Department of Commerce
Patent and Trademark Office
37 CFR Parts 1, 2, 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.
Summary: The Patent and Trademark Office (Office) is amending its rules
of practice to (1) specify addresses for agency mail to expedite mail
delivery, (2) define "Federal holiday within the District of Columbia,"
(3) clarify and simplify procedures for filing papers and fees by
"Express Mail," and (4) remove certain exclusions from 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
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, D.C. 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 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.
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,
D.C. 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 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 (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, 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
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 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 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 1.8
The Office is amending 1.8(a)(2) to remove the exclusions listed in
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 1.8(a)(1): (1)
affidavits of continued use or excusable non-use, 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 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 1.8.
It should be noted that 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
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.
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 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 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 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 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; 1.10(d) applies where the "date-in" is incorrectly entered by
the USPS; and 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 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 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 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 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 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, 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
1.6(a)(3) on a Saturday, Sunday or Federal holiday within the
District of Columbia, 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
1.6(a)(3). In addition, 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.
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, 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 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 1.7).
Section 1.8(a)(1)(i)(A) is 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 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
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 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 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, 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 1.10(c) through (e), even if the party who filed the
correspondence satisfies the other requirements of 1.10(c),
1.10(d) or 1.10(e).
Since the filing of correspondence under 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
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, 1.137(a) or 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 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 1.10 in order to grant priority
filing date to patent application not arbitrary and capricious, because
failure to comply with the requirements of 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
1.183); Vincent v. Mossinghoff, 230 USPQ 621 (D.D.C. 1985)
(Misunderstanding of 1.8 not unavoidable delay in responding to
Office Action); Gustafson v. Strange, 227 USPQ 174 (Comm'r Pats. 1985)
(Counsel's unawareness of 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 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 1.181 for patent
correspondence and 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 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, 1.10(d) specifically
requires that any petition under 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 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) 513,
and Trademark Manual of Examining Procedure (2nd ed., May, 1993)
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
1.10(e) must be verified if made by a person other than a practitioner
as defined in 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 1.1(a). There is no corresponding
provision that correspondence be properly addressed and mailed with
sufficient postage in 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 because the correspondence was not mailed with
sufficient postage or not addressed as set out in 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 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 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
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 1.1, reduces the amount of sorting required.
Except as set out in 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
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 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 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 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, 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 1.1(a) which states that mail "must" be addressed to the
Assistant Commissioner for Patents and 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 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 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
1.8 or the Express Mail procedure under 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 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 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 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
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 1.10 on any day and the amendment to 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 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 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
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 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 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:
1.1 Addresses for correspondence with the Patent and Trademark Office.
(a) Except for 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
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:
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:
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),
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 1.8 or the Express Mail procedure under 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:
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 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:
1.8 Certificate of mailing or transmission.
(a) * * *
(1) * * *
(i) * * *
(A) Addressed as set out in 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:
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:
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 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:
(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 10.1(r) of this chapter.
(e) Any person mailing correspondence addressed as set out in
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 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:
2.165 Reconsideration of affidavit or declaration.
(a)(1) If the affidavit or declaration filed pursuant to 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:
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:
10.23 Misconduct.
* * * * *
(c) * * *
(9) Knowingly misusing a "Certificate of Mailing or Transmission" under
1.8 of this chapter.
* * * * *
October 24, 1996 BRUCE A. LEHMAN
Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks