[Federal Register Volume 60, Number 212 (Thursday, November 2, 1995)]
[Proposed Rules]
[Pages 55691-55695]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 95-27031]



=======================================================================
-----------------------------------------------------------------------

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1, 5 and 10

[Docket No. 951006247-5247-01]
RIN 0651-AA70


Communications With the Patent and Trademark Office

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

-----------------------------------------------------------------------

SUMMARY: The Patent and Trademark Office (Office) is proposing to amend 
the rules of practice in patent and trademark cases to simplify and 
streamline existing mailing procedures. The new procedures will include 
specific addresses for most mail to ensure faster and more accurate 
mail delivery. A definition of ``Federal holiday within the District of 
Columbia'' is provided and the procedure for ``Express Mail'' will be 
simplified.

DATES: Comments must be received by January 2, 1996. No hearing will be 
held.

ADDRESSES: Address written comments to Assistant Commissioner for 
Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513, marked 
to the attention of Lynne G. Beresford. In addition, written comments 
may also be sent by facsimile transmission to (703) 308-7220 with a 
confirmation copy mailed to the above address, or by electronic mail 
messages over the Internet to [email protected].
    Written comments will be available for public inspection on January 
16, 1996, in the Assistant Commissioner for Trademarks' suite on the 
10th floor of the South Tower Building, 2900 Crystal Drive, Arlington, 
Virginia 22202-3513.

FOR FURTHER INFORMATION CONTACT:
Lawrence E. Anderson (for patent-related matters) by telephone at (703) 
305-9285, by electronic mail at [email protected], or by mail to his 
attention addressed to the Assistant Commissioner for Patents, Box DAC, 
Washington, D.C. 20231; or Lynne G. Beresford (for trademark-related 
matters) by telephone at (703) 308-8900, extension 44, or by mail 
marked to their attention and addressed to the Assistant Commissioner 
for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513.

SUPPLEMENTARY INFORMATION: Addresses for correspondence with the Office 
are proposed to be changed to reflect the creation of a mailroom site 
at the South Tower Building for processing most trademark-related mail; 
to distinguish correspondence intended for organizations reporting to 
the Assistant Commissioner for Patents from other correspondence; and 
to add a separate mailing address in the Office of the Solicitor for 
disciplinary matters
    The proposed rulemaking entitled ``Changes in Requirements for 
Addressing Trademark Applications and Trademark-Related Papers'' (0651-
AA73) has been merged with this notice of proposed rulemaking.
    The Office will now have three separate general mailing addresses: 
(1) Assistant Commissioner for Patents for correspondence processed by 
organizations reporting to the Assistant Commissioner for Patents; (2) 
Assistant Commissioner for Trademarks for all trademark-related mail, 
except for trademark documents sent to the Assignment Division for 
recordation and requests for certified and uncertified copies of 
trademark documents which should be addressed to the Commissioner of 
Patents and Trademarks; and (3) Commissioner of Patents and Trademarks 
for all other correspondence. Notwithstanding the above, it is proposed 
that there will be separate mailing addresses in the Office of the 
Solicitor for certain disciplinary matters and cases involving pending 
litigation.
    Those who correspond with the Office are requested to use separate 
envelopes directed to the different areas.
    Because patent-related mail will be sent to the Assistant 
Commissioner for Patents, the requirement to designate patent 
application correspondence as ``PATENT APPLICATION'' is proposed to be 
deleted from section 1.5(a).
    In addition, it is proposed that ``Federal holiday within the 
District of Columbia'' be defined as including Official closings.
    It is further proposed that a ``Certificate of Mailing by Express 
Mail'' (currently necessary to obtain the benefit of the date of 
deposit with the United States Postal Service (U.S.P.S.) as the filing 
date of the Paper) no longer be required for correspondence actually 
received in the Office.

Patent-Related Mail

    Section 1.1 is proposed to be amended to provide for correspondence 
which is processed by organizations reporting to the Assistant 
Commissioner for Patents to be addressed to the ``Assistant 
Commissioner for Patents, Washington, DC 20231.'' The Office first 
announced the new address for patent-related mail in a notice (Change 
of Address for Patent Applications and Patent Related Papers) published 
in the Official Gazette at 1173 Off. Gaz. Pat. Office 13 (April 4, 
1995).
    This change will affect correspondence such as: patent 
applications, responses to notices of informality, requests for 
extension of time, notices of appeal to the Board of Patent Appeals and 
Interferences (the Board), briefs in support of an appeal to the Board, 
requests for oral hearing before the Board, extensions of term of 
patent, requests for reexamination, statutory disclaimers, certificates 
of correction, petitions to the Commissioner, submission of information 
disclosure statements, petitions to institute a public use proceeding, 
petitions to revive abandoned patent applications, and other 
correspondence related to patent applications and patents which is 
processed by organizations reporting to the Assistant Commissioner for 
Patents. When patent-related documents are filed with a certificate of 
mailing, pursuant to section 1.8, the certificate of mailing should be 
completed with the new address: Assistant Commissioner for Patents, 
Washington, D.C. 20231.
    Unless otherwise specified, correspondence not processed by 
organizations reporting to the Assistant Commissioner for Patents, such 
as communications with the Board, patent services including patent copy 
sales, assignments, requests for lists of patents and SIRs in a 
subclass, requests for the status of maintenance fee payments, as well 
as patent practitioner enrollment matters including admission to 

[[Page 55692]]
examination, registration to practice, certificates of good standing, 
and financial service matters including establishing a deposit account 
should continue to be addressed to the Commissioner of Patents and 
Trademarks, Washington, D.C. 20231. Documents to be recorded with the 
Assignment Division, except those filed with new applications, should 
be addressed to: Box Assignment, Commissioner of Patents and 
Trademarks, Washington, D.C. 20231. Orders for certified and 
uncertified copies of Office documents should be addressed to: Box 10, 
Commissioner of Patents and Trademarks, Washington, D.C. 20231.
    Special Office mail boxes as currently listed in each issue of the 
Official Gazette should continue to be used to allow forwarding of 
particular types of mail to the appropriate areas as quickly as 
possible. Use of special box designations will facilitate the Office's 
timely and accurate identification and processing of the designated 
correspondence.
    Checks should continue to be made payable to the Commissioner of 
Patents and Trademarks.

Trademark-Related Mail

    Most trademark-related mail should be sent directly to the 
Trademark Operation at: Assistant Commissioner for Trademarks, 2900 
Crystal Drive, Arlington, Virginia 22202-3513. When trademark-related 
documents are filed with a certificate of mailing, pursuant to section 
1.8, the certificate of mailing should be completed with the new 
address: Assistant Commissioner for Trademarks, 2900 Crystal Drive, 
Arlington, Virginia 22202-3513. Use of the correct address will avoid 
processing delays. Trademark documents to be recorded with the 
Assignment Division, except those filed with new applications, should 
be addressed to: Box Assignment, Commissioner of Patents and 
Trademarks, Washington, D.C. 20231. Orders for certified and 
uncertified copies of trademark documents should be addressed to: Box 
10, Commissioner of Patents and Trademarks, Washington, D.C. 20231.
    The Office announced the new address for trademark-related mail in 
a notice (Change of Address for Trademark Applications and Trademark 
Related Papers) published in the Federal Register at 59 FR 29275 (June 
6, 1994) and in the Trademark Office Official Gazette at 1163 Off. Gax. 
Trademark Office 80 (June 28, 1994) (republished in 1170 Off. Gaz. Pat. 
Office 303 (January 3, 1995)).
    The Office will continue to maintain the special box designations 
and FEE/NO FEE indicators for trademark mail as currently listed in 
each issue of the Official Gazette. In addition to addressing 
trademark-related mail as set forth above, the boxes should also be 
used to allow forwarding of particular types of mail to the appropriate 
areas as quickly as possible.
    Checks should continue to be made payable to the Commissioner of 
Patents and Trademarks.
    Mail intended for the Trademark Trial and Appeal Board should be 
addressed to: Assistant Commissioner for Trademarks, 2900 Crystal 
Drive, Arlington, Virginia 22202-3513, including BOX TTAB/FEE or BOX 
TTAB/NO FEE, whichever is applicable.

Hand-Carried Correspondence

    All correspondence with the Office, except for communications 
relating to pending litigation as specified currently in section 
1.1(g), may continue to be filed directly at the Attorney's Window 
located in Room 1B03 of Crystal Plaza Building 2, 2011 South Clark 
Place, Arlington, Virginia. Trademark-related papers may also be filed 
at the ``walk-up'' window located on the third floor of the South Tower 
Building, 2900 Crystal Drive, Arlington, Virginia.

Federal Holidays Within The District of Columbia

    When the Patent and Trademark Office is officially closed for an 
entire day (for reasons due to weather or other causes), the Office 
will consider each such day a ``Federal holiday within the District of 
Columbia'' under 35 U.S.C. 21. Any action or fee due on such a day may 
be taken, or fee paid, on the next succeeding business day the Office 
is open.
    Legal holidays considered ``Federal holidays within the District of 
Columbia'' are New Year's Day (January 1), Martin Luther King, Jr.'s 
Birthday (third Monday in January), Presidential Inauguration Day, 
Washington's Birthday (third Monday in February), Memorial Day (last 
Monday in May), Independence Day (July 4), Labor Day (first Monday in 
September), Columbus Day (second Monday in October), Veterans Day 
(November 11), Thanksgiving Day (fourth Thursday in November) and 
Christmas Day (December 25). In the past, the Office has published 
notices concerning unscheduled closings. See, e.g., ``Closing of Patent 
and Trademark Office on Thursday, January 20, 1994 and Friday, February 
11, 1994,'' 1161 Off. Gaz. Pat. Office 12 (April 5, 1994) (republished 
in 1170 Off. Gaz. Pat. Office 8 (January 3, 1995)) and ``Filing of 
Papers During Unscheduled Closings of the Patent and Trademark 
Office,'' 1097 Off. Gaz. Pat. Office 53 (December 20, 1988) 
(republished in 1170 Off. Gaz. Pat. Office 8 (January 3, 1995)). The 
proposed rule change will further implement the existing policy.

Express Mail Provisions

    Section 1.10 is proposed to be amended by deleting the requirement 
for a ``Certificate of Mailing by Express Mail'' to obtain the benefit 
of the date of deposit with the United States Postal Service (U.S.P.S.) 
as the filing date of the paper. The title of section 1.10 is proposed 
to be revised and section 1.10 is also proposed to be amended to 
incorporate requirements for the resubmission of misplaced 
correspondence which parallel section 1.8.
    Under the current rule, the filer is required to include a 
Certificate of Mailing by Express Mail, certifying the date of deposit 
as Express Mail. Some papers filed with the Office, although deposited 
as Express Mail with the U.S.P.S., have been denied the filing date of 
the date of deposit as Express Mail because the required Certificate of 
Mailing by Express Mail was omitted or deficient. The lost filing date 
for a significant number of these papers has resulted in the loss of 
substantive rights. For example, a trademark registration may be 
canceled if the required affidavit of continued use or excusable non-
use is not filed by the end of the sixth year of registration. 15 
U.S.C. 1058.
    In light of the problematic nature of the requirement for a 
Certificate of Mailing by Express Mail, inasmuch as the date of deposit 
has already been entered by a disinterested third party, the Office 
proposes to delete this requirement from section 1.10.

Miscellaneous Changes

    Miscellaneous changes are proposed to change the word 
``communications'' to ``correspondence'' for purposes of consistency.
    Also, since the certificate of mailing by ``Express Mail'' will no 
longer be a requirement of the proposed rules, the provisions of Part 
10 relating to misconduct are proposed to be amended to delete 
reference to this requirement.

Discussion of Specific Rules

    If revised as proposed, the heading of section 1.1 will be changed 
to state that the section contains the addresses for correspondence to 
the Patent and Trademark Office.
    Section 1.1 is proposed to be revised to set out all pertinent 
Office mailing 

[[Page 55693]]
addresses in paragraph (a) and in added paragraphs (a)(1), (a)(2), and 
(a)(3). It should be noted that the remaining paragraphs of section 1.1 
contain directions for using box designations rather than addresses. 
Paragraph (a)(1) is proposed to be added to set out the new mailing 
address to which most patent-related documents should be sent. 
Paragraph (a)(2) is proposed to be added to set out the new mailing 
address to which most trademark-related documents should be sent. The 
Solicitor's mailing address, formerly set out in paragraph (g) of the 
section is moved to a new paragraph (a)(3). Paragraph 1.1(g) is 
proposed to be removed and reserved.
    Sections 1.1 and 1.3 are proposed to be amended so that the word 
``communications'' is changed to ``correspondence.''
    Section 1.5(a) is proposed to be amended by removing the 
requirement of the words ``PATENT APPLICATION'' on letters concerning 
patent applications.
    Section 1.8(a) is proposed to be revised to state that papers and 
fees must be addressed as set out in 1.1(a). For the purposes of 
1.8(a)(1)(i)(A), first class mail is interpreted as including ``Express 
Mail'' and ``Priority Mail'' deposited with the U.S.P.S.
    Section 1.9 is proposed to be amended to add a definition of 
``Federal holiday within the District of Columbia'' to include Federal 
holidays and days when the Patent and Trademark Office is officially 
closed for the entire day (for reasons due to adverse weather or other 
causes).
    Section 1.10 is proposed to be revised to state that ``Express 
Mail'' must be addressed as set out in Sec. 1.1(a). The title of 
section 1.10 is proposed to be revised to reflect this change. Further, 
for all correspondence actually received in the Office, the Office will 
consider the correspondence filed on the date shown by the ``date in'' 
notation on the ``Express Mail'' label unless the ``date in'' is a 
Saturday, Sunday or Federal holiday within the District of Columbia. 
Because of the reliance on the ``date in'' marked by the Postal 
Service, correspondence should be deposited directly with a person at 
the United States Postal Service, rather than in a drop box, to ensure 
that the person making the deposit receives a copy of the ``Express 
Mail'' label at the time of making the deposit to verify that the 
``date in'' is accurately and clearly written by the Postal Service 
employee. Persons using an Express mail receptacle (such as a drop box) 
do so at the risk of not receiving an accurate and legible copy of the 
Express mail label at the time of deposit from which the Office may 
determine the ``Express mail'' ``date in,'' and, therefore, may not 
later argue that they should be entitled to the date on which they 
deposited the correspondence into a receptacle. Moreover, if the ``date 
in'' is found to be illegible or unclear, a person dealing directly 
with a Postal Service employee must take corrective action to ensure 
that a clear and accurate date is marked at the time of deposit. 
Persons choosing to use a receptacle (or the like) obviously do not 
oversee the marking by a Postal Service employee and thus may not later 
argue for the benefit of a section 1.10 filing date if the ``date in'' 
on the ``Express Mail'' label is improperly or not clearly marked. The 
determinative factor is when the Postal Service marks the ``date in'' 
and the mere deposit into a receptacle does not entitle one to an 
``Express Mail'' ``date in'' under section 1.10.
    Paragraph (b) of section 1.10 is proposed to be amended by deleting 
the requirement for a ``Certificate of Mailing by Express Mail'' 
currently necessary to obtain the benefit of the date of deposit with 
the United States Postal Service (U.S.P.S.) express mail service as the 
filing date of the paper.
    Paragraph (c) of section 1.10 is proposed to be amended to set 
forth the requirements for the treatment of correspondence not received 
by the Office for which the ``Express Mail'' procedure was utilized. 
Correspondence not received by the Office will be considered filed in 
the Office on the date shown by the ``date in'' notation entered by the 
Postal Service if the party who forwards the correspondence:
    (1) Places the number of the ``Express Mail'' mailing label on the 
correspondence prior to the original mailing by ``Express Mail,''
    (2) Informs the Office of the previous deposit of the 
correspondence promptly after becoming aware that the Office has no 
evidence of receipt of the correspondence,
    (3) Supplies an additional copy of the previously deposited 
correspondence showing the number of the ``Express Mail'' label 
thereon,
    (4) Supplies a copy of the ``Express Mail'' label clearly 
displaying the ``date in'' entered by the United States Postal Service, 
and
    (5) Includes a statement which establishes, to the satisfaction of 
the Commissioner, the previous deposit and that the copies of the 
correspondence and ``Express Mail'' label are true copies of the 
original correspondence and ``Express Mail'' label. Such statement must 
be on the basis of personal knowledge, whenever possible, and must be a 
verified statement if made by a person other than a practitioner as 
defined in section 10.1(r) of this chapter.
    In addition, although the requirement for a certificate of express 
mail has been proposed to be eliminated from section 1.10, applicants 
are strongly encouraged to continue using the certificate of express 
mail, as well as the placement of the Express Mail label number in the 
upper right corner of the first page of each separate piece of 
correspondence and to retain a clearly marked Express Mail label, to 
facilitate complying with the requirements of paragraph (c) if the 
correspondence is not received in the Office or if reliance on the 
U.S.P.S. ``date in'' is not possible. Moreover, paragraph (d) is 
proposed to be added so that additional evidence may be required if the 
Office so determines.
    Section 5.33 (entitled ``Correspondence'') is proposed to be 
amended to change the correspondence address to ``Assistant 
Commissioner for Patents (Attention: Licensing and Review), Washington, 
DC 20231.''
    Section 10.23(c)(9) is proposed to be revised to reflect the 
proposed change to section 1.10 that the certificate of mailing by 
``Express Mail'' is no longer a requirement of the rules.

Other Considerations

    The proposed rule changes are in conformity with the requirements 
of the Regulatory Flexibility Act (5 U.S.C. et seq.), Executive Order 
12612, and the Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et seq. 
Information collection requirements are not affected by the change of 
address. This proposed rule has been determined to not be significant 
for the purposes of Executive Order 12866.
    The Office has determined that this proposed rule change has no 
Federalism implications affecting the relationship between the National 
Government and the States as outlined in Executive Order 12612.
    The Assistant General Counsel for Legislation and Regulation of the 
Department of Commerce has certified to the Chief Counsel for Advocacy, 
Small Business Administration, that the proposed rule changes would not 
have a significant impact on a substantial number of small entities 
(Regulatory Flexibility Act, 5 U.S.C. 605(b)). The proposed rule change 
has no effect on patent fees.
    These proposed rule changes contain collections of information 
subject to the requirements of the Paperwork Reduction Act of 1980, 44 
U.S.C. 3501 et seq., which are currently approved by the Office of 
Management and Budget 

[[Page 55694]]
under Control No. 0651-0009 and 0651-0031. The public reporting burden 
for these collections of information for certificate of mailing is 
estimated to average six minutes per response, including the time for 
reviewing instructions, searching existing data sources, gathering and 
maintaining the data needed, and completing and reviewing the 
collection of information. Send comments regarding this burden estimate 
or any other aspect of this collection of information, including 
suggestions for reducing this burden to the Office of System Quality 
and Enhancement Division, Patent and Trademark Office, Washington, D.C. 
20231, and to the Office of Information and Regulatory Affairs, Office 
of Management and Budget, Washington, DC 20503. (Attn: Paperwork 
Reduction Act Projects 0651-0009 and 0651-0031).

List of Subjects

37 CFR Part 1

    Administrative practice and procedure, Freedom of information, 
Inventions and patents, Reporting and record keeping requirements.

37 CFR Part 5

    Classified information, Foreign relations, Inventions and patents.

37 CFR Part 10

    Administrative Practice and procedure, Conflicts of interest, 
Courts, Inventions and patents, Lawyers.

    For the reasons set forth in the preamble and under the authority 
granted to the Commissioner of Patents and Trademarks by 35 U.S.C. 6 
and 15 U.S.C. 1123, 37 CFR Parts 1, 5 and 10 are proposed to be amended 
as follows:


PART 1--RULES OF PRACTICE IN PATENT CASES

    1. The authority citation for 37 CFR Part 1 continues to read as 
follows:

    Authority: 35 U.S.C. 6, unless otherwise noted.

    2. Section 1.1 is proposed to be amended by removing and reserving 
paragraph (g) and by revising the heading and paragraph (a) to read as 
follows:


Sec. 1.1  Addresses for correspondence with the Patent and Trademark 
Office.

    (a) Except for those documents identified in paragraphs (a)(1), (2) 
and (3) of this section, all correspondence intended for the Patent and 
Trademark Office must be addressed to ``Commissioner of Patents and 
Trademarks, Washington, D.C. 20231.'' When appropriate, correspondence 
should also be marked for the attention of a particular office or 
individual.
    (1) Patent correspondence. All correspondence concerning patent 
matters processed by organizations reporting to the Assistant 
Commissioner for patents should be addressed to ``Assistant 
Commissioner for Patents, Washington, D.C. 20231.''
    (2) Trademark correspondence. All correspondence concerning 
trademark matters, except for trademark-related documents sent to the 
Assignment Division for recordation and requests for certified and 
uncertified copies of trademark application and registration documents, 
should be addressed to ``Assistant Commissioner for Trademarks, 2900 
Crystal Drive, Arlington, Virginia 22202-3513.'' This includes 
correspondence intended for the Trademark Trial and Appeal Board.
    (3) Office of Solicitor correspondence. (i) Correspondence relating 
to pending litigation required by court rule or order to be served on 
the Solicitor shall be hand-delivered to the Office of the Solicitor or 
shall be mailed to: Office of the Solicitor, P.O. Box 15667, Arlington, 
Virginia 22215; or such other address as may be designated in writing 
in the litigation. See Secs. 1.302(c) and 2.145(b)(3) for filing a 
notice of appeal to the U.S. Court of Appeals for the Federal Circuit.
    (ii) Correspondence relating to disciplinary proceedings pending 
before an Administrative Law Judge or the Commissioner shall be mailed 
to: Office of the Solicitor, P.O. Box 16116, Arlington, Virginia 22215.
    (iii) All other correspondence to the Office of the Solicitor shall 
be addressed to: Box 8, Commissioner of Patents and Trademarks, 
Washington, D.C. 20231.
    (iv) Correspondence addressed to the wrong Post Office Box will not 
be filed elsewhere in the Patent and Trademark Office and might be 
returned.
* * * * *
    (g) [Reserved]
* * * * *
    3. Section 1.3 is proposed to be revised to read as follows:


Sec. 1.3  Business to be conduced with decorum and courtesy.

    Applicants and their attorneys or agents are required to conduct 
their business with the Patent and Trademark Office with decorum and 
courtesy. Papers presented in violation of this requirement will be 
submitted to the Commissioner and will be returned by the 
Commissioner's direct order. Complaints against examiners and other 
employees must be made in correspondence separate from other papers.
    4. Section 1.5(a) is proposed to be revised to read as follows:


Sec. 1.5  Identification of application, patent, or registration.

    (a) No correspondence relating to an application should be filed 
prior to when notification of the application number is received 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 Sec. 1.8 or 
the Express Mail procedure under Sec. 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. If for some reason 
returned correspondence is resubmitted with proper identification later 
than two weeks after the return mailing by the Patent and Trademark 
Office, the resubmitted correspondence will be accepted but given its 
date of receipt. 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 applicant, the title of the 
invention, the date of filing the same, and, if known, the group art 
unit or other unit within the Patent and Trademark Office responsible 
for considering the letter and the name of 

[[Page 55695]]
the examiner or other person to which it has been assigned.
* * * * *
    5. Section 1.8(a)(1)(i)(A) is proposed to be revised to read as 
follows:


Sec. 1.8  Certificate of mailing or transmission.

    (a) * * *
    (1) * * *
    (i) * * *
    (A) Addressed as set out in Sec. 1.1(a) and deposited with the U.S. 
Postal Service with sufficient postage as first class mail; or
* * * * *
    6. Section 1.9 is proposed to be amended by adding a new paragraph 
(h) to read as follows:


Sec. 1.9  Definitions.

* * * * *
    (h) A ``Federal holiday within the District of Columbia'' as used 
in this chapter means any day, except Saturdays and Sundays, when the 
Patent and Trademark Office is officially closed for business.
    7. Section 1.10 is proposed to be revised to read as follows:


Sec. 1.10  Filing of correspondence by ``Express Mail.''

    (a) Any correspondence received by the Patent and Trademark Office 
utilizing the ``Express Mail Post Office to Addressee'' service of the 
United States Postal Service will be considered filed in the Office on 
the date shown by the ``date in'' notation entered by the United States 
Postal Service on the ``Express Mail'' label, unless the ``date in'' is 
a Saturday, Sunday or Federal holiday within the District of Columbia. 
See Sec. 1.6(a). This procedure can be used to file any correspondence 
in the Office.
    (b) Any correspondence filed by ``Express Mail'' must be addressed 
as set out in Sec. 1.1(a) and should be deposited directly with the 
United States Postal Service to ensure that the person depositing the 
correspondence receives a copy of the ``Express Mail'' label at the 
time of deposit with the ``date in'' clearly marked thereon. Persons 
dealing indirectly with the Untied States Postal Service (such as by 
deposit in an Express Mail drop box) do so at the risk of not receiving 
their copy of the ``Express Mail'' label with the ``date in'' clearly 
marked.
    (c) Any correspondence mailed to the Patent and Trademark Office 
utilizing the ``Express Mail Post Office to Addressee'' service of the 
United States Postal Service, but not received by the Office, will be 
considered filed in the Office on the date shown by the ``date in'' 
notation entered by the Untied States Postal Service on the ``Express 
Mail'' label, unless the ``date in'' is a Saturday, Sunday or Federal 
holiday within the District of Columbia (see Sec. 1.6(a)), if the party 
who forwarded such correspondence:
    (1) Places the number of the ``Express Mail'' mailing label on the 
correspondence prior to the original mailing by ``Express Mail,''
    (2) Informs the Office of the previous deposit of the 
correspondence promptly after becoming aware that the Office has no 
evidence of receipt of the correspondence,
    (3) Supplies a copy of the previously deposited correspondence 
showing the number of the ``Express Mail'' label thereon,
    (4) Supplies a copy of the ``Express Mail'' label clearly 
displaying the ``date in'' entered by the United States Postal Service, 
and
    (5) Includes a statement which establishes, to the satisfaction of 
the Commissioner, to the previous deposit and that the copies of the 
correspondence and ``Express Mail'' label are true copies of the 
original correspondence and ``Express Mail'' label. Such statement must 
be on the basis of personal knowledge, whenever possible, and must be a 
verified statement if made by a person other than a practitioner as 
defined in Sec. 10.1(r) of this chapter.
    (d) The Office may require additional evidence to determine if the 
correspondence was deposited as ``Express Mail'' with the United States 
Postal Service on the date in question.

PART 5--SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND 
FILE APPLICATIONS IN FOREIGN COUNTRIES

    8. The authority citation for 37 CFR Part 5 continues to read as 
follows:

    Authority: 35 U.S.C. 6, 41, 181-188, as amended by the Patent 
Law Foreign Filing Amendments Act of 1988, Pub. L. 100-418, 102 
Stat. 1567; the Arms Export Control Act, as amended, 22 U.S.C. 2751 
et seq., the Atomic Energy Act of 1954, as amended, 42 U.S.C. 2011 
et seq., and the Nuclear Non-Proliferation Act of 1978, 22 U.S.C. 
3201 et seq., and the delegations in the regulations under these 
acts to the Commissioner (15 CFR 370.10(j), 22 CFR 125.04, and 10 
CFR 810.7).

    9. Section 5.33 is proposed to be revised to read as follows:


Sec. 5.33  Correspondence.

    All correspondence in connection with this part, including 
petitions, should be addressed to ``Assistant Commissioner for Patents 
(Attention: Licensing and Review), Washington, D.C. 20231.''

PART 10--REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK 
OFFICE

    10. The authority citation for 37 CFR Part 10 continues to read as 
follows:

    Authority: 5 U.S.C. 500; 15 U.S.C. 1123; 35 U.S.C. 6, 31, 32, 
41.

    11. Section 10.23(c)(9) is proposed to be revised to read as 
follows:


Sec. 10.23  Misconduct.

* * * * *
    (c) * * *
* * * * *
    (9) Knowingly misusing a ``Certificate of Mailing or Transmission'' 
under Sec. 1.8 of this chapter.
* * * * *
    Dated: October 26, 1995.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and 
Trademarks.
[FR Doc. 95-27031 Filed 11-1-95; 8:45 am]
BILLING CODE 3510-16-M