403 Correspondence — With Whom Held; Customer Number Practice [R-01.2019]

403 Correspondence — With Whom Held; Customer Number Practice [R-01.2019]

37 CFR 1.33 states that when an attorney or agent has been duly appointed to prosecute an application, correspondence will be held with the attorney or agent unless some other correspondence address has been given. If an attorney or agent of record assigns a correspondence address which is different than an address where the attorney or agent normally receives mail, the attorney or agent is reminded that (1) 37 CFR 11.106 requires the attorney or agent to keep information obtained by attorney/agent – client relationship in confidence; and (2) the attorney or agent is still responsible for responding to any notice or action from the Office. See 37 CFR 11.101, 11.103 and 11.804. Double correspondence with an applicant and his or her attorney, or with two representatives, will not be undertaken. See MPEP §§ 403.01(a), 403.01(b), 403.02, and 714.01(d).

If double correspondence is attempted, form paragraph 4.01 should be included in the next Office action.

¶ 4.01 Double Correspondence

Applicant has appointed an attorney or agent to conduct all business before the Patent and Trademark Office. Double correspondence with an applicant and applicant’s attorney or agent will not be undertaken. Accordingly, applicant is required to conduct all future correspondence with this Office through the attorney or agent of record. See 37 CFR 1.33.

Examiner Note:

  • 1. The first time a reply is received directly from applicant, include this paragraph in the Office action and send a copy of the action to the applicant. See MPEP §§ 403 and 714.01.
  • 2. Should applicant file additional replies, do not send copies of subsequent Office actions to the applicant.
  • 3. Status letters from the applicant may be acknowledged in isolated instances.

See MPEP § 403.01(a) for additional information pertaining to correspondence in applications filed on or after September 16, 2012. See MPEP § 403.01(b) for additional information pertaining to correspondence in applications filed before September 16, 2012.

I. CUSTOMER NUMBER PRACTICE

A Customer Number (previously a “Payor Number”) may be used to:

  • (A) designate the correspondence address of a patent application or patent such that the correspondence address for the patent application or patent would be the address associated with the Customer Number (37 CFR 1.32(a)(5)(i));
  • (B) designate the fee address (37 CFR 1.363) of a patent such that the fee address for the patent would be the address associated with the Customer Number (37 CFR 1.32(a)(5)(ii)); and
  • (C) submit a list of practitioners such that those practitioners associated with the Customer Number would have power of attorney (37 CFR 1.32(a)(5)(iii)).

Thus, a Customer Number may be used to designate the address associated with the Customer Number as the correspondence address of an application (or patent) or the fee address of a patent, and may also be used to submit a power of attorney in the application (or patent) to the registered practitioners associated with the Customer Number.

Applicant may use either the same or different customer number(s) for the correspondence address, the fee address and/or a list of practitioners. The customer number associated with the correspondence address is the Customer Number used to obtain access to the Patent Application Information Retrieval (PAIR) system at https://portal.uspto.gov/pair/. See MPEP § 1730 for additional information regarding PAIR.

The Office will accept requests for changes to the Customer Number information through the Patent Electronic System. See MPEP § 502.05 for information pertaining to the Patent Electronic System.

The following forms are suggested for use with the Customer Number practice:

  • (A) the “Request for Customer Number” (PTO/SB/125) to request a Customer Number;
  • (B) the “Request for Customer Number Data Change” (PTO/SB/124) to request a change in the data (address or list of practitioners) associated with an existing Customer Number;
  • (C) the “Change of Correspondence Address, Application” (PTO/AIA/122 for applications filed on or after September 16, 2012, or PTO/SB/122 for applications filed before September 16, 2012) to change the correspondence address of an individual application to the address associated with a Customer Number; and
  • (D) the “Change of Correspondence Address, Patent” (PTO/AIA/123 for applications filed on or after September 16, 2012, or PTO//SB/123 for applications filed before September 16, 2012) to change the correspondence address of an individual patent to the address associated with a Customer Number.

The Office will also accept requests on electronic storage media submitted electronically to change the correspondence address of a list of applications or patents or the fee address for a list of patents to the address associated with a Customer Number. Instructions for submitting such requests are available on the “Customer Number Upload Spreadsheet” available at https://www.uspto.gov/ patents/ebc/ cust_req_instructions.xls.

Such electronic requests must comply with the requirements set forth in the Notice entitled “Extension of the Payor Number Practice (through “Customer Numbers”) to Matters Involving Pending Patent Applications,” published in the Federal Register at 61 FR 54622, 54623-24 (October 21, 1996), and in the Official Gazette at 1191 O. G. 187, 188-89 (October 29, 1996).

With Customer Number practice, a patentee is also able to designate a “fee address” for the receipt of maintenance fee correspondence, and a different address for the receipt of all other correspondence. The designation of a “fee address” by reference to a Customer Number will not affect or be affected by the designation of a correspondence address by reference to another Customer Number, in that the Office will send maintenance fee correspondence to the address associated with the Customer Number designated as the “fee address” and will send all other correspondence to the address associated with the Customer Number designated as the correspondence address.

The association of a list of practitioners with a Customer Number will permit an applicant to appoint all of the practitioners associated with the Customer Number merely by reference to the Customer Number in the Power of Attorney (i.e., without individually listing the practitioners in the Power of Attorney). The addition and/or deletion of a practitioner from the list of practitioners associated with a Customer Number by submitting a corresponding “Request for Customer Number Data Change” (PTO/SB/124) will result in the addition or deletion of such practitioner from the list of persons authorized to represent any applicant or assignee of the entire interest of the applicant who appointed all of the practitioners associated with such Customer Number. This will avoid the necessity for the filing of additional papers in each patent application affected by a change in the practitioners of the law firm prosecuting the application. The appointment of practitioners associated with a Customer Number is optional, in that any applicant may continue to individually name those practitioners to represent the applicant in a patent application, so long as fewer than ten patent practitioners are named. See 37 CFR 1.32(c)(3).

The Customer Number practice does not affect the prohibition against, and does not amount to, an appointment of a law firm (rather than specified practitioners). The Office prohibits an appointment of a specified law firm because the Office cannot ascertain from its records whether a particular practitioner submitting a paper to the Office is associated with the law firm specified in an appointment. The Office will permit an appointment of all of the practitioners associated with a specified Customer Number because the Office can ascertain from its records for the specified Customer Number whether a particular practitioner is associated with that Customer Number.

A law firm should promptly remove any practitioner who leaves the firm from the list of practitioners associated with any Customer Number used by the law firm, so that the practitioner will not have access to the applications associated with the Customer Number. A practitioner leaving a law firm can also remove themselves from any Customer Number used by the law firm. In order to continue representing an applicant who had appointed the practitioners associated with the Customer Number of a law firm, a practitioner leaving the law firm must obtain a new power of attorney.

Similarly, a practitioner who has a Patent Electronic System account should remove sponsorship of any support staff individual when that individual leaves the firm so that the support staff individual will not have access to any applications associated with any Customer Number linked to the practitioner.

As the Office will not recognize more than one correspondence address (37 CFR 1.33(a)), any inconsistencies between the correspondence address resulting from a Customer Number being provided in an application for the correspondence address and any other correspondence address provided in that application will generally be resolved in favor of the address of the Customer Number or the application data sheet (37 CFR 1.76(d)). Due to the prohibition against double correspondence in an application (37 CFR 1.33(a)), an applicant will be permitted to provide only a single number at a time as the Customer Number for the correspondence address. Applicants are strongly cautioned not to attempt to appoint more than one Customer Number for a particular purpose (e.g., correspondence address) in a single communication, as such action will not have a cumulative effect.

Where an applicant appoints all of the practitioners associated with a Customer Number as well as a list of individually named practitioners, such action would be treated as only an appointment of all of the practitioners associated with a Customer Number due to the potential for confusion and data entry errors in entering registration numbers from plural sources. Furthermore, Office computer systems do not allow for entry of both a power of attorney to a list of practitioners associated with a Customer Number and a list of practitioners.

Although Customer Numbers are designed to designate both a correspondence address and to associate one or more patent practitioners with an application, one Customer Number may be used for the correspondence address, and another Customer Number may be used for the power of attorney. As stated previously, the customer number associated with the correspondence address is the Customer Number used to obtain access to the PAIR system. For example, where one customer number is associated with the correspondence address (e.g., a customer number that lists all of the practitioners at a particular firm) and a different customer number is used to appoint practitioners as having power of attorney (e.g., a customer number that lists a small number of practitioners from the particular firm as well as a few practitioners who are employees of the applicant), only the practitioners associated with the customer number being used for the correspondence address will be able to access the application in Private PAIR.

The Office has created a Mail Stop designation for correspondence related to a Customer Number (“Mail Stop EBC”), and all correspondence related to a Customer Number (e.g., requests for a Customer Number) should be addressed to this mail stop designation.

The following persons are authorized to change the information associated with an established Customer Number: (1) a registered practitioner associated with the Customer Number; and (2) the person who requested the Customer Number (signed the Request for Customer Number, Form PTO/SB/125).

II. PATENT APPLICATION FILED WITHOUT CORRESPONDENCE ADDRESS

If a patent application as filed has been accorded a filing date but is not complete, the applicant is notified and given a period of time within which to file the missing parts to complete the application and pay the applicable surcharge. See MPEP § 601.01et seq. for a discussion of the requirements for a complete application. In order for the Office to so notify the applicant, a correspondence address must also be provided by the applicant. The address may be different from the post office address of the applicant. For example, the address of the applicant’s registered attorney or agent may be used as the correspondence address. If the applicant fails to provide the Office with a correspondence address, the Office will be unable to provide the applicant with notification to complete the application and to pay the surcharge as set forth in 37 CFR 1.16(f) for nonprovisional applications and 37 CFR 1.16(g) for provisional applications. In such a case, the applicant will be considered to have constructive notice as of the filing date that the application must be completed and the applicant will have 2 months from the filing date in which to do so before abandonment occurs.

The periods of time within which the applicant must complete the application may be extended under the provisions of 37 CFR 1.136. Applications which are not completed in a timely manner will be abandoned.