[Federal Register Volume 61, Number 204 (Monday, October 21, 1996)]
[Notices]
[Pages 54622-54626]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 96-26845]
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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.
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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
[[Page 54623]]
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 using 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, DC 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
[[Page 54624]]
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.
[[Page 54625]]
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
[[Page 54626]]
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 10.1(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.
Dated: October 15, 1996.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and
Trademarks.
[FR Doc. 96-26845 Filed 10-18-96; 8:45 am]
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