[Federal Register Volume 68, Number 57 (Tuesday, March 25, 2003)]
[Rules and Regulations]
[Pages 14332-14339]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 03-6971]


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

DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Parts 1, 2, 3, 4, 5, 102, 104, and 150

[Docket No.: 2003-P-011]


Correspondence With the United States Patent and Trademark Office

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule; Nomenclature change.

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

SUMMARY: The United States Patent and Trademark Office (Office) is 
revising the rules of practice to change the address for certain 
correspondence with the Office. The Office is preparing to move to 
Alexandria, Virginia. The Office is changing certain correspondence 
addresses so that all correspondence with the Office will now be routed 
through a United States Postal Service (USPS) facility that is more 
conveniently located to the Office. In addition, the Office is also 
changing the titles of Office officials as set forth in the rules of 
practice for consistency with the titles provided in the American 
Inventors Protection Act of 1999.

EFFECTIVE DATE: The changes in this final rule are effective May 1, 
2003.

FOR FURTHER INFORMATION CONTACT: Darnell M. Jayne, Legal Advisor, 
Office of Patent Legal Administration, by telephone at (703) 308-6906, 
or by facsimile at (703) 746-3580.

SUPPLEMENTARY INFORMATION: The Office changed the address for 
trademark-related correspondence in December of 1996. See 
Communications with the Patent and Trademark Office, 61 FR 56439 (Nov. 
1, 1996), 1192 Off. Gaz. Pat. Office 95 (Nov. 26, 1996) (final rule). 
With this change, trademark-related correspondence with the Office was 
routed through a USPS facility in Virginia, and most other 
correspondence with the Office was routed through a USPS facility in 
the District of Columbia. The Office is currently in the process of 
moving its principal office from Arlington, Virginia to Alexandria, 
Virginia. Since a USPS facility in Virginia is more conveniently 
located to the site of the Office's future principal office in 
Alexandria, Virginia, the Office is changing its correspondence 
addresses (other than for trademark-related correspondence) so that all 
correspondence with the Office will now be routed through a USPS 
facility in Virginia. In addition, selection of a USPS facility in 
Virginia as the new correspondence address is appropriate because the 
Office maintains and will continue to maintain its principal office in 
Northern Virginia.
    General Mailing Addresses: The Office's three separate general 
mailing addresses are now as follows: (1) For correspondence processed 
by the organizations reporting to the Commissioner for Patents: 
Commissioner for Patents, PO Box 1450, Alexandria, Virginia 22313-1450; 
(2) For correspondence processed by the organizations reporting to the 
Commissioner for Trademarks or the Trademark Trial and Appeal Board: 
Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 
22202-3513; and (3) For other correspondence (including patent and 
trademark documents sent to the Assignment Division for recordation and 
requests for certified or uncertified copies of patent or trademark 
documents): Director of the United States Patent and Trademark Office, 
PO Box 1450, Alexandria, Virginia 22313-1450.
    The above addresses are the Office's three general mailing 
addresses. The Office has separate mailing addresses for certain 
correspondence: e.g., (1) Certain court-related correspondence (e.g., a 
summons and complaint) being delivered to the Office via the USPS must 
be addressed: General Counsel, United States Patent and Trademark 
Office, PO Box 15667, Arlington, Virginia 22215 (Sec.  104.2); (2) 
correspondence directed to the counsel for the Office of Enrollment and 
Discipline (OED) Director relating to disciplinary proceedings pending 
before an Administrative Law Judge or the Director must be addressed: 
Office of the Solicitor, PO Box 16116, Arlington, Virginia 22215; (3) 
payments of maintenance fees in patents being

[[Page 14333]]

delivered to the Office via the USPS should be addressed: United States 
Patent and Trademark Office, PO Box 371611, Pittsburgh, Pennsylvania 
15250-1611; and (4) a deposit account replenishment being delivered to 
the Office via the USPS should be addressed: Director of the United 
States Patent and Trademark Office, PO Box 70541, Chicago, Illinois 
60673. Persons filing correspondence with the Office should check the 
rules of practice, the Official Gazette, or the Office's Internet Web 
site (http://www.uspto.gov) to determine the appropriate mailing 
address for such correspondence.
    The Office appreciates that it will take some period of time before 
all persons filing correspondence with the Office become accustomed to 
these address changes. The Office plans to arrange for continued 
delivery of correspondence addressed to the Office's former Washington, 
DC 20231 address as a courtesy for a limited period of time. The 
Office, however, has been experiencing delays and other problems with 
correspondence routed through the USPS facility at Brentwood. See 
Processing of, and Requirements for, the Filing of Duplicate 
Applications and Papers in Patent Applications in view of USPS Mail 
Delays, 1254 Off. Gaz. Pat. Office 92 (Jan. 15, 2002). Any 
correspondence addressed to the Office's former Washington, DC 20231 
address that is delivered to the Office will still be subject to the 
delays and other problems associated with correspondence that is routed 
through the USPS facility at Brentwood.
    In November of 2001, the Office also established a Post Office Box 
in Arlington, Virginia (PO Box 2327, Arlington, Virginia 22202) for use 
on an emergency basis, and indicated that it would continue to accept 
patent-related correspondence at this Arlington, Virginia Post Office 
Box and treat such correspondence as if it were addressed as set forth 
in 37 CFR 1.1 for purposes of 37 CFR 1.8 and 1.10 until further notice. 
See Termination of the Suspension of the ``Express Mail'' Service of 
United States Postal Service for mail addressed to ZIP Codes 202xx 
through 205xx, 1254 Off. Gaz. Pat. Office 33 (Jan. 1, 2002). The Office 
is hereby providing notice that persons submitting correspondence to 
the Office should no longer use this Arlington, Virginia Post Office 
Box for any correspondence (including sequence listings in electronic 
format) after May 1, 2003.
    In addition, the Office is changing the various special Box 
designations to corresponding Mail Stop designations (e.g., ``Box 4'' 
will now be ``Mail Stop 4''). Since the address for certain 
correspondence includes a Post Office Box number, the continued use of 
special Box designations in the address might have resulted in 
confusion between the Post Office Box number and the special Box 
designation (especially when the special Box designation is a box 
number).
    Finally, the titles ``Commissioner of Patents and Trademarks,'' 
``Assistant Commissioner for Patents,'' and ``Assistant Commissioner 
for Trademarks'' were changed to ``Under Secretary of Commerce for 
Intellectual Property and Director of the United States Patent and 
Trademark Office,'' ``Commissioner for Patents,'' and ``Commissioner 
for Trademarks,'' respectively, in Sec.  4713 of the American Inventors 
Protection Act of 1999 (AIPA). See Pub. L. 106-113, 113 Stat. 1501, 
1501A-575 through 1501A-577 (1999).
    This final rule also revises the rules of practice (with the 
exception of 37 CFR part 10) to reflect the current titles of Office 
officials as provided for in the AIPA.

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, is amended as follows:
    Part 1: Part 1 is amended to: (1) Change each reference to 
``Commissioner'' to read ``Director''; and (2) change each reference to 
``Commissioner's'' to read ``Director's''.
    Section 1.1 is amended to: (1) Change the address for general 
correspondence to: Director of the United States Patent and Trademark 
Office, PO. Box 1450, Alexandria, Virginia 22313-1450 (with Mail Stop 
designations as appropriate); (2) change the address for patent-related 
correspondence to: Commissioner for Patents, PO. Box 1450, Alexandria, 
Virginia 22313-1450; and (3) add paragraph headings.
    Section 1.1(a) is also amended to: (1) Place the mailing address 
for all Office of Public Records correspondence concerning both patents 
and trademarks (documents to be recorded by Assignment Services 
Division and requests for certified or uncertified copies of patent or 
trademark documents) in a new Sec.  1.1(a)(4); and (2) eliminate the 
reference to the coupon orders as coupon practice was abolished in 
November of 2000 (see Changes to Implement Eighteen-Month Publication 
of Patent Applications, 65 FR 57023, 57030 (Sept. 20, 2000), 1239 Off. 
Gaz. Pat. Office 63, 69 (Oct. 10, 2000) (final rule)).
    Section 1.1(a) is also amended to provide that all correspondence 
in an application involved in an appeal to the Board of Patent Appeals 
and Interferences (Board) during the period from when an appeal 
docketing notice is issued until a decision has been rendered by the 
Board as well as any request for rehearing of a decision by the Board 
should be mailed to: Board of Patent Appeals and Interferences, United 
States Patent and Trademark Office, PO Box 1450, Alexandria, Virginia 
22313-1450. An appeal docketing notice is issued by the Board to notify 
the applicant that an appeal is ready for docketing at the Board. See 
Revised Docketing Procedures for Appeals Arriving at the Board of 
Patent Appeals and Interferences, 1260 Off. Gaz. Pat. Office 18 (July 
2, 2002). Section 1.1(a) is also amended to provide that notices of 
appeal, appeal briefs, reply briefs, requests for oral hearing, as well 
as all other correspondence in an application involved in an appeal to 
the Board not otherwise provided for should be addressed as set out in 
Sec.  1.1(a)(1)(i) (i.e., Commissioner for Patents, PO Box 1450, 
Alexandria, Virginia 22313-1450). Section 1.1(a) is also amended to 
include the provisions formerly located in Sec.  1.1(e) concerning 
patent interference correspondence, namely that except as an 
administrative patent judge or the Board may otherwise direct, all 
correspondence relating to patent interferences, or relating to patent 
applications or patents involved in an interference, should be mailed 
to: Mail Stop INTERFERENCE, Board of Patent Appeals and Interferences, 
United States Patent and Trademark Office, PO Box 1450, Alexandria, 
Virginia 22313-1450.
    Sections 1.1(f) and 1.1(i) are redesignated as Sec. Sec.  1.1(e) 
and 1.19(f), respectively. As discussed above, the provisions of Sec.  
1.1(e) are now located in Sec.  1.1(a)(1)(iii). Section 1.1(g) was 
formerly reserved and Sec.  1.1(h) is now deleted. Section 1.1(h) 
provided that an applicant should use ``Box ITU'' as part of the 
address when an applicant or the applicant's representative submits a 
statement of use under Sec.  2.88, or a request for extension of time 
to file a statement of use under Sec.  2.89. With this change, a 
statement of use and a request for an extension of time to file a 
statement of use will be considered properly filed if addressed to the 
general address for trademark documents in compliance with Sec.  
1.1(a)(2)(i): Commissioner for Trademarks, 2900 Crystal Drive, 
Arlington, Virginia 22202-3513. The Office is eliminating Box ITU 
because the Office's experience has been that the use of that box is 
not helpful in sorting mail.
    Section 1.6(b) is removed and reserved. The USPS no longer 
maintains

[[Page 14334]]

a ``pouch'' for correspondence addressed to the United States Patent 
and Trademark Office, and the USPS does not segregate correspondence 
addressed to the United States Patent and Trademark Office on the basis 
of the date of its receipt by the USPS.
    Section 1.9 is amended to add a paragraph (j) to define Director as 
used in 37 CFR chapter I, except for 37 CFR part 10, as meaning the 
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office. 37 CFR part 10 currently 
defines ``Director'' as meaning the Director of the Office of 
Enrollment and Discipline. The Office plans to propose changes to part 
10 in a separate rule making, and also plans to change the use of 
``Director'' in part 10 for consistency with the remaining provisions 
of 37 CFR chapter I as part of that rule making (at which time the 
phrase ``except for part 10'' will be deleted from Sec.  1.9(j)).
    Section 1.15 is removed and reserved as its provisions have been 
supplanted by the provisions of part 102.
    Section 1.25 is amended by adding a paragraph (c), which specifies 
how a deposit account holder may submit a payment to the Office to 
replenish the deposit account. A payment to replenish a deposit account 
may be submitted by making the payment by electronic funds transfer 
through the Federal Reserve Fedwire System. Deposit account holders who 
want to use the Federal Reserve Fedwire System must provide the 
following information to their bank or financial institution: (1) Name 
of the Bank, which is Treas NYC (Treasury New York City); (2) Bank 
Routing Code, which is 021030004; (3) United States Patent and 
Trademark Office account number with the Department of the Treasury, 
which is 13100001; and (4) the deposit account holder's company name 
and deposit account number. The deposit account holder should inform 
his or her bank or financial institution to use due care to ensure that 
all pertinent account numbers are listed on the transaction because the 
failure to include the proper deposit account number will delay the 
processing of the replenishment. A second method of making a payment to 
replenish a deposit account is by credit card or electronic funds 
transfer over the Office's Internet Web site (www.uspto.gov). 
Specifically, from the Office's Web site homepage (www.uspto.gov), 
click on the ``Online Business'' tab, and then click the ``Revenue 
Accounting & Management'' tab, and then click the ``Maintain USPTO 
Deposit Accounts'' tab. A third method of making a payment to replenish 
a deposit account is by mailing the payment with the USPS to: Director 
of the United States Patent and Trademark Office, PO Box 70541, 
Chicago, Illinois 60673. Finally, a fourth method of making a payment 
to replenish a deposit account is by mailing the payment with a private 
delivery service or hand-carrying the payment to: Director of the 
United States Patent and Trademark Office, Deposit Accounts, One 
Crystal Park, 2011 Crystal Drive, Suite 307, Arlington, Virginia 22202.
    Further information on deposit account replenishment may be 
obtained from the Office's Internet Web site (http://www.uspto.gov/web/offices/ac/comp/fin/electron.htm), or by contacting the Deposit Account 
Division at 703-305-4631.
    Section 1.51(a) is amended to change ``Commissioner of Patents and 
Trademarks'' to ``Director of the United States Patent and Trademark 
Office'' for consistency with the change in nomenclature.
    Sections 1.53(d)(9), 1.417, and 1.434(a) are amended to change 
their special Box designations to corresponding Mail Stop designations.
    Section 1.302(c) is amended to provide that notices of appeal 
directed to the Director shall be mailed to or served by hand on the 
General Counsel as provided in Sec.  104.2.
    Section 1.434(d)(2) is amended to correct a grammatical error.
    Section 1.480(b) is amended to change its special Box designation 
to a corresponding Mail Stop designation. Section 1.480(b) is also 
amended to add a reference to PCT Rule 53 (which provides for Demands 
under the PCT).
    Section 1.627(a) is amended to change the reference to Sec.  1.1(e) 
to a reference to Sec.  1.1(a)(1)(iii) for consistency with the changes 
to Sec.  1.1.
    Section 1.676(d) is amended to change the address to the 
correspondence address set out in Sec.  1.1(a)(1)(iii).
    Section 1.740(a)(13) is amended to change ``Commissioner of Patents 
and Trademarks'' to ``Director of the United States Patent and 
Trademark Office'' for consistency with the change in nomenclature.
    Part 2: Part 2 is amended to change each reference to 
``Commissioner'' to read ``Director''.
    Section 2.123(f)(2) is amended to change ``address the package, and 
forward the same to the Commissioner of Patents and Trademarks' to 
``promptly forward the package to the address set out in Sec.  
1.1(a)(2)(i)''.
    Section 2.145(b)(3) is amended to provide that notices of appeal 
directed to the Director shall be mailed to or served by hand on the 
General Counsel as provided in Sec.  104.2.
    Part 3: Part 3 is amended to change each reference to 
``Commissioner of Patents and Trademarks'' or ``Commissioner'' to read 
``Director''.
    Section 3.27 is amended to change the address to: Mail Stop 
Assignment Recordation Services, Director of the United States Patent 
and Trademark Office, PO Box 1450, Alexandria, Virginia 22313-1450.
    Part 4: Section 4.3(c) is amended to change the address for 
complaints concerning invention promoters to: Mail Stop 24, 
Commissioner for Patents, PO Box 1450, Alexandria, Virginia 22313-1450.
    Section 4.6 is amended to change the address for complaints 
concerning registered patent attorneys or agents to: Mail Stop OED, 
Director of the United States Patent and Trademark Office, PO Box 1450, 
Alexandria, Virginia 22313-1450.
    Part 5: Part 5 is amended to change each reference to 
``Commissioner of Patents and Trademarks'' or ``Commissioner'' to read 
``Commissioner for Patents''. Section 4732(a)(10)(B) of the AIPA 
amended 35 U.S.C. chapter 17 to change ``Commissioner'' to 
``Commissioner of Patents'' (sic) rather than ``Director''. See 113 
Stat. at 1501A-582. Therefore, the Office is amending part 5 to change 
each reference to ``Commissioner of Patents and Trademarks'' or 
``Commissioner'' to read ``Commissioner for Patents'' (rather than 
``Director'') for consistency with section 4732(a)(10)(B) of the AIPA.
    Section 5.1(a) is amended to change the address to: Commissioner 
for Patents (Attention Licensing and Review), PO Box 1450, Alexandria, 
Virginia 22313-1450.
    Part 102: Sections 102.1(b), 102.4(a), 102.10(b), 102.23(a), 
102.24(a), and 102.29(b) are amended to change the address to: United 
States Patent and Trademark Office, PO Box 1450, Alexandria, Virginia 
22313-1450 (with headings as appropriate). Sections 102.1(b), 
102.23(a), and 102.24(a) are also amended to indicate that 
correspondence being delivered by hand should be delivered to Two 
Crystal Park, 2121 Crystal Drive, Suite 905, Arlington, Virginia.
    Part 104: Section 104.1 is amended to define ``Director'' as 
meaning the Under Secretary of Commerce for Intellectual Property and 
Director of the United States Patent and Trademark Office for 
consistency with Sec.  1.9(j).
    Part 150: Part 150 is amended to change each reference to 
``Commissioner'' to read ``Director'.

[[Page 14335]]

    Section 150.1 is amended to define ``Director'' as meaning the 
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office for consistency with 
Sec.  1.9(j).
    Section 150.6 is amended to change the address to: Mail Stop 4, 
Director of the United States Patent and Trademark Office, PO Box 1450, 
Alexandria, Virginia 22313-1450.

Classification

    Administrative Procedure Act: Since this final rule is directed to 
changing the address for filing certain correspondence with the Office 
and changes in the titles of Office officials for consistency with the 
titles as provided in the AIPA, this final rule merely involves rules 
of agency organization, procedure, or practice within the meaning of 5 
U.S.C. 553(b)(A). Accordingly, this final rule may be adopted without 
prior notice and opportunity for public comment under 5 U.S.C. 553(b) 
and (c), or thirty-day advance publication under 5 U.S.C. 553(d).
    Regulatory Flexibility Act: As prior notice and an opportunity for 
public comment are not required pursuant to 5 U.S.C. 553 (or any other 
law), a regulatory flexibility analysis under the Regulatory 
Flexibility Act (5 U.S.C. 601 et seq.) is not required. See 5 U.S.C. 
603.
    Executive Order 13132: This rule making does not contain policies 
with federalism implications sufficient to warrant preparation of a 
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
    Executive Order 12866: This rule making has been determined to be 
not significant for purposes of Executive Order 12866 (Sept. 30, 1993).
    Paperwork Reduction Act: This rule making does not create any 
information collection requirements under the Paperwork Reduction Act 
of 1995 (44 U.S.C. 3501 et seq.).
    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.

List of Subjects

37 CFR Part 1

    Administrative practice and procedure, Courts, Inventions and 
patents, Reporting and record keeping requirements, Small Businesses.

37 CFR Part 2

    Administrative practice and procedure, Courts, Lawyers, Trademarks.

CFR Part 3

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

CFR Part 4

    Administrative practice and procedure, Inventions and patents.

CFR Part 5

    Classified information, Foreign relations, Inventions and patents.

CFR Part 102

    Administrative practice and procedure, Freedom of information, 
Privacy, Public information.

CFR Part 104

    Administrative practice and procedure, Claims, Courts, Freedom of 
information, Inventions and patents, Tort claims, Trademarks.

CFR Part 150

    Administrative practice and procedure, Authority delegations, 
Semiconductor chips, Mask works.


    For the reasons set forth in the preamble, 37 CFR parts 1, 2, 3, 4, 
5, 102, 104, and 150 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. 2(b)(2).

    2. In 37 CFR part 1, except for Sec.  1.23, revise all references 
to ``Commissioner'' to read ``Director''.

    3. In 37 CFR part 1, revise all references to ``Commissioner's'' to 
read ``Director's''.

    4. Section 1.1 is revised to read as follows:


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

    (a) In general. Except as provided in paragraphs (a)(3)(i), 
(a)(3)(ii) and (d)(1) of this section, all correspondence intended for 
the United States Patent and Trademark Office must be addressed to 
either ``Director of the United States Patent and Trademark Office, PO 
Box 1450, Alexandria, Virginia 22313-1450'' or to specific areas within 
the Office as set out in paragraphs (a)(1), (a)(2) and (a)(3)(iii) of 
this section. When appropriate, correspondence should also be marked 
for the attention of a particular office or individual.
    (1) Patent correspondence. (i) In general. All correspondence 
concerning patent matters processed by organizations reporting to the 
Commissioner for Patents should be addressed to: Commissioner for 
Patents, PO Box 1450, Alexandria, Virginia 22313-1450.
    (ii) Board of Patent Appeals and Interferences: Appeals. All 
correspondence in an application involved in an appeal to the Board of 
Patent Appeals and Interferences during the period beginning when an 
appeal docketing notice is issued and ending when a decision has been 
rendered by the Board of Patent Appeals and Interferences, as well as 
any request for rehearing of a decision by the Board of Patent Appeals 
and Interferences, should be mailed to: Board of Patent Appeals and 
Interferences, United States Patent and Trademark Office, PO Box 1450, 
Alexandria, Virginia 22313-1450. Notices of appeal, appeal briefs, 
reply briefs, requests for oral hearing, as well as all other 
correspondence in an application involved in an appeal to the Board of 
Patent Appeals and Interferences for which an address is not otherwise 
specified, should be addressed as set out in paragraph (a)(1)(i) of 
this section.
    (iii) Board of Patent Appeals and Interferences: Interferences. 
Except as an administrative patent judge or the Board may otherwise 
direct, all correspondence relating to patent interferences, or 
relating to patent applications or patents involved in an interference, 
should be mailed to: Mail Stop INTERFERENCE, Board of Patent Appeals 
and Interferences, United States Patent and Trademark Office, PO Box 
1450, Alexandria, Virginia 22313-1450.
    (2) Trademark correspondence.--(i) In general. All trademark-
related documents filed on paper, except documents sent to the 
Assignment Services Division for recordation and requests for copies of 
trademark documents, should be addressed to: Commissioner for 
Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513.
    (ii) Electronic applications. An applicant may transmit an 
application for trademark registration electronically, but only if the 
applicant uses the Office's electronic form.
    (3) Office of General Counsel correspondence.--(i) Litigation and 
service. Correspondence relating to pending litigation or otherwise 
within the scope of part 104 of this title shall be addressed as 
provided in Sec.  104.2.

[[Page 14336]]

    (ii) Disciplinary proceedings. Correspondence to counsel for the 
Director of the Office of Enrollment and Discipline relating to 
disciplinary proceedings pending before an Administrative Law Judge or 
the Director shall be mailed to: Office of the Solicitor, PO Box 16116, 
Arlington, Virginia 22215.
    (iii) Solicitor, in general. Correspondence to the Office of the 
Solicitor not otherwise provided for shall be addressed to: Mail Stop 
8, Director of the United States Patent and Trademark Office, PO Box 
1450, Alexandria, Virginia 22313-1450.
    (iv) General Counsel. Correspondence to the Office of the General 
Counsel not otherwise provided for, including correspondence to the 
General Counsel relating to disciplinary proceedings, shall be 
addressed to: General Counsel, United States Patent and Trademark 
Office, PO Box 1450, Alexandria, Virginia 22313-1450.
    (v) Improper correspondence. Correspondence improperly addressed to 
a Post Office Box specified in paragraphs (a)(3)(i) and(a)(3)(ii) of 
this section will not be filed elsewhere in the United States Patent 
and Trademark Office, and may be returned.
    (4) Office of Public Records correspondence.--(i) Assignments. All 
patent-related or trademark-related documents to be recorded by 
Assignment Services Division, except for documents filed together with 
a new application or under Sec.  3.81 of this chapter, should be 
addressed to: Mail Stop Assignment Recordation Services, Director of 
the United States Patent and Trademark Office, PO Box 1450, Alexandria, 
Virginia 22313-1450. See Sec.  3.27.
    (ii) Documents. All requests for certified or uncertified copies of 
patent or trademark documents should be addressed to: Mail Stop 
Document Services, Director of the United States Patent and Trademark 
Office, PO Box 1450, Alexandria, Virginia 22313-1450.
    (b) Patent Cooperation Treaty. Letters and other communications 
relating to international applications during the international stage 
and prior to the assignment of a national serial number should be 
additionally marked ``Mail Stop PCT.''
    (c) Reexamination. Requests for reexamination should be 
additionally marked ``Mail Stop Reexam.''
    (d) Maintenance fee correspondence.--(1) Payments. Payments of 
maintenance fees in patents not submitted electronically should be 
mailed to: United States Patent and Trademark Office, P.O. Box 371611, 
Pittsburgh, Pennsylvania 15250-1611.
    (2) Other correspondence. Correspondence related to maintenance 
fees other than payments of maintenance fees in patents is not to be 
mailed to P.O. Box 371611, Pittsburgh, Pennsylvania 15250-1611, but 
must be mailed to: Mail Stop M Correspondence, Director of the United 
States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 
22313-1450.
    (e) Patent term extension. All applications for extension of patent 
term under 35 U.S.C. 156 and any communications relating thereto 
intended for the United States Patent and Trademark Office should be 
additionally marked ``Mail Stop Patent Ext.'' When appropriate, the 
communication should also be marked to the attention of a particular 
individual, as where a decision has been rendered.
    (f) Provisional applications. The filing of all provisional 
applications and any communications relating thereto should be 
additionally marked ``Mail Stop Provisional Patent Application.''

    Note: Sections 1.1 to 1.26 are applicable to trademark cases as 
well as to national and international patent cases except for 
provisions specifically directed to patent cases. See Sec.  1.9 for 
definitions of ``national application'' and ``international 
application.''


    5. Section 1.6 is amended by removing and reserving paragraph (b).


Sec.  1.6  Receipt of correspondence.

* * * * *
    (b) [Reserved]
* * * * *

    6. Section 1.9 is amended by adding a new paragraph (j) to read as 
follows:


Sec.  1.9  Definitions.

* * * * *
    (j) Director as used in this chapter, except for part 10 of this 
section, means the Under Secretary of Commerce for Intellectual 
Property and Director of the United States Patent and Trademark Office.


Sec.  1.15  [Removed and Reserved]

    7. Section 1.15 is removed and reserved.
    8. Section 1.25 is amended by adding paragraph (c) to read as 
follows:


Sec.  1.25  Deposit accounts.

* * * * *
    (c) A deposit account holder may replenish the deposit account by 
submitting a payment to the United States Patent and Trademark Office. 
A payment to replenish a deposit account must be submitted by one of 
the methods set forth in paragraphs (c)(1), (c)(2), (c)(3), or (c)(4) 
of this section.
    (1) A payment to replenish a deposit account may be submitted by 
electronic funds transfer through the Federal Reserve Fedwire System, 
which requires that the following information be provided to the 
deposit account holder's bank or financial institution:
    (i) Name of the Bank, which is Treas NYC (Treasury New York City);
    (ii) Bank Routing Code, which is 021030004;
    (iii) United States Patent and Trademark Office account number with 
the Department of the Treasury, which is 13100001; and
    (iv) The deposit account holder's company name and deposit account 
number.
    (2) A payment to replenish a deposit account may be submitted by 
credit card or electronic funds transfer over the Office's Internet Web 
site (www.uspto.gov).
    (3) A payment to replenish a deposit account may be submitted by 
mail with the USPS to: Director of the United States Patent and 
Trademark Office, P.O. Box 70541, Chicago, Illinois 60673.
    (4) A payment to replenish a deposit account may be submitted by 
mail with a private delivery service or hand-carrying the payment to: 
Director of the United States Patent and Trademark Office, Deposit 
Accounts, One Crystal Park, 2011 Crystal Drive, Suite 307, Arlington, 
Virginia 22202.

    9. Section 1.51 is amended by revising paragraph (a) to read as 
follows:


Sec.  1.51  General requisites of an application.

    (a) Applications for patents must be made to the Director of the 
United States Patent and Trademark Office.
* * * * *

    10. Section 1.53 is amended by revising paragraph (d)(9) to read as 
follows:


Sec.  1.53  Application number, filing date, and completion of 
application.

* * * * *
    (d) * * *
    (9) Envelopes containing only requests and fees for filing an 
application under this paragraph should be marked ``Mail Stop CPA.'' 
Requests for an application under this paragraph filed by facsimile 
transmission should be clearly marked ``Mail Stop CPA.''
* * * * *

    11. The undesignated center heading in Subpart B immediately before 
Sec.  1.181 is revised to read as follows:

Petitions and Action by the Director

    12. Section 1.302 is amended by revising paragraph (c) to read as 
follows:

[[Page 14337]]

Sec.  1.302  Notice of appeal.

* * * * *
    (c) Notices of appeal directed to the Director shall be mailed to 
or served by hand on the General Counsel as provided in Sec.  104.2.

    13. Section 1.417 is revised to read as follows:


Sec.  1.417  Submission of translation of international publication.

    The submission of the international publication or an English 
language translation of an international application pursuant to 35 
U.S.C. 154(d)(4) must clearly identify the international application to 
which it pertains (Sec.  1.5(a)) and, unless it is being submitted 
pursuant to Sec.  1.495, be clearly identified as a submission pursuant 
to 35 U.S.C. 154(d)(4). Otherwise, the submission will be treated as a 
filing under 35 U.S.C. 111(a). Such submissions should be marked ``Mail 
Stop PCT.''

    14. Section 1.434 is amended by revising paragraphs (a) and (d)(2) 
to read as follows:


Sec.  1.434  The request.

    (a) The request shall be made on a standardized form (PCT Rules 3 
and 4). Copies of printed Request forms are available from the United 
States Patent and Trademark Office. Letters requesting printed forms 
should be marked ``Mail Stop PCT.''
* * * * *
    (d) * * *
    (2) Shall include a reference to any prior-filed national 
application or international application designating the United States 
of America, if the benefit of the filing date for the prior-filed 
application is to be claimed; and
* * * * *

    15. Section 1.480 is amended by revising paragraph (b) to read as 
follows:


Sec.  1.480  Demand for international preliminary examination.

* * * * *
    (b) The Demand shall be made on a standardized form (PCT Rule 53). 
Copies of the printed Demand forms are available from the United States 
Patent and Trademark Office. Letters requesting printed Demand forms 
should be marked ``Mail Stop PCT.''
* * * * *

    16. Section 1.627 is amended by revising paragraph (a) to read as 
follows:


Sec.  1.627  Preliminary statement, sealing before filing, opening of 
statement.

    (a) The preliminary statement and copies of any drawing or written 
description shall be filed in a sealed envelope bearing only the name 
of the party filing the statement and the style (e.g., Jones v. Smith) 
and number of the interference. The sealed envelope should contain only 
the preliminary statement and copies of any drawing or written 
description. If the preliminary statement is filed through the mail, 
the sealed envelope should be enclosed in an outer envelope addressed 
in accordance with Sec.  1.1(a)(1)(iii).
* * * * *

    17. Section 1.676 is amended by revising the introductory text of 
paragraph (d) to read as follows:


Sec.  1.676  Certification and filing by officer, marking exhibits.

* * * * *
    (d) Unless the parties agree otherwise in writing or on the record 
at the deposition, the officer shall securely seal the certified 
transcript in an envelope endorsed with the style of the interference 
(e.g., Smith v. Jones), the interference number, the name of the 
witness, and the date of sealing and shall promptly forward the 
envelope to the address set out in Sec.  1.1(a)(1)(iii). Documents and 
things produced for inspection during the examination of a witness, 
shall, upon request of a party, be marked for identification and 
annexed to the certified transcript, and may be inspected and copied by 
any party, except that if the person producing the documents and things 
desires to retain them, the person may:
* * * * *

    18. Section 1.740 is amended by revising paragraph (a)(13) to read 
as follows:


Sec.  1.740  Formal requirements for application for extension of 
patent term; correction of informalities.

    (a) * * *
    (13) A statement that applicant acknowledges a duty to disclose to 
the Director of the United States Patent and Trademark Office and the 
Secretary of Health and Human Services or the Secretary of Agriculture 
any information which is material to the determination of entitlement 
to the extension sought (see Sec.  1.765);
* * * * *

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

    19. The authority citation for 37 CFR part 2 is revised to read as 
follows:

    Authority: 15 U.S.C. 1123; 35 U.S.C. 2(b)(2).


    20. In 37 CFR part 2, revise all references to ``Commissioner'' to 
read ``Director'.

    21. Section 2.123 is amended by revising paragraph (f)(2) to read 
as follows:


2.123  Trial testimony in inter partes cases.

* * * * *
    (f) * * *
    (2) If any of the foregoing requirements in paragraph (f)(1) of 
this section are waived, the certificate shall so state. The officer 
shall sign the certificate and affix thereto his seal of office, if he 
has such a seal. Unless waived on the record by an agreement, he shall 
then securely seal in an envelope all the evidence, notices, and paper 
exhibits, inscribe upon the envelope a certificate giving the number 
and title of the case, the name of each witness, and the date of 
sealing. The officer or the party taking the deposition, or its 
attorney or other authorized representative, shall then promptly 
forward the package to the address set out in Sec.  1.1(a)(2)(i). If 
the weight or bulk of an exhibit shall exclude it from the envelope, it 
shall, unless waived on the record by agreement of all parties, be 
authenticated by the officer and transmitted by the officer or the 
party taking the deposition, or its attorney or other authorized 
representative, in a separate package marked and addressed as provided 
in this section.
* * * * *

    22. Section 2.145 is amended by revising paragraph (b)(3) to read 
as follows:


Sec.  2.145  Appeal to court and civil action.

* * * * *
    (b) * * *
    (3) Notices of appeal directed to the Director shall be mailed to 
or served by hand on the General Counsel as provided in Sec.  104.2.
* * * * *

    23. The undesignated center heading immediately before Sec.  2.146 
is revised to read as follows:

Petitions and Action by the Director

PART 3--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE

    24. The authority citation for 37 CFR part 3 continues to read as 
follows:

    Authority: 15 U.S.C. 1123; 35 U.S.C. 2(b)(2).


    25. In 37 CFR part 3, revise all references to ``Commissioner'' or 
``Commissioner of Patents and Trademarks'' to read ``Director''.

    26. Section 3.27 is revised to read as follows:

[[Page 14338]]

Sec.  3.27  Mailing address for submitting documents to be recorded.

    Documents and cover sheets to be recorded should be addressed to 
Mail Stop Assignment Recordation Services, Director of the United 
States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 
22313-1450, unless they are filed together with new applications or 
with a request under Sec.  3.81.

PART 4--COMPLAINTS REGARDING INVENTION PROMOTERS

    27. The authority citation for 37 CFR part 4 is revised to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2) and 297.


    28. Section 4.3 is amended by revising paragraph (c) to read as 
follows:


Sec.  4.3  Submitting Complaints.

* * * * *
    (c) The complaint should fairly summarize the action of the 
invention promoter about which the person complains. Additionally, the 
complaint should include names and addresses of persons believed to be 
associated with the invention promoter. Complaints, and any replies, 
must be addressed to: Mail Stop 24, Commissioner for Patents, P.O. Box 
1450, Alexandria, Virginia 22313-1450.
* * * * *

    29. Section 4.6 is revised to read as follows:


Sec.  4.6  Attorneys and Agents.

    Complaints against registered patent attorneys and agents will not 
be treated under this section, unless a complaint fairly demonstrates 
that invention promotion services are involved. Persons having 
complaints about registered patent attorneys or agents should contact 
the Office of Enrollment and Discipline at Mail Stop OED, Director of 
the United States Patent and Trademark Office, PO Box 1450, Alexandria, 
Virginia 22313-1450, and the attorney discipline section of the 
attorney's state licensing bar if an attorney is involved.

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

    30. The authority citation for 37 CFR Part 5 is revised to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2), 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.; 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 Director (15 CFR 370.10(j), 22 CFR 125.04, and 10 CFR 
810.7).


    31. In 37 CFR part 5, revise all references to ``Commissioner'' or 
``Commissioner of Patents and Trademarks'' to read ``Commissioner for 
Patents'.
    32. Section 5.1 is amended by revising paragraph (a) to read as 
follows:


Sec.  5.1  Applications and correspondence involving national security.

    (a) All correspondence in connection with this part, including 
petitions, should be addressed to: Commissioner for Patents (Attention 
Licensing and Review), P.O. Box 1450, Alexandria, Virginia 22313-1450.
* * * * *

PART 102--DISCLOSURE OF GOVERNMENT INFORMATION

    33. The authority citation for 37 CFR part 102 continues to read as 
follows:

    Authority: 5 U.S.C. 552; 5 U.S.C. 552a; 5 U.S.C. 553; 31 U.S.C. 
3717; 35 U.S.C. 2(b)(2), 21, 41, 42, 122; 44 U.S.C. 3101.


    34. Section 102.1 is amended by revising paragraph (b) to read as 
follows:


Sec.  102.1  General.

* * * * *
    (b) As used in this subpart, FOIA Officer means the USPTO employee 
designated to administer FOIA for USPTO. To ensure prompt processing of 
a request, correspondence should be addressed to the FOIA Officer, 
United States Patent and Trademark Office, PO Box 1450, Alexandria, 
Virginia 22313-1450, or delivered by hand to Two Crystal Park, 2121 
Crystal Drive, Suite 905, Arlington, Virginia.

    35. Section 102.4 is amended by revising paragraph (a) to read as 
follows:


Sec.  102.4  Requirements for making requests.

    (a) A request for USPTO records that are not customarily made 
available to the public as part of USPTO's regular informational 
services must be in writing, and shall be processed under FOIA, 
regardless of whether FOIA is mentioned in the request. Requests should 
be sent to the USPTO FOIA Officer, United States Patent and Trademark 
Office, P.O. Box 1450, Alexandria, Virginia 22313-1450 (records FOIA 
requires to be made regularly available for public inspection and 
copying are addressed in Sec.  102.2(c)). For the quickest handling, 
the request letter and envelope should be marked ``Freedom of 
Information Act Request.'' For requests for records about oneself, 
Sec.  102.24 contains additional requirements. For requests for records 
about another individual, either a written authorization signed by that 
individual permitting disclosure of those records to the requester or 
proof that individual is deceased (for example, a copy of a death 
certificate or an obituary) facilitates processing the request.
* * * * *

    36. Section 102.10 is amended by revising paragraph (b) to read as 
follows:


Sec.  102.10  Appeals from initial determinations or untimely delays.

* * * * *
    (b) Appeals shall be decided by a Deputy General Counsel. Appeals 
should be addressed to the General Counsel, United States Patent and 
Trademark Office, PO Box 1450, Alexandria, Virginia 22313-1450. Both 
the letter and the appeal envelope should be clearly marked ``Freedom 
of Information Appeal''. The appeal must include a copy of the original 
request and the initial denial, if any, and may include a statement of 
the reasons why the records requested should be made available and why 
the initial denial, if any, was in error. No opportunity for personal 
appearance, oral argument or hearing on appeal is provided.
* * * * *

    37. Section 102.23 is amended by revising paragraph (a) to read as 
follows:


Sec.  102.23  Procedures for making inquiries.

    (a) Any individual, regardless of age, who is a citizen of the 
United States or an alien lawfully admitted for permanent residence 
into the United States may submit an inquiry to USPTO. The inquiry 
should be made either in person at Two Crystal Park, 2121 Crystal 
Drive, Suite 905, Arlington, Virginia, or by mail addressed to the 
Privacy Officer, United States Patent and Trademark Office, PO Box 
1450, Alexandria, Virginia 22313-1450, or to the official identified in 
the notification procedures paragraph of the systems of records notice 
published in the Federal Register. If an individual believes USPTO 
maintains a record pertaining to that individual but does not know 
which system of records might contain such a record, the USPTO Privacy 
Officer will provide assistance in person or by mail.
* * * * *

    38. Section 102.24 is amended by revising paragraph (a) to read as 
follows:

[[Page 14339]]

Sec.  102.24  Procedures for making requests for records.

    (a) Any individual, regardless of age, who is a citizen of the 
United States or an alien lawfully admitted for permanent residence 
into the United States may submit a request for access to records to 
USPTO. The request should be made either in person at Two Crystal Park, 
2121 Crystal Drive, Suite 905, Arlington, Virginia, or by mail 
addressed to the Privacy Officer, United States Patent and Trademark 
Office, PO Box 1450, Alexandria, Virginia 22313-1450.
* * * * *

    39. Section 102.29 is amended by revising paragraph (b) to read as 
follows:


Sec.  102.29  Appeal of initial adverse determination on correction or 
amendment.

* * * * *
    (b) An appeal should be addressed to the General Counsel, United 
States Patent and Trademark Office, PO Box 1450, Alexandria, Virginia 
22313-1450. An appeal should include the words ``PRIVACY APPEAL'' in 
capital letters at the top of the letter and on the face of the 
envelope. An appeal not addressed and marked as provided herein will be 
so marked by USPTO personnel when it is so identified and will be 
forwarded immediately to the General Counsel. An appeal which is not 
properly addressed by the individual will not be deemed to have been 
``received'' for purposes of measuring the time periods in this section 
until actual receipt by the General Counsel. In each instance when an 
appeal so forwarded is received, the General Counsel shall notify the 
individual that his or her appeal was improperly addressed and the date 
when the appeal was received at the proper address.
* * * * *

PART 104--LEGAL PROCESSES

    40. The authority citation for 37 CFR part 104 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2), 10, 23, 25; 44 U.S.C. 3101.


    41. Section 104.1 is amended by revising the second sentence to 
read as follows:


Sec.  104.1  Definitions.

* * * * *
    Director means the Under Secretary of Commerce for Intellectual 
Property and Director of the United States Patent and Trademark Office 
(see Sec.  1.9(j)).
* * * * *

PART 150--REQUESTS FOR PRESIDENTIAL PROCLAMATIONS PURSUANT TO 17 
U.S.C. 902(a)(2)

    42. The authority citation for 37 CFR part 150 is revised to read 
as follows:

    Authority: 35 U.S.C. 2(b)(2); E.O. 12504, 50 FR 4849; 3 CFR, 
1985 Comp., p. 335.


    43. In 37 CFR part 150, revise all references to ``Commissioner'' 
to read ``Director''.

    44. Section 150.1 is amended by revising paragraph (a) to read as 
follows:


Sec.  150.1  Definitions.

    (a) Director means the Under Secretary of Commerce for Intellectual 
Property and Director of the United States Patent and Trademark Office 
(see Sec.  1.9(j)).
* * * * *

    45. Section 150.6 is revised to read as follows:


Sec.  150.6  Mailing address.

    Requests and all correspondence pursuant to these guidelines shall 
be addressed to: Mail Stop 4, Director of the United States Patent and 
Trademark Office, PO Box 1450, Alexandria, Virginia 22313-1450.

    Dated: March 19, 2003.
James E. Rogan,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 03-6971 Filed 3-24-03; 8:45 am]
BILLING CODE 3510-16-P