2010-15469. Correspondence With the United States Patent and Trademark Office

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Final rule.

SUMMARY:

The United States Patent and Trademark Office (Office) is revising the rules of practice to update the service addresses for certain correspondence to the Office of the General Counsel (OGC) and a component of OGC, the Office of the Deputy General Counsel for Intellectual Property Law and Solicitor (Office of the Solicitor). The Office is also updating the physical location address for the Public Search Room.

DATES:

Effective Date: The changes in this final rule are effective on June 25, 2010.

Compliance Date: The compliance date for correspondence to the Office of the General Counsel and the Office of the Solicitor is July 26, 2010.

FOR FURTHER INFORMATION CONTACT:

Kyu S. Lee, Office of the General Counsel, Office of General Law, by telephone at 571-272-3000.

SUPPLEMENTARY INFORMATION:

The United States Patent and Trademark Office (Office) is revising the rules of practice to update the service addresses for certain correspondence to the Office of the General Counsel (OGC) and a component of OGC, the Office of the Deputy General Counsel for Intellectual Property Law and Solicitor (Office of the Solicitor). The Office no longer has facilities in the Crystal City (Arlington, Virginia) location. Accordingly, revised service addresses for certain correspondence to the Office of the General Counsel and the Office of the Solicitor have been established at the Office's Alexandria, Virginia location. Although the effective date of the address change is June 25, 2010, both the Arlington, Virginia and Alexandria, Virginia addresses may be used until July 26, 2010. However, after July 26, 2010, only the revised address in Alexandria, Virginia may be used. Appropriate sections of the Office's Manual of Patent Examining Procedure (MPEP) will be revised to conform to the final rule.

The Office of the Deputy General Counsel for Intellectual Property Law and Solicitor: Specifically, the Office is changing the mailing address for correspondence to counsel for the Director of the Office of Enrollment and Discipline relating to disciplinary proceedings pending before a Hearing Officer or the Director from Arlington, Virginia to Alexandria, Virginia. The Office is also amending the mailing address for general correspondence to the Office of the Solicitor, by specifically adding the Office of the Solicitor as the addressee.

Public Search Room: The physical address for the Public Search Room is being updated to reflect that it is located at the Office's Alexandria, Virginia campus and is no longer in Arlington, Virginia.

The Office of the General Counsel: The Office is changing the Office of the General Counsel's mailing address for litigation and service from Arlington, Virginia to Alexandria, Virginia.

Discussion of Specific Rules

Title 37 of the Code of Federal Regulations, is amended as follows:

Part 1: Section 1.1 is amended to: (1) Change the Office of the Solicitor's address for correspondence to counsel for disciplinary proceedings to “Mail Stop 8, Office of the Solicitor, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450”; and (2) change the Office of the Solicitor's address for general correspondence to “Mail Stop 8, Office of the Solicitor, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.”

Part 102: Section 102.2 is amended to change the location address for the Public Search Room to “Public Search Room, Madison Building East, First Floor, 600 Dulany Street, Alexandria, Virginia.”

Part 104: Section 104.2 is amended to: (1) Change the mailing address to “Office of the General Counsel, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.”

Rulemaking Considerations

Administrative Procedure Act: Since this final rule is directed to changing Office addresses, this final rule merely involves rules of agency organization, procedure, or practice within the meaning of 5 U.S.C. 553(b)(A). Accordingly, this final rule may be adopted without prior notice and opportunity for public comment under 5 U.S.C. 553(b) and (c), or thirty-day advance publication under 5 U.S.C. 553(d).

Regulatory Flexibility Act: As prior notice and an opportunity for public comment are not required pursuant to 5 U.S.C. 553 (or any other law), a regulatory flexibility analysis under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is not required. See 5 U.S.C. 603.

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

Executive Order 12866: This rule making has been determined to be not significant for purposes of Executive Order 12866 (Sept. 30, 1993).

Paperwork Reduction Act: This rule making does not create any information collection requirements under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). Notwithstanding any other provision of law, no person is required to respond to nor shall a person be subject to a penalty for failure to comply with a collection of information subject to the requirements of the Paperwork Reduction Act unless that collection of information displays a currently valid OMB control number.

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 final 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. However, this action is not a major rule as defined by 5 U.S.C. 804(2).

List of Subjects

37 CFR Part 1

• Administrative practice and procedure
• Courts
• Freedom of information
• Inventions and patents
• Reporting and record keeping requirements
• Small businesses

37 CFR Part 102

• Administrative practice and procedure
• Freedom of information
• Privacy

37 CFR Part 104

• Administrative practice and procedure
• Claims
• Courts
• Freedom of information
• Inventions and patents
• Trademarks

For the reasons set forth in the preamble, 37 CFR Parts 1, 102 and 104 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 paragraphs (a)(3)(ii) and (a)(3)(iii) to read as follows:

§ 1.1

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

(a) * * *

(3) * * *

(ii) Disciplinary proceedings. Correspondence to counsel for the Director of the Office of Enrollment and Discipline relating to disciplinary proceedings pending before a Hearing Officer or the Director shall be mailed to: Mail Stop 8, Office of the Solicitor, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.

(iii) Solicitor, in general. Correspondence to the Office of the Solicitor not otherwise provided for shall be addressed to: Mail Stop 8, Office of the Solicitor, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.

* * * * *

PART 102—DISCLOSURE OF GOVERNMENT INFORMATION

3. The authority citation for 37 CFR part 102 continues to read as follows:

Authority: 5 U.S.C. 552; 5 U.S.C. 552a; 5 U.S.C. 553; 31 U.S.C. 3717; 35 U.S.C. 2(b)(2), 21, 41, 42, 122; 44 U.S.C. 3101.

4. Section 102.2 is amended by revising paragraph (a) to read as follows:

§ 102.2

Public reference facilities.

(a) USPTO maintains a public reference facility that contains the records FOIA requires to be made regularly available for public inspection and copying; furnishes information and otherwise assists the public concerning USPTO operations under FOIA; and receives and processes requests for records under FOIA. The FOIA Officer is responsible for determining which of USPTO's records are required to be made available for public inspection and copying, and for making those records available in USPTO's reference and records inspection facility. The FOIA Officer shall maintain and make available for public inspection and copying a current subject-matter index of USPTO's public inspection facility records. Each index shall be updated regularly, at least quarterly, with respect to newly included records. In accordance with 5 U.S.C. 552(a)(2), USPTO has determined that it is unnecessary and impracticable to publish quarterly, or more frequently, and distribute copies of the index and supplements thereto. The public reference facility is located in the Public Search Room, Madison Building East, First Floor, 600 Dulany Street, Alexandria, Virginia.

* * * * *

PART 104—LEGAL PROCESSES

5. The authority citation for 37 CFR part 104 continues to read as follows: 35 U.S.C. 2(b)(2), 10, 23, 25; 44 U.S.C. 3101.

6. Section 104.2 is amended by revising paragraph (a) to read as follows:

§ 104.2

Address for mail and service; telephone number.

(a) Mail under this part should be addressed to the Office of the General Counsel, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.

* * * * *

Dated: June 18, 2010.

David J. Kappos,

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