403.01(b) Correspondence in Applications Filed Before September 16, 2012 [R-10.2019]

Created On
byChhabra Law Firm

37 CFR 1.33 (pre-AIA) Correspondence respecting patent applications, reexamination proceedings, and other proceedings.

  • (a) Correspondence address and daytime telephone number. When filing an application, a correspondence address must be set forth in either an application data sheet (§ 1.76), or elsewhere, in a clearly identifiable manner, in any paper submitted with an application filing. If no correspondence address is specified, the Office may treat the mailing address of the first named inventor (if provided, see §§ 1.76(b)(1) and 1.63(c)(2)) as the correspondence address. The Office will direct, or otherwise make available, all notices, official letters, and other communications relating to the application to the person associated with the correspondence address. For correspondence submitted via the Office’s electronic filing system, however, an electronic acknowledgment receipt will be sent to the submitter. The Office will generally not engage in double correspondence with an applicant and a patent practitioner, or with more than one patent practitioner except as deemed necessary by the Director. If more than one correspondence address is specified in a single document, the Office will select one of the specified addresses for use as the correspondence address and, if given, will select the address associated with a Customer Number over a typed correspondence address. For the party to whom correspondence is to be addressed, a daytime telephone number should be supplied in a clearly identifiable manner and may be changed by any party who may change the correspondence address. The correspondence address may be changed as follows:
    • (1) Prior to filing of § 1.63 oath or declaration by any of the inventors. If a § 1.63 oath or declaration has not been filed by any of the inventors, the correspondence address may be changed by the party who filed the application. If the application was filed by a patent practitioner, any other patent practitioner named in the transmittal papers may also change the correspondence address. Thus, the inventor(s), any patent practitioner named in the transmittal papers accompanying the original application, or a party that will be the assignee who filed the application, may change the correspondence address in that application under this paragraph.
    • (2) Where a § 1.63 oath or declaration has been filed by any of the inventors. If a § 1.63 oath or declaration has been filed, or is filed concurrent with the filing of an application, by any of the inventors, the correspondence address may be changed by the parties set forth in paragraph (b) of this section, except for paragraph (b)(2).
  • (b) Amendments and other papers. Amendments and other papers, except for written assertions pursuant to § 1.27(c)(2)(ii) of this part, filed in the application must be signed by:
    • (1) A patent practitioner of record appointed in compliance with § 1.32(b);
    • (2) A patent practitioner not of record who acts in a representative capacity under the provisions of § 1.34;
    • (3) An assignee as provided for under § 3.71(b) of this chapter; or
    • (4) All of the applicants (§ 1.41(b)) for patent, unless there is an assignee of the entire interest and such assignee has taken action in the application in accordance with § 3.71 of this chapter.
  • (c) All notices, official letters, and other communications for the patent owner or owners in a reexamination proceeding will be directed to the correspondence address. Amendments and other papers filed in a reexamination proceeding on behalf of the patent owner must be signed by the patent owner, or if there is more than one owner by all the owners, or by an attorney or agent of record in the patent file, or by a registered attorney or agent not of record who acts in a representative capacity under the provisions of § 1.34. Double correspondence with the patent owner or owners and the patent owner’s attorney or agent, or with more than one attorney or agent, will not be undertaken.
  • (d) A “correspondence address” or change thereto may be filed with the Patent and Trademark Office during the enforceable life of the patent. The “correspondence address” will be used in any correspondence relating to maintenance fees unless a separate “fee address” has been specified. See § 1.363 for “fee address” used solely for maintenance fee purposes.
  • (e) A change of address filed in a patent application or patent does not change the address for a patent practitioner in the roster of patent attorneys and agents. See § 11.11 of this title.

Pre-AIA 37 CFR 1.33(a) provides for an applicant to supply an address to receive correspondence from the U.S. Patent and Trademark Office so that the Office may direct mail to any address of applicant’s selection, such as a corporate patent department, a firm of attorneys or agents, or an individual attorney, agent, or other person.

Pre-AIA 37 CFR 1.33(a) provides that when filing a patent application the applicant must specify a correspondence address to which the Office will send notices, letters and other communications relating to the application. The correspondence address must appear either in an application data sheet (37 CFR 1.76) or in a clearly identifiable manner elsewhere in any papers submitted with an application filing. Where more than one correspondence address is specified, the Office will select one of the correspondence addresses for use as the correspondence address. This is intended to cover, for example, the situation where an application is submitted with multiple addresses, such as one correspondence address being given in the application transmittal letter, and a different one in an accompanying pre-AIA 37 CFR 1.63 oath or declaration, or other similar situations. The Office will select which of the multiple correspondence addresses to use according to the following order: (A) application data sheet (ADS); (B) application transmittal; (C) oath or declaration (unless power of attorney is more current); and (D) power of attorney. If more than one correspondence address is specified in a single document, the Office will select the address associated with a Customer Number over a typed correspondence address.

Pre-AIA 37 CFR 1.33(a) requests the submission of a daytime telephone number of the party to whom correspondence is to be addressed. While business is to be conducted on the written record (37 CFR 1.2), a daytime telephone number would be useful in initiating contact that could later be reduced to writing. The telephone number would be changeable by any party who could change the correspondence address.

Pre-AIA 37 CFR 1.33(a)(1) provides that any party filing the application and setting forth a correspondence address could later change the correspondence address provided that a pre-AIA 37 CFR 1.63 oath/declaration by any of the inventors has not been submitted. If one joint inventor filed an application, the person who may change the correspondence address would include only the one inventor who filed the application, even if another inventor was identified on the application transmittal letter. If two of three inventors filed the application, the two inventors filing the application would be needed to change the correspondence address. Additionally, any registered practitioner named in the application transmittal letter, or a person who has the authority to act on behalf of the party that will be the assignee (if the application was filed by the party that will be the assignee), could change the correspondence address. A registered practitioner named in a letterhead would not be sufficient, but rather a clear identification of the individual as being a representative would be required. A company (to whom the invention has been assigned, or to whom there is an obligation to assign the invention) who files an application, is permitted to designate the correspondence address, and to change the correspondence address, until such time as a (first) pre-AIA 37 CFR 1.63 oath/declaration is filed. The mere filing of a pre-AIA 37 CFR 1.63 oath/declaration that does not include a correspondence address does not affect any correspondence address previously established on the filing of the application, or changed per pre-AIA 37 CFR 1.63(a)(1), even if the application was filed by a company that is only a partial assignee. The expression “party that will be the assignee,” rather than assignee, is used in that until a declaration is submitted, inventors have only been identified, and any attempted assignment, or partial assignment, cannot operate for Office purposes until the declaration is supplied. Hence, if the application transmittal letter indicates that the application is being filed on behalf of XYZ company, with an assignment to be filed later, XYZ company would be allowed to change the correspondence address without resort to pre-AIA 37 CFR 3.73 (b) until an executed oath or declaration is filed, and with resort to pre-AIA 37 CFR 3.73(b) after the oath or declaration is filed.

Where a correspondence address was set forth or changed pursuant to pre-AIA 37 CFR 1.33(a)(1) (prior to the filing of a pre-AIA 37 CFR 1.63 oath or declaration), that correspondence address remains in effect upon filing of a pre-AIA 37 CFR 1.63 declaration and can then only be changed pursuant to pre-AIA 37 CFR 1.33(a)(2).

In a joint application with no power of attorney to either a registered practitioner or joint inventor, the applicant whose name first appears in the papers receives the correspondence, unless other instructions are given. All applicants must sign the replies. See MPEP §§ 402 and 714.01(a). If the assignee of the entire interest of the applicant is prosecuting the application (MPEP § 402.07), the assignee may specify a correspondence address.

Pre-AIA 37 CFR 1.33(c) relates to which address communications for the patent owner will be sent in reexamination proceedings. See also MPEP § 2224.

Powers of attorney to firms are not recognized by the U.S. Patent and Trademark Office. See MPEP § 402. However, the firm’s address may be used for the correspondence address. The address should appear as follows:

John Doe (inventor)
In care of Able, Baker, and Charlie (firm)
1234 Main Street
Arlington, Virginia 22202

Patent practitioners are reminded that the attorney and agent roster must be updated separately from and in addition to any change of address filed in individual patent applications.

See MPEP § 601.03 for change of correspondence address.

See MPEP § 201.06(c) regarding change of correspondence address in continuation or divisional applications filed under 37 CFR 1.53(b).