03-6971. 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 [phone], or by facsimile at [phone].

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 § 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://www.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.

Dated: March 19, 2003.

James E. Rogan,

Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.