D PART 1--RULES OF PRACTICE IN PATENT CASES AUTHORITY: 35 U.S.C. 6, unless otherwise noted. SOURCE: 24 FR 10322, Dec. 22, 1959, unless otherwise noted. GENERAL INFORMATION AND CORRESPONDENCE Section 1.1 All communications to be addressed to Commissioner of Patents and Trademarks. (a) All letters and other communications intended for the Patent and Trademark Office must be addressed to "Commissioner of Patents and Trademarks," Washington, D.C. 20231. When appropriate, a letter should also be marked for the attention of a particular officer or individual. (b) 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 "Box PCT." (c) Requests for reexamination should be additionally marked "Box Reexam." (d) Payments of maintenance fees in patents and other communications relating thereto should be additionally marked "Box M. Fee." (e) Communications relating to interferences and applications or patents involved in an interference should be additionally marked "BOX INTERFERENCE." (f) All applications for extension of patent term and any communications relating thereto intended for the Patent and Trademark Office should be additionally marked "Box Patent Ext." When appropriate, the communication should also be marked to the attention of a particular individual, as where a decision has been rendered. (g) All communications relating to pending litigation which are required by the Federal Rules of Civil or Appellate Procedure or by a rule or order of a court to be served on the Solicitor shall be hand-delivered to the Office of the Solicitor or shall be mailed to: Office of the Solicitor, P.O. Box 15667, Arlington, Virginia 22215 or such other address as may be designated in writing in the litigation. All other communications to the Office of the Solicitor should be addressed to: Box 8, Commissioner of Patents and Trademarks, Washington, D.C. 20231. Any communication which does not involve pending litigation which is received at P.O. Box 15667 will not be filed in the Office but will be returned. See §§1.302(c) and 2.145(b)(3) for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit. (h) In applications under §1(b) of the Trademark Act, 15 U.S.C. 1051(b), all statements of use filed under §1(d) of the Act, and requests for extensions of time therefor, should be additionally marked "Box ITU." [46 FR 29181, May 29, 1981, as amended at 49 FR 34724, Aug. 31, 1984; 49 FR 48451, Dec. 12, 1984; 52 FR 9394, Mar. 24, 1987; 53 FR 16413, May 9, 1988; 54 FR 37588, Sept. 11, 1989] Section 1.8 Certificate of mailing. (a) Except in the cases enumerated below, papers and fees required to be filed in the Patent and Trademark Office within a set period of time will be considered as being timely filed if: (1) They are addressed to the Commissioner of Patents and Trademarks, Washington, D.C. 20231, and deposited with the U.S. Postal Service with sufficient postage as first class mail prior to expiration of the set period; and (2) They also include a certificate for each paper or fee stating the date of deposit. The person signing the certificate should have reasonable basis to expect that the correspondence would be mailed on or before the date indicated. The actual date of receipt of the paper or fee will be used for all other purposes. This procedure does not apply to the following: (i) The filing of a national patent application specification and drawing or other papers for the purpose of obtaining an application filing date; (ii) The filing of trademark applications; (iii) The filing of agreements between parties to an interference under 35 U.S.C. 135(c); (iv) The filing of an affidavit showing that a mark is still in use or containing an excuse for nonuse under §8(a) or (b) or $12(c) of the Trademark Act, 15 U.S.C. 1058(a), 1058(b), 1062(c); (v) The filing of an application for renewal of a mark registration under §9 of the Trademark Act, 15 U.S.C. 1059, (vi) The filing of a petition to cancel a registration of a mark under §14(a) or (b) of the Trademark Act, 15 U.S.C. 1064(a), 1064(b); (vii) The filing of an affidavit under §15, subsection (3) of the Trademark Act, 15 U.S.C. 1065; (viii) The filing of a notice of election to proceed by civil action in an inter partes proceeding under 35 U.S.C. 141 or $21(a)(1) of the Trademark Act, 15 U.S.C. 1071(a)(1), in response to another party's appeal to the Court of Appeals for the Federal Circuit; (ix) The filing of a notice and reasons of appeal under 35 U.S.C. 142 or a notice of appeal under §21(a)(2) of the Trademark Act, 15 U.S.C. 1071(a)(2); (x) The filing of a statement under 42 U.S.C. 2182 or 42 U.S.C. 2457(c); (xi) The filing of international applications for patent and all papers and fees relating thereto: (xii) The filing of a paper in an interference which an examiner-in-chief orders to be filed by hand or "Express Mail"; (xiii) Papers filed in connection with a disciplinary proceeding under Part 10 of this subchapter; (xiv) In an application under §1(b) of the Trademark Act (15 U.S.C. 1051(b)), the filing of a statement of use under $2.88 (15 U.S.C. 1051(d)); (xv) In an application under §1(b) of the Trademark Act (15 U.S.C. 1051(b)), the filing of a request, under §2.89 (15 U.S.C. 1051(d)), for an extension of time to file a statement of use under §2.88 (15 U.S.C. 1051(d)); (xvi) In an application under §1(b) of the Trademark Act (15 U.S.C. 1051(b)), the filing of an amendment to allege use in commerce under §2.76 (15 U.S.C. 1051(c)). (b) In the event that correspondence or fees are timely filed in accordance with paragraph (a) of this section, but not received in the Patent and Trademark Office, and the application is held to be abandoned or the proceeding dismissed, terminated, or decided with prejudice, the correspondence or fee will be considered timely if the party who forwarded such correspondence or fee (1) informs the Office of the previous mailing of the correspondence or fee promptly after becoming aware of the Office action, (2) supplies an additional copy of the previously mailed correspondence or fee and certificate, and (3) includes a declaration under $1.68 or $2.20 which attests on a personal knowledge basis or to the satisfaction of the Commissioner to the previous timely mailing. [41 FR 43721, Oct. 4, 1976, as amended at 47 FR 47381, Oct. 26, 1982; 48 FR 2708, Jan. 20, 1983; 49 FR 48451, Dec. 12, 1984; 50 FR 5171, Feb. 6, 1985; 52 FR 20046, May 28, 1987; 54 FR 37588, Sept. 11, 1989] |