(4) Department of Commerce
Patent and Trademark Office
[Docket#: 950411100-6267-02]
RIN 0651-XX01
Extension of the Payor Number Practice
(through "Customer Numbers")
to Matters Involving Pending Patent Applications
Agency: Patent and Trademark Office, Commerce.
Action: Notice of Change in Procedure.
Summary: The Patent and Trademark Office (PTO) is extending the Payor
Number practice to matters involving pending patent applications. Payor
Numbers are currently used to establish a "fee address" for receipt of
maintenance fee correspondence. Through the use of "Customer Numbers,"
the PTO will extend the Payor Number practice to matters involving
patent applications. Under this Customer Number practice, an applicant
(or patentee) will be able to use a Customer Number to: (1) designate
the address associated with the Customer Number as the correspondence
address for an application (or patent); (2) designate the address
associated with the Customer Number as the fee address (37 CFR 1.363)
for a patent; and (3) submit a power of attorney in the application (or
patent) to the registered practitioners associated with the Customer
Number. The change of either the address or practitioners having a power
of attorney in multiple patent applications through a single paper
directed to the Customer Number should result in savings to the
attorney, agent, or law firm, as well as the PTO.
Effective Date: November 1, 1996. Any request to change the
correspondence address of a pending application to the address
associated with a currently assigned Payor Number filed before November
1, 1996 will not be effective until November 1, 1996.
For Further Information Contact: Robert W. Bahr by telephone at (703)
305-9285 or by facsimile at (703) 308-6916, or by mail addressed to Box
Comments-Patents, Assistant Commissioner for Patents, Washington, D.C.
20231.
Supplementary Information
Payor Numbers are currently used to establish a "fee address" for
receipt of maintenance fee correspondence. Such Payor Numbers permit,
inter alia, an attorney, agent or law firm to file a single change of
address paper for the Payor Number, and this change of address is
effective for every patent designating the address associated with the
Payor Number as the correspondence address for the patent. This Payor
Number practice avoids the filing of a separate change of address paper
for every patent affected by the change of address.
In a Notice entitled "Extension of the Use of Payor Numbers to
Matters Involving Pending Patent Applications" (Payor Number Notice),
published in the Federal Register at 60 FR 26026-28 (May 16, 1995), and
in the PTO Official Gazette at 1175 Off. Gaz. Pat. Office 14-15 (June 6,
1995), the PTO proposed to extend the current Payor Number practice to
matters involving pending patent applications. In view of the comments
received in response to the Payor Number Notice, the PTO is adopting the
following "Customer Number" practice.
Currently assigned "Payor Numbers" will be redesignated as "Customer
Numbers" to avoid requiring persons or organizations currently assigned
a Payor Number to request a "new" Customer Number. Thus, persons or
organizations currently assigned a "Payor Number" should not request a
new "Customer Number." Persons or organizations not currently assigned a
Payor Number can request assignment of "new" Customer Numbers.
The PTO has created a box designation for correspondence related to a
Customer Number ("Box CN"), and all correspondence related to a Customer
Number (e.g., requests for a Customer Number) should be addressed to
this box designation.
The PTO will provide standard forms to: (1) request a Customer Number
(PTO/SB/125); (2) request a change in the data (address or list of
practitioners) associated with an existing Customer Number (PTO/SB/124);
(3) change the correspondence address of an individual application
(PTO/SB/122) or patent (PTO/SB/123) to the address associated with a
Customer Number; or (4) change the correspondence address of a list of
applications or patents to the address associated with a Customer Number
(PTO/SB/121). The PTO is also modifying its current standard forms
(e.g., the declaration form) to permit: (1) the designation of the
address associated with the Customer Number as the correspondence
address for an application; (2) designation of the address associated
with the Customer Number as the fee address for a patent; and (3) the
submission of a power of attorney in the application to the
practitioners associated with the Customer Number. The forms provided by
the Office may be obtained by contacting the Customer Service Center of
the Office of Initial Patent Examination at (703) 308-1214. Also, many
standard forms have been loaded on the PTO's Internet Website and may be
electronically copied via the Internet through anonymous file transfer
protocol (ftp) (address: ftp.uspto.gov). While use the standardized
forms provided by the PTO is encouraged, it is not mandatory.
This notice of change in procedure contains a collection of
information subject to the Paperwork Reduction Act of 1995, 44 U.S.C.
3501 et seq. This collection of information is currently approved by the
Office of Management and Budget under Control No. 0651-0035. 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, Data
Administration Division, Patent and Trademark Office, Washington, D.C.
20231, and to the Office of Information and Regulatory Affairs, Office
of Management and Budget, Washington, D.C. 20503 (ATTN: Paperwork
Reduction Act Project 0651-0035).
Notwithstanding any other provision of law, no person is required to
respond to nor shall any person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
The PTO will also accept requests submitted electronically via a
computer-readable diskette to: (1) change the correspondence address of
a list of applications or patents or the fee address for a list of
patents to the address associated with a Customer Number; and (2) submit
a power of attorney in a list of applications or patents to the
registered practitioners associated with the Customer Number. Persons
electronically submitting such a request must submit an IBM-compatible
diskette containing a Microsoft Excel spreadsheet, or a comma separated
text file which can be imported into Microsoft Excel spreadsheet,
formatted as follows: (1) row 1, column B containing the six-digit
Customer Number; (2) row 2 being blank; (3) rows 3 through 9 containing
the address associated with the Customer Number; (4) rows 10 through 15
being blank; and (5) row 16 starting with the list of patents or
applications with column A containing the patent number (if
appropriate), column B containing the application number, column C
containing the patent date (if appropriate), column D containing the
application filing date, column E indicating "YES" or "NO" to designate
assignment of the address associated with the Customer Number as the
correspondence address of the application or patent, column F indicating
"YES" or "NO" to designate assignment of the registered practitioners
associated with the Customer Number as the list of persons having a
power of attorney in the applications or patents, and column G
indicating "YES" or "NO" to designate assignment of the address
associated with the Customer Number as the fee address of the patent.
The patent number (if appropriate), application number, patent date
(if appropriate), and application filing date are being required as
redundant identifiers to avoid changing the correspondence or fee
address or entering a power of attorney in the wrong patent or
application due to a typographical error in the patent or application
number. The PTO will enter a change in correspondence or fee address or
power of attorney in a listed application or patent only if the
following identifiers are provided: (1) the patent number and the
corresponding application number; (2) the patent number and the
corresponding patent date; (3) the application number and the
corresponding filing date; (4) the patent number and the corresponding
application filing date; and (5) the application number and the
corresponding patent date.
A sample spreadsheet is included as an Appendix A to this notice of
change in procedure. The phrase "Customer Number" in row 1, column A,
and "Requester (Attorney/Firm) Information" in row 3, as well as the
information provided in rows 10 through 15, are provided on the sample
spreadsheet for explanatory purposes only, and should not be included on
any spreadsheet submitted to the PTO.
The diskette must be accompanied by a paper copy of the spreadsheet
and a cover letter requesting entry of the changes contained on the
spreadsheet into PTO records for the listed applications or patents. In
addition, for any application or patent listed on such spreadsheet, the
cover letter must be signed by the applicant or patentee, assignee in
compliance with 37 CFR 3.73(b), or registered practitioner of record in
the patent or application. The PTO will issue a written confirmation of
the list of applications or patents indicating the change(s) entered
into PTO records.
Through the use of "Customer Numbers," the PTO is extending the "fee
address" practice to matters involving pending patent applications to
permit: (1) the designation of the correspondence address of a patent
application by a Customer Number such that the correspondence address
for the patent application would be the address associated with the
Customer Number; (2) the designation of the fee address of a patent by a
Customer Number such that the fee address for the patent would be the
address associated with the Customer Number; and (3) the submission of a
list of practitioners by a Customer Number such that an applicant may in
a Power of Attorney appoint those practitioners associated with the
Customer Number. While this notice discusses this new Customer Number
practice as it regards patent applications and applicants, it will apply
equally to patents and patentees.
The designation in a patent application of a specific Customer Number
as the correspondence address for such application will permit an
attorney, agent or law firm to file a single paper containing a change
of address, rather than a separate paper in each application, and this
change of address paper will be applicable to all applications
designating the Customer Number as the correspondence address for such
application. The designation of a Customer Number as the correspondence
address for a patent application is optional, in that any application
not designating a Customer Number as the correspondence address will not
be affected by a change of address filed for a Customer Number, even if
the correspondence address provided for such application is that of an
attorney, agent, or law firm associated with a Customer Number. The
change of address in multiple patent applications through a single paper
directed to the Customer Number, rather than through individual letters
directed to each application, will result in savings to the attorney,
agent or law firm, as well as the PTO.
This new Customer Number practice will not affect the current
practice of permitting a patentee to provide a "fee address" for the
receipt of maintenance fee correspondence. A patentee will be able to
designate a "fee address" for the receipt of maintenance fee
correspondence, and a different address for the receipt of all other
correspondence. The designation of a "fee address" by reference to a
Customer Number will not affect or be affected by the designation of a
correspondence address by reference to another Customer Number, in that
the PTO will send maintenance fee correspondence to the address
associated with the Customer Number designated as the "fee address" and
will send all other correspondence to the address associated with the
Customer Number designated as the correspondence address.
The association of a list of practitioners with a Customer Number
will permit an applicant to appoint all of the practitioners associated
with the Customer Number merely by reference to the Customer Number in
the Power of Attorney (i.e., without individually listing the
practitioners in the Power of Attorney). The addition and/or deletion of
a practitioner from the list of practitioners associated with a Customer
Number will result in the addition or deletion of such practitioner from
the list of persons authorized to represent any applicant who appointed
all of the practitioners associated with such Customer Number. This will
avoid the necessity for the filing of additional papers in each patent
application affected by a change in the practitioners of the law firm
prosecuting the application. The appointment of practitioners associated
with a Customer Number will be optional, in that any applicant may
continue to individually name those practitioners to represent the
applicant in a patent application.
Currently, the PTO must individually enter into the Patent
Application Location and Monitoring (PALM) system the registration
number for each practitioner appointed to represent the applicant in a
patent application. The change of persons authorized to represent
applicants in multiple patent applications through a single paper
directing the PTO to change its records concerning the Customer Number
will require only a single entry into the PALM system, where the change
of persons authorized to represent applicants in multiple patent
applications through individual letters directed to each application
require a separate entry into the PALM system for each affected
application. Thus, the use of Customer Numbers in a Power of Attorney
will significantly reduce the amount of data which must be entered into
the PALM system, and would thus result in savings to the PTO. In
addition, permitting a change of persons authorized to represent
applicants in multiple patent applications through a single paper
directing the PTO to change its records concerning the Customer Number
would result in similar savings to the attorney, agent, or law firm.
As the PTO will not recognize more than one correspondence address
(37 CFR 1.34(c)), any inconsistencies between the correspondence address
resulting from a Customer Number being provided in an application for
the correspondence address and any other correspondence address provided
in that application would be resolved in favor of the address of the
Customer Number. Where an applicant appoints all of the practitioners
associated with a Customer Number as well as a list of individually
named practitioners, such action would be treated as only an appointment
of all of the practitioners associated with a Customer Number due to the
potential for confusion and data entry errors in entering registration
numbers from plural sources.
The following are examples of language effective to provide as the
correspondence address the address of, and appoint those practitioners
associated with, a Customer Number:
1. The following language would be effective to appoint those
practitioners individually listed, and provide as the correspondence
address the address of Customer Number 99,999:
I hereby appoint the following practitioners to prosecute this
application and to transact all business in the Patent and Trademark
Office connected therewith:
John Doe, Registration No. 99,991, Jane Doe, Registration No. 99,992 and
Richard Doe, Registration No. 99,993.
Address all correspondence to: Customer Number 99,999.
2. The following language would be effective to appoint those
practitioners associated with, and provide as the correspondence address
the address of, Customer Number 99,999:
I hereby appoint the practitioners associated with the Customer Number
provided below to prosecute this application and to transact all
business in the Patent and Trademark Office connected therewith, and
direct that all correspondence be addressed to that Customer Number:
Customer Number 99,999.
Response to Comments
Eleven comments were received in response to the Payor Number Notice.
The written comments have been analyzed, and responses to the comments
follow.
Comment (1): Ten comments supported the proposed extension of use of the
Payor Number practice to matters involving pending patent applications.
Response: In view of the positive response to this proposed extension of
use of the Payor Number practice to matters involving pending patent
applications, the PTO is extending the Payor Number practice to matters
involving pending patent applications.
Comment (2): One comment opposed combining the maintenance fee Payor
Number with the practitioner responsible for the application or patent.
The comment argued that, in many instances, a client instructs a
practitioner that a particular service organization is responsible for
the payment of maintenance fees, and, while the practitioner continues
as counsel of record and receives correspondence unrelated to
maintenance fees (e.g., reexamination or interference notices), the
client advises that the practitioner is no longer responsible for
payment of the maintenance fees or even reminding the client of the due
date for paying such fees.
Response: As discussed supra, the implemented "Customer Number" practice
will not affect the current practice of providing a "fee address" for
correspondence relating to the payment of maintenance fees. While the
current "Payor Numbers" will be redesignated as "Customer Numbers," a
patentee will be permitted to specify a "fee address" by reference to
one Customer Number (e.g., the Customer or Payor Number of a maintenance
fee service organization) and a correspondence address by reference to
another Customer Number (e.g., the Customer Number of the attorney or
agent of record). Designating a "fee address" for maintenance fee
payment purposes, by Customer Number or otherwise, will not affect the
correspondence address for correspondence unrelated to maintenance fees,
regardless of whether the correspondence address is also specified by a
Customer Number. Likewise, providing a "fee address" for maintenance fee
payment purposes, by Customer Number or otherwise, will not affect any
previous appointments of practitioners.
Comment (3): One comment cautioned that sufficient safeguards be built
into the system to avoid errors. Specifically, the comment cautioned
that: (1) a data entry error in the Customer Number in one application
(a key field error) would result in correspondence for that application
being sent to an entirely different address; (2) a single error in the
look-up data base would result in correspondence for every application
designating a particular Customer Number being sent to an entirely
different address; and (3) an indexing or programming error affecting
the entire look- up data base could result in correspondence for every
application designating any Customer Number being sent to an entirely
different address.
Response: Currently, the application number is entered into the PALM
data base to look-up the actual address (i.e., the application number is
a key field). Thus, the risk of error in the improper entry of a
Customer Number is no greater than the current risk of error in the
improper entry of an application number. Nevertheless, the PTO endeavors
to reduce such errors by requiring that employees check the returned
application data.
To avoid errors in information associated with a Customer Number, the
PTO will double enter the Customer Number anytime there is a change to
the information associated with the Customer Number. In addition, the
PTO is in the process of developing Customer Number bar code labels for
use on incoming requests for changes to the information associated with
a Customer Number to permit scanning and reduce data entry errors.
In any event, errors in the look-up data base would result in
correspondence for every application designating a particular Customer
Number being sent to an entirely different address, and indexing or
programming errors affecting the entire look-up data base could result
in correspondence for every application designating any Customer Number
being sent to an entirely different address. These errors would result
in mismailings of such magnitude that it would be readily apparent to
the attorney, agent or law firm of the Customer Number, if not the PTO,
that an error has occurred.
Comment (4): Three comments suggested that registration numbers be used
as Customer Numbers.
Response: The suggestion has not been adopted. The PTO currently has a
data base of addresses (i.e., fee addresses) associated with the current
Payor Numbers that will be redesignated as "Customer Numbers." To avoid
an adverse impact on the current fee address practice, the Customer
Number practice is being implemented using the existing fee address data
base. Thus, the PTO cannot use registration numbers as Customer Numbers
since newly assigned Customer Numbers must be compatible with the
existing Payor Numbers.
Comment (5): One comment suggested that a Power of Attorney be permitted
to include the practitioners associated with a Customer Number and no
more than one additional practitioner. The comment argued that clients
will desire to name a responsible person in the Power of Attorney, and
that this would also be helpful in the event that a practitioner
withdraws from a law firm and the client continues with that
practitioner. The comment cautioned that if this is not permitted, each
practitioner will establish his or her own Customer Number, resulting in
the appointment of a large number of Customer Numbers.
Response: The comment is adopted only to the extent indicated. To
accommodate the desire of a client to see the responsible person
mentioned by name in the Power of Attorney, a Power of Attorney
appointing the practitioners associated with a specific Customer Number
may also specifically mention any of the practitioners associated with
such Customer Number. This mention may designate the responsible
practitioner(s) as the principal attorney(s) or agent(s) in the
application. In a Power of Attorney appointing those practitioners
associated with a Customer Number, the specific mentioning of
practitioner(s) will be ineffective to appoint a practitioner not
associated with the Customer Number.
As discussed supra, the entry of a single Customer Number, rather
than the individual registration number of each practitioner, into the
PALM system is a primary benefit of permitting the appointment of a list
of practitioners by Customer Number. As the individually listed
practitioner is ostensibly among those practitioners associated with the
Customer Number provided in the Power of Attorney, requiring the PTO to
enter the individual registration numbers of a list of practitioners
associated with a Customer Number, as well as the Customer Number, would
frustrate this benefit. Thus, the PTO will treat such an appointment as
an appointment of only those practitioners associated with the Customer
Number.
Customer Numbers are designed to serve the dual purpose of providing
a correspondence address, and providing the list of practitioners
appointed with a power of attorney. Due to the prohibition against dual
correspondence (37 CFR 1.33(a)), an applicant will be permitted to
provide only a single number at a time as the Customer Number, and thus
correspondence address, for the application. In an instance in which an
applicant provides more than one Customer Number, the last provided
Customer Number is controlling. Thus, the appointment of a plurality
(much less a large number) of Customer Numbers will result in the PTO
recognizing only the last mentioned Customer Number. Applicants are
strongly cautioned not to attempt to appoint more than one Customer
Number in a single communication, as such action will not have a
cumulative effect.
Comment (6): Three comments suggested that in this new context, the term
"Payor Number" could cause confusion, and would be demeaning to
applicants and their representatives.
Response: In view of these comments, the term "Customer Number" has
been used to describe the number having an address or a list of
practitioners associated with such number. The term "Payor Number" was
used in the Payor Number Notice as this term had a specific meaning with
regard to the "fee address" for maintenance fee correspondence, and thus
served to provide a frame of reference for the extension of such
practice.
Comment (7): One comment suggested that the form of appointment refer to
registered practitioners, rather than attorneys and agents.
Response: The PTO does not require any specific form of appointment
(i.e., the forms of appointment in the Payor Number Notice were merely
exemplary). Nevertheless, the phrase "practitioner" is defined in 37 CFR
10. l(r), and "registered practitioners" is considered preferable to
"attorneys or agents" or "attorneys and agents." As such, the PTO will
change its standardized forms of appointment to refer to "registered
practitioners."
Comment (8): One comment questioned the form and effect of an
appointment of all practitioners associated with a Customer Number. The
comment specifically questioned whether the practitioner would have to
obtain a new power of attorney in a situation in which: (1) a
practitioner is associated with the Customer Number of a law firm, and
is thus appointed in every application appointing the practitioners
associated with that Customer Number; (2) the practitioner subsequently
leaves the law firm; and (3) an applicant in an application appointing
the practitioners associated with the law firm's Customer Number
continues with the practitioner leaving the law firm.
Response: The practitioner should obtain a new power of attorney to
continue to have a power of attorney in the application. An appointment
in an application of the practitioners associated with a particular
Customer Number is the appointment of each of the practitioners
associated with that Customer Number at the time any practitioner
associated with such Customer Number seek to act for the applicant. With
such an appointment, a practitioner is of record until removed from the
Customer Number (i.e., until the practitioner is no longer associated
with the Customer Number). As the practitioner's former law firm should
promptly remove such practitioner from the list of practitioners
associated with the law firm's Customer Number, a new power of attorney
will be necessary for the practitioner to continue to have a power of
attorney in the application.
In an instance in which a particular practitioner in a law firm has a
significant number of clients who are clients of the practitioner rather
than the law firm (i.e., clients who would prefer to be represented by
the practitioner, rather than the law firm, in the event that the
practitioner left the law firm), such practitioner should consider
establishing a Customer Number separate from the law firm's Customer
Number. This would permit the clients of the practitioner to appoint a
power of attorney to the practitioners associated with the
practitioner's, rather than the law firm's, Customer Number. The
practitioner can list any or all of the practitioners in the law firm as
practitioners associated with the Customer Number, and can change the
practitioners associated with the Customer Number in the event that the
practitioner left the law firm. This would avoid the necessity for a new
power of attorney in the event that the practitioner leaves the law
firm.
Comment (9): One comment suggested that the proposed practice be
extended to trademark applications.
Response: The suggestion has been forwarded to the Assistant
Commissioner for Trademarks for consideration.
Comment (10): One comment suggested that procedures be adopted such that
this number could be utilized informally to identify the source of
documents such as drawings, certified copies, etc., by including this
number on the back of the document.
Response: There is no prohibition against using a Customer Number on
the back of a document to informally identify the source of the
document. That is, while 37 CFR 1.52(b) and 1.84(e) provide that the
application papers contain writing or drawings only on one side of a
sheet, these provisions are directed to the writing and drawings forming
the application papers. Thus, the inclusion of identifying information
on the back of a sheet simply results in that information not being
considered part of the application papers. However, the inclusion of a
Customer Number to informally identify the source of a document is not a
substitute for the inclusion on the document of the application number
to which the document is directed. In addition, a telephone number
should also be provided on such document, as the Customer Number will
not provide the telephone number (but only the address) of the source of
the document.
Comment (11): One comment suggested that the PTO update the address of
all registered practitioners in the Office of Enrollment and Discipline
(OED) index by a change in the Customer Number address.
Response: The suggestion has been forwarded to OED for consideration.
October 15, 1996 BRUCE A. LEHMAN
Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks
[1191 OG 187]