[Federal Register Volume 60, Number 212 (Thursday, November 2, 1995)]
[Proposed Rules]
[Pages 55691-55695]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 95-27031]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1, 5 and 10
[Docket No. 951006247-5247-01]
RIN 0651-AA70
Communications With the Patent and Trademark Office
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
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SUMMARY: The Patent and Trademark Office (Office) is proposing to amend
the rules of practice in patent and trademark cases to simplify and
streamline existing mailing procedures. The new procedures will include
specific addresses for most mail to ensure faster and more accurate
mail delivery. A definition of ``Federal holiday within the District of
Columbia'' is provided and the procedure for ``Express Mail'' will be
simplified.
DATES: Comments must be received by January 2, 1996. No hearing will be
held.
ADDRESSES: Address written comments to Assistant Commissioner for
Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513, marked
to the attention of Lynne G. Beresford. In addition, written comments
may also be sent by facsimile transmission to (703) 308-7220 with a
confirmation copy mailed to the above address, or by electronic mail
messages over the Internet to mail-rule@uspto.gov.
Written comments will be available for public inspection on January
16, 1996, in the Assistant Commissioner for Trademarks' suite on the
10th floor of the South Tower Building, 2900 Crystal Drive, Arlington,
Virginia 22202-3513.
FOR FURTHER INFORMATION CONTACT:
Lawrence E. Anderson (for patent-related matters) by telephone at (703)
305-9285, by electronic mail at landerso@uspto.gov, or by mail to his
attention addressed to the Assistant Commissioner for Patents, Box DAC,
Washington, D.C. 20231; or Lynne G. Beresford (for trademark-related
matters) by telephone at (703) 308-8900, extension 44, or by mail
marked to their attention and addressed to the Assistant Commissioner
for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513.
SUPPLEMENTARY INFORMATION: Addresses for correspondence with the Office
are proposed to be changed to reflect the creation of a mailroom site
at the South Tower Building for processing most trademark-related mail;
to distinguish correspondence intended for organizations reporting to
the Assistant Commissioner for Patents from other correspondence; and
to add a separate mailing address in the Office of the Solicitor for
disciplinary matters
The proposed rulemaking entitled ``Changes in Requirements for
Addressing Trademark Applications and Trademark-Related Papers'' (0651-
AA73) has been merged with this notice of proposed rulemaking.
The Office will now have three separate general mailing addresses:
(1) Assistant Commissioner for Patents for correspondence processed by
organizations reporting to the Assistant Commissioner for Patents; (2)
Assistant Commissioner for Trademarks for all trademark-related mail,
except for trademark documents sent to the Assignment Division for
recordation and requests for certified and uncertified copies of
trademark documents which should be addressed to the Commissioner of
Patents and Trademarks; and (3) Commissioner of Patents and Trademarks
for all other correspondence. Notwithstanding the above, it is proposed
that there will be separate mailing addresses in the Office of the
Solicitor for certain disciplinary matters and cases involving pending
litigation.
Those who correspond with the Office are requested to use separate
envelopes directed to the different areas.
Because patent-related mail will be sent to the Assistant
Commissioner for Patents, the requirement to designate patent
application correspondence as ``PATENT APPLICATION'' is proposed to be
deleted from section 1.5(a).
In addition, it is proposed that ``Federal holiday within the
District of Columbia'' be defined as including Official closings.
It is further proposed that a ``Certificate of Mailing by Express
Mail'' (currently necessary to obtain the benefit of the date of
deposit with the United States Postal Service (U.S.P.S.) as the filing
date of the Paper) no longer be required for correspondence actually
received in the Office.
Patent-Related Mail
Section 1.1 is proposed to be amended to provide for correspondence
which is processed by organizations reporting to the Assistant
Commissioner for Patents to be addressed to the ``Assistant
Commissioner for Patents, Washington, DC 20231.'' The Office first
announced the new address for patent-related mail in a notice (Change
of Address for Patent Applications and Patent Related Papers) published
in the Official Gazette at 1173 Off. Gaz. Pat. Office 13 (April 4,
1995).
This change will affect correspondence such as: patent
applications, responses to notices of informality, requests for
extension of time, notices of appeal to the Board of Patent Appeals and
Interferences (the Board), briefs in support of an appeal to the Board,
requests for oral hearing before the Board, extensions of term of
patent, requests for reexamination, statutory disclaimers, certificates
of correction, petitions to the Commissioner, submission of information
disclosure statements, petitions to institute a public use proceeding,
petitions to revive abandoned patent applications, and other
correspondence related to patent applications and patents which is
processed by organizations reporting to the Assistant Commissioner for
Patents. When patent-related documents are filed with a certificate of
mailing, pursuant to section 1.8, the certificate of mailing should be
completed with the new address: Assistant Commissioner for Patents,
Washington, D.C. 20231.
Unless otherwise specified, correspondence not processed by
organizations reporting to the Assistant Commissioner for Patents, such
as communications with the Board, patent services including patent copy
sales, assignments, requests for lists of patents and SIRs in a
subclass, requests for the status of maintenance fee payments, as well
as patent practitioner enrollment matters including admission to
[[Page 55692]]
examination, registration to practice, certificates of good standing,
and financial service matters including establishing a deposit account
should continue to be addressed to the Commissioner of Patents and
Trademarks, Washington, D.C. 20231. Documents to be recorded with the
Assignment Division, except those filed with new applications, should
be addressed to: Box Assignment, Commissioner of Patents and
Trademarks, Washington, D.C. 20231. Orders for certified and
uncertified copies of Office documents should be addressed to: Box 10,
Commissioner of Patents and Trademarks, Washington, D.C. 20231.
Special Office mail boxes as currently listed in each issue of the
Official Gazette should continue to be used to allow forwarding of
particular types of mail to the appropriate areas as quickly as
possible. Use of special box designations will facilitate the Office's
timely and accurate identification and processing of the designated
correspondence.
Checks should continue to be made payable to the Commissioner of
Patents and Trademarks.
Trademark-Related Mail
Most trademark-related mail should be sent directly to the
Trademark Operation at: Assistant Commissioner for Trademarks, 2900
Crystal Drive, Arlington, Virginia 22202-3513. When trademark-related
documents are filed with a certificate of mailing, pursuant to section
1.8, the certificate of mailing should be completed with the new
address: Assistant Commissioner for Trademarks, 2900 Crystal Drive,
Arlington, Virginia 22202-3513. Use of the correct address will avoid
processing delays. Trademark documents to be recorded with the
Assignment Division, except those filed with new applications, should
be addressed to: Box Assignment, Commissioner of Patents and
Trademarks, Washington, D.C. 20231. Orders for certified and
uncertified copies of trademark documents should be addressed to: Box
10, Commissioner of Patents and Trademarks, Washington, D.C. 20231.
The Office announced the new address for trademark-related mail in
a notice (Change of Address for Trademark Applications and Trademark
Related Papers) published in the Federal Register at 59 FR 29275 (June
6, 1994) and in the Trademark Office Official Gazette at 1163 Off. Gax.
Trademark Office 80 (June 28, 1994) (republished in 1170 Off. Gaz. Pat.
Office 303 (January 3, 1995)).
The Office will continue to maintain the special box designations
and FEE/NO FEE indicators for trademark mail as currently listed in
each issue of the Official Gazette. In addition to addressing
trademark-related mail as set forth above, the boxes should also be
used to allow forwarding of particular types of mail to the appropriate
areas as quickly as possible.
Checks should continue to be made payable to the Commissioner of
Patents and Trademarks.
Mail intended for the Trademark Trial and Appeal Board should be
addressed to: Assistant Commissioner for Trademarks, 2900 Crystal
Drive, Arlington, Virginia 22202-3513, including BOX TTAB/FEE or BOX
TTAB/NO FEE, whichever is applicable.
Hand-Carried Correspondence
All correspondence with the Office, except for communications
relating to pending litigation as specified currently in section
1.1(g), may continue to be filed directly at the Attorney's Window
located in Room 1B03 of Crystal Plaza Building 2, 2011 South Clark
Place, Arlington, Virginia. Trademark-related papers may also be filed
at the ``walk-up'' window located on the third floor of the South Tower
Building, 2900 Crystal Drive, Arlington, Virginia.
Federal Holidays Within The District of Columbia
When the Patent and Trademark Office is officially closed for an
entire day (for reasons due to weather or other causes), the Office
will consider each such day a ``Federal holiday within the District of
Columbia'' under 35 U.S.C. 21. Any action or fee due on such a day may
be taken, or fee paid, on the next succeeding business day the Office
is open.
Legal holidays considered ``Federal holidays within the District of
Columbia'' are New Year's Day (January 1), Martin Luther King, Jr.'s
Birthday (third Monday in January), Presidential Inauguration Day,
Washington's Birthday (third Monday in February), Memorial Day (last
Monday in May), Independence Day (July 4), Labor Day (first Monday in
September), Columbus Day (second Monday in October), Veterans Day
(November 11), Thanksgiving Day (fourth Thursday in November) and
Christmas Day (December 25). In the past, the Office has published
notices concerning unscheduled closings. See, e.g., ``Closing of Patent
and Trademark Office on Thursday, January 20, 1994 and Friday, February
11, 1994,'' 1161 Off. Gaz. Pat. Office 12 (April 5, 1994) (republished
in 1170 Off. Gaz. Pat. Office 8 (January 3, 1995)) and ``Filing of
Papers During Unscheduled Closings of the Patent and Trademark
Office,'' 1097 Off. Gaz. Pat. Office 53 (December 20, 1988)
(republished in 1170 Off. Gaz. Pat. Office 8 (January 3, 1995)). The
proposed rule change will further implement the existing policy.
Express Mail Provisions
Section 1.10 is proposed to be amended by deleting the requirement
for a ``Certificate of Mailing by Express Mail'' to obtain the benefit
of the date of deposit with the United States Postal Service (U.S.P.S.)
as the filing date of the paper. The title of section 1.10 is proposed
to be revised and section 1.10 is also proposed to be amended to
incorporate requirements for the resubmission of misplaced
correspondence which parallel section 1.8.
Under the current rule, the filer is required to include a
Certificate of Mailing by Express Mail, certifying the date of deposit
as Express Mail. Some papers filed with the Office, although deposited
as Express Mail with the U.S.P.S., have been denied the filing date of
the date of deposit as Express Mail because the required Certificate of
Mailing by Express Mail was omitted or deficient. The lost filing date
for a significant number of these papers has resulted in the loss of
substantive rights. For example, a trademark registration may be
canceled if the required affidavit of continued use or excusable non-
use is not filed by the end of the sixth year of registration. 15
U.S.C. 1058.
In light of the problematic nature of the requirement for a
Certificate of Mailing by Express Mail, inasmuch as the date of deposit
has already been entered by a disinterested third party, the Office
proposes to delete this requirement from section 1.10.
Miscellaneous Changes
Miscellaneous changes are proposed to change the word
``communications'' to ``correspondence'' for purposes of consistency.
Also, since the certificate of mailing by ``Express Mail'' will no
longer be a requirement of the proposed rules, the provisions of Part
10 relating to misconduct are proposed to be amended to delete
reference to this requirement.
Discussion of Specific Rules
If revised as proposed, the heading of section 1.1 will be changed
to state that the section contains the addresses for correspondence to
the Patent and Trademark Office.
Section 1.1 is proposed to be revised to set out all pertinent
Office mailing
[[Page 55693]]
addresses in paragraph (a) and in added paragraphs (a)(1), (a)(2), and
(a)(3). It should be noted that the remaining paragraphs of section 1.1
contain directions for using box designations rather than addresses.
Paragraph (a)(1) is proposed to be added to set out the new mailing
address to which most patent-related documents should be sent.
Paragraph (a)(2) is proposed to be added to set out the new mailing
address to which most trademark-related documents should be sent. The
Solicitor's mailing address, formerly set out in paragraph (g) of the
section is moved to a new paragraph (a)(3). Paragraph 1.1(g) is
proposed to be removed and reserved.
Sections 1.1 and 1.3 are proposed to be amended so that the word
``communications'' is changed to ``correspondence.''
Section 1.5(a) is proposed to be amended by removing the
requirement of the words ``PATENT APPLICATION'' on letters concerning
patent applications.
Section 1.8(a) is proposed to be revised to state that papers and
fees must be addressed as set out in 1.1(a). For the purposes of
1.8(a)(1)(i)(A), first class mail is interpreted as including ``Express
Mail'' and ``Priority Mail'' deposited with the U.S.P.S.
Section 1.9 is proposed to be amended to add a definition of
``Federal holiday within the District of Columbia'' to include Federal
holidays and days when the Patent and Trademark Office is officially
closed for the entire day (for reasons due to adverse weather or other
causes).
Section 1.10 is proposed to be revised to state that ``Express
Mail'' must be addressed as set out in Sec. 1.1(a). The title of
section 1.10 is proposed to be revised to reflect this change. Further,
for all correspondence actually received in the Office, the Office will
consider the correspondence filed on the date shown by the ``date in''
notation on the ``Express Mail'' label unless the ``date in'' is a
Saturday, Sunday or Federal holiday within the District of Columbia.
Because of the reliance on the ``date in'' marked by the Postal
Service, correspondence should be deposited directly with a person at
the United States Postal Service, rather than in a drop box, to ensure
that the person making the deposit receives a copy of the ``Express
Mail'' label at the time of making the deposit to verify that the
``date in'' is accurately and clearly written by the Postal Service
employee. Persons using an Express mail receptacle (such as a drop box)
do so at the risk of not receiving an accurate and legible copy of the
Express mail label at the time of deposit from which the Office may
determine the ``Express mail'' ``date in,'' and, therefore, may not
later argue that they should be entitled to the date on which they
deposited the correspondence into a receptacle. Moreover, if the ``date
in'' is found to be illegible or unclear, a person dealing directly
with a Postal Service employee must take corrective action to ensure
that a clear and accurate date is marked at the time of deposit.
Persons choosing to use a receptacle (or the like) obviously do not
oversee the marking by a Postal Service employee and thus may not later
argue for the benefit of a section 1.10 filing date if the ``date in''
on the ``Express Mail'' label is improperly or not clearly marked. The
determinative factor is when the Postal Service marks the ``date in''
and the mere deposit into a receptacle does not entitle one to an
``Express Mail'' ``date in'' under section 1.10.
Paragraph (b) of section 1.10 is proposed to be amended by deleting
the requirement for a ``Certificate of Mailing by Express Mail''
currently necessary to obtain the benefit of the date of deposit with
the United States Postal Service (U.S.P.S.) express mail service as the
filing date of the paper.
Paragraph (c) of section 1.10 is proposed to be amended to set
forth the requirements for the treatment of correspondence not received
by the Office for which the ``Express Mail'' procedure was utilized.
Correspondence not received by the Office will be considered filed in
the Office on the date shown by the ``date in'' notation entered by the
Postal Service if the party who forwards the correspondence:
(1) Places the number of the ``Express Mail'' mailing label on the
correspondence prior to the original mailing by ``Express Mail,''
(2) Informs the Office of the previous deposit of the
correspondence promptly after becoming aware that the Office has no
evidence of receipt of the correspondence,
(3) Supplies an additional copy of the previously deposited
correspondence showing the number of the ``Express Mail'' label
thereon,
(4) Supplies a copy of the ``Express Mail'' label clearly
displaying the ``date in'' entered by the United States Postal Service,
and
(5) Includes a statement which establishes, to the satisfaction of
the Commissioner, the previous deposit and that the copies of the
correspondence and ``Express Mail'' label are true copies of the
original correspondence and ``Express Mail'' label. Such statement must
be on the basis of personal knowledge, whenever possible, and must be a
verified statement if made by a person other than a practitioner as
defined in section 10.1(r) of this chapter.
In addition, although the requirement for a certificate of express
mail has been proposed to be eliminated from section 1.10, applicants
are strongly encouraged to continue using the certificate of express
mail, as well as the placement of the Express Mail label number in the
upper right corner of the first page of each separate piece of
correspondence and to retain a clearly marked Express Mail label, to
facilitate complying with the requirements of paragraph (c) if the
correspondence is not received in the Office or if reliance on the
U.S.P.S. ``date in'' is not possible. Moreover, paragraph (d) is
proposed to be added so that additional evidence may be required if the
Office so determines.
Section 5.33 (entitled ``Correspondence'') is proposed to be
amended to change the correspondence address to ``Assistant
Commissioner for Patents (Attention: Licensing and Review), Washington,
DC 20231.''
Section 10.23(c)(9) is proposed to be revised to reflect the
proposed change to section 1.10 that the certificate of mailing by
``Express Mail'' is no longer a requirement of the rules.
Other Considerations
The proposed rule changes are in conformity with the requirements
of the Regulatory Flexibility Act (5 U.S.C. et seq.), Executive Order
12612, and the Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et seq.
Information collection requirements are not affected by the change of
address. This proposed rule has been determined to not be significant
for the purposes of Executive Order 12866.
The Office has determined that this proposed rule change has no
Federalism implications affecting the relationship between the National
Government and the States as outlined in Executive Order 12612.
The Assistant General Counsel for Legislation and Regulation of the
Department of Commerce has certified to the Chief Counsel for Advocacy,
Small Business Administration, that the proposed rule changes would not
have a significant impact on a substantial number of small entities
(Regulatory Flexibility Act, 5 U.S.C. 605(b)). The proposed rule change
has no effect on patent fees.
These proposed rule changes contain collections of information
subject to the requirements of the Paperwork Reduction Act of 1980, 44
U.S.C. 3501 et seq., which are currently approved by the Office of
Management and Budget
[[Page 55694]]
under Control No. 0651-0009 and 0651-0031. The public reporting burden
for these collections of information for certificate of mailing is
estimated to average six minutes per response, including the time for
reviewing instructions, searching existing data sources, gathering and
maintaining the data needed, and completing and reviewing the
collection of information. Send comments regarding this burden estimate
or any other aspect of this collection of information, including
suggestions for reducing this burden to the Office of System Quality
and Enhancement Division, Patent and Trademark Office, Washington, D.C.
20231, and to the Office of Information and Regulatory Affairs, Office
of Management and Budget, Washington, DC 20503. (Attn: Paperwork
Reduction Act Projects 0651-0009 and 0651-0031).
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Freedom of information,
Inventions and patents, Reporting and record keeping requirements.
37 CFR Part 5
Classified information, Foreign relations, Inventions and patents.
37 CFR Part 10
Administrative Practice and procedure, Conflicts of interest,
Courts, Inventions and patents, Lawyers.
For the reasons set forth in the preamble and under the authority
granted to the Commissioner of Patents and Trademarks by 35 U.S.C. 6
and 15 U.S.C. 1123, 37 CFR Parts 1, 5 and 10 are proposed to be amended
as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 continues to read as
follows:
Authority: 35 U.S.C. 6, unless otherwise noted.
2. Section 1.1 is proposed to be amended by removing and reserving
paragraph (g) and by revising the heading and paragraph (a) to read as
follows:
Sec. 1.1 Addresses for correspondence with the Patent and Trademark
Office.
(a) Except for those documents identified in paragraphs (a)(1), (2)
and (3) of this section, all correspondence intended for the Patent and
Trademark Office must be addressed to ``Commissioner of Patents and
Trademarks, Washington, D.C. 20231.'' When appropriate, correspondence
should also be marked for the attention of a particular office or
individual.
(1) Patent correspondence. All correspondence concerning patent
matters processed by organizations reporting to the Assistant
Commissioner for patents should be addressed to ``Assistant
Commissioner for Patents, Washington, D.C. 20231.''
(2) Trademark correspondence. All correspondence concerning
trademark matters, except for trademark-related documents sent to the
Assignment Division for recordation and requests for certified and
uncertified copies of trademark application and registration documents,
should be addressed to ``Assistant Commissioner for Trademarks, 2900
Crystal Drive, Arlington, Virginia 22202-3513.'' This includes
correspondence intended for the Trademark Trial and Appeal Board.
(3) Office of Solicitor correspondence. (i) Correspondence relating
to pending litigation required by court rule or order to be served on
the Solicitor shall be hand-delivered to the Office of the Solicitor or
shall be mailed to: Office of the Solicitor, P.O. Box 15667, Arlington,
Virginia 22215; or such other address as may be designated in writing
in the litigation. See 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 addressed to the wrong Post Office Box will not
be filed elsewhere in the Patent and Trademark Office and might be
returned.
* * * * *
(g) [Reserved]
* * * * *
3. Section 1.3 is proposed to be revised to read as follows:
Sec. 1.3 Business to be conduced with decorum and courtesy.
Applicants and their attorneys or agents are required to conduct
their business with the Patent and Trademark Office with decorum and
courtesy. Papers presented in violation of this requirement will be
submitted to the Commissioner and will be returned by the
Commissioner's direct order. Complaints against examiners and other
employees must be made in correspondence separate from other papers.
4. Section 1.5(a) is proposed to be revised to read as follows:
Sec. 1.5 Identification of application, patent, or registration.
(a) No correspondence relating to an application should be filed
prior to when notification of the application number is received from
the Patent and Trademark Office. When a letter directed to the Patent
and Trademark Office concerns a previously filed application for a
patent, it must identify on the top page in a conspicuous location, the
application number (consisting of the series code and the serial
number; e.g., 07/123,456), or the serial number and filing date
assigned to that application by the Patent and Trademark Office, or the
international application number of the international application. Any
correspondence not containing such identification will be returned to
the sender where a return address is available. The returned
correspondence will be accompanied with a cover letter which will
indicate to the sender that if the returned correspondence is
resubmitted to the Patent and Trademark Office within two weeks of the
mail date on the cover letter, the original date of receipt of the
correspondence will be considered by the Patent and Trademark Office as
the date of receipt of the correspondence. Applicants may use either
the Certificate of Mailing or Transmission procedure under 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 in the United States Postal Service. If the returned
correspondence is not resubmitted within the two-week period, the date
of receipt of the resubmission will be considered to be the date of
receipt of the correspondence. The two-week period to resubmit the
returned correspondence will not be extended. If for some reason
returned correspondence is resubmitted with proper identification later
than two weeks after the return mailing by the Patent and Trademark
Office, the resubmitted correspondence will be accepted but given its
date of receipt. In addition to the application number, all letters
directed to the Patent and Trademark Office concerning applications for
patent should also state the name of the applicant, the title of the
invention, the date of filing the same, and, if known, the group art
unit or other unit within the Patent and Trademark Office responsible
for considering the letter and the name of
[[Page 55695]]
the examiner or other person to which it has been assigned.
* * * * *
5. Section 1.8(a)(1)(i)(A) is proposed to be revised to read as
follows:
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
* * * * *
6. Section 1.9 is proposed to be 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.
7. Section 1.10 is proposed to be revised to read as follows:
Sec. 1.10 Filing of correspondence by ``Express Mail.''
(a) Any correspondence received by the Patent and Trademark Office
utilizing the ``Express Mail Post Office to Addressee'' service of the
United States Postal Service will be considered filed in the Office on
the date shown by the ``date in'' notation entered by the United States
Postal Service on the ``Express Mail'' label, unless the ``date in'' is
a Saturday, Sunday or Federal holiday within the District of Columbia.
See Sec. 1.6(a). This procedure can be used to file any correspondence
in the Office.
(b) Any correspondence filed by ``Express Mail'' must be addressed
as set out in Sec. 1.1(a) and should be deposited directly with the
United States Postal Service to ensure that the person depositing the
correspondence receives a copy of the ``Express Mail'' label at the
time of deposit with the ``date in'' clearly marked thereon. Persons
dealing indirectly with the Untied States Postal Service (such as by
deposit in an Express Mail drop box) do so at the risk of not receiving
their copy of the ``Express Mail'' label with the ``date in'' clearly
marked.
(c) Any correspondence mailed to the Patent and Trademark Office
utilizing the ``Express Mail Post Office to Addressee'' service of the
United States Postal Service, but not received by the Office, will be
considered filed in the Office on the date shown by the ``date in''
notation entered by the Untied States Postal Service on the ``Express
Mail'' label, unless the ``date in'' is a Saturday, Sunday or Federal
holiday within the District of Columbia (see Sec. 1.6(a)), if the party
who forwarded such correspondence:
(1) Places the number of the ``Express Mail'' mailing label on the
correspondence prior to the original mailing by ``Express Mail,''
(2) Informs the Office of the previous deposit of the
correspondence promptly after becoming aware that the Office has no
evidence of receipt of the correspondence,
(3) Supplies a copy of the previously deposited correspondence
showing the number of the ``Express Mail'' label thereon,
(4) Supplies a copy of the ``Express Mail'' label clearly
displaying the ``date in'' entered by the United States Postal Service,
and
(5) Includes a statement which establishes, to the satisfaction of
the Commissioner, to the previous deposit and that the copies of the
correspondence and ``Express Mail'' label are true copies of the
original correspondence and ``Express Mail'' label. Such statement must
be on the basis of personal knowledge, whenever possible, and must be a
verified statement if made by a person other than a practitioner as
defined in Sec. 10.1(r) of this chapter.
(d) The Office may require additional evidence to determine if the
correspondence was deposited as ``Express Mail'' with the United States
Postal Service on the date in question.
PART 5--SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND
FILE APPLICATIONS IN FOREIGN COUNTRIES
8. The authority citation for 37 CFR Part 5 continues to read as
follows:
Authority: 35 U.S.C. 6, 41, 181-188, as amended by the Patent
Law Foreign Filing Amendments Act of 1988, Pub. L. 100-418, 102
Stat. 1567; the Arms Export Control Act, as amended, 22 U.S.C. 2751
et seq., the Atomic Energy Act of 1954, as amended, 42 U.S.C. 2011
et seq., and the Nuclear Non-Proliferation Act of 1978, 22 U.S.C.
3201 et seq., and the delegations in the regulations under these
acts to the Commissioner (15 CFR 370.10(j), 22 CFR 125.04, and 10
CFR 810.7).
9. Section 5.33 is proposed to be revised to read as follows:
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
10. The authority citation for 37 CFR Part 10 continues to read as
follows:
Authority: 5 U.S.C. 500; 15 U.S.C. 1123; 35 U.S.C. 6, 31, 32,
41.
11. Section 10.23(c)(9) is proposed to be revised to read as
follows:
Sec. 10.23 Misconduct.
* * * * *
(c) * * *
* * * * *
(9) Knowingly misusing a ``Certificate of Mailing or Transmission''
under Sec. 1.8 of this chapter.
* * * * *
Dated: October 26, 1995.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and
Trademarks.
[FR Doc. 95-27031 Filed 11-1-95; 8:45 am]
BILLING CODE 3510-16-M
