2021-14035. Mailing Address Changes Related to USPTO Deposit Accounts and Patent Maintenance Fees

AGENCY:

United States Patent and Trademark Office, Department of Commerce.

ACTION:

Final rule.

SUMMARY:

The United States Patent and Trademark Office (USPTO or Office) is revising the Rules of Practice to update the addresses for payments of patent maintenance fees that are not submitted electronically, correspondence related to maintenance fees, and the replenishment of a USPTO deposit account by mail. From December 15, 2020, through December 14, 2021, maintenance fee payments, maintenance fee-related correspondence, and USPTO deposit account replenishments sent to the old addresses will be forwarded to the new addresses.

DATES:

This final rule is effective on July 2, 2021.

FOR FURTHER INFORMATION CONTACT:

Inquiries related to maintenance fees and USPTO deposit accounts may be made by calling 571-272-6500. Inquiries related to this final rule should be directed to Matthew Lee, Office of Finance, USPTO, at [e-mail].

SUPPLEMENTARY INFORMATION:

To improve operational efficiencies and consolidate space, the USPTO's Office of Finance, which includes the Maintenance Fee and Deposit Account Branches, was relocated as of December 15, 2020, from 2051 Jamieson Avenue, Suite 300, in Alexandria, Virginia, to the main USPTO campus in Alexandria, Virginia. Accordingly, this final rule updates the Rules of Practice in Patent Cases and the Rules of Practice in Trademark Cases with both the new mailing address for patent maintenance fees and maintenance fee-related correspondence and the new mailing address for USPTO deposit account replenishments. As of December 15, 2020, correspondence sent by U.S. Postal Service (USPS) first-class mail to pay a USPTO patent maintenance fee, as well as other maintenance fee-related correspondence, should be mailed to: Mail Stop Maintenance Fee, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.

Also as of December 15, 2020, checks and money orders that are sent by USPS first-class mail to replenish a USPTO deposit account should be mailed to: Mail Stop Deposit Accounts, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.

From December 15, 2020, through December 14, 2021, maintenance fee payments, maintenance fee-related correspondence, and USPTO deposit account replenishments sent to the Jamieson Avenue addresses will be forwarded to the new addresses. After December 14, 2021, such mailings may be returned to the sender by the USPS.

The appropriate sections of the Manual of Patent Examining Procedure and the Trademark Manual of Examining Procedure will be revised in due course to reflect these mailing address changes.

Maintenance fee payments and USPTO deposit account replenishments submitted electronically on the USPTO website at www.uspto.gov are not affected by these mailing address changes.

Discussion of Specific Rules

The following is a discussion of the amendments to 37 CFR part 1.

Section 1.1: Section 1.1(a) is amended to remove the reference to paragraph (d)(1) of this section from the listed exceptions.

Section 1.1(d) is amended to add the paragraph heading “Payments of patent maintenance fees” and to change the address for payments of patent maintenance fees that are not submitted electronically and correspondence related to maintenance fees to “Mail Stop Maintenance Fee, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.”

Section 1.25: Section 1.25(c) is amended to remove the reference to paragraph (c)(4) of this section, as the paragraph was previously removed.

Section 1.25(c)(3) is amended to change the address for payments to replenish a USPTO deposit account to “Mail Stop Deposit Accounts, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.”

The following is a discussion of the amendment to 37 CFR part 2.

Section 2.208: Section 2.208(c)(3) is amended to change the address for payments to replenish a USPTO deposit account to “Mail Stop Deposit Accounts, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.”

Rulemaking Considerations

A. Administrative Procedure Act: Since this final rule is directed to changing an Office address, this final rule merely involves rules of agency organization, procedure, or practice within the meaning of 5 U.S.C. 553(b)(A) and is a non-substantive change to the regulations. Accordingly, this final rule may be adopted without prior notice and opportunity for public comment under 5 U.S.C. 553(b) and (c). Furthermore, the Office finds good cause to waive the 30-day delayed effectiveness period, as provided by 5 U.S.C. 553(d)(3), because such delay would be contrary to the public interest in providing accurate contact information for the Office.

B. Regulatory Flexibility Act: As prior notice and an opportunity for public comment are not required pursuant to 5 U.S.C. 553 (or any other law), neither a Regulatory Flexibility Act analysis nor a certification under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is required. See 5 U.S.C. 605(b).

C. Executive Order 12866 (Regulatory Planning and Review): This rulemaking has been determined to be not significant for purposes of Executive Order 12866 (Sept. 30, 1993).

D. Executive Order 13563 (Improving Regulation and Regulatory Review): The Office has complied with Executive Order 13563 (Jan. 18, 2011). Specifically, the Office has, to the extent feasible and applicable: (1) Made a reasoned determination that the benefits justify the costs of the rule; (2) tailored the rule to impose the least burden on society consistent with obtaining the regulatory objectives; (3) selected a regulatory approach that maximizes net benefits; (4) specified performance objectives; (5) identified and assessed available alternatives; (6) involved the public in an open exchange of information and perspectives among experts in relevant disciplines, affected stakeholders in the private sector, and the public as a whole, and provided online access to the rulemaking docket; (7) attempted to promote coordination, simplification, and harmonization across government agencies and identified goals designed to promote innovation; (8) considered approaches that reduce burdens and maintain flexibility and freedom of choice for the public; and (9) ensured the objectivity of scientific and technological information and processes.

E. Executive Order 13132 (Federalism): This rulemaking does not contain policies with federalism implications sufficient to warrant preparation of a Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).

F. Executive Order 13175 (Tribal Consultation): This rulemaking will not: (1) Have substantial direct effects on one or more Indian tribes, (2) impose substantial direct compliance costs on Indian tribal governments, or (3) preempt tribal law. Therefore, a Tribal Summary Impact Statement is not required under Executive Order 13175 (Nov. 6, 2000).

G. Executive Order 13211 (Energy Effects): This rulemaking is not a significant energy action under Executive Order 13211 because this rulemaking is not likely to have a significant adverse effect on the supply, distribution, or use of energy. Therefore, a Statement of Energy Effects is not required under Executive Order 13211 (May 18, 2001).

H. Executive Order 12988 (Civil Justice Reform): This rulemaking meets applicable standards to minimize litigation, eliminate ambiguity, and reduce burden as set forth in sections 3(a) and 3(b)(2) of Executive Order 12988 (Feb. 5, 1996).

I. Executive Order 13045 (Protection of Children): This rulemaking does not concern an environmental risk to health or safety that may disproportionately affect children under Executive Order 13045 (Apr. 21, 1997).

J. Executive Order 12630 (Taking of Private Property): This rulemaking will not affect a taking of private property or otherwise have taking implications under Executive Order 12630 (Mar. 15, 1988).

K. Congressional Review Act: Under the Congressional Review Act provisions of the Small Business Regulatory Enforcement Fairness Act of 1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the USPTO will submit a report containing the rule and other required information to the United States Senate, the United States House of Representatives, and the Comptroller General of the Government Accountability Office. The changes in this rulemaking are not expected to result in an annual effect on the economy of $100 million or more, a major increase in costs or prices, or significant adverse effects on competition, employment, investment, productivity, innovation, or the ability of United States-based enterprises to compete with foreign-based enterprises in domestic and export markets. Therefore, this rulemaking is not a “major rule” as defined in 5 U.S.C. 804(2).

L. Unfunded Mandates Reform Act of 1995: The changes set forth in this rulemaking do not involve a Federal intergovernmental mandate that will result in the expenditure by state, local, and tribal governments, in the aggregate, of $100 million (as adjusted) or more in any one year, or a Federal private sector mandate that will result in the expenditure by the private sector of $100 million (as adjusted) or more in any one year, and will not significantly or uniquely affect small governments. Therefore, no actions are necessary under the provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 1501 et seq.

M. National Environmental Policy Act of 1969: This rulemaking will not have any effect on the quality of the environment and is thus categorically excluded from review under the National Environmental Policy Act of 1969. See 42 U.S.C. 4321 et seq.

N. National Technology Transfer and Advancement Act of 1995: The requirements of section 12(d) of the National Technology Transfer and Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because this rulemaking does not contain provisions that involve the use of technical standards.

O. Paperwork Reduction Act of 1995: The Paperwork Reduction Act of 1995 (44 U.S.C. 3501) requires that the Office consider the impact of paperwork and other information collection burdens imposed on the public. This rulemaking does not involve any new information collection requirements that are subject to review by the Office of Management and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.).

Notwithstanding any other provision of law, no person is required to respond to, nor shall any 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 has a valid OMB control number.

List of Subjects

37 CFR Part 1

• Administrative practice and procedure
• Biologics
• Courts
• Freedom of information
• Inventions and patents
• Reporting and recordkeeping requirements
• Small businesses

37 CFR Part 2

• Administrative practice and procedure
• Courts
• Lawyers
• Trademarks

For the reasons set forth in the preamble, 37 CFR parts 1 and 2 are amended as follows:

PART 1—RULES OF PRACTICE IN PATENT CASES

1. The authority citation for 37 CFR part 1 continues to read as follows:

Authority: 35 U.S.C. 2(b)(2).

2. Section 1.1 is amended by revising paragraph (a) introductory text and paragraph (d) to read as follows:

§ 1.1

Addresses for non-trademark correspondence with the United States Patent and Trademark Office.

(a) In general. Except as provided in paragraphs (a)(3)(i) and (a)(3)(ii) of this section, all correspondence intended for the United States Patent and Trademark Office must be addressed to either “Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450” or to specific areas within the Office as set out in paragraphs (a)(1) and (a)(3)(iii) of this section. When appropriate, correspondence should also be marked for the attention of a particular office or individual.

* * * * *

(d) Payments of patent maintenance fees. Payments of patent maintenance fees that are not submitted electronically and correspondence related to maintenance fees may be addressed to: Mail Stop Maintenance Fee, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.

* * * * *

3. Section 1.25 is amended by revising paragraphs (c) introductory text and (c)(3) to read as follows:

§ 1.25

Deposit Accounts.

* * * * *

(c) A deposit account holder may replenish the deposit account by submitting a payment to the United States Patent and Trademark Office. A payment to replenish a deposit account must be submitted by one of the methods set forth in paragraphs (c)(1), (c)(2), or (c)(3) of this section.

* * * * *

(3) A payment to replenish a deposit account may be addressed to: Mail Stop Deposit Accounts, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.

PART 2—RULES OF PRACTICE IN TRADEMARK CASES

4. The authority citation for 37 CFR part 2 continues to read as follows:

Authority: 15 U.S.C. 1113, 15 U.S.C. 1123, 35 U.S.C. 2, section 10(c) of Pub. L. 112-29.

5. Section 2.208 is amended by revising paragraph (c)(3) to read as follows:

§ 2.208

Deposit Accounts.

* * * * *

(c) * * *

(3) A payment to replenish a deposit account may be addressed to: Mail Stop Deposit Accounts, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.

Andrew Hirshfeld,

Commissioner for Patents, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.