[Federal Register Volume 61, Number 213 (Friday, November 1, 1996)]
[Rules and Regulations]
[Pages 56439-56448]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 96-28088]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1, 5 and 10

[Docket No. 951006247-6255-02]
RIN 0651-AA70


Communications With the Patent and Trademark Office

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The Patent and Trademark Office (Office) is amending its rules 
of practice to specify addresses for agency mail to expedite mail 
delivery, define ``Federal holiday within the District of Columbia,'' 
clarify and simplify procedures for filing papers and fees by ``Express 
Mail,'' and remove certain exclusions from Sec. 1.8(a)(2)(ii) to permit 
additional trademark documents to be considered timely filed if they 
are mailed or transmitted by the due date and in compliance with 
Sec. 1.8(a)(1).

EFFECTIVE DATE: December 2, 1996.

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, DC 20231; or 
Nancy L. Omelko (for trademark-related matters) by telephone at (703) 
308-8910, extension 39, or by mail marked to her attention and 
addressed to the Assistant Commissioner for Trademarks, 2900 Crystal 
Drive, Arlington, Virginia 22202-3513.

SUPPLEMENTARY INFORMATION: In a Notice of Proposed Rulemaking published 
in the Federal Register at 57 FR 55691 (November 2, 1995) and in the 
Patent and Trademark Office Official Gazette at 1180 Off. Gaz. Pat. 
Office 122 (November 28, 1995), the Office proposed to change addresses 
for correspondence with the Office 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; to add a separate mailing address in the Office 
of the Solicitor for disciplinary matters; and to delete the 
requirement for a certificate of mailing by Express Mail from 
Sec. 1.10(b).
    The following includes a discussion of the rules being changed, the 
reasons for those changes, and an analysis of the comments received in 
response to the Notice of Proposed Rulemaking.

General Mailing Addresses

    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, 
except for patent documents sent to the Assignment Division for 
recordation and requests for certified and uncertified copies of patent 
documents, which should be addressed to the Commissioner of Patents and 
Trademarks; (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. In addition, there 
will be separate mailing addresses in the Office of the Solicitor for 
certain disciplinary matters and cases involving pending litigation. 
These addresses are set forth and discussed below.
    Those who correspond with the Office are requested to use separate 
envelopes directed to the different areas.

[[Page 56440]]

Patent-Related Mail

    Section 1.1 is 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 entitled ``Change of Address for Patent 
Applications and Patent Related Papers,'' published in the Patents 
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 Sec. 1.8, the certificate of mailing should be 
completed with the new address: Assistant Commissioner for Patents, 
Washington, DC 20231.
    Unless otherwise specified, correspondence not processed by 
organizations reporting to the Assistant Commissioner for Patents, such 
as communications with the Board (excluding Notices of Appeal and 
appeal briefs), 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 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, DC 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, 
DC 20231. Orders for certified and uncertified copies of Office 
documents should be addressed to: Box 10, Commissioner of Patents and 
Trademarks, Washington, DC 20231.
    Special Office mail boxes as currently listed in each issue of the 
Patents 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 
Sec. 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 entitled ``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 Trademarks Official Gazette at 1163 
Off. Gaz. Trademark Office 80 (June 28, 1994) (republished at 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 Trademarks Official Gazette. Use of the boxes is 
encouraged, to expedite processing of incoming mail.
    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 in amended 
Sec. 1.1(a)(3)(i), 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. Hand delivery 
of trademark papers and fees directly to the South Tower Building is 
recommended, to expedite processing.

Trademark Documents Filed with Certificates of Mailing or Transmission 
Under Sec. 1.8

    The Office is amending Sec. 1.8(a)(2) to remove the exclusions 
listed in Sec. 1.8(a)(2)(ii)(B) through (F). This will permit the 
following trademark documents to be considered timely filed if they are 
mailed or transmitted by the due date and in compliance with 
Sec. 1.8(a)(1): (1) affidavits of continued use or excusable nonuse, 
under 15 U.S.C. 1058; (2) renewal applications, under 15 U.S.C. 1059; 
(3) amendments to allege use, under 15 U.S.C. 1051(c); (4) statements 
of use, under 15 U.S.C. 1051(d)(1); (5) requests for extensions of time 
to file a statement of use, under 15 U.S.C. 1051(d)(2); and (6) 
petitions to cancel registered marks, under 15 U.S.C. 1064. This change 
is intended to make filing easier and less expensive because a 
significantly larger number of documents will be considered timely 
filed using the simpler, less expensive first class mailing provisions 
of Sec. 1.8.
    Section 2.165(a)(1), dealing with affidavits of use or excusable 
non-use filed under Section 8 of the Trademark Act, is amended by 
deleting the last sentence referencing the inapplicability of 
certificates of mailing provided by Sec. 1.8.
    It should be noted that Sec. 1.6(d)(8), which provides that 
correspondence other than notices of ex parte appeal may not be 
transmitted by facsimile to the Trademark Trial and Appeal Board, will 
not change. Thus, while a cancellation petitioner may now ensure timely 
filing with the certificate of mailing procedure set forth in 
Sec. 1.8(a)(1), the petitioner may not transmit the above-mentioned 
documents directed to the Trademark Trial and Appeal Board by fax or 
ensure timely filing with the certificate of facsimile transmission.

[[Page 56441]]

    Section 1.8(a)(2)(ii)(A), which states that the Certificate of 
Mailing or Transmission Procedure does not apply to the filing of 
applications for registration of marks, will not change. The filing 
date of an application is considered to be much more critical than the 
filing dates of the papers accepted under Sec. 1.8. For example, in 
Trademark applications, the granting of a filing date to an application 
potentially establishes a date of constructive use of the mark, and is 
also critical for determining whether foreign priority can be claimed 
under 15 U.S.C. 1126(d); therefore, entry of the date of deposit by a 
disinterested USPS employee is required.

Express Mail

    Section 1.10 is being amended to simplify and clarify the 
procedures for filing correspondence by the ``Express Mail Post Office 
to Addressee'' (Express Mail) service of the United States Postal 
Service (USPS), by deleting the requirement for a Certificate of 
Mailing by Express Mail.
    Section 1.10 was promulgated to implement 35 U.S.C. 21, under which 
the Commissioner may ``by rule prescribe that any paper or fee required 
to be filed in the Patent and Trademark Office will be considered filed 
in the Office on the date on which it was deposited with the United 
States Postal Service.''
    Under the prior rule, the filer was required to include a 
Certificate of Mailing by Express Mail, certifying the date of deposit 
as Express Mail. Papers which did not include this certificate, or 
which included a certificate that did not meet the requirements of the 
rule, were given a filing date as of the date received in the Office 
rather than the date of deposit as Express Mail. The lost filing date 
for a significant number of these papers resulted in the loss of 
substantive rights. In light of the problematic nature of the 
requirement for a Certificate of Mailing by Express Mail and its 
apparent redundancy in purpose, inasmuch as the date of deposit has 
already been entered by a disinterested third party, the Office has 
deleted this requirement from Sec. 1.10(b).
    Under the new rule, Office personnel will routinely look to the 
Express Mail mailing label, and stamp the ``date-in'' or other official 
USPS notation as the filing date of the correspondence. If the USPS 
deposit date cannot be determined, the correspondence will be accorded 
the date of receipt in the Office as the filing date.
    Section 1.10(b), as amended, provides that the Express Mail mailing 
label number should be placed on correspondence filed by Express Mail 
under Sec. 1.10 prior to the original mailing. Correspondence actually 
received by the Office will not be denied a filing date as of the date 
of deposit with the USPS because the Express Mail mailing label number 
was not placed thereon prior to its original mailing. However, the 
absence of the number of the Express Mail mailing label will preclude a 
party from obtaining relief on petition, under Sec. 1.10 (c) through 
(e).
    Section 1.10(b) also provides that correspondence should be 
deposited directly with an employee of the USPS to ensure that the 
person depositing the correspondence receives a legible copy of the 
Express Mail mailing label with the ``date-in'' clearly marked, and 
that persons dealing indirectly with the employees of the USPS (such as 
by deposit in an Express Mail drop box) do so at the risk of not 
receiving a copy of the Express Mail mailing label with the desired 
``date-in'' clearly marked.
    Sections 1.10(c) through 1.10(e) set forth procedures for 
petitioning the Commissioner to accord a filing date as of the date of 
deposit as Express Mail. Section 1.10(c) applies where there is a 
discrepancy between the filing date accorded by the Office and the 
``date-in'' or other official notation entered by the USPS on the 
Express Mail mailing label; Sec. 1.10(d) applies where the ``date-in'' 
is incorrectly entered by the USPS; and Sec. 1.10(e) applies where 
correspondence deposited with the USPS as Express Mail is not received 
by the Office.

Miscellaneous Changes

    Sections 1.3 and 5.33 are also being amended to change 
``communications'' to ``correspondence,'' and for consistency with 
Secs. 1.1, 1.6, and 1.8.
    Section 1.6(a)(2) is amended to provide that correspondence 
deposited as Express Mail in accordance with Sec. 1.10 will be 
considered filed on the date of its deposit, regardless of whether that 
date is a Saturday, Sunday or Federal holiday within the District of 
Columbia.
    Section 1.9 is amended to add a definition of a ``Federal holiday 
within the District of Columbia'' to include an official closing of the 
Office.
    Since the certificate of mailing by Express Mail is no longer a 
requirement of Sec. 1.10, the provisions of Part 10 relating to 
misconduct have been amended to delete reference to this requirement.

Discussion of Specific Rules

    The heading of Sec. 1.1 is amended to state that the section 
contains the addresses for correspondence to the Patent and Trademark 
Office.
    Section 1.1 is amended to set out all pertinent Office mailing 
addresses in paragraph (a) and in added paragraphs (a)(1), (a)(2), and 
(a)(3). The remaining paragraphs of Sec. 1.1 contain directions for 
using box designations rather than addresses. Paragraph (a)(1) sets 
forth the new mailing address to which most patent-related documents 
should be sent. Paragraph (a)(2) sets forth the new mailing address to 
which most trademark-related documents should be sent. It is noted that 
correspondence not addressed according to (a)(1) and (a)(2), but sent 
instead to the Commissioner of Patents and Trademarks, will not be 
refused consideration but may be delayed in processing. 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 removed and 
reserved.
    Sections 1.1 and 1.3 are amended so that the word 
``communications'' is changed to ``correspondence.''
    Section 1.5(a) is amended by removing the requirement that the 
words ``PATENT APPLICATION'' appear on letters concerning patent 
applications. The remainder of the section remains unchanged.
    Section 1.6(a)(1) is amended to add the sentence ``[t]he Patent and 
Trademark Office is not open for the filing of correspondence on any 
day that is a Saturday, Sunday or Federal holiday within the District 
of Columbia.'' In addition, Sec. 1.6(a)(1) is further amended to add 
the phrase ``[e]xcept for correspondence transmitted by facsimile as 
provided for in paragraph (a)(3) of this section'' to the beginning of 
the sentence ``[n]o correspondence is received in the Patent and 
Trademark Office on Saturdays, Sundays or Federal holidays within the 
District of Columbia.'' Since the Office may ``receive'' a facsimile 
transmission under Sec. 1.6(a)(3) on a Saturday, Sunday or Federal 
holiday within the District of Columbia, Sec. 1.6(a)(1) is amended to 
add the phrase ``[e]xcept for correspondence transmitted by facsimile 
as provided for in paragraph (a)(3) of this section'' for clarity and 
consistency with Sec. 1.6(a)(3). In addition, Sec. 1.6(a)(1) is amended 
to begin with the sentence ``[t]he Patent and Trademark Office is not 
open for the filing of correspondence on any day that is a Saturday, 
Sunday or Federal holiday within the District of Columbia'' to clarify 
that any day that is a Saturday, Sunday or Federal holiday within the 
District of Columbia is a day that the Patent and Trademark Office is 
not open for the filing of applications within the meaning of Article 
4(C)(3) of the Paris Convention.

[[Page 56442]]

    Section 1.6(a)(2) is amended to delete the phrase ``unless the date 
of deposit is a Saturday, Sunday or Federal holiday within the District 
of Columbia in which case the date stamped will be the succeeding day 
which is not a Saturday, Sunday or Federal holiday within the District 
of Columbia.'' Thus, Sec. 1.6(a)(1) will provide that the Office is not 
open for the filing of correspondence on any day that is a Saturday, 
Sunday or Federal holiday within the District of Columbia, but that 
correspondence deposited as Express Mail with the USPS in accordance 
with Sec. 1.10 will be considered filed on the date of its deposit, 
regardless of whether that date is a Saturday, Sunday or Federal 
holiday within the District of Columbia (under 35 U.S.C. 21(b) or 
Sec. 1.7).
    Section 1.8(a)(1)(i)(A) is revised to state that papers and fees 
must be addressed as set out in Sec. 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 USPS.
    Section 1.8(a)(2)(ii) is revised to remove and reserve paragraphs 
(a)(2)(ii)(B) through (a)(2)(ii)(F). This will permit the following 
items to be filed in accordance with the procedures set forth in 
Sec. 1.8(a): (1) an affidavit of continued use or excusable nonuse 
under section 8 (a) or (b) or section 12(c) of the Trademark Act, 15 
U.S.C. 1058(a), 1058(b), 1062(c); (2) an application for renewal of a 
registration under section 9 of the Trademark Act, 15 U.S.C. 1059; (3) 
a petition to cancel a registration of a mark under section 14, 
subsection (1) or (2) of the Trademark Act, 15 U.S.C. 1064; (4) in an 
application under section 1(b) of the Trademark Act, 15 U.S.C. 1051(b), 
an amendment to allege use in commerce under section 1(c) of the 
Trademark Act, 15 U.S.C. 1051(c), or a statement of use under section 
1(d)(1) of the Trademark Act, 15 U.S.C. 1051(d)(1); and (5) in an 
application under section 1(b) of the Trademark Act, 15 U.S.C. 1051(b), 
a request under section 1(d)(2) of the Trademark Act, 15 U.S.C. 
1051(d)(2), for an extension of time to file a statement of use under 
section 1(d)(1) of the Trademark Act, 15 U.S.C. 1051(d)(1).
    Section 1.9 is amended to add a definition of ``Federal holiday 
within the District of Columbia'' to include an official closing of the 
Office. When the entire Patent and Trademark Office is officially 
closed for business for an entire day, for reasons due to adverse 
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.
    This provision implements existing policy. In the past, the Office 
has published notices concerning unscheduled closings, stating that 
correspondence due on the date of the unscheduled closing would be 
deemed timely if filed on the next succeeding business day that the 
Office is open. See, e.g., ``Closing of Patent and Trademark Office on 
Thursday, January 20, 1994 and Friday, February 11, 1994'' published in 
the Patent Official Gazette at 1161 Off. Gaz. Pat. Office 12 (April 5, 
1994) (republished at 1170 Off. Gaz. Pat. Office 8 (January 3, 1995)) 
and ``Filing of Papers During Unscheduled Closings of the Patent and 
Trademark Office'' published in the Patent Official Gazette at 1097 
Off. Gaz. Pat. Office 53 (December 20, 1988) (republished at 1170 Off. 
Gaz. Pat. Office 8 (January 3, 1995)).
    Other legal 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).
    The title of Sec. 1.10 is revised to: (1) change ``papers and 
fees'' to ``correspondence'' and (2) remove the reference to a 
``certificate.'' These changes are for consistency with the amendment 
to Sec. 1.10 in this final rulemaking.
    Section 1.10(a) is amended to provide that: (1) any correspondence 
received by the Office that was delivered by the ``Express Mail Post 
Office to Addressee'' (Express Mail) service of the USPS will be 
considered filed in the Office on the date of deposit with the USPS, 
(2) the date of deposit with the USPS is the ``date-in'' or other 
official USPS notation on the Express Mail mailing label, and (3) if 
the USPS deposit date cannot be determined, the correspondence will be 
accorded a filing date as of the date of receipt in the Office.
    The date of deposit or mailing with the USPS is defined by the USPS 
as: (1) For correspondence that is paid for at the time of deposit--the 
date the correspondence is presented and accepted for Express Mail 
delivery at designated post offices, branches, or stations, and (2) For 
correspondence that is prepaid (i.e., with a completed mailing label 
and postage affixed)--the date the prepaid correspondence is accepted 
by the USPS collection employees or the USPS pickup service. USPS 
Domestic Mail Manual (DMM) 49, at D-38 (Sept. 1, 1995).
    Section 1.10(b) is amended by deleting the requirement for a 
certificate of mailing by Express Mail. As amended, Sec. 1.10(b) 
provides that the number of the Express Mail mailing label should be 
placed on each piece of correspondence prior to the original mailing. 
Correspondence that is actually received by the Office will not be 
denied a filing date as of the date of deposit because the number of 
the Express Mail mailing label was not placed thereon prior to the 
original mailing. However, if the number of the mailing label did not 
appear on the correspondence as originally filed, relief will not be 
granted on petition under Secs. 1.10(c) through (e), even if the party 
who filed the correspondence satisfies the other requirements of 
Sec. 1.10(c), Sec. 1.10(d) or Sec. 1.10(e).
    Since the filing of correspondence under Sec. 1.10 without the 
number of the Express Mail mailing label thereon is an oversight that 
can be avoided by the exercise of reasonable care, requests for waiver 
of this requirement will not be granted on petition. A party's 
inadvertent failure to comply with the requirements of a rule is not 
deemed to be an extraordinary situation that would warrant waiver of a 
rule under Secs. 1.183, 2.146(a)(5) or 2.148, nor is such an 
inadvertent omission considered to be an ``unavoidable delay,'' within 
the meaning of 15 U.S.C. 1062(b), 35 U.S.C. 133, Sec. 1.137(a) or 
Sec. 2.66(a). See Honigsbaum v. Lehman, 903 F. Supp. 8, 37 USPQ2d 1799 
(D.D.C. 1995) (Commissioner did not abuse his discretion in refusing to 
waive requirements of Sec. 1.10(c) in order to grant filing date to 
patent application, where applicant failed to produce Express Mail 
customer receipt or any other evidence that application was actually 
deposited with USPS as Express Mail); Nitto Chemical Industry. Co., 
Ltd. v. Comer, No. 93-1378, 1994 U.S. Dist. LEXIS 19211, at *13-14 
(D.D.C. Mar. 7, 1994) (Commissioner's refusal to waive requirements of 
Sec. 1.10 in order to grant priority filing date to patent application 
not arbitrary and capricious, because failure to comply with the 
requirements of Sec. 1.10 is an ``avoidable'' oversight that could have 
been prevented by the exercise of ordinary care or diligence, and thus 
not an extraordinary situation under Sec. 1.183); Vincent v. 
Mossinghoff, 230 USPQ 621 (D.D.C. 1985) (Misunderstanding of Sec. 1.8 
not

[[Page 56443]]

unavoidable delay in responding to Office Action); Gustafson v. 
Strange, 227 USPQ 174 (Comm'r Pats. 1985) (Counsel's unawareness of 
Sec. 1.8 not extraordinary situation warranting waiver of a rule); In 
re Chicago Historical Antique Automobile Museum, Inc., 197 USPQ 289 
(Comm'r Pats. 1978) (Since certificate of mailing procedure under 
Sec. 1.8 was available to petitioner, lateness due to mail delay not 
deemed to be extraordinary situation).
    Section 1.10(b) further provides that correspondence should be 
deposited directly with an employee of the USPS to ensure that the 
person depositing the correspondence receives a legible copy of the 
Express Mail mailing label with the ``date-in'' clearly marked, and 
that persons dealing indirectly with the employees of the USPS (such as 
by depositing correspondence in an Express Mail drop box) do so at the 
risk of not receiving a copy of the Express Mail mailing label with the 
desired ``date-in'' clearly marked. On petition, the failure to obtain 
an Express Mail mailing label with the ``date-in'' clearly marked will 
be considered an omission that could have been avoided by the exercise 
of due care, as discussed above.
    Sections 1.10(c) through 1.10(e) set forth procedures for 
petitioning the Commissioner to accord a filing date as of the date of 
deposit as Express Mail. Such petitions are filed under Sec. 1.181 for 
patent correspondence and Sec. 2.146 for trademark correspondence. 
Section 1.10(c) sets forth procedures for filing a petition to the 
Commissioner for a filing date as of the date of deposit with the USPS, 
where there is a discrepancy between the filing date initially accorded 
by the Office and the ``date-in'' entered by the USPS. Such a petition 
should: (1) be filed promptly after the person becomes aware that the 
Office has accorded, or will accord, a filing date other than the USPS 
deposit date, (2) include a showing that the number of the Express Mail 
mailing label was placed on each piece of correspondence prior to the 
original mailing, and (3) include a true copy of the Express Mail 
mailing label showing the ``date-in'' or other official notation by the 
USPS.
    Section 1.10(d) sets forth procedures for filing a petition to the 
Commissioner to accord a filing date as of the actual date of deposit 
with the USPS, where the ``date-in'' or other official notation is 
incorrectly entered by the USPS. Such a petition should: (1) be filed 
promptly after the person becomes aware that the Office has accorded, 
or will accord, a filing date based upon an incorrect entry by the 
USPS, (2) include a showing that the number of the Express Mail mailing 
label was placed on each piece of correspondence prior to the original 
mailing, and (3) include a showing that the correspondence was 
deposited as Express Mail prior to the last scheduled pickup on the 
requested filing date. The showing under Section 1.10(d) must be 
corroborated by (1) evidence from the USPS, or (2) evidence that came 
into being after deposit and within one business day of the deposit of 
the correspondence as Express Mail. Evidence that came into being 
within one day after the deposit of the correspondence as Express Mail 
may be in the form of a log book which contains information such as the 
Express Mail number; the application number, attorney docket number or 
other such file identification number; the place, date and time of 
deposit; the time of the last scheduled pick-up for that date and place 
of deposit; the depositor's initials or signature; and the date and 
time of entry in the log. Any statement submitted in support of such a 
showing must be verified if made by a person other than an employee of 
the USPS or a practitioner as defined in Sec. 10.1(r) of this chapter.
    The reason the Office considers correspondence to have been filed 
as of the date of deposit as Express Mail is that this date has been 
verified by a disinterested USPS employee, through the insertion of a 
``date-in,'' or other official USPS notation, on the Express Mail 
mailing label. Due to the questionable reliability of evidence from a 
party other than the USPS that did not come into being 
contemporaneously with the deposit of the correspondence with the USPS, 
Sec. 1.10(d) specifically requires that any petition under Sec. 1.10(d) 
be corroborated either by evidence from the USPS, or by evidence that 
came into being after deposit and within one business day after the 
deposit of the correspondence as Express Mail. A petition alleging that 
the USPS erred in entering the ``date-in'' will be denied if it is 
supported only by evidence (other than from the USPS) which was: (1) 
created prior to the deposit of the correspondence as Express Mail with 
the USPS (e.g., an application transmittal cover letter, or a client 
letter prepared prior to the deposit of the correspondence), or (2) 
created more than one business day after the deposit of the 
correspondence as Express Mail (e.g., an affidavit or declaration 
prepared more than one business day after the correspondence was 
deposited with the USPS as Express Mail). On the other hand, a notation 
in a log book, entered by the person who deposited the correspondence 
as Express Mail within one business day after such deposit, setting 
forth the items indicated above would be deemed on petition to be an 
adequate showing of the date of deposit under Sec. 1.10(d)(3).
    Section 1.10(d)(3) further provides that a party must show that 
correspondence was deposited as Express Mail before the last scheduled 
pickup on the requested filing date in order to obtain a filing date as 
of that date. This incorporates existing practice, as set forth in the 
Manual of Patent Examining Procedure (6th ed., January, 1995) Sec. 513, 
and Trademark Manual of Examining Procedure (2nd ed., May, 1993) 
Sec. 702.02(e) into the rule.
    Section 1.10(e) sets forth procedures for filing a petition to the 
Commissioner to accord a filing date as of the date of deposit with the 
USPS, where correspondence deposited as Express Mail is never received 
by the Office. Such a petition should: (1) be filed promptly after the 
person becomes aware that the Office has no evidence of receipt of the 
correspondence, (2) include a showing that the number of the Express 
Mail mailing label was placed on each piece of correspondence prior to 
the original mailing, (3) include a true copy of the originally 
deposited correspondence showing the number of the Express Mail mailing 
label thereon, a copy of any returned postcard receipt, a copy of the 
Express Mail mailing label showing the ``date-in'' or other official 
notation entered by the USPS, and (4) include a statement, signed by 
the person who deposited the documents as Express Mail with the USPS, 
setting forth the date and time of deposit, and declaring that the 
copies of the correspondence, Express Mail mailing label, and returned 
postcard receipt accompanying the petition are true copies of the 
correspondence, mailing label and returned postcard receipt originally 
mailed or received. Any statement in support of a petition under 
Sec. 1.10(e) must be verified if made by a person other than a 
practitioner as defined in Sec. 10.1(r) of this chapter.
    Section 1.10(e) provides for the filing of a petition to accord 
correspondence a filing date as of the date of deposit with the USPS as 
Express Mail only where the correspondence was mailed with sufficient 
postage and addressed as set out in Sec. 1.1(a). There is no 
corresponding provision that correspondence be properly addressed and 
mailed with sufficient postage in Secs. 1.10(a), (c) and (d), because 
these sections apply only to correspondence that is actually received 
by the Office. Correspondence mailed by Express Mail that is actually 
received by the Office will not be denied a filing date as of the date 
of deposit as Express Mail simply

[[Page 56444]]

because the correspondence was not mailed with sufficient postage or 
not addressed as set out in Sec. 1.1(a).
    Section 1.10(e)(3) provides that if the requested filing date is a 
date other than the ``date-in'' on the Express Mail mailing label, the 
petition should include a showing under Sec. 1.10(d)(3), as discussed 
above, that the correspondence was deposited as Express Mail before the 
last scheduled pickup on the requested filing date in order to obtain a 
filing date as of that date.
    Section 1.10(f) provides that the Office may require additional 
evidence to determine whether the correspondence was deposited as 
Express Mail with the USPS on the date in question.
    Section 2.165(a)(1), dealing with affidavits of use or excusable 
non-use filed under Section 8 of the Trademark Act, is amended by 
deleting the last sentence referencing the inapplicability of 
certificates of mailing provided by Sec. 1.8.
    Section 5.33 (entitled ``Correspondence'') is amended to change the 
correspondence address to ``Assistant Commissioner for Patents 
(Attention: Licensing and Review), Washington, D.C. 20231.''
    Section 10.23(c)(9) is revised to reflect the fact that the 
certificate of mailing by Express Mail is no longer a requirement of 
Sec. 1.10.

Response to Comments on the Rules

    The comments received in response to the notice of proposed 
rulemaking have been given careful consideration and a number of the 
suggested modifications have been adopted. The comments and responses 
are discussed below.
    Comment 1: One comment suggested that the Office return to a single 
mailing address.
    Response: Addressing correspondence to specific areas within the 
agency, in accordance with Sec. 1.1, reduces the amount of sorting 
required. Except as set out in Sec. 1.1(a)(3)(iv), mail will be 
delivered within the Office regardless of how it is addressed. 
Nevertheless, use of a specific address should produce faster results 
for correspondents and savings to the Office in terms of reduced time 
and cost. The suggestion to address mail to a single mailing address 
will not be adopted.
    Comment 2: Three comments requested a clarification of the 
reference to ``organizations reporting to the Assistant Commissioner 
for Patents'' in Sec. 1.1(a)(1), suggested that each organization be 
identified, and noted that the change of address from ``Commissioner of 
Patents and Trademarks'' to ``Assistant Commissioner for Patents'' is 
confusing.
    Response: Section 1.1(a)(1) has not been amended to list 
``organizations reporting to the Assistant Commissioner for Patents.'' 
The vast majority of mail to be addressed to the Assistant Commissioner 
is intended for the Examining Groups. Furthermore, once a list of 
organizations is established in the rule, amendment to such a list 
would require implementation of a rule change. However, a list of 
papers that should be addressed to the Assistant Commissioner for 
Patents appears under the heading ``Patent-Related Mail'' in the 
Supplementary Information section.
    Comment 3: Two comments requested clarification concerning how a 
new application incorrectly addressed to the Commissioner of Patents 
and Trademarks, Washington, D.C. 20231, will be treated. Two comments 
opposed the address change in Sec. 1.1, if the benefit of obtaining a 
filing date is conditioned upon the correspondence address being 
addressed correctly.
    Response: Except for certain mail addressed incorrectly to the 
Office of the Solicitor, there will be no penalty for addressing a 
document to the wrong area within the Office, as long as one of the 
approved addresses is used. Use of the specific addresses listed within 
Sec. 1.1 is strongly encouraged because it will facilitate the process 
both for the Office and the filer. Accordingly, a new application 
incorrectly addressed to the Commissioner will be treated the same as 
if the application was addressed to the specific Assistant 
Commissioner.
    Comment 4: One comment supported the separate mailing addresses for 
mail directed to the Assistant Commissioner for Patents, Assistant 
Commissioner for Trademarks, Solicitor and the Commissioner, but viewed 
the practice under Sec. 1.1(a)(3) with respect to correspondence to the 
Office of the Solicitor as a penalty for correspondents who misaddress 
mail.
    Response: While the language in the proposed rule was based on the 
existing rule, 37 CFR 1.1(g) (1996), which has been in effect since 
1988, Sec. 1(a)(3)(iv) has been reworded in the final rule to state 
that improperly addressed correspondence ``may be returned.'' This 
language better represents the intent of the rule. The Post Office 
boxes are located off-site and mail to these boxes is handled directly 
by the Office of the Solicitor. The Office of the Solicitor cannot 
handle large volumes of mail from users who choose not to follow Office 
mailing rules.
    Comment 5: One comment requested clarification on the distinction 
between Sec. 1.1(a) which states that mail ``must'' be addressed to the 
Assistant Commissioner for Patents and Sec. 1.1(a)(1) which states that 
mail ``should'' be addressed to the Assistant Commissioner for Patents, 
if any.
    Response: The language of 1.1(a) has been amended to indicate that 
all correspondence must be addressed either to the ``Commissioner of 
Patents and Trademarks, Washington, D.C. 20231'' or to specific areas 
within the Office as set out in paragraphs (a)(1), (2) and (3) of 
Sec. 1.1.
    Comment 6: One comment questioned why it is now merely permissible 
to identify a patent application by its serial number and filing date 
whereas such information was previously mandatory.
    Response: The only change to Sec. 1.5 is the elimination of the 
requirement to include the words ``PATENT APPLICATION'' on letters 
concerning patent applications. Section 1.5 both before and after the 
proposed amendment provides that ``[w]hen a letter . . . 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. . . .'' 
Accordingly, correspondence must continue to identify a previously 
filed patent application by either (1) the application number, or (2) 
the serial number and filing date. The combination of the serial number 
and filing date is unique by itself.
    Comment 7: One comment objected to the return of correspondence 
pertaining to an application that had not yet been accorded an 
application number because some correspondence may require immediate 
action. This person suggested that the Office search the computerized 
records given sufficient other identifying information, instead of 
returning the correspondence.
    Response: If the correspondence is returned for failure to identify 
the correspondence with the appropriate information, the applicant has 
the option to return the correspondence with the appropriate 
information within two weeks of the date of the cover letter from the 
Office by utilizing the Certificate of Mailing or Transmission 
procedure under Sec. 1.8 or the Express Mail procedure under Sec. 1.10 
to obtain the benefit of the date of deposit with the USPS. There does 
not appear to be any situation where a file would require immediate 
action in applications where the application number had not been 
assigned. If an application number has already been assigned, it is 
within the

[[Page 56445]]

filer's control to supply that information and avoid delays.
    Comment 8: Seven comments opposed the addition of unscheduled 
closings of the Office to the definition of ``Federal holidays within 
the District of Columbia.'' The comments noted that substantive rights 
would be at risk for persons filing provisional patent applications and 
applications asserting priority claims based on foreign applications 
should the date on which an application must be filed fall on a day 
that the Office is closed for unforeseen reasons. One comment noted 
that the substantive rights of applicants seeking to secure a filing 
date prior to divulging an invention may lose rights if a later filing 
date, resulting from an unscheduled closing of the Office, is 
subsequent to the date of divulgence. Some of the comments suggested 
amending Sec. 1.9 to make an exception for provisional patent 
applications and applications asserting a claim of priority based on a 
foreign application so that the filing date would not be affected by an 
unscheduled closing of the Office. One comment also suggested that 
Sec. 1.9 be amended to distinguish between the filing of applications 
and the filing of responses. One comment suggested that the 
Commissioner allow for filing of a non-provisional patent application 
on Federal holidays where the one year anniversary of the provisional 
application falls on a Federal holiday.
    Response: Section 1.6(a)(2) is being amended to delete the phrase 
``unless the date of deposit is a Saturday, Sunday or Federal holiday 
within the District of Columbia in which case the date stamped will be 
the succeeding day which is not a Saturday, Sunday or Federal holiday 
in the District of Columbia.'' Section 1.6(a)(2) now provides that even 
if the Office is closed because it is a Saturday, Sunday or Federal 
holiday in the District of Columbia, correspondence deposited in the 
``Express Mail Post Office to Addressee'' service of the USPS in 
accordance with Sec. 1.10 will be considered filed on the date of 
deposit regardless of whether that date is Saturday, Sunday or a 
Federal holiday within the District of Columbia. Therefore, in light of 
the option to file an application under Sec. 1.10 on any day and the 
amendment to Sec. 1.6(a)(2), no substantive rights would be at risk, 
and the suggestions, set forth in the comments and noted above, have 
not been adopted.
    Comment 9: Several comments objected to the requirement set forth 
in proposed Sec. 1.10(b) which required deposit of Express Mail 
correspondence directly with the United States Postal Service (USPS) to 
ensure that a copy of the Express Mail label marked with the ``date 
in'' is received at the time of deposit. The reasons generally 
expressed by commenters were: (1) Practitioners and applicants feel 
compelled to oversee the work of the USPS employee to make certain that 
the ``date in'' is marked accurately, legibly and in a timely fashion 
and perceive a loss of control over the filing of the document under 
Sec. 1.10 as a result; (2) inefficiency and burden are imposed upon 
persons filing who must actually go to the post office, stand in line 
and generally be confined to fewer hours during the day to deposit the 
Express Mail correspondence directly with the USPS than the hours 
available for deposit in the Express Mail drop box; and (3) inequality 
of opportunity to deposit directly with the USPS for individual 
practitioners and small firms which employ fewer people than larger 
firms to handle. Two comments questioned the Office's use of the term 
``deposit'' and whether the Office exceeded any authority in the 
perceived understanding that the proposed rule was requiring the 
applicants or practitioners to do something beyond ``depositing'' the 
correspondence with the USPS, namely, overseeing the act of acceptance 
of the Express Mail correspondence by the USPS.
    Response: Section 1.10(b) has been amended so that direct deposit 
of correspondence with the USPS is a recommendation, rather than a 
requirement. While the Office strongly urges direct deposit of Express 
Mail correspondence in order to obtain a legible copy of the Express 
Mail mailing label, parties are not precluded from using Express Mail 
drop boxes. Parties who do use drop boxes can protect themselves from 
uncertainty due to illegible mailing labels by routinely maintaining a 
log of Express Mail deposits in which notations are entered by the 
person who deposited the correspondence as Express Mail within one 
business day after deposit with the USPS in a petition filed under 
Sec. 1.10 (c), (d) or (e). Evidence that came into being within one day 
after the deposit of the correspondence as Express Mail may be in the 
form of a log book which contains information such as the Express Mail 
number; the application number, attorney docket number or other such 
file identification number; the place, date and time of deposit; the 
time of the last scheduled pick-up for that date and place of deposit; 
the depositor's initials or signature; and the date and time of entry 
in the log. Any statement submitted in support of such a showing must 
be verified if made by a person other than an employee of the USPS or a 
practitioner as defined in Sec. 10.1(r) of this chapter.
    Comment 10: Several comments opposed the elimination of the 
certificate of mailing by ``Express Mail'' because it would eliminate a 
reliable mode of proving the date of deposit with the USPS.
    Response: The elimination of the requirement for the certificate of 
mailing is adopted primarily to streamline the Office's processing of 
Express Mail correspondence. Under the old rule, the Office was 
required to scrutinize the certificate as well as the Express Mail 
label. Under the new rule, the ``date in'' on the Express Mail label 
would be the only date that the Office would look for to determine the 
filing date. Under the prior rule, the certificate of mailing by 
Express Mail only served as proof of a date of deposit when the 
certificate date was the same as the ``date in'' on the Express Mail 
label. The certificate did not afford protection to an applicant in the 
event that the certificate date differed from the Express Mail label 
date. Therefore, the elimination of the certificate of mailing 
requirement would not eliminate a reliable mode of proving the date of 
deposit.
    Comment 11: Four comments suggested allowing Express Mail Corporate 
Account Mailing Statement of the USPS to serve as additional proof of 
the date of deposit.
    Response: This suggestion has been adopted. Such records would be 
acceptable as additional proof of the date of deposit.
    Comment 12: One comment requested clarification concerning whether 
deposit of correspondence as Express Mail in the Express Mail drop box 
must be done prior to the last scheduled pickup of the day in order to 
be entitled to the deposit date as the filing date of the 
correspondence.
    Response: Correspondence sent by the ``Express Mail Post Office to 
Addressee'' service is considered filed in the Office on the ``date-
in'' entered by the USPS. Accordingly, if the USPS enters the deposit 
date as its ``date-in,'' the correspondence will receive the deposit 
date as its filing date. However, if the USPS enters a date later than 
the deposit date as its ``date-in,'' the correspondence will receive 
the later date as its filing date. Section 1.10(d) permits the Office 
to correct a USPS ``date-in'' error when the correspondence is 
deposited in an Express Mail drop box prior to last scheduled pick up 
of the day, that is, the time clearly marked on the Express Mail drop 
box indicating when the box

[[Page 56446]]

will be cleared for the last time on the date of deposit. Section 
1.10(d) sets forth the procedures to be followed to be entitled to such 
a correction.

Other Considerations

    The rule changes are in conformity with the requirements of the 
Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive Order 
12612, and the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et 
seq.). This rule has been determined to not be significant for the 
purposes of Executive Order 12866.
    The Office has determined that this 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 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 rule change has no 
effect on patent fees.
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall a 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.
    This rule change contains a collection of information subject to 
the requirements of the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 
et seq.), which is currently approved by the Office of Management and 
Budget under Control No. 0651-0031. The public reporting burden for the 
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 Project 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 2

    Administrative practice and procedure, Courts, Lawyers, Trademarks.

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, 2, 5 and 10 are 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 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 Sec. 1.1(a)(3) (i) and (ii), all correspondence 
intended for the Patent and Trademark Office must be addressed to 
either ``Commissioner of Patents and Trademarks, Washington, D.C. 
20231'' or to specific areas within the Office as set out in paragraphs 
(a) (1), (2) and (3)(iii) of this section. 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 improperly addressed to a Post Office Box 
specified in paragraphs (a)(3) (i) and (ii) of this section will not be 
filed elsewhere in the Patent and Trademark Office, and may be 
returned.
* * * * *
    (g) [Reserved]
* * * * *
    3. Section 1.3 is revised to read as follows:


Sec. 1.3  Business to be conducted 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 is amended by revising paragraph (a) 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 receipt of the application number 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),

[[Page 56447]]

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 by 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 mailing 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 with 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. In addition to the application 
number, all letters directed to the Patent and Trademark Office 
concerning applications for patents 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 
the examiner or other person to which it has been assigned.
* * * * *
    5. Section 1.6 is amended by revising paragraph (a) to read as 
follows:


Sec. 1.6  Receipt of correspondence.

    (a) Date of receipt and Express Mail date of deposit. 
Correspondence received in the Patent and Trademark Office is stamped 
with the date of receipt except as follows:
    (1) The Patent and Trademark Office is not open for the filing of 
correspondence on any day that is a Saturday, Sunday or Federal holiday 
within the District of Columbia. Except for correspondence transmitted 
by facsimile as provided for in paragraph (a)(3) of this section, no 
correspondence is received in the Patent and Trademark Office on 
Saturdays, Sundays or Federal holidays within the District of Columbia.
    (2) Correspondence filed in accordance with Sec. 1.10 will be 
stamped with the date of deposit as ``Express Mail'' with the United 
States Postal Service.
    (3) Correspondence transmitted by facsimile to the Patent and 
Trademark Office will be stamped with the date on which the complete 
transmission is received in the Patent and Trademark Office unless that 
date is a Saturday, Sunday, or Federal holiday within the District of 
Columbia, in which case the date stamped will be the next succeeding 
day which is not a Saturday, Sunday, or Federal holiday within the 
District of Columbia.
* * * * *
    6. Section 1.8 is amended by revising paragraphs (a)(1)(i)(A) and 
(a)(2)(ii) 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
* * * * *
    (2) * * *
    (i) * * *
    (ii) Relative to Trademark Registrations and Trademark 
Applications:
    (A) The filing of a trademark application.
    (B) [Reserved]
    (C) [Reserved]
    (D) [Reserved]
    (E) [Reserved]
    (F) [Reserved]
* * * * *
    7. Section 1.9 is 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 for the 
entire day.
    8. Section 1.10 is revised to read as follows:


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

    (a) Any correspondence received by the Patent and Trademark Office 
(Office) that was delivered by the ``Express Mail Post Office to 
Addressee'' service of the United States Postal Service (USPS) will be 
considered filed in the Office on the date of deposit with the USPS. 
The date of deposit with the USPS is shown by the ``date-in'' on the 
``Express Mail'' mailing label or other official USPS notation. If the 
USPS deposit date cannot be determined, the correspondence will be 
accorded the Office receipt date as the filing date. See Sec. 1.6(a).
    (b) Correspondence should be deposited directly with an employee of 
the USPS to ensure that the person depositing the correspondence 
receives a legible copy of the ``Express Mail'' mailing label with the 
``date-in'' clearly marked. Persons dealing indirectly with the 
employees of the USPS (such as by deposit in an ``Express Mail'' drop 
box) do so at the risk of not receiving a copy of the ``Express Mail'' 
mailing label with the desired ``date-in'' clearly marked. The paper(s) 
or fee(s) that constitute the correspondence should also include the 
``Express Mail'' mailing label number thereon. See paragraphs (c), (d) 
and (e) of this section.
    (c) Any person filing correspondence under this section that was 
received by the Office and delivered by the ``Express Mail Post Office 
to Addressee'' service of the USPS, who can show that there is a 
discrepancy between the filing date accorded by the Office to the 
correspondence and the date of deposit as shown by the ``date-in'' on 
the ``Express Mail'' mailing label or other official USPS notation, may 
petition the Commissioner to accord the correspondence a filing date as 
of the ``date-in'' on the ``Express Mail'' mailing label or other 
official USPS notation, provided that:
    (1) The petition is filed promptly after the person becomes aware 
that the Office has accorded, or will accord, a filing date other than 
the USPS deposit date;
    (2) The number of the ``Express Mail'' mailing label was placed on 
the paper(s) or fee(s) that constitute the correspondence prior to the 
original mailing by ``Express Mail;'' and
    (3) The petition includes a true copy of the ``Express Mail'' 
mailing label showing the ``date-in,'' and of any other official 
notation by the USPS relied upon to show the date of deposit.
    (d) Any person filing correspondence under this section that was 
received by the Office and delivered by the ``Express Mail Post Office 
to Addressee'' service of the USPS, who can show that the ``date-in'' 
on the ``Express Mail'' mailing label or other official notation 
entered by the USPS was incorrectly entered or omitted by the USPS, may 
petition the Commissioner to accord the correspondence a filing date as 
of the date the correspondence is shown to have been deposited with the 
USPS, provided that:

[[Page 56448]]

    (1) The petition is filed promptly after the person becomes aware 
that the Office has accorded, or will accord, a filing date based upon 
an incorrect entry by the USPS;
    (2) The number of the ``Express Mail'' mailing label was placed on 
the paper(s) or fee(s) that constitute the correspondence prior to the 
original mailing by ``Express Mail''; and
    (3) The petition includes a showing which establishes, to the 
satisfaction of the Commissioner, that the requested filing date was 
the date the correspondence was deposited in ``Express Mail Post Office 
to Addressee'' service prior to the last scheduled pickup for that day. 
Any showing pursuant to this paragraph must be corroborated by evidence 
from the USPS or that came into being after deposit and within one 
business day of the deposit of the correspondence in the ``Express Mail 
Post Office to Addressee'' service of the USPS. Any statement submitted 
in support of such a showing pursuant to this paragraph must be a 
verified statement if made by a person other than an employee of the 
USPS or a practitioner as defined in Sec. 10.1(r) of this chapter.
    (e) Any person mailing correspondence addressed as set out in 
Sec. 1.1(a) to the Office with sufficient postage utilizing the 
``Express Mail Post Office to Addressee'' service of the USPS but not 
received by the Office, may petition the Commissioner to consider such 
correspondence filed in the Office on the USPS deposit date, provided 
that:
    (1) The petition is filed promptly after the person becomes aware 
that the Office has no evidence of receipt of the correspondence;
    (2) The number of the ``Express Mail'' mailing label was placed on 
the paper(s) or fee(s) that constitute the correspondence prior to the 
original mailing by ``Express Mail;''
    (3) The petition includes a copy of the originally deposited 
paper(s) or fee(s) that constitute the correspondence showing the 
number of the ``Express Mail'' mailing label thereon, a copy of any 
returned postcard receipt, a copy of the ``Express Mail'' mailing label 
showing the ``date-in,'' a copy of any other official notation by the 
USPS relied upon to show the date of deposit, and, if the requested 
filing date is a date other than the ``date-in'' on the ``Express 
Mail'' mailing label or other official notation entered by the USPS, a 
showing pursuant to paragraph (d)(3) of this section that the requested 
filing date was the date the correspondence was deposited in ``Express 
Mail Post Office to Addressee'' service prior to the last scheduled 
pickup for that day; and
    (4) The petition includes a statement which establishes, to the 
satisfaction of the Commissioner, the original deposit of the 
correspondence, and that the copies of the correspondence, the copy of 
the ``Express Mail'' mailing label, the copy of any returned postcard 
receipt, and any official notation entered by the USPS are true copies 
of the originally mailed correspondence and original ``Express Mail'' 
mailing label, returned postcard receipt, and official notation entered 
by the USPS. Such statement must be a verified statement if made by a 
person other than a practitioner as defined in Sec. 10.1(r) of this 
chapter.
    (f) The Office may require additional evidence to determine if the 
correspondence was deposited as ``Express Mail'' with the USPS on the 
date in question.

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

    9. The authority citation for 37 CFR Part 2 continues to read as 
follows:

    Authority: 15 U.S.C. 1123; 35 U.S.C. 6, unless otherwise noted.

    10. Section 2.165(a)(1) is revised to read as follows:


Sec. 2.165  Reconsideration of affidavit or declaration.

    (a)(1) If the affidavit or declaration filed pursuant to Sec. 2.162 
is insufficient or defective, the affidavit or declaration will be 
refused and the registrant will be notified of the reason. 
Reconsideration of the refusal may be requested within six months from 
the date of the mailing of the action. The request for reconsideration 
must state the grounds for the request. A supplemental or substitute 
affidavit or declaration required by section 8 of the Act of 1946 
cannot be considered unless it is filed before the expiration of six 
years from the date of the registration or from the date of publication 
under section 12(c) of the Act.
* * * * *

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

    11. 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).

    12. Section 5.33 is 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

    13. 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.

    14. Section 10.23 is amended by revising paragraph (c)(9) 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 24, 1996.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and 
Trademarks.
[FR Doc. 96-28088 Filed 10-31-96; 8:45 am]
BILLING CODE 3510-16-P