403 Correspondence — With Whom Held; Customer Number Practice [R-01.2024]
37 CFR 1.33 states that when an attorney or agent has been duly appointed to prosecute an application, correspondence will be held with the attorney or agent unless some other correspondence address has been given. If an attorney or agent of record assigns a correspondence address which is different than an address where the attorney or agent normally receives mail, the attorney or agent is reminded that (1) 37 CFR 11.106 requires the attorney or agent to keep information obtained by attorney/agent – client relationship in confidence; and (2) the attorney or agent is still responsible for responding to any notice or action from the Office. See 37 CFR 11.101, 11.103 and 11.804. Double correspondence with an applicant and their attorney, or with two representatives, will not be undertaken. See MPEP §§ 403.01(a), 403.01(b), 403.02, and 714.01(d).
If double correspondence is attempted, form paragraph 4.01 should be included in the next Office action.
¶ 4.01 Double Correspondence
Applicant has appointed an attorney or agent to conduct all business before the Patent and Trademark Office. Double correspondence with an applicant and applicant's attorney or agent will not be undertaken. Accordingly, applicant is required to conduct all future correspondence with this Office through the attorney or agent of record. See 37 CFR 1.33.
Examiner Note:
- 1. The first time a reply is received directly from applicant, include this paragraph in the Office action and send a copy of the action to the applicant. See MPEP §§ 403 and 714.01.
- 2. Should applicant file additional replies, do not send copies of subsequent Office actions to the applicant.
- 3. Status letters from the applicant may be acknowledged in isolated instances.
See MPEP § 403.01(a) for additional information pertaining to correspondence in applications filed on or after September 16, 2012. See MPEP § 403.01(b) for additional information pertaining to correspondence in applications filed before September 16, 2012.
I. CUSTOMER NUMBER PRACTICEA Customer Number (previously a “Payor Number”) may be used to:
- (A) designate the correspondence address of a patent application or patent such that the correspondence address for the patent application or patent would be the address associated with the Customer Number (37 CFR 1.32(a)(5)(i));
- (B) designate the fee address (37 CFR 1.363) of a patent such that the fee address for the patent would be the address associated with the Customer Number (37 CFR 1.32(a)(5)(ii)); and
- (C) submit a list of practitioners such that those practitioners associated with the Customer Number would have power of attorney (37 CFR 1.32(a)(5)(iii)).
Thus, a Customer Number may be used to designate the address associated with the Customer Number as the correspondence address of an application (or patent) or the fee address of a patent, and may also be used to submit a power of attorney in the application (or patent) to the registered practitioners associated with the Customer Number.
Applicant may use either the same or different customer number(s) for the correspondence address, the fee address and/or a list of practitioners. The customer number associated with the correspondence address is the Customer Number that can be used to obtain full access to the USPTO patent electronic filing system at www.uspto.gov/PatentCenter. See MPEP § 1730 for additional information regarding the USPTO patent electronic filing system.
The Office will accept requests for changes to the Customer Number information through the USPTO patent electronic filing system. See MPEP § 502.05 for information pertaining to the USPTO patent electronic filing system.
The following forms are suggested for use with the Customer Number practice:
- (A) the “Request for Customer Number” (PTO/SB/125) to request a Customer Number;
- (B) the “Request for Customer Number Data Change” (PTO/SB/124) to request a change in the data (address or list of practitioners) associated with an existing Customer Number;
- (C) the “Change of Correspondence Address, Application” (PTO/AIA/122 for applications filed on or after September 16, 2012, or PTO/SB/122 for applications filed before September 16, 2012) to change the correspondence address of an individual application to the address associated with a Customer Number; and
- (D) the “Change of Correspondence Address, Patent” (PTO/AIA/123 for applications filed on or after September 16, 2012, or PTO//SB/123 for applications filed before September 16, 2012) to change the correspondence address of an individual patent to the address associated with a Customer Number.
The Office will also accept requests on electronic storage media submitted electronically to 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. Instructions for submitting such requests are available on the “Customer Number Upload Spreadsheet” available at www.uspto.gov/Ebc.
Such electronic requests must comply with the requirements set forth in the Notice entitled “Extension of the Payor Number Practice (through “Customer Numbers”) to Matters Involving Pending Patent Applications,” published in the Federal Register at 61 FR 54622, 54623-24 (October 21, 1996), and in the Official Gazette at 1191 O. G. 187, 188-89 (October 29, 1996).
With Customer Number practice, a patentee is also 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 Office 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 by submitting a corresponding “Request for Customer Number Data Change” (PTO/SB/124) will result in the addition or deletion of such practitioner from the list of persons authorized to represent any applicant or assignee of the entire interest of the 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 is optional, in that any applicant may continue to individually name those practitioners to represent the applicant in a patent application, so long as fewer than ten patent practitioners are named. See 37 CFR 1.32(c)(3).
Effective January 2, 2024, the USPTO created the design patent practitioner bar for practicing before the Office in design patent matters. Design patent practitioners are registered under 37 CFR 11.6(d) and can only practice in design patent matters. 37 CFR 1.32(a)(1). In contrast, patent practitioners registered under 37 CFR 11.6(a)-(c) can practice in all patent matters, which includes design patent matters. See MPEP § 1502.02. A power of attorney naming the practitioners associated with a Customer Number may only include practitioners who are authorized to practice in the applicable patent matter. Therefore, if a design patent practitioner is associated with a Customer Number, that Customer Number can only be used to establish power of attorney in design patent matters. This applies even if a practitioner that is authorized to practice in all patent matters is also associated with the same Customer Number.
The Customer Number practice does not affect the prohibition against, and does not amount to, an appointment of a law firm (rather than specified practitioners). The Office prohibits an appointment of a specified law firm because the Office cannot ascertain from its records whether a particular practitioner submitting a paper to the Office is associated with the law firm specified in an appointment. The Office will permit an appointment of all of the practitioners associated with a specified Customer Number because the Office can ascertain from its records for the specified Customer Number whether a particular practitioner is associated with that Customer Number.
A law firm should promptly remove any practitioner who leaves the firm from the list of practitioners associated with any Customer Number used by the law firm, so that the practitioner will not have access to the applications associated with the Customer Number. A practitioner leaving a law firm can also remove themselves from any Customer Number used by the law firm. In order to continue representing an applicant who had appointed the practitioners associated with the Customer Number of a law firm, a practitioner leaving the law firm must obtain a new power of attorney.
Similarly, a practitioner who has a USPTO patent electronic filing system account should remove sponsorship of any support staff individual when that individual leaves the firm so that the support staff individual will not have access to any applications associated with any Customer Number linked to the practitioner.
As the Office will not recognize more than one correspondence address (37 CFR 1.33(a)), 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 will generally be resolved in favor of the address of the Customer Number or the application data sheet (37 CFR 1.76(d)). Due to the prohibition against double correspondence in an application (37 CFR 1.33(a)), an applicant will be permitted to provide only a single number at a time as the Customer Number for the correspondence address. Applicants are strongly cautioned not to attempt to appoint more than one Customer Number for a particular purpose (e.g., correspondence address) in a single communication, as such action will not have a cumulative effect.
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. Furthermore, Office computer systems do not allow for entry of both a power of attorney to a list of practitioners associated with a Customer Number and a list of practitioners.
Although Customer Numbers are designed to designate both a correspondence address and to associate one or more patent practitioners with an application, one Customer Number may be used for the correspondence address, and another Customer Number may be used for the power of attorney. As stated previously, the customer number associated with the correspondence address is the Customer Number that can be used to obtain full access to the USPTO patent electronic filing system. For example, where one customer number is associated with the correspondence address (e.g., a customer number that lists all of the practitioners at a particular firm) and a different customer number is used to appoint practitioners as having power of attorney (e.g., a customer number that lists a small number of practitioners from the particular firm as well as a few practitioners who are employees of the applicant), only the practitioners associated with the customer number being used for the correspondence address will be able to access the application in the USPTO patent electronic filing system.
The Office has created a Mail Stop designation for correspondence related to a Customer Number (“Mail Stop EBC”), and all correspondence related to a Customer Number (e.g., requests for a Customer Number) should be addressed to this mail stop designation.
The following persons are authorized to change the information associated with an established Customer Number: (1) a registered practitioner associated with the Customer Number; and (2) the person who requested the Customer Number (signed the Request for Customer Number, Form PTO/SB/125).
II. PATENT APPLICATION FILED WITHOUT CORRESPONDENCE ADDRESSIf a patent application as filed has been accorded a filing date but is not complete, the applicant is notified and given a period of time within which to file the missing parts to complete the application and pay the applicable surcharge. See MPEP § 601.01et seq. for a discussion of the requirements for a complete application. In order for the Office to so notify the applicant, a correspondence address must also be provided by the applicant. The address may be different from the post office address of the applicant. For example, the address of the applicant’s registered attorney or agent may be used as the correspondence address. If the applicant fails to provide the Office with a correspondence address, the Office will be unable to provide the applicant with notification to complete the application and to pay the surcharge as set forth in 37 CFR 1.16(f) for nonprovisional applications and 37 CFR 1.16(g) for provisional applications. In such a case, the applicant will be considered to have constructive notice as of the filing date that the application must be completed and the applicant will have 2 months from the filing date in which to do so before abandonment occurs.
The periods of time within which the applicant must complete the application may be extended under the provisions of 37 CFR 1.136. Applications which are not completed in a timely manner will be abandoned.
403.01 Correspondence in Applications [R-07.2022]
403.01(a) Correspondence in Applications Filed On or After September 16, 2012 [R-01.2024]
37 CFR 1.33 Correspondence respecting patent applications, reexamination proceedings, and other proceedings.
- (a) Correspondence address and daytime telephone number. When filing an application, a correspondence address must be set forth in either an application data sheet (§ 1.76), or elsewhere, in a clearly identifiable manner, in any paper submitted with an application filing. If no correspondence address is specified, the Office may treat the mailing address of the first named inventor (if provided, see §§ 1.76(b)(1) and 1.63(b)(2)) as the correspondence address. The Office will direct, or otherwise make available, all notices, official letters, and other communications relating to the application to the person associated with the correspondence address. For correspondence submitted via the USPTO patent electronic filing system, however, an electronic acknowledgment receipt will be sent to the submitter. The Office will generally not engage in double correspondence with an applicant and a patent practitioner, or with more than one patent practitioner except as deemed necessary by the Director. If more than one correspondence address is specified, the Office will select one of the specified addresses for use as the correspondence address and, if given, may select the address associated with a Customer Number over a typed correspondence address. For the party to whom correspondence is to be addressed, a daytime telephone number should be supplied in a clearly identifiable manner and may be changed by any party who may change the correspondence address. The correspondence address may be changed by the parties set forth in paragraph (b)(1) or (b)(3) of this section. Prior to the appointment of any power of attorney under § 1.32(b), the correspondence address may also be changed by any patent practitioner named in the application transmittal papers who acts in a representative capacity under the provisions of § 1.34.
- (b) Amendments and other papers. Amendments and other papers, except for written assertions pursuant to § 1.27(c)(2)(iii) or (c)(2)(iv), filed in the application must be signed by:
- (c) All notices, official letters, and other communications for the patent owner or owners in a reexamination or supplemental examination proceeding will be directed to the correspondence address in the patent file. Amendments filed in a reexamination proceeding, and other papers filed in a reexamination or supplemental examination proceeding, on behalf of the patent owner must be signed by the patent owner, or if there is more than one owner by all the owners, or by an attorney or agent of record in the patent file, or by a registered attorney or agent not of record who acts in a representative capacity under the provisions of § 1.34. Double correspondence with the patent owner or owners and the patent owner’s attorney or agent, or with more than one attorney or agent, will not be undertaken.
- (d) A “correspondence address” or change thereto may be filed with the Patent and Trademark Office during the enforceable life of the patent. The “correspondence address” will be used in any correspondence relating to maintenance fees unless a separate “fee address” has been specified. See § 1.363 for “fee address” used solely for maintenance fee purposes.
- (e) A change of address filed in a patent application or patent does not change the address for a patent practitioner in the roster of patent attorneys and agents. See § 11.11 of this title.
- (f) Where application papers from a prior application are used in a continuing application and the correspondence address was changed during the prosecution of the prior application, an application data sheet or separate paper identifying the correspondence address to be used for the continuing application must be submitted. Otherwise, the Office may not recognize the change of correspondence address effected during the prosecution of the prior application.
- (g) A patent practitioner acting in a representative capacity whose correspondence address is the correspondence address of record in an application may change the correspondence address after the patent has issued, provided that the change of correspondence address is accompanied by a statement that notice has been given to the patentee or owner.
37 CFR 1.33(a) specifies that if an applicant provides more than one correspondence address (in a single paper or in different papers), the Office will select one of the specified addresses for use as the correspondence address and, if given, may select the correspondence address associated with a Customer Number over a typed correspondence address. However, the hierarchy provided in 37 CFR 1.76(d) for inconsistencies between an application data sheet and other documents will still apply.
37 CFR 1.33(a) also provides that the correspondence address may be changed by the parties set forth in 37 CFR 1.33(b)(1) (a patent practitioner of record) or 37 CFR 1.33(b)(3) (the applicant under 37 CFR 1.42)). Prior to the appointment of any power of attorney under 37 CFR 1.32(b), the correspondence address may also be changed by any patent practitioner named in the application transmittal papers who acts in a representative capacity under the provisions of 37 CFR 1.34. While a practitioner acting in a representative capacity cannot change the correspondence address in an application after a power of attorney has been appointed, 37 CFR 1.33(g) provides that a practitioner acting in a representative capacity whose correspondence address is the correspondence address of record in an application may change the correspondence address after the patent has issued, provided that the change of correspondence address is accompanied by a statement that notice has been given to the patentee or owner.
Amendments and other papers, except for written assertions pursuant to 37 CFR 1.27(c)(2)(iii) or (c)(2)(iv), filed in the application must be signed by: (1) A patent practitioner of record; (2) a patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34; or (3) the applicant (37 CFR 1.42). Pursuant to 37 CFR 1.33(b)(3), unless otherwise specified (e.g., terminal disclaimers and 37 CFR 3.73(c) statements; see MPEP § 325), all papers submitted on behalf of a juristic entity must be signed by a patent practitioner, as 37 CFR 1.31 provides that a juristic entity may prosecute a patent application only through a patent practitioner.
Where application papers (e.g., the inventor’s oath or declaration) from a prior application are used in a continuing application and the correspondence address was changed during the prosecution of the prior application, an application data sheet or separate paper identifying the correspondence address to be used for the continuing application must be submitted. See 37 CFR 1.33(f). Otherwise, the Office may not recognize the change of correspondence address effected during the prosecution of the prior application.
403.01(b) Correspondence in Applications Filed Before September 16, 2012 [R-10.2019]
37 CFR 1.33 (pre-AIA) Correspondence respecting patent applications, reexamination proceedings, and other proceedings.
- (a) Correspondence address and daytime telephone number. When
filing an application, a correspondence address must be set forth in either
an application data sheet (§ 1.76), or elsewhere, in
a clearly identifiable manner, in any paper submitted with an application
filing. If no correspondence address is specified, the Office may treat the
mailing address of the first named inventor (if provided, see §§
1.76(b)(1) and 1.63(c)(2)) as the
correspondence address. The Office will direct, or otherwise make available,
all notices, official letters, and other communications relating to the
application to the person associated with the correspondence address. For
correspondence submitted via the Office’s electronic filing system, however,
an electronic acknowledgment receipt will be sent to the submitter. The
Office will generally not engage in double correspondence with an applicant
and a patent practitioner, or with more than one patent practitioner except
as deemed necessary by the Director. If more than one correspondence address
is specified in a single document, the Office will select one of the
specified addresses for use as the correspondence address and, if given,
will select the address associated with a Customer Number over a typed
correspondence address. For the party to whom correspondence is to be
addressed, a daytime telephone number should be supplied in a clearly
identifiable manner and may be changed by any party who may change the
correspondence address. The correspondence address may be changed as
follows:
- (1) Prior to filing of § 1.63 oath or declaration by any of the inventors. If a § 1.63 oath or declaration has not been filed by any of the inventors, the correspondence address may be changed by the party who filed the application. If the application was filed by a patent practitioner, any other patent practitioner named in the transmittal papers may also change the correspondence address. Thus, the inventor(s), any patent practitioner named in the transmittal papers accompanying the original application, or a party that will be the assignee who filed the application, may change the correspondence address in that application under this paragraph.
- (2) Where a § 1.63 oath or declaration has been filed by any of the inventors. If a § 1.63 oath or declaration has been filed, or is filed concurrent with the filing of an application, by any of the inventors, the correspondence address may be changed by the parties set forth in paragraph (b) of this section, except for paragraph (b)(2).
- (b) Amendments and other papers. Amendments and other papers,
except for written assertions pursuant to § 1.27(c)(2)(ii) of this part, filed in the application
must be signed by:
- (1) A patent practitioner of record appointed in compliance with § 1.32(b);
- (2) A patent practitioner not of record who acts in a representative capacity under the provisions of § 1.34;
- (3) An assignee as provided for under § 3.71(b) of this chapter; or
- (4) All of the applicants (§ 1.41(b)) for patent, unless there is an assignee of the entire interest and such assignee has taken action in the application in accordance with § 3.71 of this chapter.
- (c) All notices, official letters, and other communications for the patent owner or owners in a reexamination proceeding will be directed to the correspondence address. Amendments and other papers filed in a reexamination proceeding on behalf of the patent owner must be signed by the patent owner, or if there is more than one owner by all the owners, or by an attorney or agent of record in the patent file, or by a registered attorney or agent not of record who acts in a representative capacity under the provisions of § 1.34. Double correspondence with the patent owner or owners and the patent owner’s attorney or agent, or with more than one attorney or agent, will not be undertaken.
- (d) A “correspondence address” or change thereto may be filed with the Patent and Trademark Office during the enforceable life of the patent. The “correspondence address” will be used in any correspondence relating to maintenance fees unless a separate “fee address” has been specified. See § 1.363 for “fee address” used solely for maintenance fee purposes.
- (e) A change of address filed in a patent application or patent does not change the address for a patent practitioner in the roster of patent attorneys and agents. See § 11.11 of this title.
Pre-AIA 37 CFR 1.33(a) provides for an applicant to supply an address to receive correspondence from the U.S. Patent and Trademark Office so that the Office may direct mail to any address of applicant’s selection, such as a corporate patent department, a firm of attorneys or agents, or an individual attorney, agent, or other person.
Pre-AIA 37 CFR 1.33(a) provides that when filing a patent application the applicant must specify a correspondence address to which the Office will send notices, letters and other communications relating to the application. The correspondence address must appear either in an application data sheet (37 CFR 1.76) or in a clearly identifiable manner elsewhere in any papers submitted with an application filing. Where more than one correspondence address is specified, the Office will select one of the correspondence addresses for use as the correspondence address. This is intended to cover, for example, the situation where an application is submitted with multiple addresses, such as one correspondence address being given in the application transmittal letter, and a different one in an accompanying pre-AIA 37 CFR 1.63 oath or declaration, or other similar situations. The Office will select which of the multiple correspondence addresses to use according to the following order: (A) application data sheet (ADS); (B) application transmittal; (C) oath or declaration (unless power of attorney is more current); and (D) power of attorney. If more than one correspondence address is specified in a single document, the Office will select the address associated with a Customer Number over a typed correspondence address.
Pre-AIA 37 CFR 1.33(a) requests the submission of a daytime telephone number of the party to whom correspondence is to be addressed. While business is to be conducted on the written record (37 CFR 1.2), a daytime telephone number would be useful in initiating contact that could later be reduced to writing. The telephone number would be changeable by any party who could change the correspondence address.
Pre-AIA 37 CFR 1.33(a)(1) provides that any party filing the application and setting forth a correspondence address could later change the correspondence address provided that a pre-AIA 37 CFR 1.63 oath/declaration by any of the inventors has not been submitted. If one joint inventor filed an application, the person who may change the correspondence address would include only the one inventor who filed the application, even if another inventor was identified on the application transmittal letter. If two of three inventors filed the application, the two inventors filing the application would be needed to change the correspondence address. Additionally, any registered practitioner named in the application transmittal letter, or a person who has the authority to act on behalf of the party that will be the assignee (if the application was filed by the party that will be the assignee), could change the correspondence address. A registered practitioner named in a letterhead would not be sufficient, but rather a clear identification of the individual as being a representative would be required. A company (to whom the invention has been assigned, or to whom there is an obligation to assign the invention) who files an application, is permitted to designate the correspondence address, and to change the correspondence address, until such time as a (first) pre-AIA 37 CFR 1.63 oath/declaration is filed. The mere filing of a pre-AIA 37 CFR 1.63 oath/declaration that does not include a correspondence address does not affect any correspondence address previously established on the filing of the application, or changed per pre-AIA 37 CFR 1.63(a)(1), even if the application was filed by a company that is only a partial assignee. The expression “party that will be the assignee,” rather than assignee, is used in that until a declaration is submitted, inventors have only been identified, and any attempted assignment, or partial assignment, cannot operate for Office purposes until the declaration is supplied. Hence, if the application transmittal letter indicates that the application is being filed on behalf of XYZ company, with an assignment to be filed later, XYZ company would be allowed to change the correspondence address without resort to pre-AIA 37 CFR 3.73 (b) until an executed oath or declaration is filed, and with resort to pre-AIA 37 CFR 3.73(b) after the oath or declaration is filed.
Where a correspondence address was set forth or changed pursuant to pre-AIA 37 CFR 1.33(a)(1) (prior to the filing of a pre-AIA 37 CFR 1.63 oath or declaration), that correspondence address remains in effect upon filing of a pre-AIA 37 CFR 1.63 declaration and can then only be changed pursuant to pre-AIA 37 CFR 1.33(a)(2).
In a joint application with no power of attorney to either a registered practitioner or joint inventor, the applicant whose name first appears in the papers receives the correspondence, unless other instructions are given. All applicants must sign the replies. See MPEP §§ 402 and 714.01(a). If the assignee of the entire interest of the applicant is prosecuting the application (MPEP § 402.07), the assignee may specify a correspondence address.
Pre-AIA 37 CFR 1.33(c) relates to which address communications for the patent owner will be sent in reexamination proceedings. See also MPEP § 2224.
Powers of attorney to firms are not recognized by the U.S. Patent and Trademark Office. See MPEP § 402. However, the firm’s address may be used for the correspondence address. The address should appear as follows:
John Doe (inventor)
In care of Able, Baker, and Charlie
(firm)
1234 Main Street
Arlington, Virginia 22202
Patent practitioners are reminded that the attorney and agent roster must be updated separately from and in addition to any change of address filed in individual patent applications.
See MPEP § 601.03 for change of correspondence address.
See MPEP § 201.06(c) regarding change of correspondence address in continuation or divisional applications filed under 37 CFR 1.53(b).
403.02 Two Patent Practitioners for Same Application [R-10.2019]
If the applicant simultaneously appoints two patent practitioners, applicant should indicate with whom correspondence is to be conducted by specifying a correspondence address. See MPEP §§ 403, 403.01(a), and MPEP § 403.01(b).
If, after one patent practitioner is appointed, a second patent practitioner is later added by submission of a new power of attorney appointing both practitioners, correspondence will be mailed to the latest correspondence address of record. See 37 CFR 1.33 and 1.76. Note that if the later-filed power of attorney only lists the second practitioner, the later-filed power of attorney serves as a revocation of the earlier-filed power of attorney, even without an express revocation of the power of the first patent practitioner.
