Filing Papers With the U.S. Patent and Trademark Office

37 CFR 1.1  Addresses for non-trademark correspondence with the United States Patent and

Trademark Office.

(a)

In general.

Except for correspondence submitted via the U.S.

Patent and Trademark Office (USPTO) patent electronic filing system in accordance

with § 1.6(a)(4), all correspondence intended for the USPTO must be addressed to

either “Director of the United States Patent and Trademark Office, P.O. Box 1450,

Alexandria, Virginia 22313-1450” or to specific areas within the Office provided

in this section. When appropriate, correspondence should also be marked for the

attention of a particular office or individual.

(1)

Patent correspondence.

(i)

In general.

All correspondence concerning patent

matters processed by organizations reporting to the Commissioner for

Patents should be addressed to: Commissioner for Patents, P.O. Box

1450, Alexandria, Virginia 22313-1450.

(ii)

Patent Trial and Appeal Board.

See

§ 41.10

or

§

42.6

of this title. Notices of appeal, appeal

briefs, reply briefs, requests for oral hearing, as well as all other

correspondence in an application or a patent involved in an appeal to

the Board for which an address is not otherwise specified, should be

addressed as set out in paragraph (a)(1)(i) of this section.

(2) [Reserved]

(3)

Office of General Counsel correspondence.

—

(i)

Litigation and service.

Correspondence relating to pending litigation or otherwise

within the scope of part 104 of this title shall be addressed as

provided in

§ 104.2

.

(ii)

Disciplinary proceedings.

Correspondence to counsel for the Director of the Office of

Enrollment and Discipline relating to disciplinary proceedings pending

before a Hearing Officer or the Director shall be mailed to: Mail Stop

8, Office of the Solicitor, United States Patent and Trademark Office,

P.O. Box 1450, Alexandria, Virginia 22313-1450.

itle shall be addressed as

provided in

§ 104.2

.

(ii)

Disciplinary proceedings.

Correspondence to counsel for the Director of the Office of

Enrollment and Discipline relating to disciplinary proceedings pending

before a Hearing Officer or the Director shall be mailed to: Mail Stop

8, Office of the Solicitor, United States Patent and Trademark Office,

P.O. Box 1450, Alexandria, Virginia 22313-1450.

(iii)

Solicitor, in general.

Correspondence to the Office of the Solicitor not otherwise

provided for shall be addressed to: Mail Stop 8, Office of the

Solicitor, United States Patent and Trademark Office, P.O. Box 1450,

Alexandria, Virginia 22313-1450.

(iv)

General Counsel.

Correspondence to the Office of

the General Counsel not otherwise provided for, including

correspondence to the General Counsel relating to disciplinary

proceedings, shall be addressed to: General Counsel, United States

Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia

22313-1450.

(v)

Improper correspondence.

Correspondence improperly

addressed to a Post Office Box specified in paragraphs (a)(3)(i) and

(a)(3)(ii) of this section will not be filed elsewhere in the United

States Patent and Trademark Office, and may be returned.

(4)

Office of Public Records correspondence.

(i)

Assignments.

All patent-related documents submitted

by mail to be recorded by Assignment Services Division, except for

documents filed together with a new application, should be addressed

to: Mail Stop Assignment Recordation Services, Director of the United

States Patent and Trademark Office, P.O. Box 1450, Alexandria,

Virginia 22313-1450.

See

§

3.27

.

(ii)

Documents.

All requests for certified or

uncertified copies of patent documents should be addressed to: Mail

Stop Document Services, Director of the United States Patent and

Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.

op Assignment Recordation Services, Director of the United

States Patent and Trademark Office, P.O. Box 1450, Alexandria,

Virginia 22313-1450.

See

§

3.27

.

(ii)

Documents.

All requests for certified or

uncertified copies of patent documents should be addressed to: Mail

Stop Document Services, Director of the United States Patent and

Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.

(5)

Office of Enrollment and Discipline correspondence.

All

correspondence directed to the Office of Enrollment and Discipline

concerning enrollment, registration, and investigation matters should be

addressed to Mail Stop OED, Director of the United States Patent and

Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.

(b)

Patent Cooperation Treaty.

Letters and other communications relating to international applications

during the international stage and prior to the assignment of a national serial

number should be additionally marked “Mail Stop PCT.”

(c)

For reexamination or supplemental examination

proceedings.

(1) All correspondence concerning

ex parte

reexamination, other than correspondence to the Office of the General

Counsel pursuant to

§ 1.1(a)(3)

and

§

102.04

of this chapter, should be additionally marked

“Mail Stop

Ex Parte

Reexam.”

(2) All correspondence concerning

inter

partes

reexamination, other than correspondence to the Office

of the General Counsel pursuant to

§ 1.1(a)(3)

and

§

102.4

of this chapter, should be additionally marked

‘‘Mail Stop

Inter Partes

Reexam.’’

(3) Requests for supplemental examination

(original and corrected request papers) and any other paper filed in a

supplemental examination proceeding, should be additionally marked ‘‘Mail

Stop Supplemental Examination.’’

(4) All correspondence concerning a reexamination

proceeding ordered as a result of a supplemental reexamination proceeding,

other than correspondence to the Office of the General Counsel pursuant to

§

1.1(a)(3)

and

§ 102.4

of this chapter

should be additionally marked “Mail Stop

Ex Parte

Reexam.”

emental examination proceeding, should be additionally marked ‘‘Mail

Stop Supplemental Examination.’’

(4) All correspondence concerning a reexamination

proceeding ordered as a result of a supplemental reexamination proceeding,

other than correspondence to the Office of the General Counsel pursuant to

§

1.1(a)(3)

and

§ 102.4

of this chapter

should be additionally marked “Mail Stop

Ex Parte

Reexam.”

(d) Payments of maintenance fees. Payments of patent maintenance fees

that are not submitted electronically and correspondence related to maintenance

fees may be addressed to: Mail Stop Maintenance Fee, Director of the United States

Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.

(e)

Patent term extension.

All applications for extension of patent

term under

35 U.S.C. 156

and any communications relating thereto

intended for the United States Patent and Trademark Office should be additionally

marked “Mail Stop Hatch-Waxman PTE.” When appropriate, the communication should

also be marked to the attention of a particular individual, as where a decision

has been rendered.

(f) [Reserved]

37 CFR 1.4  Nature of correspondence and signature requirements.

(a) Correspondence with the Patent and Trademark Office comprises:

(1) Correspondence relating to services and facilities of the

Office, such as general inquiries, requests for publications supplied by the

Office, orders for printed copies of patents, orders for copies of records,

transmission of assignments for recording, and the like, and

1.4  Nature of correspondence and signature requirements.

(a) Correspondence with the Patent and Trademark Office comprises:

(1) Correspondence relating to services and facilities of the

Office, such as general inquiries, requests for publications supplied by the

Office, orders for printed copies of patents, orders for copies of records,

transmission of assignments for recording, and the like, and

(2)

Correspondence in and relating to a particular application or other

proceeding in the Office.

See particularly the rules relating

to the filing, processing, or other proceedings of national applications in

subpart B of this part; of international applications in subpart C of this

part; of

ex parte

reexaminations of patents in subpart D

of this part; of supplemental examination of patents in subpart E of this

part; of extension of patent term in subpart F of this part; of

inter partes

reexaminations of patents in subpart H of

this part; of international design applications in subpart I of this part;

and of the Patent Trial and Appeal Board in parts 41 and 42 of this

chapter.

(b) Since each file must be complete in itself, a separate copy of

every paper to be filed in a patent, patent file, or other proceeding must be

furnished for each file to which the paper pertains, even though the contents of

the papers filed in two or more files may be identical. The filing of duplicate

copies of correspondence in the file of an application, patent, or other

proceeding should be avoided, except in situations in which the Office requires

the filing of duplicate copies. The Office may dispose of duplicate copies of

correspondence in the file of an application, patent, or other proceeding.

he contents of

the papers filed in two or more files may be identical. The filing of duplicate

copies of correspondence in the file of an application, patent, or other

proceeding should be avoided, except in situations in which the Office requires

the filing of duplicate copies. The Office may dispose of duplicate copies of

correspondence in the file of an application, patent, or other proceeding.

(c) Since different matters may be considered by different branches or

sections of the Office, each distinct subject, inquiry or order must be contained

in a separate paper to avoid confusion and delay in answering papers dealing with

different subjects. Subjects provided for on a single Office or World Intellectual

Property Organization form may be contained in a single paper.

(d)

(1)

Handwritten signature.

A design patent practitioner must

indicate their design patent practitioner status by placing the word

“design” (in any format) adjacent to their handwritten signature. Each piece

of correspondence, except as provided in paragraphs (d)(2) through (4), (e)

and (f) of this section, filed in an application, patent file, or other

proceeding in the Office that requires a person’s signature, must:

(i) Be an original, that is, have an original handwritten

signature personally signed, in permanent dark ink or its equivalent,

by that person; or

(ii) Be a direct or indirect copy, such as a photocopy or

facsimile transmission (

§ 1.6(d)

), of an

original. In the event that a copy of the original is filed, the

original should be retained as evidence of authenticity. If a question

of authenticity arises, the Office may require submission of the

original.

(2)

S-signature.

An S-signature is a signature inserted

between forward slash marks, but not a handwritten signature as defined by

paragraph (d)(1) of this section. An S-signature includes any signature made

by electronic or mechanical means, and any other mode of making or applying

a signature other than a handwritten signature as provided for in paragraph

may require submission of the

original.

(2)

S-signature.

An S-signature is a signature inserted

between forward slash marks, but not a handwritten signature as defined by

paragraph (d)(1) of this section. An S-signature includes any signature made

by electronic or mechanical means, and any other mode of making or applying

a signature other than a handwritten signature as provided for in paragraph

(d)(1) of this section. Correspondence being filed in the Office in paper,

by facsimile transmission as provided in

§ 1.6(d)

, or via the

USPTO patent electronic filing system as an attachment as provided in

§

1.6(a)(4)

, for a patent application, patent, or a

reexamination or supplemental examination proceeding may be S-signature

signed instead of being personally signed (i.e., with a handwritten

signature) as provided for in paragraph (d)(1) of this section. The

requirements for an S-signature under this paragraph (d)(2) of this section

are as follows.

(i) The S-signature must consist only of letters, or

Arabic numerals, or both, with appropriate spaces and commas, periods,

apostrophes, or hyphens for punctuation, and the person signing the

correspondence must insert his or her own S-signature with a first

single forward slash mark before, and a second single forward slash

mark after, the S-signature (

e.g.,

/Dr. James T.

Jones, Jr./); and

(ii) A patent practitioner (

§

1.32(a)(1)

), signing pursuant to

§

1.33(b)(1)

or

th, with appropriate spaces and commas, periods,

apostrophes, or hyphens for punctuation, and the person signing the

correspondence must insert his or her own S-signature with a first

single forward slash mark before, and a second single forward slash

mark after, the S-signature (

e.g.,

/Dr. James T.

Jones, Jr./); and

(ii) A patent practitioner (

§

1.32(a)(1)

), signing pursuant to

§

1.33(b)(1)

or

(2)

, must supply their registration number

either as part of the S-signature or immediately below or adjacent to

the S-signature. The hash (#) character may only be used as part of

the S-signature when appearing before a practitioner’s registration

number; otherwise, the hash character may not be used in an

S-signature. A design patent practitioner must additionally indicate

their design patent practitioner status by placing the word “design”

(in any format) adjacent to the last forward slash of their

S-signature.

(iii) The signer’s name must be:

(A) Presented in printed or typed form preferably

immediately below or adjacent the S-signature, and

(B) Reasonably specific enough so that the identity

of the signer can be readily recognized.

(3) Electronically submitted correspondence. Correspondence

permitted via the USPTO patent electronic filing system may be signed by a

graphic representation of a handwritten signature as provided for in

paragraph (d)(1) of this section or a graphic representation of an

S-signature as provided for in paragraph (d)(2) of this section when it is

submitted via the USPTO patent electronic filing system.

(4) Certifications—

mitted correspondence. Correspondence

permitted via the USPTO patent electronic filing system may be signed by a

graphic representation of a handwritten signature as provided for in

paragraph (d)(1) of this section or a graphic representation of an

S-signature as provided for in paragraph (d)(2) of this section when it is

submitted via the USPTO patent electronic filing system.

(4) Certifications—

(i) Certification as to the paper presented.

The presentation to the Office (whether by signing, filing,

submitting, or later advocating) of any paper by a party, whether a

practitioner or non-practitioner, constitutes a certification under

§

11.18(b)

of this subchapter. Violations of

§

11.18(b)(2)

of this subchapter by a party,

whether a practitioner or non-practitioner, may result in the

imposition of sanctions under

§ 11.18(c)

of this

subchapter. Any practitioner violating

§

11.18(b)

of this subchapter may also be subject

to disciplinary action. See

§ 11.18(d)

of this

subchapter.

(ii)

Certifications as to the signature.

The person

inserting a signature under paragraph (d)(2) or (d)(3) of this section

in a document submitted to the Office certifies that the inserted

signature appearing in the document is his or her own signature. A

person submitting a document signed by another under paragraph (d)(2)

or (d)(3) of this section is obligated to have a reasonable basis to

believe that the person whose signature is present on the document was

actually inserted by that person, and should retain evidence of

authenticity of the signature. Violations of the certification as to

the signature of another or a person’s own signature as set forth in

this paragraph may result in the imposition of sanctions under

§

11.18(c) and (d)

of this chapter.

o have a reasonable basis to

believe that the person whose signature is present on the document was

actually inserted by that person, and should retain evidence of

authenticity of the signature. Violations of the certification as to

the signature of another or a person’s own signature as set forth in

this paragraph may result in the imposition of sanctions under

§

11.18(c) and (d)

of this chapter.

(5)

Forms.

The Office provides forms for the public to use in

certain situations to assist in the filing of correspondence for a certain

purpose and to meet certain requirements for patent applications and

proceedings. Use of the forms for purposes for which they were not designed

is prohibited. No changes to certification statements on the Office forms

(e.g., oath or declaration forms, terminal disclaimer forms, petition forms,

and nonpublication request forms) may be made. The existing text of a form,

other than a certification statement, may be modified, deleted, or added to,

if all text identifying the form as an Office form is removed. The

presentation to the Office (whether by signing, filing, submitting, or later

advocating) of any Office form with text identifying the form as an Office

form by a party, whether a practitioner or non-practitioner, constitutes a

certification under

§ 11.18(b)

of this

chapter that the existing text and any certification statements on the form

have not been altered other than permitted by EFS-Web customization.

(e) [Reserved]

(f) When a document that is required by statute to be certified must

be filed, a copy, including a photocopy or facsimile transmission, of the

certification is not acceptable.

actitioner, constitutes a

certification under

§ 11.18(b)

of this

chapter that the existing text and any certification statements on the form

have not been altered other than permitted by EFS-Web customization.

(e) [Reserved]

(f) When a document that is required by statute to be certified must

be filed, a copy, including a photocopy or facsimile transmission, of the

certification is not acceptable.

(g) An applicant who has not made of record a registered attorney or

agent may be required to state whether assistance was received in the preparation

or prosecution of the patent application, for which any compensation or

consideration was given or charged, and if so, to disclose the name or names of

the person or persons providing such assistance. Assistance includes the

preparation for the applicant of the specification and amendments or other papers

to be filed in the Patent and Trademark Office, as well as other assistance in

such matters, but does not include merely making drawings by draftsmen or

stenographic services in typing papers.

(h)

Ratification/confirmation/evidence of authenticity:

The Office

may require ratification, confirmation (which includes submission of a duplicate

document but with a proper signature), or evidence of authenticity of a signature,

such as when the Office has reasonable doubt as to the authenticity (veracity) of

the signature,

e.g.,

where there are variations of a signature,

or where the signature and the typed or printed name, do not clearly identify the

person signing.

37 CFR 2.190 Addresses for trademark correspondence with the

United States Patent and Trademark Office.

nature), or evidence of authenticity of a signature,

such as when the Office has reasonable doubt as to the authenticity (veracity) of

the signature,

e.g.,

where there are variations of a signature,

or where the signature and the typed or printed name, do not clearly identify the

person signing.

37 CFR 2.190 Addresses for trademark correspondence with the

United States Patent and Trademark Office.

(a)

Paper trademark documents.

In

general, trademark documents to be delivered by the USPS must be addressed to:

Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

Trademark-related documents to be delivered by hand, private courier, or other

delivery service may be delivered during the hours the Office is open to receive

correspondence to the Trademark Assistance Center, James Madison Building—East

Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia 22314.

(b)

Electronic trademark

documents.

Trademark documents filed electronically must be submitted

through TEAS. Documents that relate to proceedings before the Trademark Trial and

Appeal Board must be filed electronically with the Board through ESTTA.

(c)

Trademark assignment

documents.

Requests to record documents in the Assignment Recordation

Branch may be filed electronically through ETAS. Paper documents and cover sheets

to be recorded in the Assignment Recordation Branch should be addressed as

designated in § 3.27 of this chapter.

(d)

Requests for certified copies of trademark

documents.

Paper requests for certified copies of trademark documents

must be addressed to: Mail Stop Document Services, Director of the United States

Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.

cover sheets

to be recorded in the Assignment Recordation Branch should be addressed as

designated in § 3.27 of this chapter.

(d)

Requests for certified copies of trademark

documents.

Paper requests for certified copies of trademark documents

must be addressed to: Mail Stop Document Services, Director of the United States

Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.

(e)

Certain documents relating to international

applications and registrations.

International applications under §

7.11, subsequent designations under § 7.21, responses to notices of irregularity

under § 7.14, requests to record changes in the International Register under §

7.23 and § 7.24, requests to note replacements under § 7.28, requests for

transformation under § 7.31 of this chapter, and petitions to the Director to

review an action of the Office's Madrid Processing Unit must be addressed to:

Madrid Processing Unit, 600 Dulany Street, Alexandria, VA 22314-5796.

I.

GENERAL MAILING ADDRESSES

The U.S. Patent and Trademark Office (Office) has three separate general

mailing addresses. The addresses are as follows:

A.

For Patent Applications and Patent-Related Papers

Correspondence in patent-related matters under the direction of the

Commissioner for Patents should be addressed to:

Commissioner for Patents

P.O. Box 1450

Alexandria, Virginia 22313-1450

Such correspondence includes: patent applications, replies to notices

of informality, requests for extension of time, notices of appeal to the Patent Trial

and Appeal Board (the Board), briefs in support of an appeal to the Board, requests

for oral hearing before the Board, applications for extensions of term of patent,

requests for reexamination, requests for supplemental examination, statutory

disclaimers, certificates of correction, petitions to the Commissioner for Patents,

submission of information disclosure statements, petitions to revive abandoned patent

applications, and other correspondence related to patent applications and patents

which is processed by organiz

cations for extensions of term of patent,

requests for reexamination, requests for supplemental examination, statutory

disclaimers, certificates of correction, petitions to the Commissioner for Patents,

submission of information disclosure statements, petitions to revive abandoned patent

applications, and other correspondence related to patent applications and patents

which is processed by organizations reporting to the Commissioner for Patents.

Certain patent-related correspondence requires immediate Office

attention. Examples are:

(A) Petitions for express abandonment to avoid publication under

37 CFR

1.138(c)

;

(B) Petitions to withdraw an application from issue under

37 CFR

1.313(c)

;

(C) Petitions to defer issuance of patent under

37 CFR

1.314

;

(D) Request for expedited examination of a design application

(rocket docket); and

(E) Certain papers required by the Office of Data Management.

Applicants are encouraged to transmit these types of correspondence

by the USPTO patent electronic filing system (see

MPEP § 502.05

).

Where permitted, patent-related correspondence that requires immediate Office

attention may also be submitted to the appropriate area of the Office for processing

by facsimile transmission (see

MPEP § 502.01

, subsections I.B and

II) or hand-carried (see

MPEP § 502

), subsection III).

B.

For Trademark Applications and Trademark-Related Papers

All trademark-related documents filed on paper, except documents sent

to the Assignment Recordation Branch for recordation; requests for copies of

trademark documents; and certain documents filed under the Madrid Protocol as

specified in 37 CFR 2.190(e), should be addressed to:

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA 22313-1451.

See 37 CFR 2.190 (reproduced before subsection I, above) for the

addresses for filing trademark correspondence with the USPTO on paper and

electronically.

C

ch for recordation; requests for copies of

trademark documents; and certain documents filed under the Madrid Protocol as

specified in 37 CFR 2.190(e), should be addressed to:

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA 22313-1451.

See 37 CFR 2.190 (reproduced before subsection I, above) for the

addresses for filing trademark correspondence with the USPTO on paper and

electronically.

C.

For Other Correspondence

Patent and trademark documents sent to the Assignment Recordation

Branch for recordation (Mail Stop Assignment Recordation Services), requests for

certified or uncertified copies of patent and trademark documents (Mail Stop Patent

and Trademark Copy Fulfillment Branch), and for correspondence for which an address

is not otherwise specified in

37 CFR 1.1

or 2.190, should be

addressed to:

Director of the United States Patent and Trademark

Office

P.O. Box 1450

Alexandria, VA 22313-1450

It is preferred that requests for certified or

uncertified copies of patent and trademark documents be made online through the

Certified Copy Center storefront at

www.uspto.gov/CertifiedCopyCenter

.

II.

SEPARATE MAILING ADDRESSES FOR CERTAIN CORRESPONDENCE

The Office has separate mailing addresses for certain

correspondence:

(A) Certain court-related correspondence (e.g., summons and complaint)

being delivered to the Office via the U.S. Postal Service (USPS) must be

addressed:

General Counsel

United States Patent and Trademark

Office

P.O. Box 1450

Alexandria, VA 22313-1450

(B) Correspondence directed to the Office of Enrollment and Discipline

(OED) Director relating to disciplinary proceedings pending before a Hearing

Officer or the Director must be addressed:

Mail Stop 8

Office of the Solicitor

United States Patent and Trademark

Office

P.O. Box 1450

Alexandria, Virginia 22313-1450

(C) Maintenance fee payments not electronically submitted over the

Internet and correspondence related to maintenance fees may be addressed to:

Mail Stop Maintenance Fee

Director of the United States Patent and Trademark

Office

P.O

g

Officer or the Director must be addressed:

Mail Stop 8

Office of the Solicitor

United States Patent and Trademark

Office

P.O. Box 1450

Alexandria, Virginia 22313-1450

(C) Maintenance fee payments not electronically submitted over the

Internet and correspondence related to maintenance fees may be addressed to:

Mail Stop Maintenance Fee

Director of the United States Patent and Trademark

Office

P.O. Box 1450

Alexandria, VA 22313-1450

(D) A payment to replenish a deposit account may be addressed to:

Mail Stop Deposit Accounts

Director of the United States Patent and Trademark

Office

P.O. Box 1450

Alexandria, VA 22313-1450

Persons filing correspondence with the Office should check the rules of

practice, the

Official Gazette,

or the USPTO website

(www.uspto.gov)

to determine the

appropriate mailing address for such correspondence.

III.

HAND-DELIVERY OF PAPERS

Patent-related papers may be hand-carried to the Office in Alexandria,

VA. Correspondence cannot be hand-carried to the Regional Offices. If the correspondence

is hand-carried to the Office, with limited exceptions (see

MPEP § 502

, subsection

III) it must be delivered to:

United States Patent and Trademark

Office

Customer Service Window

Knox Building

501 Dulany Street

Alexandria, VA 22314

Trademark-related papers may be filed at the “walk-up” window located in

the Trademark Assistance Center, Madison East, Concourse Level, Room C55, 600 Dulany

Street, Alexandria, VA 22314.

As provided in

37 CFR 1.4(c)

, matters that are to

be considered by different branches or sections of the USPTO must be contained in

separate papers. The following form paragraph may be used to notify the applicant of

this requirement when the applicant has filed a single paper containing distinct

subjects, inquiries, or orders.