| Mail Issues, Office Closures, Postal Emergencies, etc. |
Referenced Items (5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45, 46, 47, 48, 49, 50, 51, 52, 53, 54, 55, 56, 57, 58, 59, 60, 61, 62, 63, 64, 65, 66, 67, 68, 69, 70, 71, 72, 73, 74, 75, 76, 77, 78, 79, 80, 81, 82, 83, 84, 85, 86, 87, 88, 89, 90, 91, 92, 93, 94, 95, 96, 97, 98, 99, 100) |
(7) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Parts 1, 2, 7, 11, 41, and 42
[Docket No.: PTO-P-2014-0045]
RIN 0651-AC98
Renaming of Express Mail® to Priority Mail Express®
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark (Office) is revising
the rules of practice to change the phrase Express Mail or EXPRESS MAIL®
to Priority Mail Express® due to the United States Postal Service renaming
Express Mail® to Priority Mail Express® on July 28, 2013, and to
make other changes to conform the nomenclature used in the rules of
practice to the current nomenclature used by the USPS.
DATES: Effective Date: The changes in this final rule are effective on
October 22, 2014.
FOR FURTHER INFORMATION CONTACT: Eugenia A. Jones, Senior Legal
Advisor, at (571) 272-7727, or Erin M. Harriman, Legal Advisor, at
(571) 272-7747; or by mail addressed to: United States Patent and
Trademark Office, Mail Stop Comments-Patents, Commissioner for Patents,
P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of
Eugenia A. Jones.
SUPPLEMENTARY INFORMATION:
Executive Summary: Purpose: Effective July 28, 2013, the USPS
changed the name of Express Mail® to Priority Mail Express®. Accordingly,
the Office is revising the rules of practice to conform the nomenclature
used in the rules of practice to the current nomenclature used by the USPS.
More specifically, the Office is changing the phrase Express Mail
or EXPRESS MAIL® to Priority Mail Express® in 37 CFR 1.5,
1.6, 1.10, 2.119, 2.195, 2.198, 7.4, 11.35, 11.41, 11.42, 11.51,
41.106, 42.6, 42.105, 42.205, and 42.406. In addition, the USPS has
updated the Priority Mail Express® mailing label. The mailing
label now has a "date accepted" field rather than a "date-in"
field, which was previously used on the Express Mail® mailing
label. The Office is revising 37 CFR 1.10, 2.198, and 41.106
accordingly.
All characteristics of the Priority Mail Express® service
are the same as those of the former Express Mail® service,
although the mailing labels differ. The modifications to the rules are
purely changes in terminology resulting from the renaming implemented
by the USPS on July 28, 2013. There is no substantive change in
practice before the Office as a result of these rule changes. Thus,
parties still cannot use a foreign or international mail service (such
as the newly renamed Priority Mail Express International® or
other forms of U.S. mail, such as certified mail, to obtain the benefit
under 37 CFR 1.10 and 2.198. The procedure in 37 CFR 1.10 and 2.198 is
limited to correspondence deposited in Priority Mail Express®
Post Office to Addressee service of the USPS.
The changes in this final rule are effective on the date of
publication in the Federal Register. Papers submitted prior to the
effective date containing language pertaining to Express Mail®
and the mailing label "date-in" field will be accepted by the Office.
Papers submitted after the effective date containing language
pertaining to Express Mail® and the mailing label "date-in"
field will be accepted by the Office. Although the new terminology
should be used, papers submitted using the former language of Express
Mail® and "date-in" will be presumed by the Office to mean
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Priority Mail Express® and "date accepted" after the effective
date. The Office is in the process of updating its patent application
transmittal forms (e.g., PTO/AIA/15, PTO/AIA/18, PTO/AIA/19, PTO/AIA/
50, PTO/SB/16, PTO/SB/29) to change the reference Express Mail®
Label No. to Priority Mail Express® Label No.
Costs and Benefits: This rulemaking is not economically significant
under Executive Order 12866 (Sept. 30, 1993).
Background: Effective July 28, 2013, the USPS changed the name of
Express Mail® to Priority Mail Express®. This final rule
revises the rules of practice to change the phrase Express Mail to
Priority Mail Express® and to make other changes to conform the
nomenclature used in the rules of practice to the current nomenclature
used by the USPS.
Discussion of Specific Rules
The following is a discussion of amendments to Title 37 of the Code
of Federal Regulations, Parts 1, 2, 7, 11, 41, and 42.
37 CFR Part 1
Section 1.5: Section 1.5(a) is amended to change "Express Mail
procedure" to "Priority Mail Express® procedure."
Section 1.6: Section 1.6(a) is amended to change "Express Mail
date of deposit" to "Priority Mail Express® date of deposit."
Section 1.6(a)(2) is amended to change "Express Mail" to "Priority
Mail Express®."
Section 1.10: Section 1.10 is amended to change "Express Mail" to
"Priority Mail Express®" and to change "date-in" or "date
in" to "date accepted." In particular, 37 CFR 1.10(a)(1), (c), (d),
(d)(3), (e), (e)(3), (g), and (h) are amended to change "Express Mail
Post Office to Addressee" to "Priority Mail Express® Post
Office to Addressee" and 37 CFR 1.10(a)(2), (b), (c), (c)(2), (c)(3),
(d), (d)(2), (e)(2)-(4), (f), (g), (g)(2)-(4), (h), (h)(2)-(4), (i),
(i)(1), and (i)(3) are amended to change "Express Mail" to "Priority
Mail Express®." In addition, 37 CFR 1.10(a)(2), (b), (c),
(c)(3), (d), (e)(3), and (g)(3) are amended to change "date-in" or
"date in" to "date accepted."
37 CFR Part 2
Section 2.119: Section 2.119(b)(4) is amended to change "Express
Mail Post Office to Addressee" to "Priority Mail Express® Post
Office to Addressee" and 37 CFR 2.119(c) is amended to change
"Express Mail" to "Priority Mail Express®."
Section 2.195: Sections 2.195(a), (a)(4), (e)(2)(iii), and (e)(3)
are amended to change "Express Mail" to "Priority Mail
Express®," and 37 CFR 2.195(e)(1) is amended to change
"Express Mail Post Office to Addressee" to "Priority Mail
Express® Post Office to Addressee."
Section 2.198: Section 2.198 is amended to change "Express Mail"
to "Priority Mail Express®" and to change "date in" or
"date-in" to "date accepted." In particular, 37 CFR 2.198(a)(1),
(c), (d), (d)(3), (e), and (e)(3) are amended to change "Express Mail
Post Office to Addressee" to "Priority Mail Express® Post
Office to Addressee" and 37 CFR 2.198(a)(1), (a)(2), (b), (c), (c)(2),
(c)(3), (d), (d)(2), (e)(2)-(4), and (f) are amended to change
"Express Mail" to "Priority Mail Express®." In addition, 37
CFR 2.198(a)(2), (b), (c), (c)(3), (d), and (e)(3) are amended to
change "date in" or "date-in" to "date accepted."
37 CFR Part 7
Section 7.4: Section 7.4(b)(1) is amended to change "Express
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Mail" to "Priority Mail Express®."
37 CFR Part 11
Section 11.35: Section 11.35(a)(2) is amended to change "Express
Mail" to "Priority Mail Express®."
Section 11.41: Section 11.41(b) is amended to change "Express
Mail" to "Priority Mail Express®."
Section 11.42: Sections 11.42(a)(2), (b)(2), (c)(2), and (e) are
amended to change "Express Mail" to "Priority Mail Express®."
Section 11.51: Section 11.51(a) is amended to change "Express
Mail" to "Priority Mail Express®."
37 CFR Part 41
Section 41.106: Section 41.106(d)(1) is amended to change each
occurrence of "EXPRESS MAIL®" to "Priority Mail Express®"
and to change "date-in" to "date accepted."
37 CFR Part 42
Section 42.6: Section 42.6(e)(1) is amended to change each
occurrence of "EXPRESS MAIL®" to "Priority Mail Express®."
Section 42.105: Section 42.105(b) is amended to change each
occurrence of "EXPRESS MAIL®" to "Priority Mail Express®."
Section 42.205: Section 42.205(b) is amended to change each
occurrence of "EXPRESS MAIL®" to "Priority Mail Express®."
Section 42.406: Section 42.406(b) is amended to change each
occurrence of "EXPRESS MAIL®" to "Priority Mail Express®."
Rulemaking Considerations
A. Administrative Procedure Act: This rulemaking revises the rules
of practice to change the phrase Express Mail or EXPRESS MAIL®
to Priority Mail Express® due to the United States Postal
Service (USPS) renaming Express Mail® to Priority Mail
Express® on July 28, 2013, and to make other changes to conform
the nomenclature used in the rules of practice to the current
nomenclature used by the USPS. Therefore, the changes in this
rulemaking involve rules of agency practice and procedure and/or
interpretive rules. See Bachow Commc'ns Inc. v. F.C.C., 237 F.3d 683,
690 (D.C. Cir. 2001) (stating that rules governing an application
process are procedural under the Administrative Procedure Act); Inova
Alexandria Hosp. v. Shalala, 244 F.3d 342, 350 (4th Cir. 2001) (holding
that rules for handling appeals were procedural where they did not
change the substantive standard for reviewing claims).
Accordingly, prior notice and opportunity for public comment were
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law). See
Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008)
(stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does not
require notice and comment rulemaking for "interpretative rules,
general statements of policy, or rules of agency organization,
procedure, or practice" (quoting 5 U.S.C. 553(b)(3)(A))).
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 analysis nor a
certification under the Regulatory Flexibility Act (5 U.S.C. 601 et
seq.) is required. See 5 U.S.C. 603. Further, this rulemaking only
revises nomenclature to be consistent with the current nomenclature
used by the USPS, and therefore the changes in this rulemaking will not
have a significant economic impact on a substantial number of small
entities.
C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be not significant for purposes of
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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 on-line 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
United States Patent and Trademark Office 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. The
changes in this document are not expected to result in an annual effect
on the economy of 100 million dollars 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 document is
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not expected to result in 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 document 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 dollars (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 dollars (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: 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: 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 which involve the use of
technical standards.
O. Paperwork Reduction Act: This rulemaking does not contain 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.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
37 CFR Part 2
Administrative practice and procedure, Courts, Lawyers, Trademarks.
37 CFR Part 7
Administrative practice and procedure, Trademarks.
37 CFR Part 11
Administrative practice and procedure, Inventions and patents,
Lawyers, Reporting and recordkeeping requirements.
37 CFR Part 41
Administrative practice and procedure, Inventions and patents,
Lawyers.
37 CFR Part 42
Administrative practice and procedure, Inventions and patents,
Lawyers.
For the reasons set forth in the preamble, 37 CFR parts 1, 2, 7,
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11, 41, and 42 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), unless otherwise noted.
. 2. Section 1.5 is amended by revising paragraph (a) to read as follows:
§ 1.5 Identification of patent, patent application, or patent-
related proceeding.
(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 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 § 1.8 or the Priority Mail
Express® procedure under § 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. 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 first listed inventor, 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.
* * * * *
. 3. Section 1.6 is amended by revising the introductory text of
paragraph (a) and revising paragraph (a)(2) to read as follows:
§ 1.6 Receipt of correspondence.
(a) Date of receipt and Priority Mail Express® date of
deposit. Correspondence received in the Patent and Trademark Office is
stamped with the date of receipt except as follows:
* * * * *
(2) Correspondence filed in accordance with § 1.10 will be
stamped with the date of deposit as Priority Mail Express® with
the United States Postal Service.
* * * * *
. 4. Section 1.10 is revised to read as follows:
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§ 1.10 Filing of correspondence by Priority Mail Express®.
(a)(1) Any correspondence received by the U.S. Patent and Trademark
Office (USPTO) that was delivered by the Priority Mail Express®
Post Office to Addressee service of the United States Postal Service
(USPS) will be considered filed with the USPTO on the date of deposit
with the USPS.
(2) The date of deposit with USPS is shown by the "date accepted"
on the Priority Mail Express® label or other official USPS
notation. If the USPS deposit date cannot be determined, the
correspondence will be accorded the USPTO 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 Priority Mail Express® mailing
label with the "date accepted" clearly marked. Persons dealing
indirectly with the employees of the USPS (such as by deposit in a
Priority Mail Express® drop box) do so at the risk of not
receiving a copy of the Priority Mail Express® mailing label
with the desired "date accepted" clearly marked. The paper(s) or
fee(s) that constitute the correspondence should also include the
Priority Mail Express® 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 Priority Mail
Express® 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 accepted" on the Priority Mail Express® mailing
label or other official USPS notation, may petition the Director to
accord the correspondence a filing date as of the "date accepted" on
the Priority Mail Express® 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 Priority Mail Express® mailing label
was placed on the paper(s) or fee(s) that constitute the correspondence
prior to the original mailing by Priority Mail Express®; and
(3) The petition includes a true copy of the Priority Mail
Express® mailing label showing the "date accepted," 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 Priority Mail
Express® Post Office to Addressee service of the USPS, who can
show that the "date accepted" on the Priority Mail Express®
mailing label or other official notation entered by the USPS was
incorrectly entered or omitted by the USPS, may petition the Director
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 Priority Mail Express® mailing label
was placed on the paper(s) or fee(s) that constitute the correspondence
prior to the original mailing by Priority Mail Express®; and
(3) The petition includes a showing which establishes, to the
satisfaction of the Director, that the requested filing date was the
date the correspondence was deposited in the Priority Mail
Express® 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
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after deposit and within one business day of the deposit of the
correspondence in the Priority Mail Express® Post Office to
Addressee service of the USPS.
(e) Any person mailing correspondence addressed as set out in
§ 1.1(a) to the Office with sufficient postage utilizing the Priority
Mail Express® Post Office to Addressee service of the USPS but
not received by the Office, may petition the Director 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 Priority Mail Express® mailing label
was placed on the paper(s) or fee(s) that constitute the correspondence
prior to the original mailing by Priority Mail Express®;
(3) The petition includes a copy of the originally deposited
paper(s) or fee(s) that constitute the correspondence showing the
number of the Priority Mail Express® mailing label thereon, a
copy of any returned postcard receipt, a copy of the Priority Mail
Express® mailing label showing the "date accepted," 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 accepted" on the Priority Mail Express® 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 the Priority Mail
Express® 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 Director, the original deposit of the
correspondence and that the copies of the correspondence, the copy of
the Priority Mail Express® 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, original
Priority Mail Express® mailing label, returned postcard receipt,
and official notation entered by the USPS.
(f) The Office may require additional evidence to determine if the
correspondence was deposited as Priority Mail Express® with the
USPS on the date in question.
(g) Any person who mails correspondence addressed as set out in
§ 1.1(a) to the Office with sufficient postage utilizing the
Priority Mail Express® Post Office to Addressee service of the
USPS, but has the correspondence returned by the USPS due to an
interruption or emergency in Priority Mail Express® service, may
petition the Director to consider such correspondence as filed on a
particular date in the Office, provided that:
(1) The petition is filed promptly after the person becomes aware
of the return of the correspondence;
(2) The number of the Priority Mail Express® mailing label
was placed on the paper(s) or fee(s) that constitute the correspondence
prior to the original mailing by Priority Mail Express®;
(3) The petition includes the original correspondence or a copy of
the original correspondence showing the number of the Priority Mail
Express® mailing label thereon and a copy of the Priority Mail
Express® mailing label showing the "date accepted"; and
(4) The petition includes a statement which establishes, to the
satisfaction of the Director, the original deposit of the
correspondence and that the correspondence or copy of the
correspondence is the original correspondence or a true copy of the
correspondence originally deposited with the USPS on the requested
filing date. The Office may require additional evidence to determine if
the correspondence was returned by the USPS due to an interruption or
emergency in Priority Mail Express® service.
(h) Any person who attempts to mail correspondence addressed as set
out in § 1.1(a) to the Office with sufficient postage utilizing the
Priority Mail Express® Post Office to Addressee service of the
USPS, but has the correspondence refused by an employee of the USPS due
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to an interruption or emergency in Priority Mail Express®
service, may petition the Director to consider such correspondence as
filed on a particular date in the Office, provided that:
(1) The petition is filed promptly after the person becomes aware
of the refusal of the correspondence;
(2) The number of the Priority Mail Express® mailing label
was placed on the paper(s) or fee(s) that constitute the correspondence
prior to the attempted mailing by Priority Mail Express®;
(3) The petition includes the original correspondence or a copy of
the original correspondence showing the number of the Priority Mail
Express® mailing label thereon; and
(4) The petition includes a statement by the person who originally
attempted to deposit the correspondence with the USPS which
establishes, to the satisfaction of the Director, the original attempt
to deposit the correspondence and that the correspondence or copy of
the correspondence is the original correspondence or a true copy of the
correspondence originally attempted to be deposited with the USPS on
the requested filing date. The Office may require additional evidence
to determine if the correspondence was refused by an employee of the
USPS due to an interruption or emergency in Priority Mail
Express® service.
(i) Any person attempting to file correspondence under this section
that was unable to be deposited with the USPS due to an interruption or
emergency in Priority Mail Express® service which has been so
designated by the Director, may petition the Director to consider such
correspondence as filed on a particular date in the Office, provided
that:
(1) The petition is filed in a manner designated by the Director
promptly after the person becomes aware of the designated interruption
or emergency in Priority Mail Express® service;
(2) The petition includes the original correspondence or a copy of
the original correspondence; and
(3) The petition includes a statement which establishes, to the
satisfaction of the Director, that the correspondence would have been
deposited with the USPS but for the designated interruption or
emergency in Priority Mail Express® service, and that the
correspondence or copy of the correspondence is the original
correspondence or a true copy of the correspondence originally attempted
to be deposited with the USPS on the requested filing date.
PART 2 - RULES OF PRACTICE IN TRADEMARK CASES
. 5. The authority citation for 37 CFR part 2 continues to read as
follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 2, unless otherwise noted.
. 6. Section 2.119 is amended by revising paragraphs (b)(4) and (c) to
read as follows:
§ 2.119 Service and signing of papers.
* * * * *
(b) * * *
(4) Transmission by the Priority Mail Express® Post Office
to Addressee service of the United States Postal Service or by first-
class mail, which may also be certified or registered;
* * * * *
(c) When service is made by first-class mail, Priority Mail
Express®, or overnight courier, the date of mailing or of
delivery to the overnight courier will be considered the date of
service. Whenever a party is required to take some action within a
prescribed period after the service of a paper upon the party by
another party and the paper is served by first-class mail, Priority
Mail Express®, or overnight courier, 5 days shall be added to
the prescribed period.
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* * * * *
. 7. Section 2.195 is revised to read as follows:
§ 2.195 Receipt of trademark correspondence.
(a) Date of receipt and Priority Mail Express® date of
deposit. Trademark correspondence received in the Office is given a
filing date as of the date of receipt except as follows:
(1) 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. Except for correspondence transmitted electronically under
paragraph (a)(2) of this section or transmitted by facsimile under
paragraph (a)(3) of this section, no correspondence is received in the
Office on Saturdays, Sundays, or Federal holidays within the District
of Columbia.
(2) Trademark-related correspondence transmitted electronically
will be given a filing date as of the date on which the Office receives
the transmission.
(3) Correspondence transmitted by facsimile will be given a filing
date as of the date on which the complete transmission is received in
the Office unless that date is a Saturday, Sunday, or Federal holiday
within the District of Columbia, in which case the filing date will be
the next succeeding day that is not a Saturday, Sunday, or Federal
holiday within the District of Columbia.
(4) Correspondence filed in accordance with § 2.198 will be
given a filing date as of the date of deposit as Priority Mail
Express® with the United States Postal Service.
(b) Correspondence delivered by hand. Correspondence may be
delivered by hand during hours the Office is open to receive
correspondence.
(c) Facsimile transmission. Except in the cases enumerated in
paragraph (d) of this section, correspondence, including authorizations
to charge a deposit account, may be transmitted by facsimile. The
receipt date accorded to the correspondence will be the date on which
the complete transmission is received in the Office, unless that date
is a Saturday, Sunday, or Federal holiday within the District of
Columbia. See § 2.196. To facilitate proper processing, each
transmission session should be limited to correspondence to be filed in
a single application, registration or proceeding before the Office. The
application serial number, registration number, or proceeding number
should be entered as a part of the sender's identification on a
facsimile cover sheet.
(d) Facsimile transmissions are not permitted and if submitted,
will not be accorded a date of receipt, in the following situations:
(1) Applications for registration of marks;
(2) Drawings submitted under § 2.51, § 2.52, § 2.72, or
§ 2.173;
(3) Correspondence to be filed with the Trademark Trial and Appeal
Board, except notices of ex parte appeal;
(4) Requests for cancellation or amendment of a registration under
section 7(e) of the Trademark Act; and certificates of registration
surrendered for cancellation or amendment under section 7(e) of the
Trademark Act; and
(5) Madrid-related correspondence submitted under § 7.11,
§ 7.21, § 7.14, § 7.23, § 7.24, or § 7.31.
(e) Interruptions in U.S. Postal Service. (1) If the Director
designates a postal service interruption or emergency within the
meaning of 35 U.S.C. 21(a), any person attempting to file
correspondence by Priority Mail Express® Post Office to
Addressee service who was unable to deposit the correspondence with the
United States Postal Service due to the interruption or emergency may
petition the Director to consider such correspondence as filed on a
particular date in the Office.
(2) The petition must:
(i) Be filed promptly after the ending of the designated
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interruption or emergency;
(ii) Include the original correspondence or a copy of the original
correspondence; and
(iii) Include a statement that the correspondence would have been
deposited with the United States Postal Service on the requested filing
date but for the designated interruption or emergency in Priority Mail
Express® service; and that the correspondence attached to the
petition is the original correspondence or a true copy of the
correspondence originally attempted to be deposited as Priority Mail
Express® on the requested filing date.
(3) Paragraphs (e)(1) and (e)(2) of this section do not apply to
correspondence that is excluded from the Priority Mail Express®
procedure pursuant to § 2.198(a)(1).
. 8. Section 2.198 is revised to read as follows:
§ 2.198 Filing of correspondence by Priority Mail Express®.
(a)(1) Except for documents listed in paragraphs (a)(1)(i) through
(vii) of this section, any correspondence received by the Office that
was delivered by the Priority Mail Express® Post Office to
Addressee service of the United States Postal Service (USPS) will be
considered filed with the Office on the date of deposit with the USPS.
The Priority Mail Express® procedure does not apply to:
(i) Applications for registration of marks;
(ii) Amendments to allege use under section 1(c) of the Act;
(iii) Statements of use under section 1(d) of the Act;
(iv) Requests for extension of time to file a statement of use
under section 1(d) of the Act;
(v) Affidavits of continued use under section 8 of the Act;
(vi) Renewal requests under section 9 of the Act; and
(vii) Requests to change or correct addresses.
(2) The date of deposit with USPS is shown by the "date accepted"
on the Priority Mail Express® label or other official USPS
notation. If the USPS deposit date cannot be determined, the
correspondence will be accorded the date of receipt in the Office as
the filing date.
(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 Priority Mail Express® mailing label
with the "date accepted" clearly marked. Persons dealing indirectly with
the employees of the USPS (such as by deposit in a Priority Mail
Express® drop box) do so at the risk of not receiving a copy of
the Priority Mail Express® mailing label with the desired "date
accepted" clearly marked. The paper(s) or fee(s) that constitute the
correspondence should also include the Priority Mail Express®
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 Priority Mail
Express® 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 accepted" on the Priority Mail Express® mailing
label or other official USPS notation, may petition the Director to
accord the correspondence a filing date as of the "date accepted" on
the Priority Mail Express® mailing label or other official USPS
notation, provided that:
(1) The petition is filed within two months 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 Priority Mail Express® mailing label
was placed on the paper(s) or fee(s) that constitute the correspondence
prior to the original mailing; and
(3) The petition includes a true copy of the Priority Mail
Express® mailing label showing the "date accepted," and of any
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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 Priority Mail
Express® Post Office to Addressee service of the USPS, who can
show that the "date accepted" on the Priority Mail Express®
mailing label or other official notation entered by the USPS was
incorrectly entered or omitted by the USPS, may petition the Director
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 within two months 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 Priority Mail Express® mailing label
was placed on the paper(s) or fee(s) prior to the original mailing; and
(3) The petition includes a showing that establishes, to the
satisfaction of the Director, that the correspondence was deposited in
the Priority Mail Express® Post Office to Addressee service
prior to the last scheduled pickup on the requested filing date. Any
showing pursuant to this paragraph must be corroborated by evidence
from the USPS or evidence that came into being within one business day
after the deposit of the correspondence in the Priority Mail
Express® Post Office to Addressee service of the USPS.
(e) If correspondence is properly addressed to the Office pursuant
to § 2.190 and deposited with sufficient postage in the Priority
Mail Express® Post Office to Addressee service of the USPS, but
not received by the Office, the party who mailed the correspondence may
petition the Director to consider such correspondence filed in the
Office on the USPS deposit date, provided that:
(1) The petition is filed within two months after the person
becomes aware that the Office has no evidence of receipt of the
correspondence;
(2) The number of the Priority Mail Express® mailing label
was placed on the paper(s) or fee(s) prior to the original mailing;
(3) The petition includes a copy of the originally deposited
paper(s) or fee(s) showing the number of the Priority Mail
Express® mailing label thereon, a copy of any returned postcard
receipt, a copy of the Priority Mail Express® mailing label
showing the "date accepted," 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 accepted" on the Priority
Mail Express® mailing label or other official notation entered
by the USPS, a showing pursuant to paragraph (d)(3) of this section
that the correspondence was deposited in the Priority Mail
Express® Post Office to Addressee service prior to the last
scheduled pickup on the requested filing date; and
(4) The petition includes a statement that establishes, to the
satisfaction of the Director, the original deposit of the
correspondence and that the copies of the correspondence, the copy of
the Priority Mail Express® 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, original
Priority Mail Express® mailing label, returned postcard receipt,
and official notation entered by the USPS.
(f) The Office may require additional evidence to determine whether
the correspondence was deposited as Priority Mail Express® with
the USPS on the date in question.
PART 7 - RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL
RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL
REGISTRATION OF MARKS
. 9. The authority citation for 37 CFR part 7 continues to read as
follows:
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Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
. 10. Section 7.4 is amended by revising paragraph (b)(1) to read as
follows:
§ 7.4 Receipt of correspondence.
* * * * *
(b) * * *
(1) International applications under § 7.11, subsequent
designations under § 7.21, requests to record changes in the
International Register under § 7.23 and § 7.24, and petitions
to the Director to review an action of the Office's Madrid Processing
Unit, when filed by mail, will be accorded the date of receipt in the
Office, unless they are sent by Priority Mail Express® pursuant
to § 2.198, in which case they will be accorded the date of deposit
with the United States Postal Service.
* * * * *
PART 11 - REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT
AND TRADEMARK OFFICE
. 11. The authority citation for 37 CFR part 11 continues to read as
follows:
Authority: 5 U.S.C. 500, 15 U.S.C. 1123, 35 U.S.C. 2(b)(2), 32, 41.
. 12. Section 11.35 is amended by revising the introductory text of
paragraph (a)(2) to read as follows:
§ 11.35 Service of complaint.
(a) * * *
(2) By mailing a copy of the complaint by Priority Mail
Express®, first-class mail, or any delivery service that
provides ability to confirm delivery or attempted delivery to:
* * * * *
. 13. Section 11.41 is amended by revising paragraph (b) to read as
follows:
§ 11.41 Filing of papers.
* * * * *
(b) All papers filed after entry of an initial decision by the
hearing officer shall be filed with the USPTO Director. A copy of the
paper shall be served on the OED Director. The hearing officer or the
OED Director may provide for filing papers and other matters by hand, by
Priority Mail Express®, or by other means.
. 14. Section 11.42 is revised to read as follows:
§ 11.42 Service of papers.
(a) All papers other than a complaint shall be served on a
respondent who is represented by an attorney by:
(1) Delivering a copy of the paper to the office of the attorney;
or
(2) Mailing a copy of the paper by first-class mail, Priority Mail
Express®, or other delivery service to the attorney at the
address provided by the attorney under § 11.40(a)(1); or
(3) Any other method mutually agreeable to the attorney and a
representative for the OED Director.
(b) All papers other than a complaint shall be served on a
respondent who is not represented by an attorney by:
(1) Delivering a copy of the paper to the respondent; or
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(2) Mailing a copy of the paper by first-class mail, Priority Mail
Express®, or other delivery service to the respondent at the
address to which a complaint may be served or such other address as may
be designated in writing by the respondent; or
(3) Any other method mutually agreeable to the respondent and a
representative for the OED Director.
(c) A respondent shall serve on the representative for the OED
Director one copy of each paper filed with the hearing officer or the
OED Director. A paper may be served on the representative for the OED
Director by:
(1) Delivering a copy of the paper to the representative; or
(2) Mailing a copy of the paper by first-class mail, Priority Mail
Express®, or other delivery service to an address designated in
writing by the representative; or
(3) Any other method mutually agreeable to the respondent and the
representative.
(d) Each paper filed in a disciplinary proceeding shall contain
therein a certificate of service indicating:
(1) The date on which service was made; and
(2) The method by which service was made.
(e) The hearing officer or the USPTO Director may require that a
paper be served by hand or by Priority Mail Express®.
(f) Service by mail is completed when the paper mailed in the
United States is placed into the custody of the U.S. Postal Service.
. 15. Section 11.51 is amended by revising paragraph (a) to read as
follows:
§ 11.51 Depositions.
(a) Depositions for use at the hearing in lieu of personal
appearance of a witness before the hearing officer may be taken by
respondent or the OED Director upon a showing of good cause and with
the approval of, and under such conditions as may be deemed appropriate
by, the hearing officer. Depositions may be taken upon oral or written
questions, upon not less than ten days' written notice to the other
party, before any officer authorized to administer an oath or
affirmation in the place where the deposition is to be taken. The
parties may waive the requirement of ten days' notice and depositions
may then be taken of a witness at a time and place mutually agreed to
by the parties. When a deposition is taken upon written questions,
copies of the written questions will be served upon the other party
with the notice, and copies of any written cross-questions will be
served by hand or Priority Mail Express® not less than five days
before the date of the taking of the deposition unless the parties
mutually agree otherwise. A party on whose behalf a deposition is taken
shall file a copy of a transcript of the deposition signed by a court
reporter with the hearing officer and shall serve one copy upon the
opposing party. Expenses for a court reporter and preparing, serving,
and filing depositions shall be borne by the party at whose instance
the deposition is taken. Depositions may not be taken to obtain
discovery, except as provided for in paragraph (b) of this section.
* * * * *
PART 41 - PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
. 16. The authority citation for 37 CFR part 41 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134,
135, and Public Law 112-29.
. 17. Section 41.106 is amended by revising paragraphs (d)(1) and (e)(3)
to read as follows:
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§ 41.106 Filing and service.
* * * * *
(d) Specific filing forms - (1) Filing by mail. A paper filed using
the Priority Mail Express® service of the United States Postal
Service will be deemed to be filed as of "date accepted" on the
Priority Mail Express® mailing label; otherwise, mail will be
deemed to be filed as of the stamped date of receipt at the Board.
* * * * *
(e) * * *
(3) Service must be by Priority Mail Express® or by means at
least as fast and reliable as Priority Mail Express®. Electronic
service is not permitted without Board authorization.
* * * * *
PART 42 - TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
. 18. The authority citation for 37 CFR part 42 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2), 6, 21, 23, 41, 135, 311, 312, 316,
321-326 and Public Law 112-29.
. 19. Section 42.6 is amended by revising paragraph (e)(1) to read as
follows:
§ 42.6 Filing of documents, including exhibits; service.
* * * * *
(e) * * *
(1) Electronic or other mode. Service may be made electronically
upon agreement of the parties. Otherwise, service may be by Priority
Mail Express® or by means at least as fast and reliable as
Priority Mail Express®.
* * * * *
. 20. Section 42.105 is amended by revising paragraph (b) to read as
follows:
§ 42.105 Service of petition.
* * * * *
(b) Upon agreement of the parties, service may be made
electronically. Service may be by Priority Mail Express® or by
means at least as fast and reliable as Priority Mail Express®.
Personal service is not required.
. 21. Section 42.205 is amended by revising paragraph (b) to read as
follows:
§ 42.205 Service of petition.
* * * * *
(b) Upon agreement of the parties, service may be made
electronically. Service may be by Priority Mail Express® or by
means at least as fast and reliable as Priority Mail Express®.
Personal service is not required.
. 22. Section 42.406 is amended by revising paragraph (b) to read as
follows:
§ 42.406 Service of petition.
* * * * *
(b) Upon agreement of the parties, service may be made
electronically. Service may be by Priority Mail Express® or by
means at least as fast and reliable as Priority Mail Express®.
Personal service is not required.
October 10, 2014 MICHELLE K. LEE
Deputy Under Secretary of Commerce for Intellectual Property and Deputy
Director of the United States Patent and Trademark Office
[1408 OG 193]