[Federal Register Volume 68, Number 124 (Friday, June 27, 2003)]
[Proposed Rules]
[Pages 38258-38266]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 03-16262]


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

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1 and 3

[Docket No.: 2003-P-019]
RIN 0651-AB63


Clarification of Power of Attorney Practice, and Revisions to 
Assignment Rules

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rule making.

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

SUMMARY: The United States Patent and Trademark Office (Office) is 
proposing changes to the rules of practice to allow for more efficient 
processing of powers of attorney and assignment documents within the 
Office. For example, the Office proposes to require applicants to use 
the Office's Customer Number practice if a power of attorney is to be 
given to more than ten registered patent practitioners. In addition, 
the Office proposes to discontinue the current Office practice of 
returning patent and trademark assignment documents submitted by mail 
for recording in the assignment database, and to dispose of the 
documents according to a record retention schedule after scanning.

DATES: To be ensured of consideration, written comments must be 
received on or before August 26, 2003. No public hearing will be held.

ADDRESSES: Comments should be sent by electronic mail over the Internet 
addressed to: [email protected]. Comments may also be submitted 
by mail addressed to: Mail Stop Comments--Patents, Commissioner for 
Patents, P.O. Box 1450, Alexandria, VA 22313-1450; or by facsimile to 
(703) 872-9411, marked to the attention of Karin Ferriter. Although 
comments may be submitted by mail or facsimile, the Office prefers to 
receive comments via the Internet. If comments are submitted by mail, 
the Office would prefer that the comments be submitted on a DOS 
formatted 3\1/2\-inch disk accompanied by a paper copy.
    The comments will be available for public inspection at the Office 
of Patent Legal Administration, Office of the Deputy Commissioner for 
Patent Examination Policy, located at Room 3D65 of Crystal Plaza 3/4, 
2201 South Clark Place, Arlington, Virginia, and will be available 
through anonymous file transfer protocol (ftp) via the Internet 
(address: http://www.uspto.gov). Since comments will be made available 
for public inspection, information that is not desired to be made 
public, such as an address or phone number, should not be included in 
the comments.

FOR FURTHER INFORMATION CONTACT: Karin Ferriter ((703) 306-3159) 
(Office of the Deputy Commissioner for Patent Examination Policy, Mary 
Hannon ((703) 308-8910, ext. 137) (Office of the Commissioner for 
Trademarks), or Robert J. Spar ((703) 308-5107) (Office of the Deputy 
Commissioner for Patent Examination Policy), directly by phone, or by 
facsimile to (703) 872-9411, or by mail addressed to: Mail Stop 
Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, 
VA 22313-1450.

SUPPLEMENTARY INFORMATION: The rules pertaining to access to assignment 
documents and other records related to assignments are proposed to be 
clarified. In addition, the rules pertaining to power of attorney are 
proposed to be revised to reflect Customer Number practice, a practice 
wherein an applicant or an assignee of the entire interest in an 
application can give power of attorney to a list of registered patent 
practitioners associated with a Customer Number. See Manual of Patent 
Examining Procedure (8th ed. 2001) (Rev. 1, Feb. 2003) (MPEP), Section 
403 for a description of Customer Number practice. The rules are also 
proposed to be revised to explain the requirements of a power of 
attorney and to limit the number of attorneys who may be given a power 
of attorney without using Customer Number practice. Furthermore, the 
rules are proposed to be amended to discontinue the ``associate'' power 
of attorney practice, to clarify the procedures related to revocation 
of power of attorney, and to clarify how a registered practitioner may 
sign a document in a representative capacity.
    Documents affecting the title to a patent or trademark property 
(e.g., assignments, or security interests) are currently recorded in 
the Office's assignment database, upon submission of the document with 
the appropriate cover sheet and the fee required by 35 U.S.C. 41(d)(1). 
In addition, Government Interests are recorded, upon submission of the 
document, as required by Executive Order 9234 of February 18, 1944 (9 
FR 1959, 3 CFR 1943-1948 Comp., p. 303). Since 1995, assignment 
documents have been recorded in the Office's Assignment database 
without stamping or otherwise marking the document that was submitted 
for recordation. The automated system that receives documents for 
recordation assigns the reel and frame number to the document and 
places the recordation stampings on the images that are stored in the 
automated system.
    Currently, the Office returns an assignment document only if it was 
mailed to the Office. The Office does not return assignment documents 
that are submitted by facsimile or electronically. When the Office 
returns the document submitted by mail for recordation, the document 
that is returned is exactly the same as the document that was 
submitted, except that assignment documents submitted with an 
application may also contain a bar code for the application number and 
a mail room date stamp. The Office does not stamp or otherwise indicate 
the reel and frame number on the actual document that is submitted for 
recordation. See Facsimile Submission of Assignment Documents is Now 
Available to PTO Customers posted on the Office's Internet Web site at: 
http://www.uspto.gov/web/offices/ac/ido/opr/ptasfax.pdf (Jan. 5, 2000), 
and Update on Facsimile Submission of Assignment Documents to the 
USPTO, 1237 Off. Gaz. Pat. Office 81 (Aug. 15, 2000). The Office's 
electronic filing system for patent applications is discussed at Legal 
Framework for the Use of the Electronic Filing System, 1263 Off. Gaz. 
Pat. Office 60, 61 (Oct. 8, 2002).
    As part of an effort to transform the Office into a quality-
focused, highly productive, responsive organization supporting a 
market-driven intellectual property system, the Office is migrating to 
electronic files from paper files. See Changes To Implement Electronic 
Maintenance of Official Patent Application Record, 68 FR 14365 (Mar. 
25, 2003), 1269 Off. Gaz. Pat. Office 166 (Apr. 22, 2003) (proposed 
rule). As part

[[Page 38259]]

of this migration, all papers received in the Office on paper will be 
scanned and transmitted electronically within the Office. With this new 
procedure, the Office will be unable to forward some paper copies of 
documents to one part of the Office (e.g., assignments to Assignment 
Services Division) and otherwise store other papers (e.g., retain the 
paper copies of amendments according to the retention schedule). All 
documents will need to be processed in the same manner; as a result, 
the Office cannot accept 8\1/2\ by 14-inch paper for assignment 
documents but only 8\1/2\ by 11-inch paper for all other 
correspondence.
    Currently, an assignment document cannot be faxed to the Office 
unless the patent application number or patent number, trademark serial 
number or trademark registration number is provided. As a result, on 
filing a patent application, applicants routinely include a copy of an 
assignment with the original application papers. Under the proposed new 
practice, applicants may continue to file a copy of the assignment 
document with the application papers, but should not anticipate a 
return of the submitted copy of the assignment document; only a Notice 
of Recordation will be transmitted to the party requesting recordation 
by the Office. To assist applicants in matching the Notice of 
Recordation transmitted by the Office with applications known to have 
been filed on a certain day, the Notice of Recordation will be revised 
to indicate the title of invention.

Discussion of Specific Rules

    Section 1.1: The Office proposes to revise Sec.  1.1(a)(4) to 
delete ``or under Sec.  3.81 of this chapter.'' Under the proposed 
rule, the Office will no longer permit the submission of an assignment 
document together with the issue fee payment or a request to issue a 
patent to an assignee. Instead, the assignment documents (with cover 
sheets) should be faxed to (703) 306-5995, submitted through one of the 
electronic filing systems, or submitted in a separate envelope and be 
sent to Mail Stop Assignment Recordation Services, Director of the 
United States Patent and Trademark Office, PO Box 1450, Alexandria, VA 
22313-1450. This will permit the assignment document to be recorded 
more quickly as it will be directly routed to the appropriate area of 
the Office for recording.
    Section 1.12: The Office proposes to amend Sec.  1.12(b) to replace 
``has not been published under 35 U.S.C. 122(b) are not available to 
the public'' with ``is open to the public pursuant to Sec.  1.11 or for 
which copies or access may be supplied pursuant to Sec.  1.14 are 
available to the public'' in order to clarify the assignment records 
that are available to the public. Paragraph (b) of Sec.  1.12 is 
further proposed to be amended to provide that copies of any such 
assignment records and related information that are not available to 
the public shall be obtainable only upon written authority of the 
applicant or applicant's assignee, patent attorney, or patent agent or 
upon a showing that the person seeking such information is a bona fide 
prospective or actual purchaser, mortgagee, or licensee of such 
application, unless it shall be necessary to the proper conduct of 
business before the Office or as provided in part 1.
    As proposed to be revised, Sec.  1.12(b) more clearly provides, for 
example, for an application that is relied upon under 35 U.S.C. 120 in 
an application that has issued as a patent, any assignment records 
relating to the parent application could be considered to relate to the 
patent. Without the amendment to Sec.  1.12(b), the rule suggests that 
the assignment records for the parent application are not available to 
the public. This was not the intended construction, and it is 
inconsistent with MPEP Sec.  301.01. Under proposed Sec.  1.12(b), the 
assignment records for the parent application of a patent, or an 
application that has published under 35 U.S.C. 122(b), would be open to 
public inspection.
    Section 1.31: The Office proposes to revise the title to refer to 
``registered patent attorney or patent agent'' and to revise Sec.  1.31 
to introduce the term ``power of attorney.''
    Section 1.32: The Office proposes a new Sec.  1.32 to define 
``power of attorney'' and ``Customer Number,'' among other things, and 
to set forth the requirements for a power of attorney. ``Power of 
attorney'' is defined in paragraph (a)(1) of Sec.  1.32 as a written 
document by which a principal designates an agent to act on his or her 
behalf. A power of attorney includes an authorization of an agent. 
``Principal'' is defined in paragraph (a)(2) of Sec.  1.32 as either 
the applicant for patent (Sec.  1.41(b)) or the assignee of the entire 
interest, and the entity who executes a power of attorney designating 
one or more agents to act on his or her behalf. ``Revocation'' is 
defined in paragraph (a)(3) of Sec.  1.32 as the cancellation by a 
principal of the authority previously given by the principal to an 
agent. ``Customer Number'' is defined in paragraph (a)(4) of Sec.  1.32 
to be a number that may be used to: (i) Designate the correspondence 
address of a patent application such that the correspondence address 
for the patent application would be the address associated with the 
Customer Number; (ii) designate the fee address (37 CFR 1.363) of a 
patent by a Customer Number such that the fee address for the patent 
would be the address associated with the Customer Number; and (iii) 
specify, in a power of attorney, that each of the practitioners 
associated with a Customer Number have a power of attorney.
    Paragraph (b) of proposed Sec.  1.32 sets forth the requirements 
for a power of attorney, other than a power of attorney in an 
international application (see Sec.  1.455 for the power of attorney in 
an international application and note that Customer Number practice 
cannot be used in an international application). To be valid, the power 
of attorney, in an application other than an international application, 
must: (1) Be in writing; (2) name as agent either: (i) One or more 
joint inventor (see Sec.  1.45), (ii) up to ten registered patent 
attorneys, registered patent agents, or other individuals authorized to 
practice before the United States Patent and Trademark Office in patent 
cases (see Sec.  10.6 and Sec.  10.9(a) and (b) of this subchapter), or 
(iii) those registered patent practitioners associated with a Customer 
Number; (3) give the agent power to act on behalf of the principal; and 
(4) be executed by the principal.
    The new Sec.  1.32 is proposed to set a limit on the number of 
patent practitioners who can be given a power of attorney without using 
Customer Number practice because it is extremely burdensome for the 
Office to manually enter a long list of patent practitioners, 
particularly where the same list of patent practitioners is to be 
entered for a large number of applications. Applicants desiring to 
appoint a large number of patent practitioners may continue to do so, 
but to appoint more than ten, use of Customer Number practice will be 
required. If a power of attorney is submitted listing more than ten 
patent practitioners, and the rules are revised as proposed, no patent 
practitioners will be entered into the Office's computer systems 
because the power of attorney would not comply with the rules. 
Furthermore, the power of attorney would not be ``partially accepted'' 
so as to only accept, for example, the first ten patent practitioners. 
This policy is consistent with the Office practice of not entering just 
a part of a paper that complies with the rules. As a result, if the 
power of attorney lists more than ten patent practitioners and does not 
give power of attorney to a Customer Number, then

[[Page 38260]]

applicant will be sent a notice to either submit a power of attorney 
with ten or fewer patent practitioners or to use Customer Number 
practice. For example, if more than ten patent practitioners have been 
named in a combined declaration and power of attorney (e.g., from an 
earlier filed application (see Sec.  1.63(d)(1)(iv))), then the Office 
of Initial Patent Examination will mail a notice requiring a new power 
of attorney. If the application has been assigned, the new power of 
attorney should be signed by the assignee of the entire interest.
    Although any power of attorney listing more than ten patent 
practitioners would be given a paper number and physically entered into 
the patent application file, the patent practitioners so listed would 
not be of record (entered into the Office computer system or permitted 
to sign an express abandonment). Customer Number practice allows the 
Office to enter a single five or six digit number into the power of 
attorney field instead of a large number of patent practitioners and is 
a more appropriate use of Office resources. See MPEP Sec.  403.
    Section 1.33: Section 1.33 is proposed to be revised to reflect 
Customer Number practice. If applicant provides, in a single document, 
both a complete typed address and a Customer number and requests that 
both be used for the correspondence address, the address associated 
with the Customer Number will be used. Section 1.33(a) is proposed to 
be revised to include the following sentence: ``If more than one 
correspondence address is specified in a single document, the Office 
will establish one as the correspondence address and will use the 
address associated with a Customer Number, if the address associated 
with a Customer Number is one of the addresses given.'' Applicants will 
often specify the correspondence address in more than one paper that is 
filed with an application, and the address given in the different 
places sometimes conflicts. Where the applicant specifically directs 
the Office to use a correspondence address in more than one paper, 
priority will be accorded to the correspondence address specified in 
the following order: (1) Application data sheet (ADS); (2) Application 
transmittal; (3) Oath or declaration (unless power of attorney is more 
current); and (4) Power of attorney. Accordingly, if the ADS includes a 
typed correspondence address, and the declaration gives a different 
address (i.e., the address associated with a Customer Number) as the 
correspondence address, the Office will use the typed correspondence 
address as included on the ADS. In the experience of the Office, the 
ADS is the most recently created document and tends to have the most 
current address. After the correspondence address has been entered 
according to the above procedure, it will only be changed pursuant to 
Sec.  1.33(a)(1).
    Paragraph (b)(1) of Sec.  1.33 is proposed to be revised to change 
the reference from Sec.  1.34(b) to proposed new Sec.  1.32.
    Paragraph (b)(2) of Sec.  1.33 is proposed to be revised to change 
Sec.  1.34(a) to Sec.  1.34 to be consistent with the proposal to 
revise Sec.  1.34.
    Paragraph (c) of Sec.  1.33 is proposed to be revised to change the 
cross-reference to Sec.  1.32(b) instead of Sec.  1.34(b) and to change 
the reference to Sec.  1.34(a) to Sec.  1.34 to be consistent with the 
proposed revision to Sec.  1.34.
    Section 1.34: The Office proposes to revise title to ``Acting in a 
Representative Capacity.'' The paragraph designation for paragraph (a) 
is proposed to be deleted and '', pursuant to Sec.  1.31,'' is proposed 
to be deleted for clarity. In addition, ``a registered patent attorney 
or patent agent should specify his or her registration number with his 
or her signature'' is proposed to be changed to ``a registered patent 
attorney or patent agent must specify his or her exact name, as 
registered, and the registration number with his or her signature.'' 
When a registered patent attorney or patent agent acts in a 
representative capacity, it should be clear who is signing the paper. 
Since signatures are not always legible, it is necessary for the 
registered patent attorney or agent to specify his or her registration 
number, and also to include his or her exact name so that the identity 
of the person who is acting in a representative capacity may be 
identified.
    Paragraph (b) of Sec.  1.34 is proposed to be deleted. With 
Customer Number practice, the associate power of attorney practice set 
forth in Sec.  1.34(b) is no longer necessary because once power of 
attorney is given to the patent practitioners associated with a 
Customer Number, each attorney associated with the Customer Number has 
an equal right to change the list of patent practitioners associated 
with that Customer Number. Customer number practice is also preferable 
to having an associate power of attorney practice because when a 
principal attorney gives an associate power of attorney, and the 
principal attorney subsequently dies or withdraws as attorney, the 
associate power of attorney is terminated. The termination of the 
authority of the associate attorney is difficult for the Office to 
enforce. When Customer Number practice is used, the death or withdrawal 
of an attorney originally associated with the Customer Number has no 
impact upon practitioners who later become associated with the Customer 
Number, and as a result, Customer Number practice is more efficient for 
the Office to administer than the associate power of attorney practice. 
Furthermore, an applicant or assignee who gives power of attorney to a 
limited number of patent practitioners has expressed a desire to be 
represented by only those patent practitioners. As Sec.  1.34 is 
proposed to be revised, if Customer Number practice is not used, an 
applicant or assignee will be required to sign a new power of attorney 
in order for an associate practitioner to be ``of record'' instead of 
the specifically identified principal patent practitioner. Of course, a 
registered patent practitioner may still act in a representative 
capacity pursuant to Sec.  1.34 (by providing his or her exact name and 
a registration number with his or her signature), and the proposed rule 
changes do not propose to change this flexibility.
    Section 1.36: The Office proposes to delete ``or authorization'' 
from the title and to revise Sec.  1.36 to include new paragraphs (a) 
and (b) to address revocation of power of attorney in one paragraph and 
withdrawal in another paragraph. In addition, ``or authorization of 
agent'' is proposed to be deleted since the term ``power of attorney'' 
has been defined to include an authorization of an agent. The cross-
reference to Sec.  1.31 is proposed to be changed to Sec.  1.32(b).
    Paragraph (a), as proposed to be revised, addresses revocation of a 
power of attorney. A registered patent attorney or patent agent will be 
notified of the revocation, except that where the power of attorney is 
to the patent practitioners associated with a Customer Number, the 
notice is only given when the power of attorney to the practitioners 
associated with the Customer Number is revoked. When the power of 
attorney is revoked, a single notice is mailed to the correspondence 
address in effect before the power of attorney was revoked. An 
associate registered patent attorney or patent agent whose address is 
the same as that of the principal registered patent attorney or patent 
agent is not separately informed of a revocation. As a result, the 
Office has proposed to delete the suggestion in the rule that such an 
associate practitioner would be notified of the revocation of power of 
attorney.
    When power of attorney is given to the registered patent attorneys 
and patent agents associated with a Customer Number, for example with 
PTO/SB/81, the list of patent

[[Page 38261]]

practitioners associated with the Customer Number is changed by 
changing the data associated with the Customer Number (using, for 
example PTO/SB/124 (2 pages 124A & 124B), Request for Customer Number 
Data Change). No notice is given to the patent practitioners who are 
added or removed from the Customer Number when they are added or 
removed.
    As to proposed paragraph (b) of Sec.  1.36, the paragraph is 
proposed to be revised to state that when the power of attorney for an 
application is given to a Customer Number, all of the patent 
practitioners associated with the Customer Number may not be permitted 
to withdraw if an application with the power of attorney to the patent 
practitioners associated with the Customer Number has an Office action 
to which a reply is due and insufficient time remains in a period for 
reply for applicant to prepare a reply. See MPEP Section 402.06.
    Section 3.1: The Office proposes to revise Sec.  3.1 to identify 
which trademark applications are covered by 37 CFR part 3, and to 
delete ``or a transfer of its entire right, title and interest in a'' 
so that the definition of an assignment includes a transfer of part of 
the right, title and interest in a registered mark or a mark for which 
an application to register has been filed. The Office also proposes to 
revise Sec.  3.1 to add ``United States'' before ``Patent and Trademark 
Office'' in the definition of ``Office'' to properly reflect the 
current name of the Office in the rule. See 35 U.S.C. 1(a).
    Section 3.12: The Office proposes to add Sec.  3.12 to identify 
those trademark applications or registrations that are not covered by 
37 CFR part 3. In paragraph (a) of Sec.  3.12, with regard to trademark 
applications or registrations that are not covered by 37 CFR part 3, 
the documents related to a holder's right to dispose of an 
international trademark registration are required to be recorded by the 
International Bureau of the World Intellectual Property Organization. 
New paragraph (b) of Sec.  3.12 provides that when the Office is 
notified by the International Bureau of an assignment or restriction of 
a holder's right of disposal of an international registration with an 
extension of protection to the United States, the Office will take note 
of the assignment or restriction in its records.
    Section 3.24: The Office proposes to revise Sec.  3.24 to include 
two paragraphs, namely, paragraphs (a) and (b).
    Proposed new paragraph (a) addresses documents and cover sheets for 
electronic submissions, and requires all documents to be submitted 
electronically to be submitted as digitized images in Tagged Image File 
Format (TIFF). In addition, when printed to a paper size of 8\1/2\ by 
11 inches (21.6 by 27.9 cm) (``letter size'') or DIN size A4 (21.0 by 
29.7 cm), the document must be legible and a one-inch (2.5 cm) margin 
must be present on all sides.
    Proposed new paragraph (b) addresses documents and cover sheets for 
paper and facsimile submissions. Section 3.24(b) is proposed to provide 
that for paper submissions (e.g., documents that are mailed to the 
Office) the original document may no longer be submitted.
    Proposed new paragraph (b) provides that ``Either a legible true 
copy of the original document or a legible extract of the original 
document'' may be submitted for recordation. Paragraph (b) also 
includes an explanation to explain why original documents should not be 
submitted for recording: ``The Office will not return recorded 
documents, so original documents must not be submitted for recording.'' 
As explained above, the Office is moving to uniform processing of 
incoming papers, with incoming papers being scanned upon receipt, 
electronically routed within the Office, and an appropriate reply being 
mailed. With this uniform procedure, the Office will not return 
assignment documents submitted for recordation. As a result, the Office 
is not permitting the submission of originals of assignment documents, 
and instead is requiring that a legible true copy or a legible extract 
of an original document be submitted. The term ``an extract of the 
original document'' is being added to reflect the current practice of 
submitting redacted copies of assignment documents, where part of an 
assignment discusses matters other than assignment of interests related 
to a patent or a trademark.
    The Office further proposes to revise Sec.  3.24 to provide, in 
paragraph (b), that documents (copies) submitted for recording must be 
on sheets of paper having a size of 8\1/2\ by 11 inches (21.6 by 27.9 
cm) (``letter size'') or DIN size A4 (21.0 by 29.7 cm). That is, 
``legal-size'' (8\1/2\ by 14 inch or 21.64 by 33.1 cm) sheets of paper 
are no longer permissible. If the original assignment document is on 
``legal size'' sheets of paper, the assignment document should be 
reduced to 8\1/2\ by 11-inch or DIN size A4 paper for submission to the 
Office (e.g., by photocopying it onto letter-size paper). Sheets of 
paper that are either 8\1/2\ by 11 inches (21.6 by 27.9 cm) or DIN size 
A4 (21.0 by 29.7 cm) are required for scanning purposes.
    Section 3.25: The Office proposes to amend Sec.  3.25 to delete 
paragraph (a)(1) and renumber paragraphs (a)(2) through (4) as (a)(1) 
through (3), respectively. Paragraph (a)(1) is being deleted to 
prohibit applicants from submitting the original assignment document 
(because applicants should retain the original of the assignment 
document). The Office also proposes to insert ``original'' before 
``document'' in paragraph (a)(1), as renumbered, in order to make it 
clear that only a copy of an original assignment document may be 
submitted for recording.
    The Office further proposes to revise paragraph (c) to add 
paragraph (1) to state that electronic submissions must be attached as 
a digitized image in Tagged Image File Format (TIFF), to move the 
existing requirements for paper submissions into paragraph (2), and 
specify that the document (copy) submitted for recording must have a 
one-inch margin when printed on 8\1/2\ by 11 inch (21.6 by 27.9 cm) or 
DIN size A4 (21.0 cm by 29.7 cm) paper. Legal-size paper is no longer 
permitted. See the discussion of this change above for patents (Sec.  
3.24).
    Section 3.27: The Office proposes to revise Sec.  3.27 to change 
``to be recorded'' to ``submitted for recordation by mail'' because 
documents and cover sheets submitted for recording may be faxed or 
electronically submitted to the Office and need not be mailed. The 
proposed language clarifies that only documents submitted by mail need 
to be addressed as set forth in the rule. The Office also proposes to 
revise Sec.  3.27 to delete ``or with a request under Sec.  3.81''. As 
explained with respect to Sec.  3.81, when an applicant requests a 
patent to issue to an assignee, the assignment document should be 
separately submitted for recordation because inclusion of the 
assignment document with the request to issue the patent to the 
assignee slows down the recordation process.
    Section 3.31: The Office proposes to revise Sec.  3.31(a)(7) to set 
forth the requirements for signature of patent and trademark cover 
sheets filed electronically. These requirements correspond to the 
requirements set forth in Sec. Sec.  1.4(d)(1)(iii) and 2.33(d) of this 
chapter for electronically transmitted trademark filings.
    Trademark assignments may be submitted electronically with the 
Electronic Trademark Assignment System, which is available on the USPTO 
Internet site. See http://etas.uspto.gov/. Patent assignments should 
soon be able to be similarly electronically submitted. When submitting 
a copy of a trademark assignment using ETAS, the cover sheet is 
completed and signed electronically. As with electronic submission of a

[[Page 38262]]

trademark application, a signature may be applied to an Assignment 
document in one of the following ways:
    (1) The applicant enters a ``symbol'' that the applicant has 
adopted as a signature on the electronic assignment document. The 
Office will accept any combination of letters, numbers, spaces and/or 
punctuation marks as a valid signature if it is placed between forward 
slash symbols (e.g., ``/qwert!@/'') and is in a signature 
block. The document is saved as a TIFF image; or
    (2) The signatory signs paper copies of the assignment document in 
the traditional pen-and-ink manner. The attorney scans the document to 
create a TIFF image file for electronic submission of the document.
    See Trademark Manual of Examining Procedure (TMEP) Sec.  804.05, 
Signature of Electronically Transmitted Applications (May 2003). 
Although when filing an assignment electronically, the cover sheet may 
be ``signed'' as explained in TMEP Sec.  804.05, the assignment 
document that is included therewith is an attached TIFF image.
    The Office further proposes to revise paragraph (c)(1) of Sec.  
3.31 to simplify the requirements for the cover sheet to only require 
identification of whether the document to be recorded relates to a 
governmental interest.
    The Office further proposes to add paragraph (f) of Sec.  3.31, 
stating that a trademark cover sheet should include the citizenship of 
the parties conveying and receiving the interest, and that if the party 
receiving the interest is a partnership or joint venture, the cover 
sheet should set forth the names, legal entities, and national 
citizenship (or the state or country of organization) of all general 
partners or active members. This information is required for purposes 
of examination of the application or registration file. Providing this 
information when the assignment is recorded may avoid a subsequent 
Office action by an examiner.
    Section 3.34: The Office proposes to revise Sec.  3.34(b) to delete 
``the originally recorded document or'' to thereby provide that it is 
``a copy of the document originally submitted for recording'' that must 
be submitted. As explained above, the Office is revising the procedure 
for handling assignment documents and will no longer be returning the 
document that is submitted for recording.
    Section 3.41: The Office proposes to revise Sec.  3.41(b)(2) to 
include electronic and facsimile submission as a means in which a 
statement of Government interest could be submitted for recordation 
without incurring a fee. Section 3.41(b)(2) is also proposed to be 
revised to change the cross-reference to Sec.  3.27 since Sec.  3.27 
was previously revised to delete Sec.  3.27(b).
    Section 3.81: The Office proposes to revise Sec.  3.81(a) to change 
``name(s)'' to ``name'' and ``assignee(s)'' to ``assignee'' because 
under rules of statutory and regulatory construction, the singular 
includes the plural unless the context indicates otherwise. 
Furthermore, the Office proposes to revise Sec.  3.81(a) to change 
``should be accompanied by the assignment and either a direction to 
record the assignment in the Office pursuant to Sec.  3.28, or a 
statement under Sec.  3.73(b)'' to ``must state that the document has 
been filed for recordation as set forth in Sec.  3.11.'' When an 
assignment document is submitted for recording, the preferred 
submission is by facsimile to (703) 306-5995, or through an electronic 
filing system (e.g., ETAS for trademark assignment documents or EFS for 
patent assignment documents), and not by mail. Accordingly, the Office 
proposes to revise the rules to enable patent applicants to state that 
the assignment documents have been filed for recordation, rather than 
including the assignment documents for recordation with the request.
    Furthermore, the Office proposes to amend Sec.  3.81(a) and (b) to 
delete the reference to a statement under Sec.  3.73(b). If the 
application has been assigned, the assignment document should be 
submitted for recording as set forth in Sec.  3.11 for the patent to 
issue showing the name of the assignee. Although during prosecution a 
statement under Sec.  3.73(b) can be relied upon to establish that an 
assignee is of record, pursuant to Sec.  3.73(b)(1)(i), ``the documents 
submitted to establish ownership may be required to be recorded 
pursuant to Sec.  3.11 in the assignment records as a condition to 
permitting the assignee to take action.'' By the time that a patent 
issues, any assignment should be submitted for recording, and reliance 
upon Sec.  3.73(b) should not be necessary. Furthermore, although 
during prosecution of an application the Office will have an 
opportunity to require recordation, at issuance, prosecution has come 
to a close and there is no other practical opportunity for the Office 
to require recordation before the patent is issued.
    The Office proposes to revise Sec.  3.81(b) to read ``[a]fter 
payment of the issue fee: Any request for issuance of an application in 
the name of the assignee submitted after the date of payment of the 
issue fee, and any request that a patent be corrected to state the name 
of the assignee, must state that the assignment was submitted for 
recordation as set forth in Sec.  3.11 before issuance of the patent, 
and must include a request for a certificate of correction under Sec.  
1.323 of this chapter (accompanied by the fee set forth in Sec.  
1.20(a)) and the processing fee set forth in Sec.  1.17(i) of this 
chapter.'' This would modify the practice relating to issuance of a 
patent to an assignee by requiring that after payment of an issue fee, 
a request for a certificate of correction must be filed in order to 
obtain issuance of the patent to an assignee. Thus, the patent document 
would not set forth such assignment information, but the assignment 
information would be set forth in a Certificate of Correction. 
Furthermore, this would discontinue the current practice of allowing a 
patent to issue to an assignee when an assignment has not been recorded 
but a Sec.  3.73(b) statement has been filed. Instead of allowing 
submission of a Sec.  3.73(b) statement, correction would be permitted 
via a certificate of correction where the assignment has been recorded, 
or submitted for recording before issuance of the patent. See MPEP 
Sec.  1481.
    Section 3.81(c)(1) is proposed to be amended to change 
``assignee(s)'' to ``assignee'' and ``inventor(s)'' to ``inventor'' 
because under rules of statutory and regulatory construction, the 
singular includes the plural unless the context indicates otherwise.

Rule Making Considerations

    Administrative Procedure Act: This notice proposes changes to the 
rules of practice to simplify the Office procedures involving power of 
attorney practice and recording assignment documents. The changes 
proposed in this notice are limited to the format for and the manner of 
submitting, establishing and changing the power of attorney, for 
submitting documents to be recorded in the assignment records, and the 
availability of assignment records to the public. Therefore, these 
changes involve rules of agency practice and procedure under 5 U.S.C. 
553(b)(A). See Bachow Communications Inc. v. FCC, 237 F.3d 683, 690 (DC 
Cir. 2001). Therefore, prior notice and opportunity for public comment 
are not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law). 
Nevertheless, the Office is providing this opportunity for public 
comment on the changes proposed in this notice because the Office 
desires the benefit of public comment on these proposed changes.
    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), an initial regulatory flexibility analysis under the

[[Page 38263]]

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 notice involves information 
collection requirements which are subject to review by the Office of 
Management and Budget (OMB) under the Paperwork Reduction Act of 1995 
(44 U.S.C. 3501 et seq.). The collection of information involved in 
this notice has been reviewed and previously approved by OMB under OMB 
control numbers 0651-0027 and 0651-0035. The Office is not resubmitting 
an information collection package to OMB for its review and approval 
because the changes in this notice would not affect the information 
collection requirements associated with the information collection 
under OMB control numbers 0651-0027 and 0651-0035.
    The title, description and respondent description of each of the 
information collections are shown below with an estimate of the annual 
reporting burdens. Included in the estimate is the time for reviewing 
instructions, gathering and maintaining the data needed, and completing 
and reviewing the collection of information. The principal impacts of 
the changes in this proposed rule are to: (1) Provide for power of 
attorney to a Customer Number and to limit the number of attorneys who 
may be given a power of attorney without using a Customer Number; (2) 
eliminate associate power of attorney practice; (3) require attorneys 
acting in a representative capacity to specify their name and 
registration number; (4) allow access to assignment records except 
those relating to any pending or abandoned patent application which is 
preserved in confidence under Sec.  1.14; (5) provide that assignment 
documents submitted for recording must be on certain sizes of paper; 
(6) specifically state that the assignment documents that are submitted 
for recording will not be returned; (7) for assignments that are 
submitted electronically, provide for an electronic signature; (8) 
require the citizenship of the parties conveying and receiving the 
interest on a trademark assignment cover sheet; and (9) provide that a 
request to issue a patent to an assignee filed after issue fee payment 
must be accompanied by a request for a certificate of correction.
    OMB Number: 0651-0027.
    Title: Changes in Patent and Trademark Assignment Practices.
    Form Numbers: PTO-1618 and PTO-1619, PTO/SB/15/41.
    Type of Review: Approved through June of 2005.
    Affected Public: Individuals or households and businesses or other 
for-profit institutions.
    Estimated Number of Respondents: 311,704.
    Estimated Time Per Response: 30 minutes.
    Estimated Total Annual Burden Hours: 155,853 hours.
    Needs and Uses: The Office records over 300,000 assignments or 
documents related to ownership of patent and trademark cases each year. 
The Office requires a cover sheet to expedite the processing of these 
documents and to ensure that they are properly recorded.
    OMB Number: 0651-0035.
    Title: Representative and Address Provisions.
    Form Numbers: PTO/SB/81/82/83/121/122/123/124A/124B/125A/125B.
    Type of Review: Approved through 11/30/2005.
    Affected Public: Individuals or households, business or other for-
profit, not for-profit institutions and Federal Government.
    Estimated Number of Respondents: 338,280.
    Estimated Time Per Response: 3 minutes (0.05 hours) to 1 hour 45 
minutes (1.75 hours).
    Estimated Total Annual Burden Hours: 31,259 hours.
    Needs and Uses: Under 35 U.S.C. 2 and 37 CFR 1.31-1.36 and 1.363, 
this information is used to submit a request to grant or revoke power 
of attorney in an application or patent, to withdraw as patent attorney 
or patent agent of record, or to designate or change the correspondence 
address for one or more applications or patents.
    Comments are invited on: (1) Whether the collections of information 
are necessary for proper performance of the functions of the agency; 
(2) the accuracy of the agency's estimate of the burden; (3) ways to 
enhance the quality, utility, and clarity of the information to be 
collected; and (4) ways to minimize the burden of the collection of 
information to respondents.
    Interested persons are requested to send comments regarding these 
information collections, including suggestions for reducing this 
burden, to Robert J. Spar, Director, Office of Patent Legal 
Administration, Commissioner for Patents, PO Box 1450, Alexandria, VA 
22313-1450, or to the Office of Information and Regulatory Affairs, 
OMB, 725 17th Street, NW., Washington, DC 20503, (Attn: USPTO Desk 
Officer).
    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, Freedom of 
Information, Inventions and patents, Reporting and record keeping 
requirements, Small Businesses.

37 CFR Part 3

    Administrative practice and procedure, Inventions and patents, 
Reporting and record keeping requirements.
    For the reasons set forth in the preamble, 37 CFR parts 1 and 3 are 
proposed to be amended as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

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

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

    2. Revise Sec.  1.1(a)(4)(i) to read as follows:


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

    (a) * * *
    (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, 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. See 
Sec.  3.27.
* * * * *
    3. Revise Sec.  1.12(b) to read as follows:


Sec.  1.12  Assignment records open to public inspection.

* * * * *
    (b) Assignment records, digests, and indexes relating to any 
pending or abandoned patent application, which is open to the public 
pursuant to Sec.  1.11 or for which copies or access may be supplied 
pursuant to Sec.  1.14, are

[[Page 38264]]

available to the public. Copies of any such assignment records and 
related information that are not available to the public shall be 
obtainable only upon written authority of the applicant or applicant's 
assignee or patent attorney or patent agent or upon a showing that the 
person seeking such information is a bona fide prospective or actual 
purchaser, mortgagee, or licensee of such application, unless it shall 
be necessary to the proper conduct of business before the Office or as 
provided in this part.
* * * * *
    4. Revise Sec.  1.31 to read as follows:


Sec.  1.31  Applicants may be represented by a registered patent 
attorney or patent agent.

    An applicant for patent may file and prosecute his or her own case, 
or he or she may give a power of attorney so as to be represented by a 
registered patent attorney, registered patent agent, or other 
individual authorized to practice before the United States Patent and 
Trademark Office in patent cases. See Sec.  10.6 and Sec.  10.9(a) and 
(b) of this subchapter. The United States Patent and Trademark Office 
cannot aid in the selection of a registered patent attorney or patent 
agent.
    5. Add new Sec.  1.32 to read as follows:


Sec.  1.32  Power of attorney.

    (a) Definitions:
    (1) Power of attorney means a written document by which a principal 
designates an agent to act on his or her behalf.
    (2) Principal means either the applicant for patent (Sec.  1.41(b)) 
or the assignee of the entire interest. The principal executes a power 
of attorney designating one or more agents to act on his or her behalf.
    (3) Revocation means the cancellation by the principal of the 
authority previously given by the principal to an agent.
    (4) Customer Number means a number that may be used to:
    (i) Designate the correspondence address of a patent application 
such that the correspondence address for the patent application would 
be the address associated with the Customer Number;
    (ii) Designate the fee address (Sec.  1.363) of a patent by a 
Customer Number such that the fee address for the patent would be the 
address associated with the Customer Number; and
    (iii) Submit a list of practitioners by Customer Number such that 
those registered patent practitioners associated with the Customer 
Number would have power of attorney.
    (b) A power of attorney, other than a power of attorney in an 
international application (Sec.  1.455), must:
    (1) Be in writing;
    (2) Name as agent either:
    (i) One or more joint inventors (Sec.  1.45);
    (ii) Up to ten registered patent attorneys, registered patent 
agents, or other individuals authorized to practice before the United 
States Patent and Trademark Office in patent cases (see Sec.  10.6 and 
Sec.  10.9(a) and (b) of this subchapter); or
    (iii) Those registered patent practitioners associated with a 
Customer Number;
    (3) Give the agent power to act on behalf of the principal; and
    (4) Be signed by the applicant for patent (Sec.  1.41(b)) or the 
assignee of the entire interest.
    6. Amend Sec.  1.33 to revise paragraphs (a), introductory text, 
(b)(1), (b)(2) and (c) to read as follows:


Sec.  1.33  Correspondence respecting patent applications, 
reexamination proceedings, and other proceedings.

    (a) Correspondence address and daytime telephone number. When 
filing an application, a correspondence address must be set forth in 
either an application data sheet (Sec.  1.76), or elsewhere, in a 
clearly identifiable manner, in any paper submitted with an application 
filing. If no correspondence address is specified, the Office may treat 
the mailing address of the first named inventor (if provided, see 
Sec. Sec.  1.76(b)(1) and 1.63(c)(2)) as the correspondence address. 
The Office will direct all notices, official letters, and other 
communications relating to the application to the correspondence 
address. The Office will not engage in double correspondence with an 
applicant and a registered patent attorney or patent agent, or with 
more than one registered patent attorney or patent agent except as 
deemed necessary by the Director. If more than one correspondence 
address is specified, in a single document, the Office will establish 
one as the correspondence address and will use the address associated 
with a Customer Number, if the address associated with a Customer 
Number is one of the addresses given. For the party to whom 
correspondence is to be addressed, a daytime telephone number should be 
supplied in a clearly identifiable manner and may be changed by any 
party who may change the correspondence address. The correspondence 
address may be changed as follows:
    (1) * * *
    (b) Amendments and other papers. Amendments and other papers, 
except for written assertions pursuant to Sec.  1.27(c)(2)(ii) of this 
part, filed in the application must be signed by:
    (1) A registered patent attorney or patent agent of record 
appointed in compliance with Sec.  1.32(b);
    (2) A registered patent attorney or patent agent not of record who 
acts in a representative capacity under the provisions of Sec.  1.34;
* * * * *
    (c) All notices, official letters, and other communications for the 
patent owner or owners in a reexamination proceeding will be directed 
to the patent attorney or patent agent of record (see Sec.  1.32(b)) in 
the patent file at the address listed on the register of patent 
attorneys and patent agents maintained pursuant to Sec.  10.5 and Sec.  
10.11 or, if no patent attorney or patent agent is of record, to the 
patent owner or owners at the address or addresses of record. 
Amendments and other papers filed in a reexamination proceeding on 
behalf of the patent owner must be signed by the patent owner, or if 
there is more than one owner by all the owners, or by a patent attorney 
or patent agent of record in the patent file, or by a registered patent 
attorney or patent agent not of record who acts in a representative 
capacity under the provisions of Sec.  1.34. Double correspondence with 
the patent owner or owners and the patent owner's patent attorney or 
patent agent, or with more than one patent attorney or patent agent, 
will not be undertaken. If more than one patent attorney or patent 
agent is of record and a correspondence address has not been specified, 
correspondence will be held with the last patent attorney or patent 
agent made of record.
* * * * *
    7. Revise Sec.  1.34 to read as follows:


Sec.  1.34  Acting in a Representative Capacity.

    When a registered patent attorney or patent agent acting in a 
representative capacity appears in person or signs a paper in practice 
before the United States Patent and Trademark Office in a patent case, 
his or her personal appearance or signature shall constitute a 
representation to the United States Patent and Trademark Office that 
under the provisions of this subchapter and the law, he or she is 
authorized to represent the particular party in whose behalf he or she 
acts. In filing such a paper, the registered patent attorney or patent 
agent must specify his or her registration number with his or her 
signature. Further proof of authority to act in a representative 
capacity may be required.
    8. Revise Sec.  1.36 to read as follows:

[[Page 38265]]

Sec.  1.36  Revocation of power of attorney; withdrawal of patent 
attorney or patent agent.

    (a) A power of attorney, pursuant to Sec.  1.32(b), may be revoked 
at any stage in the proceedings of a case by the applicant for patent 
(Sec.  1.41(b)) or the assignee of the entire interest. A registered 
patent attorney or patent agent will be notified of the revocation of 
the power of attorney. Where power of attorney is given to the patent 
practitioners associated with a Customer Number (Sec.  
1.32(b)(2)(iii)), the practitioners so appointed will also be notified 
of the revocation of the power of attorney when the power of attorney 
to the practitioners associated with the Customer Number is revoked. 
The notice of revocation will be mailed to the correspondence address 
for the application (Sec.  1.33) in effect before the revocation. An 
assignment will not of itself operate as a revocation of a power 
previously given, but the assignee of the entire interest may revoke 
previous powers and give another power of attorney as provided in Sec.  
1.32(b) of the assignee's own selection.
    (b) A registered patent attorney or patent agent who has been given 
a power of attorney pursuant to Sec.  1.32(b) may withdraw upon 
application to and approval by the Director. The applicant or patent 
owner will be notified of the withdrawal of the registered patent 
attorney or patent agent. Where power of attorney is given to the 
patent practitioners associated with a Customer Number, a request to 
delete all of the patent practitioners associated with the Customer 
Number may not be granted if an applicant has given power of attorney 
to the patent practitioners associated with the Customer Number and 
insufficient time remains for the applicant to file a reply. See Sec.  
1.613(d) for withdrawal in an interference.

PART 3--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE

    9. 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).
    10. Revise Sec.  3.1 to read as follows:


Sec.  3.1  Definitions.

    For purposes of this part, the following definitions shall apply:
    Application means a national application for patent, an 
international patent application that designates the United States of 
America, or an application to register a trademark under section 1 or 
44 of the Trademark Act, 15 U.S.C. 1051 or 15 U.S.C. 1126, unless 
otherwise indicated.
    Assignment means a transfer by a party of all or part of its right, 
title and interest in a patent, patent application, registered mark or 
a mark for which an application to register has been filed.
    Document means a document which a party requests to be recorded in 
the Office pursuant to Sec.  3.11 and which affects some interest in an 
application, patent, or registration.
    Office means the United States Patent and Trademark Office.
    Recorded document means a document which has been recorded in the 
Office pursuant to Sec.  3.11.
    Registration means a trademark registration issued by the Office.
    11. Add Sec.  3.12 to read as follows:


Sec.  3.12  Documents affecting title to international trademark 
registration and extension of protection to the United States.

    (a) Assignments or restrictions of a holder's right to dispose of 
an international trademark registration must be recorded by the 
International Bureau of the World Intellectual Property Organization.
    (b) When the Office is notified by the International Bureau of an 
assignment or restriction of a holder's right of disposal of an 
international registration with an extension of protection to the 
United States, the Office will take note of the assignment or 
restriction in its records.
    12. Revise Sec.  3.24 to read as follows:


Sec.  3.24  Requirements for documents and cover sheets relating to 
patents and patent applications.

    (a) For electronic submissions: Either a true copy of the original 
document or an extract of the original document may be submitted for 
recording. All documents must be submitted as digitized images in 
Tagged Image File Format (TIFF) or another form as prescribed by the 
Director. When printed to a paper size of either 21.6 by 27.9 cm (8\1/
2\ by 11 inches) or 21.0 by 29.7 cm (DIN size A4), the document must be 
legible and a 2.5 cm (one-inch) margin must be present on all sides.
    (b) For paper or facsimile submissions: Either a legible true copy 
of the original document or a legible extract of the original document 
may be submitted for recording.
    Only one side of each page may be used. The paper size must be 
either 21.6 by 27.9 cm (8\1/2\ by 11 inches) or 21.0 by 29.7 cm (DIN 
size A4), and in either case, a 2.5 cm (one-inch) margin must be 
present on all sides. For paper submissions, the paper used should be 
flexible, strong white, non-shiny, and durable. The Office will not 
return recorded documents, so original documents must not be submitted 
for recording.
    13. Revise Sec.  3.25 to read as follows:


Sec.  3.25  Recording requirements for trademark applications and 
registrations.

    (a) Documents affecting title. To record documents affecting title 
to a trademark application or registration, a legible cover sheet (see 
Sec.  3.31) and one of the following must be submitted:
    (1) A copy of the original document;
    (2) A copy of an extract from the document evidencing the effect on 
title; or
    (3) A statement signed by both the party conveying the interest and 
the party receiving the interest explaining how the conveyance affects 
title.
    (b) Name changes. Only a legible cover sheet is required (See Sec.  
3.31).
    (c) All documents.
    (1) For electronic submissions: All documents must be submitted as 
digitized images in Tagged Image File Format (TIFF) or another form as 
prescribed by the Director. When printed to a paper size of either 21.6 
by 27.9 cm (8\1/2\ by 11 inches) or 21.0 by 29.7 cm (DIN size A4), a 
2.5 cm (one-inch) margin must be present on all sides.
    (2) For paper or facsimile submissions: All documents should be 
submitted on white and non-shiny paper that is either 8\1/2\ by 11 
inches (21.6 by 27.9 cm) or DIN size A4 (21.0 by 29.7 cm) with a one-
inch (2.5 cm) margin on all sides in either case. Only one side of each 
page may be used. The Office will not return recorded documents, so 
original documents should not be submitted for recording.
    14. Revise Sec.  3.27 to read as follows:


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

    Documents and cover sheets submitted by mail for recordation 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, unless they are filed together with new 
applications.
    15. Amend Sec.  3.31 to revise paragraphs (a)(7) and (c)(1) and to 
add a paragraph (f) to read as follows:


Sec.  3.31  Cover sheet content.

    (a) * * *
    (7) The signature of the party submitting the document. For an 
assignment document or name change filed electronically, the person who 
signs the cover sheet must either:
    (i) Place a symbol comprised of numbers and/or letters between 
forward

[[Page 38266]]

slash marks in the signature block on the electronic submission; or
    (ii) Sign the cover sheet using some other form of electronic 
signature specified by the Director.
* * * * *
    (c) * * *
    (1) Indicate that the document relates to a Government interest; 
and
* * * * *
    (f) Each trademark cover sheet should include the citizenship of 
the party conveying the interest and the citizenship of the party 
receiving the interest. In addition, if the party receiving the 
interest is a partnership or joint venture, the cover sheet should set 
forth the names, legal entities, and national citizenship (or the state 
or country of organization) of all general partners or active members 
that compose the partnership or joint venture.
    16. Revise Sec.  3.34 to read as follows:


Sec.  3.34  Correction of cover sheet errors.

    (a) An error in a cover sheet recorded pursuant to Sec.  3.11 will 
be corrected only if:
    (1) The error is apparent when the cover sheet is compared with the 
recorded document to which it pertains, and
    (2) A corrected cover sheet is filed for recordation.
    (b) The corrected cover sheet must be accompanied by a copy of the 
document originally submitted for recording and by the recording fee as 
set forth in Sec.  3.41.
    17. Revise Sec.  3.41(b)(2) to read as follows:


Sec.  3.41  Recording fees.

* * * * *
    (b) * * *
    (2) The document and cover sheet are either: faxed or 
electronically submitted as prescribed by the Director, or mailed to 
the Office in compliance with Sec.  3.27.
    18. Revise Sec.  3.81 to read as follows:


Sec.  3.81  Issue of patent to assignee.

    (a) With payment of the issue fee: An application may issue in the 
name of the assignee consistent with the application's assignment where 
a request for such issuance is submitted with payment of the issue fee, 
provided the assignment has been previously recorded in the Office. If 
the assignment has not been previously recorded, the request must state 
that the document has been filed for recordation as set forth in Sec.  
3.11.
    (b) After payment of the issue fee: Any request for issuance of an 
application in the name of the assignee submitted after the date of 
payment of the issue fee, and any request for a patent to be corrected 
to state the name of the assignee, must state that the assignment was 
submitted for recordation as set forth in Sec.  3.11 before issuance of 
the patent, and must include a request for a certificate of correction 
under Sec.  1.323 of this chapter (accompanied by the fee set forth in 
Sec.  1.20(a)) and the processing fee set forth in Sec.  1.17(i) of 
this chapter.
    (c) Partial assignees.
    (1) If one or more assignee, together with one or more inventor, 
holds the entire right, title, and interest in the application, the 
patent may issue in the names of the assignee and the inventor.
    (2) If multiple assignees hold the entire right, title, and 
interest to the exclusion of all the inventors, the patent may issue in 
the names of the multiple assignees.

    Dated: June 20, 2003.
Jon W. Dudas,
Acting Under Secretary of Commerce for Intellectual Property and Acting 
Director of the United States Patent and Trademark Office.
[FR Doc. 03-16262 Filed 6-26-03; 8:45 am]
BILLING CODE 3510-16-P