[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]
BILLING CODE 3510-16-P