 
    correspondence, and that the copies of the correspondence, the copy of 
    the ``Express Mail'' mailing label, the copy of any returned postcard 
    receipt, and any official notation entered by the USPS are true copies 
    of the originally mailed correspondence and original ``Express Mail'' 
    mailing label, returned postcard receipt, and official notation entered 
    by the USPS. Such statement must be a verified statement if made by a 
    person other than a practitioner as defined in Sec. 10.1(r) of this 
    chapter.
        (f) The Office may require additional evidence to determine if the 
    correspondence was deposited as ``Express Mail'' with the USPS on the 
    date in question.
    
    PART 2--RULES OF PRACTICE IN TRADEMARK CASES
    
        9. The authority citation for 37 CFR Part 2 continues to read as 
    follows:
    
        Authority: 15 U.S.C. 1123; 35 U.S.C. 6, unless otherwise noted.
    
        10. Section 2.165(a)(1) is revised to read as follows:
    
    
    Sec. 2.165  Reconsideration of affidavit or declaration.
    
        (a)(1) If the affidavit or declaration filed pursuant to Sec. 2.162 
    is insufficient or defective, the affidavit or declaration will be 
    refused and the registrant will be notified of the reason. 
    Reconsideration of the refusal may be requested within six months from 
    the date of the mailing of the action. The request for reconsideration 
    must state the grounds for the request. A supplemental or substitute 
    affidavit or declaration required by section 8 of the Act of 1946 
    cannot be considered unless it is filed before the expiration of six 
    years from the date of the registration or from the date of publication 
    under section 12(c) of the Act.
    * * * * *
    
    PART 5--SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND 
    FILE APPLICATIONS IN FOREIGN COUNTRIES
    
        11. 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).
    
        12. Section 5.33 is revised to read as follows:
    
    
    Sec. 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
    
        13. 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.
    
        14. Section 10.23 is amended by revising paragraph (c)(9) to read 
    as follows:
    
    
    Sec. 10.23  Misconduct.
    
    * * * * *
        (c) * * *
        (9) Knowingly misusing a ``Certificate of Mailing or Transmission'' 
    under Sec. 1.8 of this chapter.
    * * * * *
        Dated: October 24, 1996.
    Bruce A. Lehman,
    Assistant Secretary of Commerce and Commissioner of Patents and 
    Trademarks.
    [FR Doc. 96-28088 Filed 10-31-96; 8:45 am]
    BILLING CODE 3510-16-P
    
    
    

Document Information

Effective Date:
12/2/1996
Published:
11/01/1996
Department:
Patent and Trademark Office
Entry Type:
Rule
Action:
Final rule.
Document Number:
96-28088
Dates:
December 2, 1996.
Pages:
56439-56448 (10 pages)
Docket Numbers:
Docket No. 951006247-6255-02
RINs:
0651-AA70: Communications With the Patent and Trademark Office
RIN Links:
https://www.federalregister.gov/regulations/0651-AA70/communications-with-the-patent-and-trademark-office
PDF File:
96-28088.pdf
CFR: (11)
37 CFR 1.1(a)
37 CFR 1.1
37 CFR 1.3
37 CFR 1.5
37 CFR 1.6
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