403 Correspondence — With Whom Held; Customer Number Practice
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Section Frequency Chart
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(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(b)(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, the Office will select one of the specified addresses for use as the correspondence address and, if given, may 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 by the parties set forth in paragraph (b)(1) or (b)(3) of this section. Prior to the appointment of any power of attorney under § 1.32(b), the correspondence address may also be changed by any patent practitioner named in the application transmittal papers who acts in a representative capacity under the provisions of § 1.34.
(b) Amendments and other papers. Amendments and other papers, except for written assertions pursuant to § 1.27(c)(2)(iii) or (c)(2)(iv), filed in the application must be signed by:
(1) A patent practitioner of record;
(2) A patent practitioner not of record who acts in a representative capacity under the provisions of § 1.34; or
(3) The applicant (§ 1.42). Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.
(c) All notices, official letters, and other communications for the patent owner or owners in a reexamination or supplemental examination proceeding will be directed to the correspondence address in the patent file. Amendments filed in a reexamination proceeding, and other papers filed in a reexamination or supplemental examination 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.
(f) Where application papers from a prior application are used in a continuing application and the correspondence address was changed during the prosecution of the prior application, an application data sheet or separate paper identifying the correspondence address to be used for the continuing application must be submitted. Otherwise, the Office may not recognize the change of correspondence address effected during the prosecution of the prior application.
(g) A patent practitioner acting in a representative capacity whose correspondence address is the correspondence address of record in an application may change the correspondence address after the patent has issued, provided that the change of correspondence address is accompanied by a statement that notice has been given to the patentee or owner.
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.
Double correspondence with an applicant and his or her attorney, or with two representatives, will not be undertaken.
The attorney or agent is still responsible for responding to any notice or action from the Office
I. CUSTOMER NUMBER PRACTICE
A Customer Number (previously a “Payor Number”) may be used to:
- 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
- designate the fee address of a patent such that the fee address for the patent would be the address associated with the Customer Number; and
- submit a list of practitioners such that those practitioners associated with the Customer Number would have power of attorney.
The customer number associated with the correspondence address is the Customer Number used to obtain access to the Patent Application Information Retrieval (PAIR) system and to update the URL.
- The Office will accept requests for changes to the Customer Number information through the Patent Electronic System.
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 customer number associated with the correspondence address is the Customer Number used to obtain access to the PAIR system.
Certain inconsistencies between correspondence addresses will generally be resolved in favor of the address of the Customer Number or the application data sheet.
The following persons are authorized to change the information associated with an established Customer Number:
- a registered practitioner associated with the Customer Number; and
- the person who requested the Customer Number
II. PATENT APPLICATION FILED WITHOUT CORRESPONDENCE ADDRESS
In order for the Office to notify the applicant when a patent application is incomplete, a correspondence address must 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 for nonprovisional applications and 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.
When 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.
403.01(a) Correspondence in Applications Filed On or After September 16, 2012
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Prior to the appointment of any power of attorney, the correspondence address may be changed by any patent practitioner named in the application transmittal papers who acts in a representative capacity
Amendments and other papers, except for written assertions filed in the application must be signed by:
- a patent practitioner of record;
- a patent practitioner not of record who acts in a representative capacity; or
- the applicant
Where application papers (e.g., the inventor’s oath or declaration) from a prior application are used in a continuing application and the correspondence address was changed during the prosecution of the prior application, an application data sheet or separate paper identifying the correspondence address to be used for the continuing application must be submitted.
403.01(b) Correspondence in Applications Filed Before September 16, 2012
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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 or in a clearly identifiable manner elsewhere in any papers submitted with an application filing.
The Office will select which of the multiple correspondence addresses to use according to the following order:
- application data sheet (ADS);
- application transmittal;
- oath or declaration (unless power of attorney is more current); and
- 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.
A daytime telephone number of the party to whom correspondence is to be addressed is requested.
Any party filing the application and setting forth a correspondence address could later change the correspondence address provided that an 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.
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.
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.
403.02 Two Patent Practitioners for Same Application
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If the applicant simultaneously appoints two patent practitioners, applicant should indicate with whom correspondence is to be conducted by specifying a correspondence address.
If, after one patent practitioner is appointed, a second patent practitioner is later added by submission of a new power of attorney appointing both practitioners, correspondence will be mailed to the latest correspondence address of record.
- Note that if the later-filed power of attorney only lists the second practitioner, the later-filed power of attorney serves as a revocation of the earlier-filed power of attorney, even without an express revocation of the power of the first patent practitioner.
