Appendix R - Patent Rules.pdf - Appendix R Patent Rules PATENTS TRADEMARKS IP LAW POLICY PRODUCTS SERVICES INVENTORS NEWS NOTICES FAQs ABOUT US Appendix

Appendix R - Patent Rules.pdf - Appendix R Patent Rules...

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Unformatted text preview: 9/7/2019 Appendix R - Patent Rules PATENTS TRADEMARKS IP LAW & POLICY PRODUCTS & SERVICES INVENTORS NEWS & NOTICES FAQs ABOUT US Appendix R - Patent Rules Title 37 - Code of Federal Regulations Patents, Trademarks, and Copyrights [Editor Note: Current as of August 31, 2017. The Federal Register is the authoritative source and should be consulted if a need arises to verify the authenticity of the language reproduced below. ] CHAPTER CHAPTER I - UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE SUBCHAPTER SUBCHAPTER A - GENERAL SUBCHAPTER PATENTS PART PART 1 - RULES OF PRACTICE IN PATENT CASES PART 1 Subpart A - General Provisions GENERAL INFORMATION AND CORRESPONDENCE 1.1 Addresses for non-trademark correspondence with the United States Patent and Trademark Office. (a) In general. Except as provided in paragraphs (a)(3)(i), (a)(3)(ii), and (d)(1) of this section, all correspondence intended for the United States Patent and Trademark Office 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 as set out in paragraphs (a)(1), and (a)(3)(iii) of 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, PO Box 1450, Alexandria, Virginia 22313-1450. (ii) Patent Trial and Appeal Board. See § 41.10 (mpep-9020-appx-r.html#d0e356192) or § 42.6 (mpep-9020appx-r.html#ar_d1d85a_25940_3b6) 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 (mpep-9020-appx-r.html#d0e362206) . (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, PO 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. fices/pac/mpep/mpep-9020-appx-r.html 1/427 9/7/2019 Appendix R - Patent Rules (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 (mpep-9020-appx-r.html#d0e336331) . (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) (mpep-9020-appx-r.html#d0e312949) and § 102.4 (mpep-9020-appxr.html#d0e360039) 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) (mpep-9020-appx-r.html#d0e312949) and § 102.4 (mpep-9020-appxr.html#d0e360039) 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) (mpep-9020appx-r.html#d0e312949) and § 102.4 (mpep-9020-appx-r.html#d0e360039) of this chapter should be additionally marked “Mail Stop Ex Parte Reexam.” (d) Payments of maintenance fees in patents not submitted electronically over the Internet, and correspondence related to maintenance fees may be addressed to: Director of the United States Patent and Trademark Office, Attn: Maintenance Fee, 2051 Jamieson Avenue, Suite 300, Alexandria, Virginia 22314. (e) Patent term extension. All applications for extension of patent term under 35 U.S.C. 156 (mpep-9015-appxl.html#d0e303884) 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] [46 FR 29181, May 29, 1981; para. (d) added, 49 FR 34724, Aug. 31, 1984, effective Nov. 1, 1984; para. (e), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. (f) added, 52 FR 9394, Mar. 24, 1987; para. (g) added, 53 FR 16413, May 9,1988; para. (h) added, 54 FR 37588, Sept. 11, 1989, effective Nov. 16, 1989; para. (i) added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. (a) revised and para. (g) removed and reserved, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; para. (b) revised, 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; paras. (a) and (d) revised, 66 FR 39447, July 31, 2001, effective Oct. 1, 2001; revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para (a)(2) corrected, 68 FR 19371, Apr. 21, 2003, effective May 1, 2003; section heading, para. (a) introductory text and para. (a)(4) revised, para. (a)(2) removed and reserved, and note following para. (f) removed, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; para. (c) revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004; para. (a)(4)(i) revised and para. (f) removed and reserved, 69 FR 29865, May 26, 2004, effective June 25, 2004; para. (a) introductory text revised and para. (a)(5) added, 69 FR 35427, June 24, 2004, effective July 26, 2004; para. (a)(1) (ii) revised and para. (a)(1)(iii) removed, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (c)(1) revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007; para. (d) revised, 73 FR 47534, Aug. 14, 2008, effective Oct. 2, 2008; paras. (a)(3)(ii) and (a)(3)(iii) revised, 75 FR 36294, June 25, 2010, effective June 25, 2010; para. (a)(1)(ii) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; para. (e) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (c) revised, 78 FR 62368, Oct. 21, 2013, effective Dec. 18, 2013] [top] (#top) 1.2 Business to be transacted in writing. All business with the Patent and Trademark Office should be transacted in writing. The personal attendance of applicants or their attorneys or agents at the Patent and Trademark Office is unnecessary. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt. [top] (#top) 1.3 Business to be conducted with decorum and courtesy. Applicants and their attorneys or agents are required to conduct their business with the United States Patent and Trademark Office with decorum and courtesy. Papers presented in violation of this requirement will be submitted to the Director and will not be entered. A notice of the non-entry of the paper will be provided. Complaints against examiners and other employees must be made in correspondence separate from other papers. [Amended, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 68 FR 38611, June 30, 2003, effective July 30, 2003] fices/pac/mpep/mpep-9020-appx-r.html 2/427 9/7/2019 Appendix R - Patent Rules [top] (#top) 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 application, 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. (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. Each piece of correspondence, except as provided in paragraphs (d)(2), (d)(3), (d)(4), (e), and (f) of this section, filed in an application, patent file, or other proceeding in the Office which 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) (mpep-9020-appxr.html#d0e313447) ), 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) (mpep-9020-appx-r.html#d0e313174) 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) (mpep-9020-appx-r.html#d0e313174) of this section. Correspondence being filed in the Office in paper, by facsimile transmission as provided in § 1.6(d) (mpep-9020appx-r.html#d0e313447) , or via the Office electronic filing system as an attachment as provided in § 1.6(a)(4) (mpep9020-appx-r.html#d0e313447) , 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) (mpep-9020-appx-r.html#d0e317381) ), signing pursuant to §§ 1.33(b)(1) (mpep-9020-appx-r.html#d0e317491) or 1.33(b)(2) (mpep-9020-appx-r.html#d0e317491) , must supply his/her registration number either as part of the S-signature, or immediately below or adjacent to the S-signature. The number (#) character may be used only as part of the S-signature when appearing before a practitioner’s registration number; otherwise the number character may not be used in an 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 Office 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 Office 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) (mpep-9020-appx-r.html#d0e351251) of this subchapter. Violations of § 11.18(b) (2) (mpep-9020-appx-r.html#d0e351262) of this subchapter by a party, whether a practitioner or nonpractitioner, may result in the imposition of sanctions under § 11.18(c) (mpep-9020-appx-r.html#d0e351282) of this subchapter. Any practitioner violating § 11.18(b) (mpep-9020-appx-r.html#d0e351251) of this subchapter may also be subject to disciplinary action. See § 11.18(d) (mpep-9020-appx-r.html#d0e351306) of this subchapter. fices/pac/mpep/mpep-9020-appx-r.html 3/427 9/7/2019 Appendix R - Patent Rules (ii) Certification 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) (mpep-9020-appxr.html#d0e351282) 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) (mpep9020-appx-r.html#d0e351236) 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) The following correspondence must be submitted with an original handwritten signature personally signed in permanent dark ink or its equivalent: (1) Correspondence requiring a person’s signature and relating to registration to practice before the Patent and Trademark Office in patent cases, enrollment and disciplinary investigations, or disciplinary proceedings; and (2) Payments by credit cards where the payment is not being made via the Office’s electronic filing systems. (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. [24 FR 10332, Dec. 22, 1959; 43 FR 20461, May 11, 1978; para. (a), 48 FR 2707, Jan. 20, 1983, effective Feb. ...
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