[Federal Register Volume 69, Number 102 (Wednesday, May 26, 2004)]
[Rules and Regulations]
[Pages 29865-29880]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 04-11761]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1, 3 and 5

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


Revision of Power of Attorney and Assignment Practice

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
revising the rules of practice to allow for more efficient processing 
of powers of attorney and assignment documents within the Office. For 
example, the Office will require applicants to use the Office's 
Customer Number practice if more than ten registered patent 
practitioners are to be made of record. In addition, the Office is 
eliminating some mail stops (i.e., CPA, Provisional Patent Application) 
that were found not be useful in routing correspondence within the 
Office, and creating a new mail stop (Licensing and Review) to assist 
the Office in the proper routing of national security classified and 
secrecy order papers. Finally, because the Office is discontinuing the 
current Office practice of returning patent and trademark assignment 
documents submitted by mail for recording in the assignment database, 
only copies of assignment documents may be submitted for recording in 
the Office's Assignment records.

DATES: Effective Date: June 25, 2004. Any associate power of attorney 
filed before this date will continue to be effective.

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: A purpose of this final rule is to limit the 
number of patent practitioners that a patent applicant, or an assignee 
of the patent applicant, can name in a power of attorney. If more than 
ten registered patent attorneys or registered patent agents are to be 
appointed, then the Office's Customer Number practice must be used. 
This change is necessary to eliminate the undue processing burden on 
the Office when a power of attorney naming more than ten patent 
practitioners is submitted in patent applications. In addition, a 
purpose of this final rule is to eliminate the associate power of 
attorney practice in patent cases. An associate power of attorney is 
not necessary for a patent practitioner to take most actions in a 
patent application. Instead of filing an associate power of attorney, a 
patent practitioner can file an ``Authorization to Act in a 
Representative Capacity'' (note the sample form posted on the Office's 
Internet Web site at: http://www.uspto.gov/web/forms/sb0084.pdf). 
Another purpose of this final rule is to eliminate an original 
assignment document from the list of documents that may be submitted 
for recordation. This is because the Office shall no longer be 
returning assignment documents after they have been scanned into the 
Office's electronic assignment database, and any assignee that submits 
the original assignment document will be unable to retrieve the 
document.
    The Office provides for the use of a Customer Number to identify 
either an address for patent-related correspondence, or a set of patent 
attorneys and agents who may be identified with a patent application as 
patent practitioners of record. Customer Number practice permits the 
correspondence or fee address, or the list of practitioners of record 
to be easily changed in a large number of patent applications by filing 
a single request for Customer Number data change. A separate revocation 
of power of attorney, or appointment of a new power of attorney would 
not need to be filed in each patent application if a Customer Number 
Data Change Request (PTO/SB/124) is filed. As a result, if a patent 
attorney or patent agent is to begin to represent a client, or is 
discontinuing representation of a client, on a particular set of 
applications, and, if the power of attorney for that set of 
applications was originally to the patent practitioners associated with 
a Customer Number, then the list of patent practitioners associated 
with the Customer Number should be changed to reflect the addition or 
deletion. When Customer Number practice is used, a separate document 
does not need to be filed by applicant for each application in which 
the list of practitioners associated with the Customer Number is to be 
changed; only one Customer Number Data Change Request is required to 
eliminate any patent practitioners who should no longer be associated 
with the Customer Number. Alternatively, a new power of attorney to a 
list of patent practitioners or to the patent practitioners associated 
with a different customer number may be filed in each application in 
which the power of attorney should be changed.
    The rules pertaining to power of attorney are revised to reflect 
Customer Number practice, a practice wherein an applicant or an 
assignee of the entire interest of the applicant in a patent 
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 
revised to explain the requirements of a power of attorney and to limit 
the number of practitioners who may be given a power of attorney 
without using Customer Number practice. Furthermore, the patent rules 
are 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

[[Page 29866]]

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. The Office is 
increasing the integrity of its internal patent application record 
maintenance by adopting a new electronic data processing system for the 
storage and maintenance of all the records associated with patent 
applications. The new system includes the process of scanning all 
incoming papers to create an image file of the papers associated with 
patent applications. Papers that are scanned are stored, and then 
destroyed according to a record retention schedule. Consistent with 
this new practice, the Office will discontinue the practice of 
returning assignment documents that were mailed to the Office, and will 
require assignment documents to be submitted on 8\1/2\ by 11-inch paper 
(21.6 by 27.9 cm) (``letter size'') or DIN size A4 (21.0 by 29.7 cm).
    To assist applicants in identifying the application or patent to 
which a Notice of Recordation relates, the Notice has been revised to 
reflect the title of the invention and docket number stored in the 
Office's electronic records, if the notice of recordation is for a 
single property (application or patent). Any docket number included on 
the Assignment Cover sheet will only be used in the Office's electronic 
financial records for purposes of processing the recordation fee, but 
will not be entered into other electronic records for the patent or 
patent application.

Discussion of Specific Rules

    The Office is amending sections of 1.1, 1.12, 1.31, 1.33, 1.34, 
1.36, 1.53, 1.363, 3.1, 3.21, 3.24, 3.25, 3.27, 3.31, 3.34, 3.41, 3.81, 
and 5.1 of title 37 of the Code of Federal Regulations (CFR), and 
adding new Sec.  1.32 to title 37 CFR.
    Section 1.1: Section 1.1(a)(4)(i) is amended to add ``submitted by 
mail'' and to delete ``or under Sec.  3.81 of this chapter'' to require 
that assignments submitted by mail contemporaneously with a request to 
issue a patent to an assignee be sent to Mail Stop Assignment 
Recordation Services instead of Mail Stop Issue Fee in order to more 
efficiently direct assignment documents. Section 1.1 is also amended to 
remove paragraph (f). The Office has determined that Mail Stop 
Provisional Patent Application is not useful in the routing of 
correspondence within the Office.
    Section 1.12: Section 1.12(b) is amended 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. Section 1.12(b) is further 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 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. Before the amendment to Sec.  1.12(b), the text of the rule 
suggested that the assignment records for the parent application were 
not available to the public. This was not the intended construction, 
and was inconsistent with MPEP Sec.  301.01. As revised Sec.  1.12(b) 
provides that the assignment records for the parent application of a 
patent, or an application that has published under 35 U.S.C. 122(b), 
are open to public inspection.
    Section 1.31: Section 1.31 is amended to revise the title to refer 
to ``registered patent attorney or patent agent'' and to introduce the 
term ``power of attorney.'' Section 1.31 is also revised 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 1.32: New Sec.  1.32 sets forth definitions related to 
power of attorney. Section 1.32 does not apply to power of attorney in 
an international application (Sec.  1.455). The terms ``power of 
attorney,'' ``principal,'' ``revocation,'' and ``Customer Number'' are 
defined, and the requirements for a power of attorney are set forth. 
The term ``patent practitioner'' is not separately defined, but is a 
collective reference to a registered patent attorney or registered 
patent agent.
    ``Power of attorney'' is defined in paragraph (a)(1) of Sec.  1.32 
as a written document by which a principal designates a registered 
patent attorney or a registered patent agent (collectively ``patent 
practitioner'') to act on his or her behalf.
    ``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 of the applicant, and the entity who executes a power 
of attorney designating one or more agents to act on his or her behalf. 
An appointment by fewer than all of the applicants, or assignees of the 
entire interest of the applicants requires a petition under Sec.  1.183 
to waive the requirement of Sec.  1.32(b)(4) that the applicant, or the 
assignee of the entire interest of the applicant sign the power of 
attorney.
    The term ``patentee'' has not been included in this definition 
because use of the term ``patentee'' would make the rule unnecessarily 
complicated. Although the term ``patentee'' often is a reference to the 
assignee, the patentee could also be the inventors, or if an inventor 
is deceased or legally incapacitated, the inventors and the legal 
representative of such an inventor. An inventor who could not be 
reached or refused to join in the filing of a patent application would 
not be an applicant as set forth in Sec.  1.41(b), but would still be a 
patentee, but once a patent has issued, the signature of the nonsigning 
inventor should still not be required on any power of attorney. 
Accordingly, the term ``patentee'' does not necessarily reference the 
same group of individuals as the term ``applicant'' and has not been 
used in the rules so that the applicant, not necessarily the patentee, 
could change the power of attorney, for example, in an application that 
has issued as a patent.
    ``Revocation'' is defined in paragraph (a)(3) of Sec.  1.32 as the 
cancellation by the principal of the authority previously given to a 
registered patent attorney or registered patent agent to act on his or 
her behalf.
    ``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 or patent such that the correspondence 
address for the patent application or patent 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) specify, in a power of attorney, that each 
of the patent practitioners associated

[[Page 29867]]

with a Customer Number have a power of attorney.
    Section 1.32(b) 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 comply with Sec.  1.32(b), 
the power of attorney, in an application other than an international 
application, must: (1) Be in writing; (2) name one or more 
representatives in compliance with (c) of this section; (3) give the 
representative 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 of the applicant. Furthermore, pursuant to Sec.  
1.32(c), a power of attorney may only name as representative: (1) One 
or more joint inventors (Sec.  1.45); (2) those registered patent 
practitioners associated with a Customer Number; or (3) ten or fewer 
registered patent attorneys or registered patent agents (see Sec.  10.6 
of this subchapter)(patent practitioners). Except as provided in Sec.  
1.32(c)(1) or (c)(2), the Office will not recognize more than ten 
patent practitioners as being of record in an application or patent. If 
a power of attorney names more than ten patent practitioners, such 
power of attorney must be accompanied by a separate paper indicating 
which ten patent practitioners named in the power of attorney are to be 
recognized by the Office as being of record in application or patent to 
which the power of attorney is directed.
    New Sec.  1.32(c)(3) sets 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, and to update that listing. 
Applicants desiring to appoint a large number of patent practitioners 
may continue to do so, but Customer Number practice will be required in 
order to have more than ten patent practitioners recognized by the 
Office as being of record and reflected in Office computer systems. See 
Sec.  1.32(c)(2).
    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 enter the practitioners indicated on the 
separate paper filed pursuant to Sec.  1.32(c)(3). If more than ten 
patent practitioners are listed on a power of attorney, and no separate 
paper under Sec.  1.32(c)(3) is filed, then no patent practitioners 
will be made of record. If a separate paper is not provided and a 
patent practitioner later attempts to sign a batch update request to 
request that the address associated with the Customer Number be used 
for the correspondence address and/or the fee address for the patent 
applications listed on the spreadsheet (see Notice of Elimination of 
Batch Update Practice to Change Power of Attorney, 1272 Off. Gaz. 
Patent Office Notices 24 (July 1, 2003)), the request will be rejected 
because the patent practitioner is not of record. Applicant may then 
submit a newly executed power of attorney complying with Sec.  1.32, or 
submit a copy of the previously filed power of attorney accompanied by 
a separate paper indicating which ten practitioners are to be made of 
record pursuant to Sec.  1.32(c)(3).
    Customer Number practice allows the Office to enter a single five 
or six digit number into the Office computer system instead of a large 
number of patent practitioners and is a more appropriate use of Office 
resources than continuing to permit applicants to give a power of 
attorney to an unlimited number of practitioners. See MPEP Sec.  403.
    Section 1.33: Section 1.33(a) is 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 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 given, over a typed correspondence address.'' 
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).
    A Customer Number merely provided in correspondence without an 
instruction to use the Customer Number for the correspondence address 
or for any other purposes, e.g., a Customer Number that is adjacent the 
heading of the paper, is not a specific direction to use the Customer 
Number for any purpose.
    Section 1.33(b)(1) is revised to change the reference from Sec.  
1.34(b) to new Sec.  1.32(b).
    Section 1.33(b)(2) is revised to change Sec.  1.34(a) to Sec.  1.34 
to be consistent with the revision to Sec.  1.34.
    Section 1.33(c) 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 revision to Sec.  1.34.
    Section 1.34: Section 1.34 is revised to change the title to 
``Acting in a Representative Capacity.'' The paragraph designation for 
paragraph (a) and '', pursuant to Sec.  1.31,'' are deleted. In 
addition, ``the registered patent attorney or patent agent should 
specify his or her registration number with his or her signature'' is 
changed to ``the registered patent attorney or patent agent must 
specify his or her name 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. 
Because signatures are not always legible and because sometimes the 
wrong registration number is given, it is necessary for the registered 
patent attorney or agent to include his or her 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 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, the list 
of patent practitioners of record may easily be changed. Additionally, 
for a patent practitioner to have the most information with which to 
represent his client, the patent practitioner needs to

[[Page 29868]]

have access to the private Patent Application Information Retrieval 
(private PAIR) system on the Office's Internet Web site (http://PAIR.uspto.gov), and a patent practitioner can only have direct access 
to private PAIR if he or she is associated with the Customer Number, 
and if the Customer Number is used for the correspondence address of 
the application. Private PAIR provides patent practitioners with access 
to the Office's computer systems that track the patent file history, 
and, if the application is maintained in the Image File Wrapper (IFW) 
system, access to the images of the documents in the file history. 
Furthermore, private PAIR provides pro se applicants and patent 
practitioners with information about recently mailed correspondence 
from the Office for a particular Customer Number. Furthermore, private 
PAIR provides an explanation of any patent term extension or patent 
term adjustment calculations for the patent application. A patent 
practitioner who does not have access to private PAIR is disadvantaged 
in representing a client compared to a practitioner who has access to 
private PAIR. See the discussion with respect to comment 9 below.
    A government entity or assignee may have multiple law firms or sets 
of attorneys working on their patent applications. Such an entity 
should consider having multiple Customer Numbers, with a separate 
Customer Number for each set of patent attorneys, and having at least 
one in-house patent practitioner listed on each listing of patent 
practitioners associated with a Customer Number so that the government 
entity or assignee has access to private PAIR for all of their patent 
applications.
    An applicant or assignee of the entire interest of the applicant 
who gives a 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 revised, if Customer Number 
practice is not used, an applicant or assignee of the entire interest 
of the applicant will be required to sign a new power of attorney in 
order for an associate practitioner to be ``of record'' in addition to 
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 name and a 
registration number with his or her signature), and the rule changes do 
not change this flexibility. A patent practitioner who is acting in a 
representative capacity pursuant to Sec.  1.34 may conduct an interview 
with an examiner. See MPEP Sec.  713.05. A patent practitioner who is 
acting in a representative capacity can also file amendments and other 
papers (Sec.  1.33(b)(2)). A patent practitioner who is acting in a 
representative capacity pursuant to Sec.  1.34 may not, however, change 
the correspondence address (Sec.  1.33(a)(2)) (except where an executed 
oath or declaration has not been filed, and the patent practitioner 
filed the application)), expressly abandon the application without 
filing a continuing application (Sec.  1.138(b)), or sign a terminal 
disclaimer (Sec.  1.321(b)(1)(iv)). A patent practitioner who is 
signing on behalf of the assignee of the entire interest may (i.e., not 
signing in a representative capacity or as a patent practitioner of 
record), however, sign these same documents upon compliance with Sec.  
3.73(b), if the practitioner is authorized to act on behalf of the 
assignee.
    A patent attorney or agent who has been given a power of attorney 
cannot change the power of attorney from the set of patent 
practitioners appointed by the applicant or assignee of the entire 
interest of the applicant to a Customer Number (or change from one 
Customer Number to another). To appoint a new power of attorney, the 
applicant or assignee of the entire interest of the applicant must be 
involved and must sign the power of attorney. Where a large number of 
patent applications of a single assignee are involved, the assignee may 
wish to consider giving the patent practitioners a power of attorney 
that is not specific to an application, similar to the General Power of 
Attorney used in Patent Cooperation Treaty (PCT) practice, and having 
one of the patent practitioners with general power of attorney take 
action by submitting a copy of the power of attorney and a statement in 
compliance with Sec.  3.73(b). Form PTO/SB/80 is available for this 
purpose and is posted on the Office's Internet Web site at 
www.uspto.gov, under forms.
    Section 1.36: Section 1.36 is revised to include new paragraphs (a) 
and (b) so that revocation of power of attorney and withdrawal as 
attorney or agent of record are addressed in separate paragraphs. In 
addition, ``or authorization of agent'' is deleted because the term 
``power of attorney'' has been defined to include an authorization of 
an agent. The cross-reference to Sec.  1.31 is changed to Sec.  
1.32(b).
    Section 1.36(a) addresses revocation of a power of attorney. A 
registered patent attorney or patent agent is notified of any 
revocation with a ``Notice Regarding Change in Power of Attorney.'' A 
power of attorney to the patent practitioners associated with a 
Customer Number that is filed subsequent to another power of attorney 
will be treated as a revocation of the previously granted power of 
attorney. The Office can only recognize one Customer Number at a time 
for power of attorney purposes. When the power of attorney is to the 
patent practitioners associated with a Customer Number, the power of 
attorney is considered to be revoked when the power of attorney to the 
practitioners associated with the Customer Number is revoked. The 
revoked power of attorney may be replaced with either a new power of 
attorney to a new Customer Number or a power of attorney to a new list 
of patent practitioners. A power of attorney is not considered revoked 
when the list of patent practitioners associated with a Customer Number 
is changed (as by filing a Request for Customer Number Data Change 
(PTO/SB/124)). 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 is not separately informed of a revocation. As a result, Sec.  
1.36(a) has been revised to no longer suggest that such an associate 
practitioner would be separately notified of the revocation of power of 
attorney.
    When power of attorney is given to the registered patent 
practitioners associated with a Customer Number, for example with PTO/
SB/81, the list of patent 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.
    Section 1.36(b) provides that when the power of attorney for an 
application is given to the practitioners associated with a Customer 
Number, all of the patent practitioners associated with the Customer 
Number will not be permitted to withdraw if an application with the 
power of attorney has an Office action to which a reply is due and 
insufficient time remains in the time period for reply for applicant to 
prepare a reply. See MPEP Sec.  402.06.
    Section 1.53: Section 1.53 is amended by removing paragraph (d)(9) 
and redesignating paragraph (d)(10) as paragraph (d)(9). The Office has 
determined that Mail Stop CPA is not useful in the routing of 
correspondence within the Office.

[[Page 29869]]

    Section 1.363: Section 1.363 is amended by adding paragraph (c), 
which states ``A fee address must be an address associated with a 
Customer Number.'' At the time of issue fee payment, applicants may 
designate a fee address for maintenance fee purposes (hereafter, fee 
address) by submitting a ``Fee Address'' Indication form (PTO/SB/47) as 
an attachment to the Fee(s) Transmittal (PTOL-85B). If no Customer 
Number was previously acquired from the Office for the address being 
designated as the fee address, a Request for Customer Number form (PTO/
SB/125) should also be attached to the Fee(s) Transmittal (PTOL-85B). 
If a fee address is established in an allowed application or patent, 
the Office will send all maintenance fee correspondence (such as 
maintenance fee reminder notices) to the fee address; and the Office 
will send all other correspondence, to the correspondence address of 
record. See Customer Number Required in Order to Establish a Fee 
Address, 1261 Off. Gaz. Pat. Office 19 (August 6, 2002).
    Section 3.1: Section 3.1 is revised 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. Section 3.1 is also revised 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 3.21: Section 3.21 is revised to change ``its date of 
execution, name of each inventor, and title of the invention'' to ``the 
name of each inventor and the title of the invention.'' Section 3.21 is 
also revised to change ``the provisional application by name of each 
inventor and title of the invention'' to ``the provisional application 
by the name of each inventor and the title of the invention'' by adding 
``the'' before ``name'' and ``title.''
    The phrase ``its date of execution'' has been deleted from Sec.  
3.21 because the date of execution of a declaration is no longer 
required on a declaration (see MPEP Sec.  602.05 and because the 
application could be executed on more than one date, and thus there may 
be no single date of execution). Accordingly, the date of execution of 
the application is not particularly useful in identification of the 
patent application and is deleted as unnecessary.
    Section 3.24: Section 3.24 is revised to include two paragraphs, 
namely, paragraphs (a) and (b).
    New paragraph (a) of Sec.  3.24 addresses documents and cover 
sheets for electronic submissions (e.g., patent assignment documents 
filed via the Electronic Filing System (EFS) or the Electronic Patent 
Assignment System (EPAS)), and requires all documents 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.
    New paragraph (b) of Sec.  3.24 addresses documents and cover 
sheets for paper and facsimile submissions. Section Sec.  3.24(b) 
provides that for paper submissions (e.g., documents that are mailed to 
the Office), the original document may no longer be submitted. Section 
3.24(b) provides that ``[e]ither a copy of the original document or an 
extract of the original document'' must be submitted for recordation. 
Section 3.24(b) also explains 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.'' 
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 transmitted to 
applicant or his representative. With this uniform procedure, the 
Office will not return or retain 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 
copy or an 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 document discusses matters other than 
assignment of interests related to a patent.
    Section 3.24 is further revised 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). ``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 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: Section 3.25 is amended to delete paragraph (a)(1) 
and renumber paragraphs (a)(2) through (4) as (a)(1) through (3), 
respectively. Paragraph (a)(1) is deleted to prohibit applicants from 
submitting the original assignment document (because applicants should 
retain the original of the assignment document). Paragraph (a)(1) of 
Sec.  3.25, as renumbered, is further revised to insert ``original'' 
before ``document'' in order to clarify that only a copy of an original 
assignment document may be submitted for recording.
    Section 3.25(c) is revised to add paragraph (1) to state that 
electronic submissions (e.g., ETAS for trademark assignment documents) 
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 to 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: Section 3.27 is revised to change ``to be recorded'' 
to ``submitted by mail for recordation'' because documents and cover 
sheets submitted for recording may be faxed or electronically submitted 
to the Office and need not be mailed. Only documents submitted by mail 
need to be addressed as set forth in the rule. Section 3.27 is also 
revised 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: Section 3.31(a)(7) is revised 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.  2.33(d) and 2.193(c)(1)(iii) of this chapter for 
electronically transmitted trademark filings.
    Trademark assignments may be submitted electronically with the 
Electronic Trademark Assignment

[[Page 29870]]

System (ETAS), which is available on the Office's Internet Web site. 
See http://etas.uspto.gov/. Patent assignments may be electronically 
submitted using a similar tool, the Electronic Patent Assignment System 
(EPAS), and may also be submitted using EFS. When submitting a copy of 
an assignment using ETAS or EPAS, the cover sheet is completed and 
signed electronically. As with electronic submission of a trademark 
application, a signature may be applied to an assignment cover sheet by 
either: (1) Placing a symbol comprised of letters, numbers, and/or 
punctuation marks between forward slash marks in the signature block on 
the electronic submission (e.g. Jane P. Doe); or (2) signing the cover 
sheet using some other form of electronic signature specified by the 
Director. See Trademark Manual of Examining Procedure (TMEP) Sec.  
804.05, Signature of Electronically Transmitted Applications (May 
2003).
    Section 3.31(c)(1) is revised to simplify the requirements for the 
cover sheet to only require identification of whether the document to 
be recorded relates to a governmental interest.
    Paragraph (f) is added to Sec.  3.31, and provides 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: Section 3.34(b) is revised 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: Section 3.41(b)(2) is revised 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 revised to change the cross-reference to 
Sec.  3.27 because Sec.  3.27 was previously revised to delete Sec.  
3.27(b).
    Section 3.81: Section 3.81(a) is revised 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, Sec.  3.81(a) is 
amended 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 EPAS or 
EFS for patent assignment documents), and not by mail. Accordingly, the 
Office has revised 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.
    Paragraphs (a) and (b) of Sec.  3.81 are revised 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 have been 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.
    Section 3.81(b) is revised 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 
modifies 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, where assignment information is 
submitted after payment of the issue fee, the patent document will not 
include the assignment information, but the assignment information will 
be included in a Certificate of Correction. Furthermore, the practice 
of allowing a patent to issue to an assignee when a Sec.  3.73(b) 
statement has been filed, but an assignment has not been recorded is 
discontinued. See MPEP Sec.  1481. Section 3.81(c)(1) is amended to 
change ``assignee(s)'' to ``assignee'' and ``inventor(s)'' to 
``inventor'' because the singular includes the plural unless the 
context indicates otherwise. See 1 U.S.C. 1.
    Section 5.1: Section 5.1(a) is revised to add Mail Stop L&R to the 
address so that the address reads as follows: All correspondence in 
connection with this part, including petitions, should be addressed to: 
Mail Stop L&R, Commissioner for Patents, P.O. Box 1450, Alexandria, 
Virginia 22313-1450. National security classified applications and 
other related papers may also be hand-carried to Licensing and Review, 
Technology Center 3600, as provided in Sec.  5.1(c).
    Response to Comments: The Office published a notice proposing 
changes to the rules of practice regarding power of attorney and 
assignment practice. See Clarification of Power of Attorney Practice, 
and Revisions to Assignment Rules, 68 FR 38258 (June 27, 2003), 1272 
Off. Gaz. Pat. Office Notices 181 (July 29, 2003). The Office received 
nine written comments (from one intellectual property organization, 
seven patent practitioners, and one business). Comments in support of a 
change are not discussed. The other comments and the Office's response 
to those comments follow:
    Comment 1: An editorial change to Sec.  1.12(b) was recommended to 
change the term ``such records and related information'' because the 
use of the term was confusing.
    Response: The suggestion has been adopted and ``such records and 
related information'' has been changed to ``assignment records, 
digests, and indexes'.
    Comment 2: The definition of ``power of attorney'' in Sec.  1.32(a) 
was recommended to be revised to include designating a patent attorney 
or patent

[[Page 29871]]

agent or an individual authorized to practice before the Office in 
patent cases. Another comment noted that the use of ``agent'' in Sec.  
1.32 was confusing, and recommended revision to avoid using the term 
``agent'' to include an attorney.
    Response: These suggestions have been adopted. The definition of 
power of attorney and the remainder of the rule have been revised 
accordingly. Instead of using ``agent'' the term ``representative'' or 
``patent practitioner'' has been used. The term ``an individual 
authorized to practice before the Office in patent cases'' has not been 
included, however, because such a person is considered to have limited 
capacity to take action on behalf of a patent applicant (see Sec.  
10.9(a) and (b)), and is not recognized by the Office as an attorney or 
agent of record, and is not entered into the Office's computer systems 
as having a power of attorney.
    Comment 3: The term ``principal'' in Sec.  1.32(a)(2) was suggested 
as being too narrowly defined, and it was suggested that the term be 
defined broadly enough to include an appointment by fewer than all of 
the inventors.
    Response: This suggestion has not been adopted, but the language 
has been clarified in regard to appointments by fewer than all the 
applicants or assignees. Where all the applicants, or the assignees of 
the entire interest of all the applicants, do not give power of 
attorney to the same patent practitioners, a petition under Sec.  1.182 
is currently required before the Office will permit the split power of 
attorney. See MPEP Sec.  402.10. The term ``all the inventors'' is 
specifically not used in order to provide for the situation where an 
inventor is deceased or where a petition under Sec.  1.47 has been 
granted (the applicant would then either be fewer than all of the 
inventors or the party with proprietary interest pursuant to Sec.  
1.47(b)). If the term ``inventors'' was used, then in any application 
in which a petition under Sec.  1.47 was granted, a petition under 
Sec.  1.183 would also always be required to permit the power of 
attorney to be signed by fewer than all of the inventors, or by an 
assignee who is the assignee of the entire interest of the applicant, 
but not the assignee of the entire interest in the application (due to 
the lack of an assignment from the inventor, or if deceased, the legal 
representative of the inventor, who did not sign the declaration). With 
a split power of attorney, both patent practitioners are required to 
sign any response to an Office action, and to participate in any 
interviews in the patent application, which tends to delay prosecution 
of the patent application. Accordingly, applicants need to show good 
and sufficient reasons why more than one practitioner is necessary to 
represent applicants for the patent, and such an explanation will need 
to be provided in a petition under Sec.  1.183 to waive the 
requirements of Sec.  1.32(b)(4) for the applicant or the assignee of 
the entire interest of the applicant to sign the power of attorney.
    Comment 4: One comment noted that in Sec.  1.32(a)(3) revocation 
should also be defined as including the situation where the power of 
attorney is revoked by a new principal, and suggested that the 
definition be modified to address this situation. Another comment 
suggested that a new power of attorney act as a revocation of all prior 
powers of attorney.
    Response: The suggestion to expand the definition of revocation to 
include revocation by a new or different principal has been adopted. In 
the definition of revocation (Sec.  1.32(a)(3)), ``by the principal'' 
has been deleted after ``previously given''. As to the comment that a 
new power of attorney act as revocation of all prior powers of 
attorney, this suggestion has not been adopted because automatic 
revocation will only occur in certain situations. When an original 
power of attorney is filed giving power of attorney to attorneys A, B, 
and C, and the same principal subsequently files another power of 
attorney, giving power of attorney to D without revoking all prior 
powers of attorney, the subsequently filed power of attorney will be 
treated as a revocation of the original power of attorney. Similarly, 
if the applicant signed the original power of attorney, and an assignee 
of the entire interest of the applicant later takes action and files a 
new power of attorney, the original power of attorney is revoked and 
replaced by the power of attorney filed by the assignee. In addition, 
if a power of attorney is given to the practitioners associated with a 
Customer Number, and a (second) power of attorney is later received 
giving power of attorney to patent practitioners associated with a 
different Customer Number, the second power of attorney will be 
processed, with the first Customer Number being replaced with the 
second. The power of attorney to the practitioners associated with the 
first Customer Number is automatically revoked in this situation. In 
all of these situations, the most recently filed power of attorney will 
control.
    Comment 5: Several comments opposed the requirement in Sec.  
1.32(b)(2) to use Customer Number practice if more than ten patent 
practitioners are to be named. They argued that the proposed rule would 
require an applicant to choose between naming only a law firm by using 
the law firm's Customer Number, or to name ten attorneys in order to 
name some patent practitioners in the law firm as well as others not in 
the law firm. The commentators encouraged the Office to consider 
amending the rule to allow for appointment of both practitioners and 
Customer Numbers, as well as more than one Customer Number. The 
comments argued that using different Customer Numbers for different 
combinations of in-house practitioners and outside firm practitioners 
is burdensome and risky. One comment contended that all patent 
practitioners associated with a Customer Number needed to be at the 
same address.
    Response: Applicants and assignees currently, as a matter of 
practice, do have to choose between giving a power of attorney to a 
list of individual practitioners and a power of attorney to the 
practitioners associated with a Customer Number. This is because the 
Office's computer systems only allow either a list of individual 
practitioners or a Customer Number to be entered, but not both, nor 
more than one Customer Number. The proposal to allow for entry of 
multiple Customer Numbers would likely result in separate registration 
numbers being entered. The programming required to allow for more than 
one Customer Number would be very costly, and updating the list of 
patent practitioners would be burdensome on the Office, so it has not 
been adopted.
    A Customer Number does not need to have only patent practitioners 
in a single law firm associated with it. Instead, a Customer Number can 
be used to list all of the patent practitioners associated with a given 
client and who are working together to represent the client. As a 
result, requiring the use of a Customer Number if more than ten 
attorneys are to be appointed power of attorney would not require an 
applicant to make the choice suggested by the comment. Furthermore, to 
allow any of the patent practitioners access to private PAIR, Customer 
Number practice must be used.
    The comments have not explained why appointment of more than ten 
patent practitioners, particularly hundreds of patent practitioners, is 
necessary. When a long list of patent practitioners is submitted to the 
Office, this list must be constantly updated with a separate submission 
for each application. When a patent practitioner leaves a law firm, he 
must file a withdrawal for each application in which he has a power of 
attorney. There

[[Page 29872]]

could be thousands of applications in which he was given a power of 
attorney, even though he never personally signed a single communication 
in any of them. If the proper action is not taken in the application, 
he or she can be held responsible for the failure to take the 
appropriate action because he did not timely withdraw. Given the 
Office's extremely liberal policy of accepting correspondence from a 
patent practitioner who is acting in a representative capacity pursuant 
to Sec.  1.34, whether someone is of record is only relevant for a 
patent practitioner signing a change of correspondence address, an 
express abandonment without filing a continuing application, or a 
disclaimer. The work required for the Office to constantly update the 
lists of patent practitioners of record in receipt, matching and 
processing of the relevant paper has not been shown to be justified in 
exchange for the value actually given to applicants.
    All patent practitioners associated with a Customer Number do not 
need to be at the same address. A Customer Number can be used like a 
client number, with all the patent practitioners who represent the 
client being associated with a single Customer Number.
    Comment 6: Another comment asked if more than one Customer Number 
could be used to designate the list of patent practitioners of record 
so that applicants could give power of attorney to Customer Number A 
(all in-house counsel), and Customer Number B (several patent 
practitioners who are not in-house counsel). Alternatively, it was 
suggested that Sec.  1.32(b)(2) be revised to permit the naming of more 
than one Customer Number.
    Response: The suggestion has not been adopted. As stated in 
response to comment 5, in order to implement a change to permit use of 
more than one Customer Number to identify either the list of patent 
practitioners to be made of record or the correspondence address, 
reprogramming of multiple Office computer systems would be required, 
which is an automation project that the Office does not have resources 
to devote to at this time. Furthermore, the Office could not reprogram 
the software to allow multiple Customer Numbers to be used for the list 
of patent practitioners without also allowing multiple Customer Numbers 
being used for the correspondence address because access to private 
PAIR is a function of the correspondence address being associated with 
a single Customer Number. Thus, if the Office were to allow more than 
one Customer Number to be given for correspondence address purposes so 
that practitioners associated with each of the Customer Numbers can 
have access to private PAIR, then applicants would need to elect a 
single Customer Number for mailing purposes, and the Office would have 
to reprogram its system so as to be able to capture only the elected 
Customer Number for mailing purposes. The more Customer Numbers that 
the applicant has associated with a given application, the more likely 
that the applicant will need to change one or more of the Customer 
Numbers associated with the application. If only a single Customer 
Number is used (the Office permits up to three different Customer 
Numbers to be used, one for the power of attorney, one for the 
correspondence address and one for the fee address, but the same 
Customer Number can be used), then only a single Request for Customer 
Number Data Change can effectuate any changes necessary to the list of 
patent practitioners, or the address associated with a Customer Number. 
Given that a law firm, or a sole practitioner, can have multiple 
Customer Numbers without the Office being required to make any 
programming changes, it is more appropriate for the patent 
practitioners to use multiple Customer Numbers, with each Customer 
Number for a set of practitioners to be associated with a set of patent 
applications, rather than the Office to incur the cost of permitting 
multiple Customer Numbers to be used for the correspondence address 
(private PAIR access), or for the list of patent practitioners of 
record in an application.
    Comment 7: Most of the comments opposed the proposal of denying 
entry of a power of attorney that was not in compliance with the 
proposed rules, and noted that there would be significant costs to 
applicants as a result of this policy. For example, where the power of 
attorney was given by the applicant in a combined declaration and power 
of attorney, many comments argued that a new declaration would be 
required to provide a proper power of attorney, and that a new 
declaration would be difficult to obtain because the applicant may no 
longer be employed by the company. Several comments emphasized the 
burden to applicants in changing their forms to comply with the limit 
of ten patent practitioners of record and requested a several-year 
delay in the effective date.
    Response: After careful consideration, the Office has decided to 
permit applicants to supply a separate paper listing the patent 
practitioners who shall be made of record. Where a power of attorney is 
included as part of a declaration pursuant to Sec.  1.63, and the power 
of attorney does not comply with Sec.  1.32(b), the declaration would 
not be considered defective so long as the requirements of Sec.  1.63 
(or Sec.  1.64) are met. If a separate paper indicating which ten 
registered patent attorneys or registered patent agents named in the 
power of attorney are to be recognized by the Office as being of record 
in the application or patent to which the power of attorney is directed 
is provided pursuant to Sec.  1.32(c)(3), then the registered patent 
practitioners listed on the separate paper will be made of record. On 
the other hand, if the power of attorney does not comply with Sec.  
1.32(b) and the separate paper of Sec.  1.32(c)(3) is not provided, 
then no patent practitioners will be made of record.
    The Office does not encourage combined declarations and power of 
attorney. If such a combined format is used, however, it is recommended 
that the following language be inserted into the oath or declaration so 
that the patent practitioner will be able to take instructions from the 
actual client:

    The undersigned hereby authorizes the U.S. attorney or agent 
named herein to accept and follow instructions from ------ as to any 
action to be taken in the United States Patent and Trademark Office 
regarding this application without direct communication between the 
U.S. attorney or agent and the undersigned. In the event of a change 
in the persons from whom instructions may be taken, the U.S. 
attorney or agent named herein will be so notified by the 
undersigned.

    See Responsibilities of Practitioners Representing Clients in 
Proceedings Before the Patent and Trademark Office, 1091 Off. Gaz. 
Patent Office 26 (May 25, 1988). If the client is the company that 
employed the inventor, then if the company is the assignee of the 
entire interest of the applicant, the assignee should sign the power of 
attorney in the patent application, not the inventor who may no longer 
be employed by the assignee (company). Because an inventor who is no 
longer being employed by a company is unlikely to be represented by a 
patent practitioner who has filed a patent application on behalf of the 
assignee, the fact that it would be difficult to obtain the signature 
of the inventor on a new power of attorney is not persuasive, and a 
petition under Sec.  1.183 to waive this provision of the rules is 
unlikely to be granted for such a reason. An inventor may be available 
to sign a power of attorney, but may have a divergent interest from the 
company. Where the company (assignee) has not chosen to intervene in 
the application, and the power of attorney is given by the inventor 
(applicant), the inventor may later revoke the original power of

[[Page 29873]]

attorney to the patent practitioners chosen by the assignee and appoint 
his/her own patent attorney and change the correspondence address in 
the application (or patent). Such an exercise of authority by an 
inventor (applicant) is appropriate so long as the assignee of the 
entire interest of the applicant has not appointed a power of attorney, 
but adds unnecessary complexity to the prosecution of the application.
    Where a power of attorney lists more than ten patent practitioners 
and the Office enters those patent practitioners listed on a separate 
paper provided pursuant to Sec.  1.32(c)(3), a patent practitioner who 
is not recognized as the patent attorney or patent agent of record and, 
as a result is not entered into the Office's computer systems, is not 
required to request to be withdrawn, if the practitioner ceases to 
represent the applicant or assignee of the applicant. If such a patent 
practitioner files a request to withdraw, the Office will enter the 
paper in the patent application file, but will not process the paper, 
as the practitioner cannot be withdrawn because the practitioner was 
not made of record and was not entered into the Office's computer 
records.
    Comment 8: One comment, while questioning the wisdom of having any 
limit on the number of patent practitioners who may be given a power of 
attorney, suggested a limit of 25, and for the Office to enter in the 
first 25 when more than 25 are listed in a power of attorney. 
Alternatively, it was suggested in two comments that a fee be required 
for the entry of more than 10 patent practitioners. Another comment 
questioned the limit contending that where an application is 
electronically filed, the Office does not have to enter in any lists of 
registration numbers, because if PrintEFS were updated, the application 
data sheet could be scanned and optical character recognition (OCR) be 
used to upload the data.
    Response: A smaller number would be preferred by some, a larger by 
others, but the Office has decided that ten best balances the need of 
applicants to appoint several practitioners without using Customer 
Number practice and the need of the Office to avoid unnecessary work. 
The suggestion to adopt a fee to accept more than a set number of 
patent practitioners of record is noted and may be pursued in a future 
rule making, but the extra burden associated with entering additional 
names was a significant factor for not adopting the suggestions at this 
time.
    Comment 9: Many comments disapproved of the deletion of associate 
power of attorney practice. The comments argued that when a new 
attorney takes over prosecution of a patent application from a former 
counsel, an associate power of attorney is useful to bridge the gap 
until a new power of attorney can be executed. In addition, an 
associate power of attorney is considered useful where a patent 
practitioner of record who is not in the Washington, DC, area appoints 
another patent practitioner within the area to assist in the 
prosecution for the purpose of some procedural or petition matter, but 
does not wish to have the practitioner made of record in all patent 
applications (as would happen if they used Customer Number practice, 
and added the practitioner to the list of practitioners associated with 
the Customer Number). Another comment argued that the associate power 
of attorney practice was desirable because of the delays in obtaining a 
new power of attorney, and that such delays would lead to the original 
attorney of record receiving correspondence for too long. Another 
comment suggested that the rules be amended to provide that an 
associate attorney's authority is not dependent upon the continued 
representation by the appointing principal attorney.
    Response: Associate power of attorney practice has been eliminated 
because the practice is unnecessary in view of Customer Number 
practice. Customer Number practice, like an associate power of 
attorney, allows the list of patent practitioners to be changed easily 
to add an attorney without execution of a new power of attorney from 
the client, and therefore it is not necessary to be able to give an 
associate power of attorney if the power of attorney is to the 
practitioners associated with a Customer Number. Instead of using an 
associate power of attorney, if the power of attorney is to the patent 
practitioners associated with a Customer Number, a Request for Customer 
Number Data Change can be filed to add a practitioner that would have 
been given an associate power. In order to most effectively represent a 
patent applicant, a patent practitioner needs access to the private 
Patent Application Information Retrieval (private PAIR) system. Private 
PAIR enables the practitioner to obtain direct access the Office's 
electronic records for a patent application, including in many 
instances images of the papers in the patent application. In order to 
obtain access to these records, however, a Customer Number must be 
associated with the correspondence address of the application, and the 
registered practitioner must be associated with the Customer Number. 
The availability of the associate power of attorney practice to add new 
patent practitioners would encourage practitioners to give an associate 
power of attorney rather than having a new power of attorney to the 
practitioners associated with a Customer Number signed by the applicant 
or assignee of the entire interest of the applicant, even though the 
new power of attorney to the practitioners associated with a Customer 
Number would enhance their ability to represent the applicant or 
assignee of the entire interest of the applicant because of the access 
to private PAIR gained by Customer Number practice.
    Using a Customer Number effectively as a client number, so that 
both in-house patent counsel and other patent practitioners are 
associated with the Customer Number, may only be appropriate for 
clients who file many patent applications. If the set of practitioners 
who are representing a client on a matter is so unique that it is not 
efficient to establish a Customer Number specifically for this set of 
practitioners, then the power of attorney would be to a list of patent 
practitioners and the correspondence address could be given as a 
Customer Number so that only those patent practitioners associated with 
the Customer Number for the correspondence address (a subset of those 
with power of attorney) would have access to private PAIR.
    As to the suggestion that an associate power of attorney is 
necessary for the attorney to conduct an interview, e.g., in the 
situation where a non-Washington, DC, firm appoints a Washington, DC, 
area patent practitioner to conduct an interview in a patent 
application, it is noted that the Washington, DC, patent practitioner 
does not need to be of record or have an associate power of attorney if 
the Washington, DC, practitioner has in their possession a copy of the 
application file. Even if the Washington, DC, practitioner does not 
have a copy of the application file, the practitioner may conduct an 
interview with ``proper authority from the applicant or attorney or 
agent of record in the form of a paper on file in the application.'' 
See MPEP Sec.  713.05. Should an examiner object to a practitioner who 
is not of record conducting the interview, the practitioner is 
encouraged to bring a letter signed by an attorney of record, 
authorizing the practitioner to conduct the interview. For example, a 
sample of an ``Authorization to Act in a Representative Capacity'' is 
posted on the Office's Internet Web site under ``Forms'' at http://www.uspto.gov/web/forms/sb0084.pdf. A faxed copy of the letter would be 
acceptable.

[[Page 29874]]

    Similarly, a patent practitioner does not need to be of record to 
file a reply to an Office action. See Sec.  1.34, and MPEP Sec. Sec.  
405 and 714.01(c). Although the practitioner who is acting in a 
representative capacity pursuant to Sec.  1.34 cannot sign a change of 
correspondence address (Sec.  1.33(a)(2)), a disclaimer (Sec.  1.321), 
or a request to expressly abandon a patent application (Sec.  1.138) 
(unless also filing a continuing application), he can take all other 
actions necessary to continue the prosecution of the application. An 
associate power of attorney does not put a patent practitioner in a 
significantly better position to represent an applicant than they could 
exercise by acting in a representative capacity pursuant to Sec.  1.34. 
An associate power of attorney does, however, increase the workload of 
the Office as the Office practice was to enter the associate patent 
attorneys or patent agents into the Office computer records, indicate 
that the practitioner is an associate attorney, and then change the 
listing if the primary attorney ceased to have a power of attorney, or 
as new associates were appointed. In order to reduce the paperwork that 
the Office needs to process for a patent application, the Office will 
no longer enter associate powers of attorney into the electronic 
records for patent applications so as to make the associate attorney of 
record.
    Patent practitioners with an associate power of attorney cannot 
directly access private PAIR, and as a result, are less able to 
represent a client than one with direct access to private PAIR. Private 
PAIR allows access to the Office's computer records for the patent 
application, for example to the Patent Application Locating and 
Monitoring (PALM) system contents, to the patent term adjustment 
calculations, and, if the application is maintained in the Image File 
Wrapper (IFW) system, to the image filed of the documents in the file 
history. One particularly helpful feature of private PAIR is the ``View 
Outgoing Correspondence,'' a feature that allows patent practitioners 
to obtain a list of applications with recently mailed correspondence, 
and, if the application is maintained in the IFW system, to view the 
documents. To have access to private PAIR for a patent application, the 
patent practitioner must be associated with a Customer Number that is 
associated with the correspondence address for the application. In 
addition, the patent practitioner's computer system (or his or her 
paralegal's computer system) must be loaded with the appropriate 
software. Public PAIR also allows access to much of this same 
information, but is only available for applications that have either 
published or issued as patents. If the patent practitioner merely has 
an associate power of attorney, the practitioner is not associated with 
the Customer Number, and is not able to access Private PAIR. Without 
access to private PAIR, a patent practitioner may not have access to 
the complete patent application file and cannot fully represent the 
client. For example, patent term adjustment calculations are available 
in private PAIR, but are not mailed to applicants.
    Currently, the Office records both primary attorneys of record (who 
may not be associated with a Customer Number) as well as associate 
powers of attorney in the Office's PreExam computer system, so as to 
have a readily available list of patent practitioners of record for a 
particular application. Since an associate power of attorney terminates 
with the termination of the power of attorney to the patent 
practitioner who gave the associate power of attorney, associate powers 
of attorney require record keeping in addition to the entry of the 
associate powers of attorney into attorney of record fields, because 
the Office must take down the associate power of attorney once the 
primary attorney no longer has power of attorney. The suggestion to 
allow an associate power of attorney to remain valid even after the 
power of attorney to the primary attorney has been revoked, or where 
the primary attorney has withdrawn, has not been adopted. If an 
applicant or assignee desires the associate to be an attorney of 
record, the applicant or assignee should sign the required power of 
attorney.
    In the situation where a practitioner is being brought in to assist 
with some overflow work, no appointment of an associate power of 
attorney is necessary before the Office is willing to accept the paper 
from the practitioner. Part 1 of the rules of practice do not address 
engagement letters between one patent practitioner and another. As a 
result, if the attorney of record desires the assistance of another 
patent practitioner, the rules of practice do not prohibit the patent 
practitioner from obtaining an ``Associate Power of Attorney'' or 
``Authorization of Agent'' from the patent practitioner of record for 
their records. Furthermore, such a document would be considered a 
showing under Sec.  1.34 that a person was acting in a representative 
capacity pursuant to Sec.  1.34 on behalf of the applicant.
    As to the delay inherent in obtaining a new power of attorney, 
although the original attorney will no longer be permitted to give an 
associate power of attorney, the original attorney can withdraw, or 
simply change the correspondence address to the new attorney's address.
    Comment 10: One comment explained that the list of practitioners 
associated with a Customer Number usually only includes the partners in 
a firm, whereas an associate power of attorney was given to associate 
attorneys. The comment argued that eliminating associate power of 
attorney practice would hamper development of associate attorneys.
    Response: The Office's computer system does not allow both a power 
of attorney to the practitioners associated with a Customer Number and 
either a list of patent practitioners (without use of a Customer 
Number) or another list of practitioners associated with a different 
Customer Number. Accordingly, the Office cannot enter a power of 
attorney to a Customer Number and an associate power of attorney. 
Furthermore, the relationship between being of record in a patent 
application (as would have occurred where the Office was able to enter 
an associate power of attorney), and being able to develop as a patent 
practitioner is not understood. A patent practitioner who is an 
associate at a firm could act in a representative capacity pursuant to 
Sec.  1.34, under the direction of a practitioner of record. The 
inability to sign a change of correspondence address, has little to do 
with professional development.
    Comment 11: Many comments suggested that a benefit of associate 
power of attorney practice is to permit someone who is not of record to 
conduct an interview, and that many examiners deny such an interview 
because the attorney is not of record, even though the Manual of Patent 
Examining Procedure states that such an interview is acceptable.
    Response: Applicants desiring to have an attorney who is not of 
record and are concerned that the examiner may question the authority 
of the practitioner to conduct the interview should delegate to the 
practitioner the authority to conduct the interview by a separate 
letter, such as an ``Authorization to Act in a Representative 
Capacity.'' This sample template is available on the Office's Internet 
Web site in the listing of forms after PTO/SB/83. A faxed copy of such 
a letter would be acceptable, and the practitioner could bring a copy 
of the letter to the interview in the event that the examiner has a 
question about the authority of the practitioner.
    Comment 12: One comment noted that having applicant execute a new

[[Page 29875]]

power of attorney would not be unduly burdensome, but requested 
clarification of the effect of elimination of associate power of 
attorney practice upon previously filed associate powers of attorney.
    Response: Previously filed associate powers of attorney remain 
valid, and will continue to be effective.
    Comment 13: One comment noted a discomfort with the use of Customer 
Number practice in that if the Office transposes digits when entering 
the Customer Number, the correspondence goes to an entirely incorrect 
address.
    Response: The Office is sensitive to the need to carefully check 
for the correct entry of Customer Numbers and is taking steps to ensure 
that the correct Customer Number is entered. For example, when the 
Office keys in a Customer Number, the address associated with the 
Customer Number is retrieved. This address is compared to the name of 
the firm or company that filed the patent application, and any street 
address included with the application papers, to check the accuracy of 
the Customer Number that is entered. Applicants can assist the Office 
in improving the accuracy of entry of the Customer Number by ensuring 
that the Customer Number is clear and legible (e.g., at least 12- or 
14-point font and not fuzzy).
    Comment 14: One comment stated that the proposal to require the 
exact name as registered with his or her signature was unreasonable, 
but noted that it was not clear that the exact name as registered was 
in fact being proposed to be required.
    Response: The Office did intend to propose to require the exact 
name as registered, as this change was also included in the rule 
changes proposed in a recent notice of proposed rule making. See 
Changes To Support Implementation of the United States Patent and 
Trademark Office 21st Century Strategic Plan, 68 FR 53816 (Sep. 12, 
2003), 1275 Off. Gaz. Pat. Office Notices (Oct. 7, 2003) (proposed 
rule). On reflection, the Office agrees that it is not necessary to 
obtain the exact name as registered to confirm the identity of the 
person signing the correspondence, but will instead require the typed 
name of the person signing the correspondence. Signatures are not 
always legible, and digits on registration numbers are sometimes 
transposed or inadvertently omitted. Accordingly, having a typed name 
is considered necessary.
    Comment 15: As to Sec.  1.36, one comment stated that the 
revocation of the power of attorney should be available to fewer than 
all of the inventors, or fewer than the assignee of the entire interest 
of the applicant.
    Response: The suggestion has not been adopted. The current practice 
is to permit revocation by fewer than all of the applicants only if a 
petition under Sec.  1.182 is filed, explaining why a split power of 
attorney is necessary. See MPEP Sec.  402.10. Having more than one 
attorney or an attorney and an applicant required to sign all 
correspondence in an application often leads to the application 
becoming abandoned due to the difficulty in obtaining the necessary 
signatures. As a result, the rules have not been amended to provide for 
fewer than all of the applicants to be able to revoke the power of 
attorney without a showing of sufficient cause.
    Comment 16: One comment suggested that .jpg files be added to the 
list of formats accepted for electronic submission of assignment 
documents pursuant to Sec.  3.24 and Sec.  3.25, arguing that this 
format is accepted in Trademarks.
    Response: At this time it is not feasible for the Office to expand 
the formats that will be accepted for electronic submission of 
assignment documents. The format .jpg is acceptable for Trademark 
documents filed through Trademark Electronic Application System (TEAS), 
but not assignments of Trademarks filed through ETAS.
    Comment 17: Two comments noted the change in practice proposed in 
Sec.  3.34 would be more acceptable to applicants if the Notice of 
Recordation were modified to also include an Attorney Docket Number, as 
well as the title of the invention according to the application on 
filing. Alternatively, one comment suggested use of the Express Mail 
number as an identifier on the Notice of Recordation.
    Response: The proposal to use the Express Mail number as an 
identifier is not adopted. The Office can process faxed or 
electronically filed assignment documents much quicker than those 
received by mail, and allowing use of an Express Mail number would 
promote a practice of mailing at a time when the Office is seeking to 
discourage mailing and encourage electronic submissions. The Office 
has, however, adopted the suggestion to include the title of the 
invention, but notes that the title that will be printed on the Notice 
of Recordation is the title reflected in the Office's computer records, 
and will not be rekeyed from the assignment. As to the attorney docket 
number, the suggestion has also been adopted, if the assignment is for 
a single property. The notice of recordation cannot reflect docket 
numbers if the assignment is for more than one patent or trademark.
    Comment 18: Another comment stated that sometimes the wrong patent 
assignment document is attached to the Notice of Recordation, and 
having a copy of the document has been useful in the past to enable the 
mix-up to be addressed.
    Response: The Office has made patent and trademark assignment 
records available over the Internet. Although the copy of a patent 
assignment document cannot be displayed using http://assignments.uspto.gov/assignments/q?db=pat, the assignment records on 
the Internet provide a mechanism to check if the patent assignment was 
recorded correctly.
    Administrative Procedure Act: This final rule changes the rules of 
practice to Office procedures involving power of attorney practice and 
recording of assignment documents. The changes addressed in this final 
rule 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 
were not required pursuant to 5 U.S.C. 553(b) or (c) (or any other 
law). Nevertheless, the Office did provide an opportunity for public 
comment on the changes in the notice of proposed rule making because 
the Office desires the benefit of public comment on the proposed 
changes.
    Regulatory Flexibility Act: As prior notice and an opportunity for 
public comment were 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. The changes in this final rule impose no additional fees on patent 
applicants.
    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 final rule involves information 
collection requirements which are subject to review by the Office of 
Management and Budget (OMB) under the Paperwork

[[Page 29876]]

Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The collections of 
information involved in this final rule have been reviewed and 
previously approved by OMB under OMB control numbers 0651-0027, 0651-
0032, 0651-0034, and 0651-0035. The changes in this final rule do not 
affect the information requirements associated with these information 
collections. Therefore, the Office is not submitting these information 
collection packages to OMB for review and approval.
    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; (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; and 
(10) change the address that would be used for mailing certain patent 
applications.
    OMB Number: 0651-0027.
    Title: Recording Assignments.
    Form Numbers: PTO-1594 and PTO-1595.
    Type of Review: Approved through June of 2005.
    Affected Public: Individuals or households, business or other for-
profit institutions, not-for-profit institutions, farms, Federal 
Government, and State, local, or tribal governments.
    Estimated Number of Respondents: 240,345.
    Estimated Time Per Response: 30 minutes.
    Estimated Total Annual Burden Hours: 120,173 hours.
    Needs and Uses: The Office records over 200,000 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: 0651-0032.
    Title: Initial Patent Application.
    Form Number: PTO/SB/01-07, PTO/SB/13PCT, PTO/SB/16-19, PTO/SB/29 
and 29A, PTO/SB/101-110.
    Type of Review: Approved through July of 2006.
    Affected Public: Individuals or households, business or other for-
profit institutions, not-for-profit institutions, farms, Federal 
Government, and State, local, or tribal governments.
    Estimated Number of Respondents: 454,287.
    Estimated Time Per Response: 22 minutes to 10 hours and 45 minutes.
    Estimated Total Annual Burden Hours: 4,171,568 hours.
    Needs and Uses: The purpose of this information collection is to 
permit the Office to determine whether an application meets the 
criteria set forth in the patent statute and regulations. The standard 
Fee Transmittal form, New Utility Patent Application Transmittal form, 
New Design Patent Application Transmittal form, New Plant Patent 
Application Transmittal form, Declaration, Provisional Application 
Cover Sheet, and Plant Patent Application Declaration will assist 
applicants in complying with the requirements of the patent statute and 
regulations, and will further assist the USPTO in processing and 
examination of the application.

    OMB Number: 0651-0034.
    Title: Secrecy and License to Export.
    Form Numbers: None.
    Type of Review: Approved through April of 2004.
    Affected Public: Individuals or households, business or other for-
profit institutions, not-for-profit institutions, farms, Federal 
Government, and State, local, or tribal governments.
    Number of Respondents: 1,669.
    Estimated Time Per Response: Between 30 minutes and 4 hours.
    Estimated Total Annual Burden Hours: 1,310 hours.
    Needs and Uses: When disclosure of an invention may be detrimental 
to national security, the Director of the USPTO must issue a secrecy 
order and withhold the publication of the application or grant of a 
patent for such period as the national interest requires. The USPTO is 
also required to grant foreign filing licenses in certain circumstances 
to applicants filing patent applications in foreign countries. This 
collection is used by the public to petition the USPTO to allow 
disclosure, modification, or rescission of a secrecy order, or to 
obtain a general or group permit. Applicants may also petition the 
USPTO for a foreign filing license, a retroactive license, or to change 
the scope of a license.

    OMB Number: 0651-0035.
    Title: Representative and Address Provisions.
    Form Numbers: PTO/SB/80/81/82/83/122/123/124A/124B/125A/125B.
    Type of Review: Approved through November of 2005.
    Affected Public: Individuals or households, business or other for-
profit, not for-profit institutions and Federal Government.
    Estimated Number of Respondents: 355,005.
    Estimated Time Per Response: 3 minutes (0.05 hours) to 1 hour 30 
minutes (1.5 hours).
    Estimated Total Annual Burden Hours: 30,088 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, and to request or 
change information associated with a customer number.
    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, P.O. 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.

[[Page 29877]]

37 CFR Part 3

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

37 CFR Part 5

    Classified information, foreign relations, inventions and patents.


0
For the reasons set forth in the preamble, 37 CFR parts 1, 3 and 5 are 
amended as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority citation for 37 CFR part 1 continues to read as 
follows:

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


0
2. Amend Sec.  1.1 by revising paragraph (a)(4)(i) to read as follows, 
and by removing and reserving paragraph (f).


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

    (a) * * *
    (4) Office of Public Records correspondence. (i) Assignments. All 
patent-related documents submitted by mail 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.
* * * * *
    (f) [Reserved]

0
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 available to the public. Copies of any 
assignment records, digests, and indexes 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.
* * * * *

0
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 or registered patent agent. See Sec.  10.6 
of this subchapter. The United States Patent and Trademark Office 
cannot aid in the selection of a registered patent attorney or patent 
agent.

0
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 a registered patent attorney or a registered patent agent to 
act on his or her behalf.
    (2) Principal means either an applicant for patent (Sec.  1.41(b)) 
or an assignee of entire interest of the applicant. The principal 
executes a power of attorney designating one or more registered patent 
attorneys or registered patent agents to act on his or her behalf.
    (3) Revocation means the cancellation by the principal of the 
authority previously given to a registered patent attorney or 
registered patent agent to act on his or her behalf.
    (4) Customer Number means a number that may be used to:
    (i) Designate the correspondence address of a patent application or 
patent such that the correspondence address for the patent application 
or patent would be the address associated with the Customer Number;
    (ii) Designate the fee address (Sec.  1.363) of a patent such that 
the fee address for the patent would be the address associated with the 
Customer Number; and
    (iii) Submit a list of practitioners such that those registered 
patent practitioners associated with the Customer Number would have 
power of attorney.
    (b) A power of attorney must:
    (1) Be in writing;
    (2) Name one or more representatives in compliance with (c) of this 
section;
    (3) Give the representative 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 of the applicant.
    (c) A power of attorney may only name as representative:
    (1) One or more joint inventors (Sec.  1.45);
    (2) Those registered patent practitioners associated with a 
Customer Number;
    (3) Ten or fewer registered patent attorneys or registered patent 
agents (see Sec.  10.6 of this subchapter) (patent practitioners). 
Except as provided in paragraph (c)(1) or (c)(2) of this section, the 
Office will not recognize more than ten patent practitioners as being 
of record in an application or patent. If a power of attorney names 
more than ten patent practitioners, such power of attorney must be 
accompanied by a separate paper indicating which ten patent 
practitioners named in the power of attorney are to be recognized by 
the Office as being of record in application or patent to which the 
power of attorney is directed.

0
6. Amend Sec.  1.33 by revising paragraphs (a) introductory text, (b) 
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 given, over a typed correspondence address. 
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:
* * * * *
    (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:

[[Page 29878]]

    (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.
* * * * *

0
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 and name with his or 
her signature. Further proof of authority to act in a representative 
capacity may be required.

0
8. Revise Sec.  1.36 to read as follows:


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 an applicant for patent 
(Sec.  1.41(b)) or an assignee of the entire interest of the applicant. 
A power of attorney to the patent practitioners associated with a 
Customer Number will be treated as a request to revoke any powers of 
attorney previously given. Fewer than all of the applicants (or by 
fewer than the assignee of the entire interest of the applicant) may 
only revoke the power of attorney upon a showing of sufficient cause, 
and payment of the petition fee set forth in Sec.  1.17(h). 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(c)(2)), the practitioners so appointed will also be notified of 
the revocation of the power of attorney when the power of attorney to 
all of 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 of 
the applicant may revoke previous powers of attorney and give another 
power of attorney of the assignee's own selection as provided in Sec.  
1.32(b).
    (b) A registered patent attorney or patent agent who has been given 
a power of attorney pursuant to Sec.  1.32(b) may withdraw as attorney 
or agent of record 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 in an application that has an Office action to which a reply is 
due, but insufficient time remains for the applicant to file a reply. 
See Sec.  1.613(d) for withdrawal in an interference.


Sec.  1.53  [Amended]

0
9. Amend Sec.  1.53 by removing paragraph (d)(9) and redesignating 
paragraph (d)(10) as paragraph (d)(9).

0
10. Revise Sec.  1.363 by adding paragraph (c) as follows:


Sec.  1.363  Fee address for maintenance fee purposes.

* * * * *
    (c) A fee address must be an address associated with a Customer 
Number.

PART 3--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE

0
11. 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).


0
12. 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.

0
13. Revise Sec.  3.21 to read as follows:


Sec.  3.21  Identification of patents and patent applications.

    An assignment relating to a patent must identify the patent by the 
patent number. An assignment relating to a national patent application 
must identify the national patent application by the application number 
(consisting of the series code and the serial number, e.g., 07/
123,456). An assignment relating to an international patent application 
which designates the United States of America must identify the 
international application by the international application number 
(e.g., PCT/US90/01234). If an assignment of a patent application filed 
under Sec.  1.53(b) is executed concurrently with, or subsequent to, 
the execution of the patent application, but before the patent 
application is filed, it must identify the

[[Page 29879]]

patent application by the name of each inventor and the title of the 
invention so that there can be no mistake as to the patent application 
intended. If an assignment of a provisional application under Sec.  
1.53(c) is executed before the provisional application is filed, it 
must identify the provisional application by the name of each inventor 
and the title of the invention so that there can be no mistake as to 
the provisional application intended.

0
14. 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 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 copy of the 
original document or an extract of the original document must 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.

0
15. 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.

0
16. 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, P.O. Box 1450, 
Alexandria, Virginia 22313-1450, unless they are filed together with 
new applications.

0
17. Amend Sec.  3.31 by revising paragraphs (a)(7) and (c)(1) and 
adding 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 letters, numbers, and/or 
punctuation marks between forward slash marks submission (e.g./Thomas 
O'Malley III/) 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.

0
18. 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.

0
19. 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.

0
20. 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.

[[Page 29880]]

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

0
21. The authority citation for 37 CFR part 5 continues 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).


0
22. Revise 5.1(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: Mail Stop L&R, Commissioner for 
Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
* * * * *

    Dated: May 18, 2004.
Jon W. Dudas,
Acting Under Secretary of Commerce for Intellectual Property and Acting 
Director of the United States Patent and Trademark Office.
[FR Doc. 04-11761 Filed 5-25-04; 8:45 am]
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