Editing MPEP 403

<noinclude>{{MPEP Section|402|400|404}}</noinclude>

==[[MPEP 403|403 Correspondence — With Whom Held]]== 
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{{Statute|37 CFR 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:

{{tab1}}(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.</p>

{{tab1}}(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).</p>

(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:

{{tab1}}(1) A patent practitioner of record appointed in compliance with § 1.32(b);</p>

{{tab1}}(2) A patent practitioner not of record who acts in a representative capacity under the provisions of § 1.34;</p>

{{tab1}}(3) An assignee as provided for under § 3.71(b) of this chapter; or</p>

{{tab1}}(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.</p>

(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.
|}


37 CFR 1.33(a) provides for an applicant to supply 
an address to receive correspondence from the U.S. 
Patent and Trademark Office so that the Office may 
direct mail to any address of applicant’s selection, 
such as a corporate patent department, a firm of attorneys 
or agents, or an individual attorney, agent, or 
other person.

37 CFR 1.33(a) provides that in 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 (37 CFR 1.76) or in a clearly 
identifiable manner elsewhere in any papers submitted 
with an application filing. Where more than one 
correspondence address is specified, the Office will 
select one of the correspondence addresses for 
use as the correspondence address. This is intended 
to cover, for example, the situation where an application 
is submitted with multiple addresses, such as one 
correspondence address being given in the application 
transmittal letter, and a different one in an accompanying 
37 CFR 1.63 oath or declaration, or other similar 
situations.

The Office will select which of the 
multiple correspondence addresses to use according to 
the following order:
{{tab1}}(A) application data sheet (ADS);</p>
{{tab1}}(B) application transmittal;</p>
{{tab1}}(C) oath or declaration (unless power of attorney is more current); and</p>
{{tab1}}(D) 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.</p>

37 CFR 1.33(a) requests the submission of a daytime 
telephone number of the party to whom correspondence 
is to be addressed.

37 CFR 1.33(a)(1) provides that any party filing the 
application and setting forth a correspondence address 
could later change the correspondence address provided 
that a 37 CFR 1.63 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. Additionally, any registered practitioner 
named in the application transmittal letter, or a person 
who has the authority to act on behalf of the party that 
will be the assignee (if the application was filed by the 
party that will be the assignee), could change the correspondence 
address.

A registered practitioner named 
in a letterhead would not be sufficient, but rather a 
clear identification of the individual as being a representative 
would be required. A company (to whom the 
invention has been assigned, or to whom there is an 
obligation to assign the invention) who files an application, 
is permitted to designate the correspondence 
address, and to change the correspondence address, 
until such time as a (first) 37 CFR 1.63 oath/declaration 
is filed. The mere filing of a 37 CFR 1.63 oath/
declaration that does not include a correspondence 
address does not affect any correspondence address 
previously established on the filing of the application, 
or changed per 37 CFR 1.63(a)(1), even if the application 
was filed by a company that is only a partial 
assignee. The expression “party that will be the 
assignee,” rather than assignee, is used in that until a 
declaration is submitted, inventors have only been 
identified, and any attempted assignment, or partial 
assignment, cannot operate for Office purposes until 
the declaration is supplied. Hence, 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 
37 CFR 3.73(b) until an executed oath or declaration 
is filed, and with resort to 37 CFR 3.73(b) after the 
oath or declaration is filed.

Where a correspondence address was set forth or 
changed pursuant to 37 CFR 1.33(a)(1) (prior to the 
filing of a 37 CFR 1.63 oath or declaration), that correspondence 
address remains in effect upon filing of a 
37 CFR 1.63 declaration and can then only be 
changed pursuant to 37 CFR 1.33(a)(2).

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 37 CFR 
10.57 requires the attorney or agent to keep information 
obtained by attorney/agent – client relationship in 
confidence. Double correspondence with an applicant 
and his or her attorney, or with two representatives, 
will not be undertaken. See MPEP § 403.01, § 403.02, 
and § 714.01(d).

In a joint application with no attorney or agent, the 
applicant whose name first appears in the papers 
receives the correspondence, unless other instructions 
are given. All applicants must sign the replies. See 
MPEP § 714.01(a). If the assignee of the entire interest 
of the applicant is prosecuting the application 
(MPEP § 402.07), the assignee may specify a correspondence 
address.

37 CFR 1.33(c) relates to which address communications 
for the patent owner will be sent in reexamination 
proceedings. See also MPEP § 2224.

Powers of attorney to firms are not recognized by 
the U.S. Patent and Trademark Office. See MPEP 
§ 402. However, the firm’s address may be used for 
the correspondence address.

Patent practitioners are reminded that the attorney 
and agent roster must be updated separately from and 
in addition to any change of address filed in individual 
patent applications.

======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 applica
tion (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 http://pair.uspto.gov. See MPEP § 1730 for 
additional information regarding PAIR.

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.

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. Due to the prohibition 
against dual 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. 

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. 

II.PATENT APPLICATION FILED WITHOUT CORRESPONDENCE ADDRESS

In accordance with the provisions of 35 U.S.C. 
111(a) and 37 CFR 1.53, a filing date is granted to a 
nonprovisional application for patent filed in the U.S. 
Patent and Trademark Office, if it includes at least a 
specification containing a description pursuant to 
37 CFR 1.71 and at least one claim pursuant to 37 CFR 1.75, and any drawing referred to in the specification 
or required by 37 CFR 1.81(a). If a nonprovisional 
application which has been accorded a filing 
date does not include the appropriate basic filing fee, 
search fee, examination fee, or oath or declaration, the 
applicant will be so notified and given a period of 
time within which to file the missing parts to complete 
the application and to pay the surcharge as set 
forth in 37 CFR 1.16(f) in order to prevent abandonment 
of the application. If a provisional application 
which has been accorded a filing date does not 
include the appropriate filing fee, or the cover sheet, 
the applicant will be so notified and given a period of 
time within which to file the missing parts to complete 
the application and to pay the surcharge as set 
forth in 37 CFR 1.16(g) in order to prevent abandonment 
of the 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.

===403.01 Correspondence Held With Associate Attorney===

Where the attorneys bear relation of principal attorney 
and associate attorney, the correspondence will be 
had with the associate attorney unless the principal 
attorney directs otherwise. Ex parte Eggan, 1911 C.D. 
213, 172 O.G. 1091 (Comm’r Pat. 1911). The associate 
attorney may specify or change the correspondence 
address to which communications about the 
application are to be directed. Associate powers of 
attorney are not accepted after June 25, 2004, but any 
associate power of attorney filed before June 25, 2004 
will continue to have effect.

===403.02 Two Patent Practitioners for Same Application===

If the applicant simultaneously appoints two principal 
patent practitioners, he or she should indicate 
with whom correspondence is to be conducted. If one 
is a local Washington metropolitan area patent 
practitioner and the applicant fails to indicate either 
patent practitioner, correspondence will be conducted 
with the local patent practitioner.

If, after one patent practitioner is appointed, a 
second patent practitioner is later appointed without 
revocation of the power of the first patent practitioner, 
the correspondence address of the second 
patent practitioner is entered into the application 
file record, so that the Office letters 
are to be sent to him or her.
<noinclude>{{MPEP Section|402|400|404}}</noinclude>