Communications With the Patent and Trademark Office

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1, 5 and 10

[Docket No. 951006247-5247-01]

RIN 0651-AA70

Communications With the Patent and Trademark Office

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The Patent and Trademark Office (Office) is proposing to amend

the rules of practice in patent and trademark cases to simplify and

streamline existing mailing procedures. The new procedures will include

specific addresses for most mail to ensure faster and more accurate

mail delivery. A definition of ``Federal holiday within the District of

Columbia'' is provided and the procedure for ``Express Mail'' will be

simplified.

DATES: Comments must be received by January 2, 1996. No hearing will be

held.

ADDRESSES: Address written comments to Assistant Commissioner for

Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513, marked

to the attention of Lynne G. Beresford. In addition, written comments

may also be sent by facsimile transmission to (703) 308-7220 with a

confirmation copy mailed to the above address, or by electronic mail

messages over the Internet to [email protected].

Written comments will be available for public inspection on January

16, 1996, in the Assistant Commissioner for Trademarks' suite on the

10th floor of the South Tower Building, 2900 Crystal Drive, Arlington,

Virginia 22202-3513.

FOR FURTHER INFORMATION CONTACT:

Lawrence E. Anderson (for patent-related matters) by telephone at (703)

305-9285, by electronic mail at [email protected], or by mail to his

attention addressed to the Assistant Commissioner for Patents, Box DAC,

Washington, D.C. 20231; or Lynne G. Beresford (for trademark-related

matters) by telephone at (703) 308-8900, extension 44, or by mail

marked to their attention and addressed to the Assistant Commissioner

for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513.

SUPPLEMENTARY INFORMATION: Addresses for correspondence with the Office

are proposed to be changed to reflect the creation of a mailroom site

at the South Tower Building for processing most trademark-related mail;

to distinguish correspondence intended for organizations reporting to

the Assistant Commissioner for Patents from other correspondence; and

to add a separate mailing address in the Office of the Solicitor for

disciplinary matters

The proposed rulemaking entitled ``Changes in Requirements for

Addressing Trademark Applications and Trademark-Related Papers'' (0651-

AA73) has been merged with this notice of proposed rulemaking.

The Office will now have three separate general mailing addresses:

(1) Assistant Commissioner for Patents for correspondence processed by

organizations reporting to the Assistant Commissioner for Patents; (2)

Assistant Commissioner for Trademarks for all trademark-related mail,

except for trademark documents sent to the Assignment Division for

recordation and requests for certified and uncertified copies of

trademark documents which should be addressed to the Commissioner of

Patents and Trademarks; and (3) Commissioner of Patents and Trademarks

for all other correspondence. Notwithstanding the above, it is proposed

that there will be separate mailing addresses in the Office of the

Solicitor for certain disciplinary matters and cases involving pending

litigation.

Those who correspond with the Office are requested to use separate

envelopes directed to the different areas.

Because patent-related mail will be sent to the Assistant

Commissioner for Patents, the requirement to designate patent

application correspondence as ``PATENT APPLICATION'' is proposed to be

deleted from section 1.5(a).

In addition, it is proposed that ``Federal holiday within the

District of Columbia'' be defined as including Official closings.

It is further proposed that a ``Certificate of Mailing by Express

Mail'' (currently necessary to obtain the benefit of the date of

deposit with the United States Postal Service (U.S.P.S.) as the filing

date of the Paper) no longer be required for correspondence actually

received in the Office.

Patent-Related Mail

Section 1.1 is proposed to be amended to provide for correspondence

which is processed by organizations reporting to the Assistant

Commissioner for Patents to be addressed to the ``Assistant

Commissioner for Patents, Washington, DC 20231.'' The Office first

announced the new address for patent-related mail in a notice (Change

of Address for Patent Applications and Patent Related Papers) published

in the Official Gazette at 1173 Off. Gaz. Pat. Office 13 (April 4,

1995).

This change will affect correspondence such as: patent

applications, responses to notices of informality, requests for

extension of time, notices of appeal to the Board of Patent Appeals and

Interferences (the Board), briefs in support of an appeal to the Board,

requests for oral hearing before the Board, extensions of term of

patent, requests for reexamination, statutory disclaimers, certificates

of correction, petitions to the Commissioner, submission of information

disclosure statements, petitions to institute a public use proceeding,

petitions to revive abandoned patent applications, and other

correspondence related to patent applications and patents which is

processed by organizations reporting to the Assistant Commissioner for

Patents. When patent-related documents are filed with a certificate of

mailing, pursuant to section 1.8, the certificate of mailing should be

completed with the new address: Assistant Commissioner for Patents,

Washington, D.C. 20231.

Unless otherwise specified, correspondence not processed by

organizations reporting to the Assistant Commissioner for Patents, such

as communications with the Board, patent services including patent copy

sales, assignments, requests for lists of patents and SIRs in a

subclass, requests for the status of maintenance fee payments, as well

as patent practitioner enrollment matters including admission to

[[Page 55692]]

examination, registration to practice, certificates of good standing,

and financial service matters including establishing a deposit account

should continue to be addressed to the Commissioner of Patents and

Trademarks, Washington, D.C. 20231. Documents to be recorded with the

Assignment Division, except those filed with new applications, should

be addressed to: Box Assignment, Commissioner of Patents and

Trademarks, Washington, D.C. 20231. Orders for certified and

uncertified copies of Office documents should be addressed to: Box 10,

Commissioner of Patents and Trademarks, Washington, D.C. 20231.

Special Office mail boxes as currently listed in each issue of the

Official Gazette should continue to be used to allow forwarding of

particular types of mail to the appropriate areas as quickly as

possible. Use of special box designations will facilitate the Office's

timely and accurate identification and processing of the designated

correspondence.

Checks should continue to be made payable to the Commissioner of

Patents and Trademarks.

Trademark-Related Mail

Most trademark-related mail should be sent directly to the

Trademark Operation at: Assistant Commissioner for Trademarks, 2900

Crystal Drive, Arlington, Virginia 22202-3513. When trademark-related

documents are filed with a certificate of mailing, pursuant to section

1.8, the certificate of mailing should be completed with the new

address: Assistant Commissioner for Trademarks, 2900 Crystal Drive,

Arlington, Virginia 22202-3513. Use of the correct address will avoid

processing delays. Trademark documents to be recorded with the

Assignment Division, except those filed with new applications, should

be addressed to: Box Assignment, Commissioner of Patents and

Trademarks, Washington, D.C. 20231. Orders for certified and

uncertified copies of trademark documents should be addressed to: Box

10, Commissioner of Patents and Trademarks, Washington, D.C. 20231.

The Office announced the new address for trademark-related mail in

a notice (Change of Address for Trademark Applications and Trademark

Related Papers) published in the Federal Register at 59 FR 29275 (June

6, 1994) and in the Trademark Office Official Gazette at 1163 Off. Gax.

Trademark Office 80 (June 28, 1994) (republished in 1170 Off. Gaz. Pat.

Office 303 (January 3, 1995)).

The Office will continue to maintain the special box designations

and FEE/NO FEE indicators for trademark mail as currently listed in

each issue of the Official Gazette. In addition to addressing

trademark-related mail as set forth above, the boxes should also be

used to allow forwarding of particular types of mail to the appropriate

areas as quickly as possible.

Checks should continue to be made payable to the Commissioner of

Patents and Trademarks.

Mail intended for the Trademark Trial and Appeal Board should be

addressed to: Assistant Commissioner for Trademarks, 2900 Crystal

Drive, Arlington, Virginia 22202-3513, including BOX TTAB/FEE or BOX

TTAB/NO FEE, whichever is applicable.

Hand-Carried Correspondence

All correspondence with the Office, except for communications

relating to pending litigation as specified currently in section

1.1(g), may continue to be filed directly at the Attorney's Window

located in Room 1B03 of Crystal Plaza Building 2, 2011 South Clark

Place, Arlington, Virginia. Trademark-related papers may also be filed

at the ``walk-up'' window located on the third floor of the South Tower

Building, 2900 Crystal Drive, Arlington, Virginia.

Federal Holidays Within The District of Columbia

When the Patent and Trademark Office is officially closed for an

entire day (for reasons due to weather or other causes), the Office

will consider each such day a ``Federal holiday within the District of

Columbia'' under 35 U.S.C. 21. Any action or fee due on such a day may

be taken, or fee paid, on the next succeeding business day the Office

is open.

Legal holidays considered ``Federal holidays within the District of

Columbia'' are New Year's Day (January 1), Martin Luther King, Jr.'s

Birthday (third Monday in January), Presidential Inauguration Day,

Washington's Birthday (third Monday in February), Memorial Day (last

Monday in May), Independence Day (July 4), Labor Day (first Monday in

September), Columbus Day (second Monday in October), Veterans Day

(November 11), Thanksgiving Day (fourth Thursday in November) and

Christmas Day (December 25). In the past, the Office has published

notices concerning unscheduled closings. See, e.g., ``Closing of Patent

and Trademark Office on Thursday, January 20, 1994 and Friday, February

11, 1994,'' 1161 Off. Gaz. Pat. Office 12 (April 5, 1994) (republished

in 1170 Off. Gaz. Pat. Office 8 (January 3, 1995)) and ``Filing of

Papers During Unscheduled Closings of the Patent and Trademark

Office,'' 1097 Off. Gaz. Pat. Office 53 (December 20, 1988)

(republished in 1170 Off. Gaz. Pat. Office 8 (January 3, 1995)). The

proposed rule change will further implement the existing policy.

Express Mail Provisions

Section 1.10 is proposed to be amended by deleting the requirement

for a ``Certificate of Mailing by Express Mail'' to obtain the benefit

of the date of deposit with the United States Postal Service (U.S.P.S.)

as the filing date of the paper. The title of section 1.10 is proposed

to be revised and section 1.10 is also proposed to be amended to

incorporate requirements for the resubmission of misplaced

correspondence which parallel section 1.8.

Under the current rule, the filer is required to include a

Certificate of Mailing by Express Mail, certifying the date of deposit

as Express Mail. Some papers filed with the Office, although deposited

as Express Mail with the U.S.P.S., have been denied the filing date of

the date of deposit as Express Mail because the required Certificate of

Mailing by Express Mail was omitted or deficient. The lost filing date

for a significant number of these papers has resulted in the loss of

substantive rights. For example, a trademark registration may be

canceled if the required affidavit of continued use or excusable non-

use is not filed by the end of the sixth year of registration. 15

U.S.C. 1058.

In light of the problematic nature of the requirement for a

Certificate of Mailing by Express Mail, inasmuch as the date of deposit

has already been entered by a disinterested third party, the Office

proposes to delete this requirement from section 1.10.

Miscellaneous Changes

Miscellaneous changes are proposed to change the word

``communications'' to ``correspondence'' for purposes of consistency.

Also, since the certificate of mailing by ``Express Mail'' will no

longer be a requirement of the proposed rules, the provisions of Part

10 relating to misconduct are proposed to be amended to delete

reference to this requirement.

Discussion of Specific Rules

If revised as proposed, the heading of section 1.1 will be changed

to state that the section contains the addresses for correspondence to

the Patent and Trademark Office.

Section 1.1 is proposed to be revised to set out all pertinent

Office mailing

[[Page 55693]]

addresses in paragraph (a) and in added paragraphs (a)(1), (a)(2), and

(a)(3). It should be noted that the remaining paragraphs of section 1.1

contain directions for using box designations rather than addresses.

Paragraph (a)(1) is proposed to be added to set out the new mailing

address to which most patent-related documents should be sent.

Paragraph (a)(2) is proposed to be added to set out the new mailing

address to which most trademark-related documents should be sent. The

Solicitor's mailing address, formerly set out in paragraph (g) of the

section is moved to a new paragraph (a)(3). Paragraph 1.1(g) is

proposed to be removed and reserved.

Sections 1.1 and 1.3 are proposed to be amended so that the word

``communications'' is changed to ``correspondence.''

Section 1.5(a) is proposed to be amended by removing the

requirement of the words ``PATENT APPLICATION'' on letters concerning

patent applications.

Section 1.8(a) is proposed to be revised to state that papers and

fees must be addressed as set out in 1.1(a). For the purposes of

1.8(a)(1)(i)(A), first class mail is interpreted as including ``Express

Mail'' and ``Priority Mail'' deposited with the U.S.P.S.

Section 1.9 is proposed to be amended to add a definition of

``Federal holiday within the District of Columbia'' to include Federal

holidays and days when the Patent and Trademark Office is officially

closed for the entire day (for reasons due to adverse weather or other

causes).

Section 1.10 is proposed to be revised to state that ``Express

Mail'' must be addressed as set out in Sec. 1.1(a). The title of

section 1.10 is proposed to be revised to reflect this change. Further,

for all correspondence actually received in the Office, the Office will

consider the correspondence filed on the date shown by the ``date in''

notation on the ``Express Mail'' label unless the ``date in'' is a

Saturday, Sunday or Federal holiday within the District of Columbia.

Because of the reliance on the ``date in'' marked by the Postal

Service, correspondence should be deposited directly with a person at

the United States Postal Service, rather than in a drop box, to ensure

that the person making the deposit receives a copy of the ``Express

Mail'' label at the time of making the deposit to verify that the

``date in'' is accurately and clearly written by the Postal Service

employee. Persons using an Express mail receptacle (such as a drop box)

do so at the risk of not receiving an accurate and legible copy of the

Express mail label at the time of deposit from which the Office may

determine the ``Express mail'' ``date in,'' and, therefore, may not

later argue that they should be entitled to the date on which they

deposited the correspondence into a receptacle. Moreover, if the ``date

in'' is found to be illegible or unclear, a person dealing directly

with a Postal Service employee must take corrective action to ensure

that a clear and accurate date is marked at the time of deposit.

Persons choosing to use a receptacle (or the like) obviously do not

oversee the marking by a Postal Service employee and thus may not later

argue for the benefit of a section 1.10 filing date if the ``date in''

on the ``Express Mail'' label is improperly or not clearly marked. The

determinative factor is when the Postal Service marks the ``date in''

and the mere deposit into a receptacle does not entitle one to an

``Express Mail'' ``date in'' under section 1.10.

Paragraph (b) of section 1.10 is proposed to be amended by deleting

the requirement for a ``Certificate of Mailing by Express Mail''

currently necessary to obtain the benefit of the date of deposit with

the United States Postal Service (U.S.P.S.) express mail service as the

filing date of the paper.

Paragraph (c) of section 1.10 is proposed to be amended to set

forth the requirements for the treatment of correspondence not received

by the Office for which the ``Express Mail'' procedure was utilized.

Correspondence not received by the Office will be considered filed in

the Office on the date shown by the ``date in'' notation entered by the

Postal Service if the party who forwards the correspondence:

(1) Places the number of the ``Express Mail'' mailing label on the

correspondence prior to the original mailing by ``Express Mail,''

(2) Informs the Office of the previous deposit of the

correspondence promptly after becoming aware that the Office has no

evidence of receipt of the correspondence,

(3) Supplies an additional copy of the previously deposited

correspondence showing the number of the ``Express Mail'' label

thereon,

(4) Supplies a copy of the ``Express Mail'' label clearly

displaying the ``date in'' entered by the United States Postal Service,

and

(5) Includes a statement which establishes, to the satisfaction of

the Commissioner, the previous deposit and that the copies of the

correspondence and ``Express Mail'' label are true copies of the

original correspondence and ``Express Mail'' label. Such statement must

be on the basis of personal knowledge, whenever possible, and must be a

verified statement if made by a person other than a practitioner as

defined in section 10.1(r) of this chapter.

In addition, although the requirement for a certificate of express

mail has been proposed to be eliminated from section 1.10, applicants

are strongly encouraged to continue using the certificate of express

mail, as well as the placement of the Express Mail label number in the

upper right corner of the first page of each separate piece of

correspondence and to retain a clearly marked Express Mail label, to

facilitate complying with the requirements of paragraph (c) if the

correspondence is not received in the Office or if reliance on the

U.S.P.S. ``date in'' is not possible. Moreover, paragraph (d) is

proposed to be added so that additional evidence may be required if the

Office so determines.

Section 5.33 (entitled ``Correspondence'') is proposed to be

amended to change the correspondence address to ``Assistant

Commissioner for Patents (Attention: Licensing and Review), Washington,

DC 20231.''

Section 10.23(c)(9) is proposed to be revised to reflect the

proposed change to section 1.10 that the certificate of mailing by

``Express Mail'' is no longer a requirement of the rules.

Other Considerations

The proposed rule changes are in conformity with the requirements

of the Regulatory Flexibility Act (5 U.S.C. et seq.), Executive Order

12612, and the Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et seq.

Information collection requirements are not affected by the change of

address. This proposed rule has been determined to not be significant

for the purposes of Executive Order 12866.

The Office has determined that this proposed rule change has no

Federalism implications affecting the relationship between the National

Government and the States as outlined in Executive Order 12612.

The Assistant General Counsel for Legislation and Regulation of the

Department of Commerce has certified to the Chief Counsel for Advocacy,

Small Business Administration, that the proposed rule changes would not

have a significant impact on a substantial number of small entities

(Regulatory Flexibility Act, 5 U.S.C. 605(b)). The proposed rule change

has no effect on patent fees.

These proposed rule changes contain collections of information

subject to the requirements of the Paperwork Reduction Act of 1980, 44

U.S.C. 3501 et seq., which are currently approved by the Office of

Management and Budget

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under Control No. 0651-0009 and 0651-0031. The public reporting burden

for these collections of information for certificate of mailing is

estimated to average six minutes per response, including the time for

reviewing instructions, searching existing data sources, gathering and

maintaining the data needed, and completing and reviewing the

collection of information. Send comments regarding this burden estimate

or any other aspect of this collection of information, including

suggestions for reducing this burden to the Office of System Quality

and Enhancement Division, Patent and Trademark Office, Washington, D.C.

20231, and to the Office of Information and Regulatory Affairs, Office

of Management and Budget, Washington, DC 20503. (Attn: Paperwork

Reduction Act Projects 0651-0009 and 0651-0031).

List of Subjects

37 CFR Part 1

Administrative practice and procedure, Freedom of information,

Inventions and patents, Reporting and record keeping requirements.

37 CFR Part 5

Classified information, Foreign relations, Inventions and patents.

37 CFR Part 10

Administrative Practice and procedure, Conflicts of interest,

Courts, Inventions and patents, Lawyers.

For the reasons set forth in the preamble and under the authority

granted to the Commissioner of Patents and Trademarks by 35 U.S.C. 6

and 15 U.S.C. 1123, 37 CFR Parts 1, 5 and 10 are proposed to be amended

as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

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

follows:

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

2. Section 1.1 is proposed to be amended by removing and reserving

paragraph (g) and by revising the heading and paragraph (a) to read as

follows:

Sec. 1.1 Addresses for correspondence with the Patent and Trademark

Office.

(a) Except for those documents identified in paragraphs (a)(1), (2)

and (3) of this section, all correspondence intended for the Patent and

Trademark Office must be addressed to ``Commissioner of Patents and

Trademarks, Washington, D.C. 20231.'' When appropriate, correspondence

should also be marked for the attention of a particular office or

individual.

(1) Patent correspondence. All correspondence concerning patent

matters processed by organizations reporting to the Assistant

Commissioner for patents should be addressed to ``Assistant

Commissioner for Patents, Washington, D.C. 20231.''

(2) Trademark correspondence. All correspondence concerning

trademark matters, except for trademark-related documents sent to the

Assignment Division for recordation and requests for certified and

uncertified copies of trademark application and registration documents,

should be addressed to ``Assistant Commissioner for Trademarks, 2900

Crystal Drive, Arlington, Virginia 22202-3513.'' This includes

correspondence intended for the Trademark Trial and Appeal Board.

(3) Office of Solicitor correspondence. (i) Correspondence relating

to pending litigation required by court rule or order to be served on

the Solicitor shall be hand-delivered to the Office of the Solicitor or

shall be mailed to: Office of the Solicitor, P.O. Box 15667, Arlington,

Virginia 22215; or such other address as may be designated in writing

in the litigation. See Secs. 1.302(c) and 2.145(b)(3) for filing a

notice of appeal to the U.S. Court of Appeals for the Federal Circuit.

(ii) Correspondence relating to disciplinary proceedings pending

before an Administrative Law Judge or the Commissioner shall be mailed

to: Office of the Solicitor, P.O. Box 16116, Arlington, Virginia 22215.

(iii) All other correspondence to the Office of the Solicitor shall

be addressed to: Box 8, Commissioner of Patents and Trademarks,

Washington, D.C. 20231.

(iv) Correspondence addressed to the wrong Post Office Box will not

be filed elsewhere in the Patent and Trademark Office and might be

returned.

* * * * *

(g) [Reserved]

* * * * *

3. Section 1.3 is proposed to be revised to read as follows:

Sec. 1.3 Business to be conduced with decorum and courtesy.

Applicants and their attorneys or agents are required to conduct

their business with the Patent and Trademark Office with decorum and

courtesy. Papers presented in violation of this requirement will be

submitted to the Commissioner and will be returned by the

Commissioner's direct order. Complaints against examiners and other

employees must be made in correspondence separate from other papers.

4. Section 1.5(a) is proposed to be revised to read as follows:

Sec. 1.5 Identification of application, patent, or registration.

(a) No correspondence relating to an application should be filed

prior to when notification of the application number is received from

the Patent and Trademark Office. When a letter directed to the Patent

and Trademark Office concerns a previously filed application for a

patent, it must identify on the top page in a conspicuous location, the

application number (consisting of the series code and the serial

number; e.g., 07/123,456), or the serial number and filing date

assigned to that application by the Patent and Trademark Office, or the

international application number of the international application. Any

correspondence not containing such identification will be returned to

the sender where a return address is available. The returned

correspondence will be accompanied with a cover letter which will

indicate to the sender that if the returned correspondence is

resubmitted to the Patent and Trademark Office within two weeks of the

mail date on the cover letter, the original date of receipt of the

correspondence will be considered by the Patent and Trademark Office as

the date of receipt of the correspondence. Applicants may use either

the Certificate of Mailing or Transmission procedure under Sec. 1.8 or

the Express Mail procedure under Sec. 1.10 for resubmissions of

returned correspondence if they desire to have the benefit of the date

of deposit in the United States Postal Service. If the returned

correspondence is not resubmitted within the two-week period, the date

of receipt of the resubmission will be considered to be the date of

receipt of the correspondence. The two-week period to resubmit the

returned correspondence will not be extended. If for some reason

returned correspondence is resubmitted with proper identification later

than two weeks after the return mailing by the Patent and Trademark

Office, the resubmitted correspondence will be accepted but given its

date of receipt. In addition to the application number, all letters

directed to the Patent and Trademark Office concerning applications for

patent should also state the name of the applicant, the title of the

invention, the date of filing the same, and, if known, the group art

unit or other unit within the Patent and Trademark Office responsible

for considering the letter and the name of

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the examiner or other person to which it has been assigned.

* * * * *

5. Section 1.8(a)(1)(i)(A) is proposed to be revised to read as

follows:

Sec. 1.8 Certificate of mailing or transmission.

(a) * * *

(1) * * *

(i) * * *

(A) Addressed as set out in Sec. 1.1(a) and deposited with the U.S.

Postal Service with sufficient postage as first class mail; or

* * * * *

6. Section 1.9 is proposed to be amended by adding a new paragraph

(h) to read as follows:

Sec. 1.9 Definitions.

* * * * *

(h) A ``Federal holiday within the District of Columbia'' as used

in this chapter means any day, except Saturdays and Sundays, when the

Patent and Trademark Office is officially closed for business.

7. Section 1.10 is proposed to be revised to read as follows:

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

(a) Any correspondence received by the Patent and Trademark Office

utilizing the ``Express Mail Post Office to Addressee'' service of the

United States Postal Service will be considered filed in the Office on

the date shown by the ``date in'' notation entered by the United States

Postal Service on the ``Express Mail'' label, unless the ``date in'' is

a Saturday, Sunday or Federal holiday within the District of Columbia.

See Sec. 1.6(a). This procedure can be used to file any correspondence

in the Office.

(b) Any correspondence filed by ``Express Mail'' must be addressed

as set out in Sec. 1.1(a) and should be deposited directly with the

United States Postal Service to ensure that the person depositing the

correspondence receives a copy of the ``Express Mail'' label at the

time of deposit with the ``date in'' clearly marked thereon. Persons

dealing indirectly with the Untied States Postal Service (such as by

deposit in an Express Mail drop box) do so at the risk of not receiving

their copy of the ``Express Mail'' label with the ``date in'' clearly

marked.

(c) Any correspondence mailed to the Patent and Trademark Office

utilizing the ``Express Mail Post Office to Addressee'' service of the

United States Postal Service, but not received by the Office, will be

considered filed in the Office on the date shown by the ``date in''

notation entered by the Untied States Postal Service on the ``Express

Mail'' label, unless the ``date in'' is a Saturday, Sunday or Federal

holiday within the District of Columbia (see Sec. 1.6(a)), if the party

who forwarded such correspondence:

(1) Places the number of the ``Express Mail'' mailing label on the

correspondence prior to the original mailing by ``Express Mail,''

(2) Informs the Office of the previous deposit of the

correspondence promptly after becoming aware that the Office has no

evidence of receipt of the correspondence,

(3) Supplies a copy of the previously deposited correspondence

showing the number of the ``Express Mail'' label thereon,

(4) Supplies a copy of the ``Express Mail'' label clearly

displaying the ``date in'' entered by the United States Postal Service,

and

(5) Includes a statement which establishes, to the satisfaction of

the Commissioner, to the previous deposit and that the copies of the

correspondence and ``Express Mail'' label are true copies of the

original correspondence and ``Express Mail'' label. Such statement must

be on the basis of personal knowledge, whenever possible, and must be a

verified statement if made by a person other than a practitioner as

defined in Sec. 10.1(r) of this chapter.

(d) The Office may require additional evidence to determine if the

correspondence was deposited as ``Express Mail'' with the United States

Postal Service on the date in question.

PART 5--SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND

FILE APPLICATIONS IN FOREIGN COUNTRIES

8. The authority citation for 37 CFR Part 5 continues to read as

follows:

Authority: 35 U.S.C. 6, 41, 181-188, as amended by the Patent

Law Foreign Filing Amendments Act of 1988, Pub. L. 100-418, 102

Stat. 1567; the Arms Export Control Act, as amended, 22 U.S.C. 2751

et seq., the Atomic Energy Act of 1954, as amended, 42 U.S.C. 2011

et seq., and the Nuclear Non-Proliferation Act of 1978, 22 U.S.C.

3201 et seq., and the delegations in the regulations under these

acts to the Commissioner (15 CFR 370.10(j), 22 CFR 125.04, and 10

CFR 810.7).

9. Section 5.33 is proposed to be revised to read as follows:

Sec. 5.33 Correspondence.

All correspondence in connection with this part, including

petitions, should be addressed to ``Assistant Commissioner for Patents

(Attention: Licensing and Review), Washington, D.C. 20231.''

PART 10--REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK

OFFICE

10. The authority citation for 37 CFR Part 10 continues to read as

follows:

Authority: 5 U.S.C. 500; 15 U.S.C. 1123; 35 U.S.C. 6, 31, 32,

41.

11. Section 10.23(c)(9) is proposed to be revised to read as

follows:

Sec. 10.23 Misconduct.

* * * * *

(c) * * *

* * * * *

(9) Knowingly misusing a ``Certificate of Mailing or Transmission''

under Sec. 1.8 of this chapter.

* * * * *

Dated: October 26, 1995.

Bruce A. Lehman,

Assistant Secretary of Commerce and Commissioner of Patents and

Trademarks.

[FR Doc. 95-27031 Filed 11-1-95; 8:45 am]

BILLING CODE 3510-16-M