403.01(a)   Correspondence in Applications Filed On or After September 16, 2012 [R-11.2013]

37 C.F.R. 1.33   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 all notices, official letters, and other communications relating to the application to the correspondence address. The Office will 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 attorney or agent of record (see § 1.32(b) ) in the patent file at the address listed on the register of patent attorneys and agents maintained pursuant to §§ 11.5  and 11.11   of this subchapter, or if no attorney or agent is of record, to the patent owner or owners at the address or addresses of record. 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. If more than one attorney or agent is of record and a correspondence address has not been specified, correspondence will be held with the last attorney or agent made of record.
  • (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.

    37 CFR 1.33(a)  specifies that if an applicant provides more than one correspondence address (in a single paper or in different papers), the Office will select one of the specified addresses for use as the correspondence address and, if given, may select the correspondence address associated with a Customer Number over a typed correspondence address. However, the hierarchy provided in 37 CFR 1.76(d)  for inconsistencies between an application data sheet and other documents will still apply.

    37 CFR 1.33(a)  also provides that the correspondence address may be changed by the parties set forth in 37 CFR 1.33(b)(1)  (a patent practitioner of record) or 37 CFR 1.33(b)(3) (the applicant under 37 CFR 1.42)). Prior to the appointment of any power of attorney under 37 CFR 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 37 CFR 1.34. While a practitioner acting in a representative capacity cannot change the correspondence address in an application after a power of attorney has been appointed, 37 CFR 1.33(g)  provides that a 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.

    Amendments and other papers, except for written assertions pursuant to 37 CFR 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 37 CFR 1.34; or (3) the applicant (37 CFR 1.42). Pursuant to 37 CFR 1.33(b)(3), unless otherwise specified (e.g., terminal disclaimers and 37 CFR 3.73(c)  statements; see MPEP § 325), all papers submitted on behalf of a juristic entity must be signed by a patent practitioner, as 37 CFR 1.31  provides that a juristic entity may prosecute a patent application only through a patent practitioner.

    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. See 37 CFR 1.33(f). Otherwise, the Office may not recognize the change of correspondence address effected during the prosecution of the prior application.