[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
