Communications With the Patent and Trademark Office

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1, 5 and 10

[Docket No. 951006247-6255-02]

RIN 0651-AA70

Communications With the Patent and Trademark Office

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The Patent and Trademark Office (Office) is amending its rules

of practice to specify addresses for agency mail to expedite mail

delivery, define ``Federal holiday within the District of Columbia,''

clarify and simplify procedures for filing papers and fees by ``Express

Mail,'' and remove certain exclusions from Sec. 1.8(a)(2)(ii) to permit

additional trademark documents to be considered timely filed if they

are mailed or transmitted by the due date and in compliance with

Sec. 1.8(a)(1).

EFFECTIVE DATE: December 2, 1996.

FOR FURTHER INFORMATION CONTACT: Lawrence E. Anderson (for patent-

related matters) by telephone at (703) 305-9285, by electronic mail at

[email protected], or by mail to his attention addressed to the

Assistant Commissioner for Patents, Box DAC, Washington, DC 20231; or

Nancy L. Omelko (for trademark-related matters) by telephone at (703)

308-8910, extension 39, or by mail marked to her attention and

addressed to the Assistant Commissioner for Trademarks, 2900 Crystal

Drive, Arlington, Virginia 22202-3513.

SUPPLEMENTARY INFORMATION: In a Notice of Proposed Rulemaking published

in the Federal Register at 57 FR 55691 (November 2, 1995) and in the

Patent and Trademark Office Official Gazette at 1180 Off. Gaz. Pat.

Office 122 (November 28, 1995), the Office proposed to change addresses

for correspondence with the Office to reflect the creation of a

mailroom site at the South Tower Building for processing most

trademark-related mail; to distinguish correspondence intended for

organizations reporting to the Assistant Commissioner for Patents from

other correspondence; to add a separate mailing address in the Office

of the Solicitor for disciplinary matters; and to delete the

requirement for a certificate of mailing by Express Mail from

Sec. 1.10(b).

The following includes a discussion of the rules being changed, the

reasons for those changes, and an analysis of the comments received in

response to the Notice of Proposed Rulemaking.

General Mailing Addresses

The Office will now have three separate general mailing addresses:

(1) Assistant Commissioner for Patents for correspondence processed by

organizations reporting to the Assistant Commissioner for Patents,

except for patent documents sent to the Assignment Division for

recordation and requests for certified and uncertified copies of patent

documents, which should be addressed to the Commissioner of Patents and

Trademarks; (2) Assistant Commissioner for Trademarks for all

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

Assignment Division for recordation and requests for certified and

uncertified copies of trademark documents, which should be addressed to

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

Patents and Trademarks for all other correspondence. In addition, there

will be separate mailing addresses in the Office of the Solicitor for

certain disciplinary matters and cases involving pending litigation.

These addresses are set forth and discussed below.

Those who correspond with the Office are requested to use separate

envelopes directed to the different areas.

[[Page 56440]]

Patent-Related Mail

Section 1.1 is amended to provide for correspondence which is

processed by organizations reporting to the Assistant Commissioner for

Patents to be addressed to the ``Assistant Commissioner for Patents,

Washington, DC 20231.'' The Office first announced the new address for

patent-related mail in a notice entitled ``Change of Address for Patent

Applications and Patent Related Papers,'' published in the Patents

Official Gazette at 1173 Off. Gaz. Pat. Office 13 (April 4, 1995).

This change will affect correspondence such as: patent

applications, responses to notices of informality, requests for

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

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

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

patent, requests for reexamination, statutory disclaimers, certificates

of correction, petitions to the Commissioner, submission of information

disclosure statements, petitions to institute a public use proceeding,

petitions to revive abandoned patent applications, and other

correspondence related to patent applications and patents which is

processed by organizations reporting to the Assistant Commissioner for

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

mailing, pursuant to Sec. 1.8, the certificate of mailing should be

completed with the new address: Assistant Commissioner for Patents,

Washington, DC 20231.

Unless otherwise specified, correspondence not processed by

organizations reporting to the Assistant Commissioner for Patents, such

as communications with the Board (excluding Notices of Appeal and

appeal briefs), patent services including patent copy sales,

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

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

practitioner enrollment matters including admission to examination,

registration to practice, certificates of good standing, and financial

service matters including establishing a deposit account should

continue to be addressed to the Commissioner of Patents and Trademarks,

Washington, DC 20231. Documents to be recorded with the Assignment

Division, except those filed with new applications, should be addressed

to: Box Assignment, Commissioner of Patents and Trademarks, Washington,

DC 20231. Orders for certified and uncertified copies of Office

documents should be addressed to: Box 10, Commissioner of Patents and

Trademarks, Washington, DC 20231.

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

Patents Official Gazette should continue to be used to allow forwarding

of particular types of mail to the appropriate areas as quickly as

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

timely and accurate identification and processing of the designated

correspondence.

Checks should continue to be made payable to the Commissioner of

Patents and Trademarks.

Trademark-Related Mail

Most trademark-related mail should be sent directly to the

Trademark Operation at: Assistant Commissioner for Trademarks, 2900

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

documents are filed with a certificate of mailing, pursuant to

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

address: Assistant Commissioner for Trademarks, 2900 Crystal Drive,

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

processing delays. Trademark documents to be recorded with the

Assignment Division, except those filed with new applications, should

be addressed to: Box Assignment, Commissioner of Patents and

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

uncertified copies of trademark documents should be addressed to: Box

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

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

a notice entitled ``Change of Address for Trademark Applications and

Trademark Related Papers,'' published in the Federal Register at 59 FR

29275 (June 6, 1994) and in the Trademarks Official Gazette at 1163

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

Gaz. Pat. Office 303 (January 3, 1995)).

The Office will continue to maintain the special box designations

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

each issue of the Trademarks Official Gazette. Use of the boxes is

encouraged, to expedite processing of incoming mail.

Checks should continue to be made payable to the Commissioner of

Patents and Trademarks.

Mail intended for the Trademark Trial and Appeal Board should be

addressed to: Assistant Commissioner for Trademarks, 2900 Crystal

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

TTAB/NO FEE, whichever is applicable.

Hand-Carried Correspondence

All correspondence with the Office, except for communications

relating to pending litigation as specified in amended

Sec. 1.1(a)(3)(i), may continue to be filed directly at the Attorney's

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

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

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

Tower Building, 2900 Crystal Drive, Arlington, Virginia. Hand delivery

of trademark papers and fees directly to the South Tower Building is

recommended, to expedite processing.

Trademark Documents Filed with Certificates of Mailing or Transmission

Under Sec. 1.8

The Office is amending Sec. 1.8(a)(2) to remove the exclusions

listed in Sec. 1.8(a)(2)(ii)(B) through (F). This will permit the

following trademark documents to be considered timely filed if they are

mailed or transmitted by the due date and in compliance with

Sec. 1.8(a)(1): (1) affidavits of continued use or excusable nonuse,

under 15 U.S.C. 1058; (2) renewal applications, under 15 U.S.C. 1059;

(3) amendments to allege use, under 15 U.S.C. 1051(c); (4) statements

of use, under 15 U.S.C. 1051(d)(1); (5) requests for extensions of time

to file a statement of use, under 15 U.S.C. 1051(d)(2); and (6)

petitions to cancel registered marks, under 15 U.S.C. 1064. This change

is intended to make filing easier and less expensive because a

significantly larger number of documents will be considered timely

filed using the simpler, less expensive first class mailing provisions

of Sec. 1.8.

Section 2.165(a)(1), dealing with affidavits of use or excusable

non-use filed under Section 8 of the Trademark Act, is amended by

deleting the last sentence referencing the inapplicability of

certificates of mailing provided by Sec. 1.8.

It should be noted that Sec. 1.6(d)(8), which provides that

correspondence other than notices of ex parte appeal may not be

transmitted by facsimile to the Trademark Trial and Appeal Board, will

not change. Thus, while a cancellation petitioner may now ensure timely

filing with the certificate of mailing procedure set forth in

Sec. 1.8(a)(1), the petitioner may not transmit the above-mentioned

documents directed to the Trademark Trial and Appeal Board by fax or

ensure timely filing with the certificate of facsimile transmission.

[[Page 56441]]

Section 1.8(a)(2)(ii)(A), which states that the Certificate of

Mailing or Transmission Procedure does not apply to the filing of

applications for registration of marks, will not change. The filing

date of an application is considered to be much more critical than the

filing dates of the papers accepted under Sec. 1.8. For example, in

Trademark applications, the granting of a filing date to an application

potentially establishes a date of constructive use of the mark, and is

also critical for determining whether foreign priority can be claimed

under 15 U.S.C. 1126(d); therefore, entry of the date of deposit by a

disinterested USPS employee is required.

Express Mail

Section 1.10 is being amended to simplify and clarify the

procedures for filing correspondence by the ``Express Mail Post Office

to Addressee'' (Express Mail) service of the United States Postal

Service (USPS), by deleting the requirement for a Certificate of

Mailing by Express Mail.

Section 1.10 was promulgated to implement 35 U.S.C. 21, under which

the Commissioner may ``by rule prescribe that any paper or fee required

to be filed in the Patent and Trademark Office will be considered filed

in the Office on the date on which it was deposited with the United

States Postal Service.''

Under the prior rule, the filer was required to include a

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

as Express Mail. Papers which did not include this certificate, or

which included a certificate that did not meet the requirements of the

rule, were given a filing date as of the date received in the Office

rather than the date of deposit as Express Mail. The lost filing date

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

substantive rights. In light of the problematic nature of the

requirement for a Certificate of Mailing by Express Mail and its

apparent redundancy in purpose, inasmuch as the date of deposit has

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

deleted this requirement from Sec. 1.10(b).

Under the new rule, Office personnel will routinely look to the

Express Mail mailing label, and stamp the ``date-in'' or other official

USPS notation as the filing date of the correspondence. If the USPS

deposit date cannot be determined, the correspondence will be accorded

the date of receipt in the Office as the filing date.

Section 1.10(b), as amended, provides that the Express Mail mailing

label number should be placed on correspondence filed by Express Mail

under Sec. 1.10 prior to the original mailing. Correspondence actually

received by the Office will not be denied a filing date as of the date

of deposit with the USPS because the Express Mail mailing label number

was not placed thereon prior to its original mailing. However, the

absence of the number of the Express Mail mailing label will preclude a

party from obtaining relief on petition, under Sec. 1.10 (c) through

(e).

Section 1.10(b) also provides that correspondence should be

deposited directly with an employee of the USPS to ensure that the

person depositing the correspondence receives a legible copy of the

Express Mail mailing label with the ``date-in'' clearly marked, and

that persons dealing indirectly with the employees of the USPS (such as

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

receiving a copy of the Express Mail mailing label with the desired

``date-in'' clearly marked.

Sections 1.10(c) through 1.10(e) set forth procedures for

petitioning the Commissioner to accord a filing date as of the date of

deposit as Express Mail. Section 1.10(c) applies where there is a

discrepancy between the filing date accorded by the Office and the

``date-in'' or other official notation entered by the USPS on the

Express Mail mailing label; Sec. 1.10(d) applies where the ``date-in''

is incorrectly entered by the USPS; and Sec. 1.10(e) applies where

correspondence deposited with the USPS as Express Mail is not received

by the Office.

Miscellaneous Changes

Sections 1.3 and 5.33 are also being amended to change

``communications'' to ``correspondence,'' and for consistency with

Secs. 1.1, 1.6, and 1.8.

Section 1.6(a)(2) is amended to provide that correspondence

deposited as Express Mail in accordance with Sec. 1.10 will be

considered filed on the date of its deposit, regardless of whether that

date is a Saturday, Sunday or Federal holiday within the District of

Columbia.

Section 1.9 is amended to add a definition of a ``Federal holiday

within the District of Columbia'' to include an official closing of the

Office.

Since the certificate of mailing by Express Mail is no longer a

requirement of Sec. 1.10, the provisions of Part 10 relating to

misconduct have been amended to delete reference to this requirement.

Discussion of Specific Rules

The heading of Sec. 1.1 is amended to state that the section

contains the addresses for correspondence to the Patent and Trademark

Office.

Section 1.1 is amended to set out all pertinent Office mailing

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

(a)(3). The remaining paragraphs of Sec. 1.1 contain directions for

using box designations rather than addresses. Paragraph (a)(1) sets

forth the new mailing address to which most patent-related documents

should be sent. Paragraph (a)(2) sets forth the new mailing address to

which most trademark-related documents should be sent. It is noted that

correspondence not addressed according to (a)(1) and (a)(2), but sent

instead to the Commissioner of Patents and Trademarks, will not be

refused consideration but may be delayed in processing. The Solicitor's

mailing address, formerly set out in paragraph (g) of the section, is

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

reserved.

Sections 1.1 and 1.3 are amended so that the word

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

Section 1.5(a) is amended by removing the requirement that the

words ``PATENT APPLICATION'' appear on letters concerning patent

applications. The remainder of the section remains unchanged.

Section 1.6(a)(1) is amended to add the sentence ``[t]he Patent and

Trademark Office is not open for the filing of correspondence on any

day that is a Saturday, Sunday or Federal holiday within the District

of Columbia.'' In addition, Sec. 1.6(a)(1) is further amended to add

the phrase ``[e]xcept for correspondence transmitted by facsimile as

provided for in paragraph (a)(3) of this section'' to the beginning of

the sentence ``[n]o correspondence is received in the Patent and

Trademark Office on Saturdays, Sundays or Federal holidays within the

District of Columbia.'' Since the Office may ``receive'' a facsimile

transmission under Sec. 1.6(a)(3) on a Saturday, Sunday or Federal

holiday within the District of Columbia, Sec. 1.6(a)(1) is amended to

add the phrase ``[e]xcept for correspondence transmitted by facsimile

as provided for in paragraph (a)(3) of this section'' for clarity and

consistency with Sec. 1.6(a)(3). In addition, Sec. 1.6(a)(1) is amended

to begin with the sentence ``[t]he Patent and Trademark Office is not

open for the filing of correspondence on any day that is a Saturday,

Sunday or Federal holiday within the District of Columbia'' to clarify

that any day that is a Saturday, Sunday or Federal holiday within the

District of Columbia is a day that the Patent and Trademark Office is

not open for the filing of applications within the meaning of Article

4(C)(3) of the Paris Convention.

[[Page 56442]]

Section 1.6(a)(2) is amended to delete the phrase ``unless the date

of deposit is a Saturday, Sunday or Federal holiday within the District

of Columbia in which case the date stamped will be the succeeding day

which is not a Saturday, Sunday or Federal holiday within the District

of Columbia.'' Thus, Sec. 1.6(a)(1) will provide that the Office is not

open for the filing of correspondence on any day that is a Saturday,

Sunday or Federal holiday within the District of Columbia, but that

correspondence deposited as Express Mail with the USPS in accordance

with Sec. 1.10 will be considered filed on the date of its deposit,

regardless of whether that date is a Saturday, Sunday or Federal

holiday within the District of Columbia (under 35 U.S.C. 21(b) or

Sec. 1.7).

Section 1.8(a)(1)(i)(A) is revised to state that papers and fees

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

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

Mail'' and ``Priority Mail'' deposited with the USPS.

Section 1.8(a)(2)(ii) is revised to remove and reserve paragraphs

(a)(2)(ii)(B) through (a)(2)(ii)(F). This will permit the following

items to be filed in accordance with the procedures set forth in

Sec. 1.8(a): (1) an affidavit of continued use or excusable nonuse

under section 8 (a) or (b) or section 12(c) of the Trademark Act, 15

U.S.C. 1058(a), 1058(b), 1062(c); (2) an application for renewal of a

registration under section 9 of the Trademark Act, 15 U.S.C. 1059; (3)

a petition to cancel a registration of a mark under section 14,

subsection (1) or (2) of the Trademark Act, 15 U.S.C. 1064; (4) in an

application under section 1(b) of the Trademark Act, 15 U.S.C. 1051(b),

an amendment to allege use in commerce under section 1(c) of the

Trademark Act, 15 U.S.C. 1051(c), or a statement of use under section

1(d)(1) of the Trademark Act, 15 U.S.C. 1051(d)(1); and (5) in an

application under section 1(b) of the Trademark Act, 15 U.S.C. 1051(b),

a request under section 1(d)(2) of the Trademark Act, 15 U.S.C.

1051(d)(2), for an extension of time to file a statement of use under

section 1(d)(1) of the Trademark Act, 15 U.S.C. 1051(d)(1).

Section 1.9 is amended to add a definition of ``Federal holiday

within the District of Columbia'' to include an official closing of the

Office. When the entire Patent and Trademark Office is officially

closed for business for an entire day, for reasons due to adverse

weather or other causes, the Office will consider each such day a

``Federal holiday within the District of Columbia'' under 35 U.S.C. 21.

Any action or fee due on such a day may be taken, or fee paid, on the

next succeeding business day the Office is open.

This provision implements existing policy. In the past, the Office

has published notices concerning unscheduled closings, stating that

correspondence due on the date of the unscheduled closing would be

deemed timely if filed on the next succeeding business day that the

Office is open. See, e.g., ``Closing of Patent and Trademark Office on

Thursday, January 20, 1994 and Friday, February 11, 1994'' published in

the Patent Official Gazette at 1161 Off. Gaz. Pat. Office 12 (April 5,

1994) (republished at 1170 Off. Gaz. Pat. Office 8 (January 3, 1995))

and ``Filing of Papers During Unscheduled Closings of the Patent and

Trademark Office'' published in the Patent Official Gazette at 1097

Off. Gaz. Pat. Office 53 (December 20, 1988) (republished at 1170 Off.

Gaz. Pat. Office 8 (January 3, 1995)).

Other legal holidays within the District of Columbia are New Year's

Day (January 1), Martin Luther King, Jr.'s Birthday (third Monday in

January), Presidential Inauguration Day, Washington's Birthday (third

Monday in February), Memorial Day (last Monday in May), Independence

Day (July 4), Labor Day (first Monday in September), Columbus Day

(second Monday in October), Veterans Day (November 11), Thanksgiving

Day (fourth Thursday in November) and Christmas Day (December 25).

The title of Sec. 1.10 is revised to: (1) change ``papers and

fees'' to ``correspondence'' and (2) remove the reference to a

``certificate.'' These changes are for consistency with the amendment

to Sec. 1.10 in this final rulemaking.

Section 1.10(a) is amended to provide that: (1) any correspondence

received by the Office that was delivered by the ``Express Mail Post

Office to Addressee'' (Express Mail) service of the USPS will be

considered filed in the Office on the date of deposit with the USPS,

(2) the date of deposit with the USPS is the ``date-in'' or other

official USPS notation on the Express Mail mailing label, and (3) if

the USPS deposit date cannot be determined, the correspondence will be

accorded a filing date as of the date of receipt in the Office.

The date of deposit or mailing with the USPS is defined by the USPS

as: (1) For correspondence that is paid for at the time of deposit--the

date the correspondence is presented and accepted for Express Mail

delivery at designated post offices, branches, or stations, and (2) For

correspondence that is prepaid (i.e., with a completed mailing label

and postage affixed)--the date the prepaid correspondence is accepted

by the USPS collection employees or the USPS pickup service. USPS

Domestic Mail Manual (DMM) 49, at D-38 (Sept. 1, 1995).

Section 1.10(b) is amended by deleting the requirement for a

certificate of mailing by Express Mail. As amended, Sec. 1.10(b)

provides that the number of the Express Mail mailing label should be

placed on each piece of correspondence prior to the original mailing.

Correspondence that is actually received by the Office will not be

denied a filing date as of the date of deposit because the number of

the Express Mail mailing label was not placed thereon prior to the

original mailing. However, if the number of the mailing label did not

appear on the correspondence as originally filed, relief will not be

granted on petition under Secs. 1.10(c) through (e), even if the party

who filed the correspondence satisfies the other requirements of

Sec. 1.10(c), Sec. 1.10(d) or Sec. 1.10(e).

Since the filing of correspondence under Sec. 1.10 without the

number of the Express Mail mailing label thereon is an oversight that

can be avoided by the exercise of reasonable care, requests for waiver

of this requirement will not be granted on petition. A party's

inadvertent failure to comply with the requirements of a rule is not

deemed to be an extraordinary situation that would warrant waiver of a

rule under Secs. 1.183, 2.146(a)(5) or 2.148, nor is such an

inadvertent omission considered to be an ``unavoidable delay,'' within

the meaning of 15 U.S.C. 1062(b), 35 U.S.C. 133, Sec. 1.137(a) or

Sec. 2.66(a). See Honigsbaum v. Lehman, 903 F. Supp. 8, 37 USPQ2d 1799

(D.D.C. 1995) (Commissioner did not abuse his discretion in refusing to

waive requirements of Sec. 1.10(c) in order to grant filing date to

patent application, where applicant failed to produce Express Mail

customer receipt or any other evidence that application was actually

deposited with USPS as Express Mail); Nitto Chemical Industry. Co.,

Ltd. v. Comer, No. 93-1378, 1994 U.S. Dist. LEXIS 19211, at *13-14

(D.D.C. Mar. 7, 1994) (Commissioner's refusal to waive requirements of

Sec. 1.10 in order to grant priority filing date to patent application

not arbitrary and capricious, because failure to comply with the

requirements of Sec. 1.10 is an ``avoidable'' oversight that could have

been prevented by the exercise of ordinary care or diligence, and thus

not an extraordinary situation under Sec. 1.183); Vincent v.

Mossinghoff, 230 USPQ 621 (D.D.C. 1985) (Misunderstanding of Sec. 1.8

not

[[Page 56443]]

unavoidable delay in responding to Office Action); Gustafson v.

Strange, 227 USPQ 174 (Comm'r Pats. 1985) (Counsel's unawareness of

Sec. 1.8 not extraordinary situation warranting waiver of a rule); In

re Chicago Historical Antique Automobile Museum, Inc., 197 USPQ 289

(Comm'r Pats. 1978) (Since certificate of mailing procedure under

Sec. 1.8 was available to petitioner, lateness due to mail delay not

deemed to be extraordinary situation).

Section 1.10(b) further provides that correspondence should be

deposited directly with an employee of the USPS to ensure that the

person depositing the correspondence receives a legible copy of the

Express Mail mailing label with the ``date-in'' clearly marked, and

that persons dealing indirectly with the employees of the USPS (such as

by depositing correspondence in an Express Mail drop box) do so at the

risk of not receiving a copy of the Express Mail mailing label with the

desired ``date-in'' clearly marked. On petition, the failure to obtain

an Express Mail mailing label with the ``date-in'' clearly marked will

be considered an omission that could have been avoided by the exercise

of due care, as discussed above.

Sections 1.10(c) through 1.10(e) set forth procedures for

petitioning the Commissioner to accord a filing date as of the date of

deposit as Express Mail. Such petitions are filed under Sec. 1.181 for

patent correspondence and Sec. 2.146 for trademark correspondence.

Section 1.10(c) sets forth procedures for filing a petition to the

Commissioner for a filing date as of the date of deposit with the USPS,

where there is a discrepancy between the filing date initially accorded

by the Office and the ``date-in'' entered by the USPS. Such a petition

should: (1) be filed promptly after the person becomes aware that the

Office has accorded, or will accord, a filing date other than the USPS

deposit date, (2) include a showing that the number of the Express Mail

mailing label was placed on each piece of correspondence prior to the

original mailing, and (3) include a true copy of the Express Mail

mailing label showing the ``date-in'' or other official notation by the

USPS.

Section 1.10(d) sets forth procedures for filing a petition to the

Commissioner to accord a filing date as of the actual date of deposit

with the USPS, where the ``date-in'' or other official notation is

incorrectly entered by the USPS. Such a petition should: (1) be filed

promptly after the person becomes aware that the Office has accorded,

or will accord, a filing date based upon an incorrect entry by the

USPS, (2) include a showing that the number of the Express Mail mailing

label was placed on each piece of correspondence prior to the original

mailing, and (3) include a showing that the correspondence was

deposited as Express Mail prior to the last scheduled pickup on the

requested filing date. The showing under Section 1.10(d) must be

corroborated by (1) evidence from the USPS, or (2) evidence that came

into being after deposit and within one business day of the deposit of

the correspondence as Express Mail. Evidence that came into being

within one day after the deposit of the correspondence as Express Mail

may be in the form of a log book which contains information such as the

Express Mail number; the application number, attorney docket number or

other such file identification number; the place, date and time of

deposit; the time of the last scheduled pick-up for that date and place

of deposit; the depositor's initials or signature; and the date and

time of entry in the log. Any statement submitted in support of such a

showing must be verified if made by a person other than an employee of

the USPS or a practitioner as defined in Sec. 10.1(r) of this chapter.

The reason the Office considers correspondence to have been filed

as of the date of deposit as Express Mail is that this date has been

verified by a disinterested USPS employee, through the insertion of a

``date-in,'' or other official USPS notation, on the Express Mail

mailing label. Due to the questionable reliability of evidence from a

party other than the USPS that did not come into being

contemporaneously with the deposit of the correspondence with the USPS,

Sec. 1.10(d) specifically requires that any petition under Sec. 1.10(d)

be corroborated either by evidence from the USPS, or by evidence that

came into being after deposit and within one business day after the

deposit of the correspondence as Express Mail. A petition alleging that

the USPS erred in entering the ``date-in'' will be denied if it is

supported only by evidence (other than from the USPS) which was: (1)

created prior to the deposit of the correspondence as Express Mail with

the USPS (e.g., an application transmittal cover letter, or a client

letter prepared prior to the deposit of the correspondence), or (2)

created more than one business day after the deposit of the

correspondence as Express Mail (e.g., an affidavit or declaration

prepared more than one business day after the correspondence was

deposited with the USPS as Express Mail). On the other hand, a notation

in a log book, entered by the person who deposited the correspondence

as Express Mail within one business day after such deposit, setting

forth the items indicated above would be deemed on petition to be an

adequate showing of the date of deposit under Sec. 1.10(d)(3).

Section 1.10(d)(3) further provides that a party must show that

correspondence was deposited as Express Mail before the last scheduled

pickup on the requested filing date in order to obtain a filing date as

of that date. This incorporates existing practice, as set forth in the

Manual of Patent Examining Procedure (6th ed., January, 1995) Sec. 513,

and Trademark Manual of Examining Procedure (2nd ed., May, 1993)

Sec. 702.02(e) into the rule.

Section 1.10(e) sets forth procedures for filing a petition to the

Commissioner to accord a filing date as of the date of deposit with the

USPS, where correspondence deposited as Express Mail is never received

by the Office. Such a petition should: (1) be filed promptly after the

person becomes aware that the Office has no evidence of receipt of the

correspondence, (2) include a showing that the number of the Express

Mail mailing label was placed on each piece of correspondence prior to

the original mailing, (3) include a true copy of the originally

deposited correspondence showing the number of the Express Mail mailing

label thereon, a copy of any returned postcard receipt, a copy of the

Express Mail mailing label showing the ``date-in'' or other official

notation entered by the USPS, and (4) include a statement, signed by

the person who deposited the documents as Express Mail with the USPS,

setting forth the date and time of deposit, and declaring that the

copies of the correspondence, Express Mail mailing label, and returned

postcard receipt accompanying the petition are true copies of the

correspondence, mailing label and returned postcard receipt originally

mailed or received. Any statement in support of a petition under

Sec. 1.10(e) must be verified if made by a person other than a

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

Section 1.10(e) provides for the filing of a petition to accord

correspondence a filing date as of the date of deposit with the USPS as

Express Mail only where the correspondence was mailed with sufficient

postage and addressed as set out in Sec. 1.1(a). There is no

corresponding provision that correspondence be properly addressed and

mailed with sufficient postage in Secs. 1.10(a), (c) and (d), because

these sections apply only to correspondence that is actually received

by the Office. Correspondence mailed by Express Mail that is actually

received by the Office will not be denied a filing date as of the date

of deposit as Express Mail simply

[[Page 56444]]

because the correspondence was not mailed with sufficient postage or

not addressed as set out in Sec. 1.1(a).

Section 1.10(e)(3) provides that if the requested filing date is a

date other than the ``date-in'' on the Express Mail mailing label, the

petition should include a showing under Sec. 1.10(d)(3), as discussed

above, that the correspondence was deposited as Express Mail before the

last scheduled pickup on the requested filing date in order to obtain a

filing date as of that date.

Section 1.10(f) provides that the Office may require additional

evidence to determine whether the correspondence was deposited as

Express Mail with the USPS on the date in question.

Section 2.165(a)(1), dealing with affidavits of use or excusable

non-use filed under Section 8 of the Trademark Act, is amended by

deleting the last sentence referencing the inapplicability of

certificates of mailing provided by Sec. 1.8.

Section 5.33 (entitled ``Correspondence'') is amended to change the

correspondence address to ``Assistant Commissioner for Patents

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

Section 10.23(c)(9) is revised to reflect the fact that the

certificate of mailing by Express Mail is no longer a requirement of

Sec. 1.10.

Response to Comments on the Rules

The comments received in response to the notice of proposed

rulemaking have been given careful consideration and a number of the

suggested modifications have been adopted. The comments and responses

are discussed below.

Comment 1: One comment suggested that the Office return to a single

mailing address.

Response: Addressing correspondence to specific areas within the

agency, in accordance with Sec. 1.1, reduces the amount of sorting

required. Except as set out in Sec. 1.1(a)(3)(iv), mail will be

delivered within the Office regardless of how it is addressed.

Nevertheless, use of a specific address should produce faster results

for correspondents and savings to the Office in terms of reduced time

and cost. The suggestion to address mail to a single mailing address

will not be adopted.

Comment 2: Three comments requested a clarification of the

reference to ``organizations reporting to the Assistant Commissioner

for Patents'' in Sec. 1.1(a)(1), suggested that each organization be

identified, and noted that the change of address from ``Commissioner of

Patents and Trademarks'' to ``Assistant Commissioner for Patents'' is

confusing.

Response: Section 1.1(a)(1) has not been amended to list

``organizations reporting to the Assistant Commissioner for Patents.''

The vast majority of mail to be addressed to the Assistant Commissioner

is intended for the Examining Groups. Furthermore, once a list of

organizations is established in the rule, amendment to such a list

would require implementation of a rule change. However, a list of

papers that should be addressed to the Assistant Commissioner for

Patents appears under the heading ``Patent-Related Mail'' in the

Supplementary Information section.

Comment 3: Two comments requested clarification concerning how a

new application incorrectly addressed to the Commissioner of Patents

and Trademarks, Washington, D.C. 20231, will be treated. Two comments

opposed the address change in Sec. 1.1, if the benefit of obtaining a

filing date is conditioned upon the correspondence address being

addressed correctly.

Response: Except for certain mail addressed incorrectly to the

Office of the Solicitor, there will be no penalty for addressing a

document to the wrong area within the Office, as long as one of the

approved addresses is used. Use of the specific addresses listed within

Sec. 1.1 is strongly encouraged because it will facilitate the process

both for the Office and the filer. Accordingly, a new application

incorrectly addressed to the Commissioner will be treated the same as

if the application was addressed to the specific Assistant

Commissioner.

Comment 4: One comment supported the separate mailing addresses for

mail directed to the Assistant Commissioner for Patents, Assistant

Commissioner for Trademarks, Solicitor and the Commissioner, but viewed

the practice under Sec. 1.1(a)(3) with respect to correspondence to the

Office of the Solicitor as a penalty for correspondents who misaddress

mail.

Response: While the language in the proposed rule was based on the

existing rule, 37 CFR 1.1(g) (1996), which has been in effect since

1988, Sec. 1(a)(3)(iv) has been reworded in the final rule to state

that improperly addressed correspondence ``may be returned.'' This

language better represents the intent of the rule. The Post Office

boxes are located off-site and mail to these boxes is handled directly

by the Office of the Solicitor. The Office of the Solicitor cannot

handle large volumes of mail from users who choose not to follow Office

mailing rules.

Comment 5: One comment requested clarification on the distinction

between Sec. 1.1(a) which states that mail ``must'' be addressed to the

Assistant Commissioner for Patents and Sec. 1.1(a)(1) which states that

mail ``should'' be addressed to the Assistant Commissioner for Patents,

if any.

Response: The language of 1.1(a) has been amended to indicate that

all correspondence must be addressed either to the ``Commissioner of

Patents and Trademarks, Washington, D.C. 20231'' or to specific areas

within the Office as set out in paragraphs (a)(1), (2) and (3) of

Sec. 1.1.

Comment 6: One comment questioned why it is now merely permissible

to identify a patent application by its serial number and filing date

whereas such information was previously mandatory.

Response: The only change to Sec. 1.5 is the elimination of the

requirement to include the words ``PATENT APPLICATION'' on letters

concerning patent applications. Section 1.5 both before and after the

proposed amendment provides that ``[w]hen a letter . . . concerns a

previously filed application for a patent, it must identify on the top

page in a conspicuous location, the application number (consisting of

the series code and the serial number; e.g., 07/123,456) or the serial

number and filing date assigned to that application. . . .''

Accordingly, correspondence must continue to identify a previously

filed patent application by either (1) the application number, or (2)

the serial number and filing date. The combination of the serial number

and filing date is unique by itself.

Comment 7: One comment objected to the return of correspondence

pertaining to an application that had not yet been accorded an

application number because some correspondence may require immediate

action. This person suggested that the Office search the computerized

records given sufficient other identifying information, instead of

returning the correspondence.

Response: If the correspondence is returned for failure to identify

the correspondence with the appropriate information, the applicant has

the option to return the correspondence with the appropriate

information within two weeks of the date of the cover letter from the

Office by utilizing the Certificate of Mailing or Transmission

procedure under Sec. 1.8 or the Express Mail procedure under Sec. 1.10

to obtain the benefit of the date of deposit with the USPS. There does

not appear to be any situation where a file would require immediate

action in applications where the application number had not been

assigned. If an application number has already been assigned, it is

within the

[[Page 56445]]

filer's control to supply that information and avoid delays.

Comment 8: Seven comments opposed the addition of unscheduled

closings of the Office to the definition of ``Federal holidays within

the District of Columbia.'' The comments noted that substantive rights

would be at risk for persons filing provisional patent applications and

applications asserting priority claims based on foreign applications

should the date on which an application must be filed fall on a day

that the Office is closed for unforeseen reasons. One comment noted

that the substantive rights of applicants seeking to secure a filing

date prior to divulging an invention may lose rights if a later filing

date, resulting from an unscheduled closing of the Office, is

subsequent to the date of divulgence. Some of the comments suggested

amending Sec. 1.9 to make an exception for provisional patent

applications and applications asserting a claim of priority based on a

foreign application so that the filing date would not be affected by an

unscheduled closing of the Office. One comment also suggested that

Sec. 1.9 be amended to distinguish between the filing of applications

and the filing of responses. One comment suggested that the

Commissioner allow for filing of a non-provisional patent application

on Federal holidays where the one year anniversary of the provisional

application falls on a Federal holiday.

Response: Section 1.6(a)(2) is being amended to delete the phrase

``unless the date of deposit is a Saturday, Sunday or Federal holiday

within the District of Columbia in which case the date stamped will be

the succeeding day which is not a Saturday, Sunday or Federal holiday

in the District of Columbia.'' Section 1.6(a)(2) now provides that even

if the Office is closed because it is a Saturday, Sunday or Federal

holiday in the District of Columbia, correspondence deposited in the

``Express Mail Post Office to Addressee'' service of the USPS in

accordance with Sec. 1.10 will be considered filed on the date of

deposit regardless of whether that date is Saturday, Sunday or a

Federal holiday within the District of Columbia. Therefore, in light of

the option to file an application under Sec. 1.10 on any day and the

amendment to Sec. 1.6(a)(2), no substantive rights would be at risk,

and the suggestions, set forth in the comments and noted above, have

not been adopted.

Comment 9: Several comments objected to the requirement set forth

in proposed Sec. 1.10(b) which required deposit of Express Mail

correspondence directly with the United States Postal Service (USPS) to

ensure that a copy of the Express Mail label marked with the ``date

in'' is received at the time of deposit. The reasons generally

expressed by commenters were: (1) Practitioners and applicants feel

compelled to oversee the work of the USPS employee to make certain that

the ``date in'' is marked accurately, legibly and in a timely fashion

and perceive a loss of control over the filing of the document under

Sec. 1.10 as a result; (2) inefficiency and burden are imposed upon

persons filing who must actually go to the post office, stand in line

and generally be confined to fewer hours during the day to deposit the

Express Mail correspondence directly with the USPS than the hours

available for deposit in the Express Mail drop box; and (3) inequality

of opportunity to deposit directly with the USPS for individual

practitioners and small firms which employ fewer people than larger

firms to handle. Two comments questioned the Office's use of the term

``deposit'' and whether the Office exceeded any authority in the

perceived understanding that the proposed rule was requiring the

applicants or practitioners to do something beyond ``depositing'' the

correspondence with the USPS, namely, overseeing the act of acceptance

of the Express Mail correspondence by the USPS.

Response: Section 1.10(b) has been amended so that direct deposit

of correspondence with the USPS is a recommendation, rather than a

requirement. While the Office strongly urges direct deposit of Express

Mail correspondence in order to obtain a legible copy of the Express

Mail mailing label, parties are not precluded from using Express Mail

drop boxes. Parties who do use drop boxes can protect themselves from

uncertainty due to illegible mailing labels by routinely maintaining a

log of Express Mail deposits in which notations are entered by the

person who deposited the correspondence as Express Mail within one

business day after deposit with the USPS in a petition filed under

Sec. 1.10 (c), (d) or (e). Evidence that came into being within one day

after the deposit of the correspondence as Express Mail may be in the

form of a log book which contains information such as the Express Mail

number; the application number, attorney docket number or other such

file identification number; the place, date and time of deposit; the

time of the last scheduled pick-up for that date and place of deposit;

the depositor's initials or signature; and the date and time of entry

in the log. Any statement submitted in support of such a showing must

be verified if made by a person other than an employee of the USPS or a

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

Comment 10: Several comments opposed the elimination of the

certificate of mailing by ``Express Mail'' because it would eliminate a

reliable mode of proving the date of deposit with the USPS.

Response: The elimination of the requirement for the certificate of

mailing is adopted primarily to streamline the Office's processing of

Express Mail correspondence. Under the old rule, the Office was

required to scrutinize the certificate as well as the Express Mail

label. Under the new rule, the ``date in'' on the Express Mail label

would be the only date that the Office would look for to determine the

filing date. Under the prior rule, the certificate of mailing by

Express Mail only served as proof of a date of deposit when the

certificate date was the same as the ``date in'' on the Express Mail

label. The certificate did not afford protection to an applicant in the

event that the certificate date differed from the Express Mail label

date. Therefore, the elimination of the certificate of mailing

requirement would not eliminate a reliable mode of proving the date of

deposit.

Comment 11: Four comments suggested allowing Express Mail Corporate

Account Mailing Statement of the USPS to serve as additional proof of

the date of deposit.

Response: This suggestion has been adopted. Such records would be

acceptable as additional proof of the date of deposit.

Comment 12: One comment requested clarification concerning whether

deposit of correspondence as Express Mail in the Express Mail drop box

must be done prior to the last scheduled pickup of the day in order to

be entitled to the deposit date as the filing date of the

correspondence.

Response: Correspondence sent by the ``Express Mail Post Office to

Addressee'' service is considered filed in the Office on the ``date-

in'' entered by the USPS. Accordingly, if the USPS enters the deposit

date as its ``date-in,'' the correspondence will receive the deposit

date as its filing date. However, if the USPS enters a date later than

the deposit date as its ``date-in,'' the correspondence will receive

the later date as its filing date. Section 1.10(d) permits the Office

to correct a USPS ``date-in'' error when the correspondence is

deposited in an Express Mail drop box prior to last scheduled pick up

of the day, that is, the time clearly marked on the Express Mail drop

box indicating when the box

[[Page 56446]]

will be cleared for the last time on the date of deposit. Section

1.10(d) sets forth the procedures to be followed to be entitled to such

a correction.

Other Considerations

The rule changes are in conformity with the requirements of the

Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive Order

12612, and the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et

seq.). This rule has been determined to not be significant for the

purposes of Executive Order 12866.

The Office has determined that this rule change has no Federalism

implications affecting the relationship between the National Government

and the States as outlined in Executive Order 12612.

The Assistant General Counsel for Legislation and Regulation of the

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

Small Business Administration, that the rule changes would not have a

significant impact on a substantial number of small entities

(Regulatory Flexibility Act, 5 U.S.C. 605(b)). The rule change has no

effect on patent fees.

Notwithstanding any other provision of law, no person is required

to respond to nor shall a person be subject to a penalty for failure to

comply with a collection of information subject to the requirements of

the Paperwork Reduction Act unless that collection of information

displays a currently valid OMB Control Number.

This rule change contains a collection of information subject to

the requirements of the Paperwork Reduction Act of 1995 (44 U.S.C. 3501

et seq.), which is currently approved by the Office of Management and

Budget under Control No. 0651-0031. The public reporting burden for the

certificate of mailing is estimated to average six minutes per

response, including the time for reviewing instructions, searching

existing data sources, gathering and maintaining the data needed, and

completing and reviewing the collection of information. Send comments

regarding this burden estimate or any other aspect of this collection

of information, including suggestions for reducing this burden to the

Office of System Quality and Enhancement Division, Patent and Trademark

Office, Washington, D.C. 20231, and to the Office of Information and

Regulatory Affairs, Office of Management and Budget, Washington, DC

20503. (ATTN: Paperwork Reduction Act Project 0651-0031).

List of Subjects

37 CFR Part 1

Administrative practice and procedure, Freedom of information,

Inventions and patents, Reporting and record keeping requirements.

37 CFR Part 2

Administrative practice and procedure, Courts, Lawyers, Trademarks.

37 CFR Part 5

Classified information, Foreign relations, Inventions and patents.

37 CFR Part 10

Administrative practice and procedure, Conflicts of interest,

Courts, Inventions and patents, Lawyers.

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

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

and 15 U.S.C. 1123, 37 CFR Parts 1, 2, 5 and 10 are amended as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

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

follows:

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

2. Section 1.1 is amended by removing and reserving paragraph (g)

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

Sec. 1.1 Addresses for correspondence with the Patent and Trademark

Office.

(a) Except for Sec. 1.1(a)(3) (i) and (ii), all correspondence

intended for the Patent and Trademark Office must be addressed to

either ``Commissioner of Patents and Trademarks, Washington, D.C.

20231'' or to specific areas within the Office as set out in paragraphs

(a) (1), (2) and (3)(iii) of this section. When appropriate,

correspondence should also be marked for the attention of a particular

office or individual.

(1) Patent correspondence. All correspondence concerning patent

matters processed by organizations reporting to the Assistant

Commissioner for Patents should be addressed to ``Assistant

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

(2) Trademark correspondence. All correspondence concerning

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

Assignment Division for recordation and requests for certified and

uncertified copies of trademark application and registration documents,

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

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

correspondence intended for the Trademark Trial and Appeal Board.

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

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

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

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

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

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

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

(ii) Correspondence relating to disciplinary proceedings pending

before an Administrative Law Judge or the Commissioner shall be mailed

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

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

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

Washington, D.C. 20231.

(iv) Correspondence improperly addressed to a Post Office Box

specified in paragraphs (a)(3) (i) and (ii) of this section will not be

filed elsewhere in the Patent and Trademark Office, and may be

returned.

* * * * *

(g) [Reserved]

* * * * *

3. Section 1.3 is revised to read as follows:

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

Applicants and their attorneys or agents are required to conduct

their business with the Patent and Trademark Office with decorum and

courtesy. Papers presented in violation of this requirement will be

submitted to the Commissioner and will be returned by the

Commissioner's direct order. Complaints against examiners and other

employees must be made in correspondence separate from other papers.

4. Section 1.5 is amended by revising paragraph (a) to read as

follows:

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

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

prior to receipt of the application number from the Patent and

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

Office concerns a previously filed application for a patent, it must

identify on the top page in a conspicuous location, the application

number (consisting of the series code and the serial number; e.g., 07/

123,456),

[[Page 56447]]

or the serial number and filing date assigned to that application by

the Patent and Trademark Office, or the international application

number of the international application. Any correspondence not

containing such identification will be returned to the sender where a

return address is available. The returned correspondence will be

accompanied by a cover letter which will indicate to the sender that if

the returned correspondence is resubmitted to the Patent and Trademark

Office within two weeks of the mailing date on the cover letter, the

original date of receipt of the correspondence will be considered by

the Patent and Trademark Office as the date of receipt of the

correspondence. Applicants may use either the Certificate of Mailing or

Transmission procedure under Sec. 1.8 or the Express Mail procedure

under Sec. 1.10 for resubmissions of returned correspondence if they

desire to have the benefit of the date of deposit with the United

States Postal Service. If the returned correspondence is not

resubmitted within the two-week period, the date of receipt of the

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

correspondence. The two-week period to resubmit the returned

correspondence will not be extended. In addition to the application

number, all letters directed to the Patent and Trademark Office

concerning applications for patents should also state the name of the

applicant, the title of the invention, the date of filing the same,

and, if known, the group art unit or other unit within the Patent and

Trademark Office responsible for considering the letter and the name of

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

* * * * *

5. Section 1.6 is amended by revising paragraph (a) to read as

follows:

Sec. 1.6 Receipt of correspondence.

(a) Date of receipt and Express Mail date of deposit.

Correspondence received in the Patent and Trademark Office is stamped

with the date of receipt except as follows:

(1) The Patent and Trademark Office is not open for the filing of

correspondence on any day that is a Saturday, Sunday or Federal holiday

within the District of Columbia. Except for correspondence transmitted

by facsimile as provided for in paragraph (a)(3) of this section, no

correspondence is received in the Patent and Trademark Office on

Saturdays, Sundays or Federal holidays within the District of Columbia.

(2) Correspondence filed in accordance with Sec. 1.10 will be

stamped with the date of deposit as ``Express Mail'' with the United

States Postal Service.

(3) Correspondence transmitted by facsimile to the Patent and

Trademark Office will be stamped with the date on which the complete

transmission is received in the Patent and Trademark Office unless that

date is a Saturday, Sunday, or Federal holiday within the District of

Columbia, in which case the date stamped will be the next succeeding

day which is not a Saturday, Sunday, or Federal holiday within the

District of Columbia.

* * * * *

6. Section 1.8 is amended by revising paragraphs (a)(1)(i)(A) and

(a)(2)(ii) to read as follows:

Sec. 1.8 Certificate of mailing or transmission.

(a) * * *

(1) * * *

(i) * * *

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

Postal Service with sufficient postage as first class mail; or

* * * * *

(2) * * *

(i) * * *

(ii) Relative to Trademark Registrations and Trademark

Applications:

(A) The filing of a trademark application.

(B) [Reserved]

(C) [Reserved]

(D) [Reserved]

(E) [Reserved]

(F) [Reserved]

* * * * *

7. Section 1.9 is amended by adding a new paragraph (h) to read as

follows:

Sec. 1.9 Definitions.

* * * * *

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

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

Patent and Trademark Office is officially closed for business for the

entire day.

8. Section 1.10 is revised to read as follows:

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

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

(Office) that was delivered by the ``Express Mail Post Office to

Addressee'' service of the United States Postal Service (USPS) will be

considered filed in the Office on the date of deposit with the USPS.

The date of deposit with the USPS is shown by the ``date-in'' on the

``Express Mail'' mailing label or other official USPS notation. If the

USPS deposit date cannot be determined, the correspondence will be

accorded the Office receipt date as the filing date. See Sec. 1.6(a).

(b) Correspondence should be deposited directly with an employee of

the USPS to ensure that the person depositing the correspondence

receives a legible copy of the ``Express Mail'' mailing label with the

``date-in'' clearly marked. Persons dealing indirectly with the

employees of the USPS (such as by deposit in an ``Express Mail'' drop

box) do so at the risk of not receiving a copy of the ``Express Mail''

mailing label with the desired ``date-in'' clearly marked. The paper(s)

or fee(s) that constitute the correspondence should also include the

``Express Mail'' mailing label number thereon. See paragraphs (c), (d)

and (e) of this section.

(c) Any person filing correspondence under this section that was

received by the Office and delivered by the ``Express Mail Post Office

to Addressee'' service of the USPS, who can show that there is a

discrepancy between the filing date accorded by the Office to the

correspondence and the date of deposit as shown by the ``date-in'' on

the ``Express Mail'' mailing label or other official USPS notation, may

petition the Commissioner to accord the correspondence a filing date as

of the ``date-in'' on the ``Express Mail'' mailing label or other

official USPS notation, provided that:

(1) The petition is filed promptly after the person becomes aware

that the Office has accorded, or will accord, a filing date other than

the USPS deposit date;

(2) The number of the ``Express Mail'' mailing label was placed on

the paper(s) or fee(s) that constitute the correspondence prior to the

original mailing by ``Express Mail;'' and

(3) The petition includes a true copy of the ``Express Mail''

mailing label showing the ``date-in,'' and of any other official

notation by the USPS relied upon to show the date of deposit.

(d) Any person filing correspondence under this section that was

received by the Office and delivered by the ``Express Mail Post Office

to Addressee'' service of the USPS, who can show that the ``date-in''

on the ``Express Mail'' mailing label or other official notation

entered by the USPS was incorrectly entered or omitted by the USPS, may

petition the Commissioner to accord the correspondence a filing date as

of the date the correspondence is shown to have been deposited with the

USPS, provided that:

[[Page 56448]]

(1) The petition is filed promptly after the person becomes aware

that the Office has accorded, or will accord, a filing date based upon

an incorrect entry by the USPS;

(2) The number of the ``Express Mail'' mailing label was placed on

the paper(s) or fee(s) that constitute the correspondence prior to the

original mailing by ``Express Mail''; and

(3) The petition includes a showing which establishes, to the

satisfaction of the Commissioner, that the requested filing date was

the date the correspondence was deposited in ``Express Mail Post Office

to Addressee'' service prior to the last scheduled pickup for that day.

Any showing pursuant to this paragraph must be corroborated by evidence

from the USPS or that came into being after deposit and within one

business day of the deposit of the correspondence in the ``Express Mail

Post Office to Addressee'' service of the USPS. Any statement submitted

in support of such a showing pursuant to this paragraph must be a

verified statement if made by a person other than an employee of the

USPS or a practitioner as defined in Sec. 10.1(r) of this chapter.

(e) Any person mailing correspondence addressed as set out in

Sec. 1.1(a) to the Office with sufficient postage utilizing the

``Express Mail Post Office to Addressee'' service of the USPS but not

received by the Office, may petition the Commissioner to consider such

correspondence filed in the Office on the USPS deposit date, provided

that:

(1) The petition is filed promptly after the person becomes aware

that the Office has no evidence of receipt of the correspondence;

(2) The number of the ``Express Mail'' mailing label was placed on

the paper(s) or fee(s) that constitute the correspondence prior to the

original mailing by ``Express Mail;''

(3) The petition includes a copy of the originally deposited

paper(s) or fee(s) that constitute the correspondence showing the

number of the ``Express Mail'' mailing label thereon, a copy of any

returned postcard receipt, a copy of the ``Express Mail'' mailing label

showing the ``date-in,'' a copy of any other official notation by the

USPS relied upon to show the date of deposit, and, if the requested

filing date is a date other than the ``date-in'' on the ``Express

Mail'' mailing label or other official notation entered by the USPS, a

showing pursuant to paragraph (d)(3) of this section that the requested

filing date was the date the correspondence was deposited in ``Express

Mail Post Office to Addressee'' service prior to the last scheduled

pickup for that day; and

(4) The petition includes a statement which establishes, to the

satisfaction of the Commissioner, the original deposit of the

correspondence, and that the copies of the correspondence, the copy of

the ``Express Mail'' mailing label, the copy of any returned postcard

receipt, and any official notation entered by the USPS are true copies

of the originally mailed correspondence and original ``Express Mail''

mailing label, returned postcard receipt, and official notation entered

by the USPS. Such statement must be a verified statement if made by a

person other than a practitioner as defined in Sec. 10.1(r) of this

chapter.

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

correspondence was deposited as ``Express Mail'' with the USPS on the

date in question.

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

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

follows:

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

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

Sec. 2.165 Reconsideration of affidavit or declaration.

(a)(1) If the affidavit or declaration filed pursuant to Sec. 2.162

is insufficient or defective, the affidavit or declaration will be

refused and the registrant will be notified of the reason.

Reconsideration of the refusal may be requested within six months from

the date of the mailing of the action. The request for reconsideration

must state the grounds for the request. A supplemental or substitute

affidavit or declaration required by section 8 of the Act of 1946

cannot be considered unless it is filed before the expiration of six

years from the date of the registration or from the date of publication

under section 12(c) of the Act.

* * * * *

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

FILE APPLICATIONS IN FOREIGN COUNTRIES

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

follows:

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

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

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

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

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

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

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

CFR 810.7).

12. Section 5.33 is revised to read as follows:

Sec. 5.33 Correspondence.

All correspondence in connection with this part, including

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

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

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

OFFICE

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

follows:

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

41.

14. Section 10.23 is amended by revising paragraph (c)(9) to read

as follows:

Sec. 10.23 Misconduct.

* * * * *

(c) * * *

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

under Sec. 1.8 of this chapter.

* * * * *

Dated: October 24, 1996.

Bruce A. Lehman,

Assistant Secretary of Commerce and Commissioner of Patents and

Trademarks.

[FR Doc. 96-28088 Filed 10-31-96; 8:45 am]

BILLING CODE 3510-16-P