RULES OF PRACTICE
&
FEDERAL STATUTES
U. S. PATENT & TRADEMARK OFFICE
Third Edition, Rev. 3, March 29, 2000
TABLE OF CONTENTS
GENERAL INFORMATION AND CORRESPONDENCE
1.2 Business to be transacted in writing.
1.3 Business to be conducted with decorum and courtesy.
1.4 Nature of correspondence and signature requirements.
1.5 Identification of application, patent or registration.
1.6 Receipt of correspondence.
1.7 Times for taking action: Expiration on Saturday, Sunday or Federal holiday.
1.8 Certificate of mailing or transmission.
1.9 Definitions.
1.10 Filing of correspondence
by "Express Mail."
1.12 Assignment records open to public inspection.
1.13 Copies and certified copies.
1.14 Patent applications preserved in confidence.
1.15 Requests for identifiable
records.
1.17 Patent application processing fees.
1.18 Patent issue fees.
1.19 Document supply fees.
1.20 Post issuance fees.
1.21 Miscellaneous fees and charges.
1.22 Fees payable in advance.
1.23 Method of payment.
1.24 Coupons.
1.25 Deposit accounts.
1.26 Refunds.
RULES APPLICABLE TO TRADEMARK CASES
2.2 Definitions.
2.6 Trademark fees.
2.7 Fastener recordal fees.
2.12-2.16 [Reserved]
2.17 Recognition for representation.
2.18 Correspondence, with whom held.
2.19 Revocation of power
of attorney or of other authorization to represent; withdrawal.
2.23 Serial number.
2.24 Designation of representative by foreign applicant.
2.25 Papers not returnable.
2.26 Use of old drawing in new application.
2.27 Pending trademark application index; access to applications.
2.32 Requirements for a complete application.
2.33 Verified statement.
2.34 Bases for filing.
2.35 Adding, deleting or substituting bases.
2.36 Identification of prior registrations.
2.37 Description of mark.
2.38 Use by predecessor or by related companies.
2.41 Proof of distinctiveness under section 2(f).
2.42 Concurrent use.
2.43 Service mark.
2.44 Collective mark.
2.45 Certification mark.
2.46 Principal Register.
2.47 Supplemental Register.
2.52 Types of drawings and format for drawings.
2.53 [Removed]
2.59 Filing substitute specimen(s).
2.62 Period for response.
2.63 Re-examination.
2.64 Final action.
2.65 Abandonment.
2.66 Revival of abandoned applications.
2.67 Suspension of action by the Patent and Trademark Office.
2.68 Express abandonment (withdrawal) of application.
2.69 Compliance with other
laws.
2.72 Amendments to description or drawing of the mark.
2.73 Amendment to recite concurrent use.
2.74 Form of amendment.
2.75 Amendment to change application to different register.
2.76 Amendment to allege use.
2.77 Amendments between notice
of allowance and statement of use.
2.81 Post Publication.
2.82 Marks on Supplemental Register published only upon registration.
2.83 Conflicting marks.
2.84 Jurisdiction over published
applications.
2.86 Application may include multiple classes.
2.87 Dividing an application.
2.89 Extensions of time for
filing a statement of use.
2.92 Preliminary to interference.
2.93 Institution of interference.
2.94-2.95 [Reserved]
2.96 Issue; burden of proof.
2.97 [Reserved]
2.98 Adding party to interference.
2.99 Application to register
as concurrent user.
2.102 Extension of time for filing an opposition.
2.104 Contents of opposition.
2.105 Notification of opposition proceeding[s].
2.106 Answer.
2.107 Amendment of pleadings
in an opposition proceeding.
2.112 Contents of petition for cancellation.
2.113 Notification of cancellation proceeding.
2.114 Answer.
2.115 Amendment of pleadings
in a cancellation proceeding.
2.117 Suspension of proceedings.
2.118 Undelivered Office notices.
2.119 Service and signing of papers.
2.120 Discovery.
2.121 Assignment of times for taking testimony.
2.122 Matters in evidence.
2.123 Trial testimony in inter partes cases.
2.124 Depositions upon written questions.
2.125 Filing and service of testimony.
2.126 [Reserved]
2.127 Motions.
2.128 Briefs at final hearing.
2.129 Oral argument; reconsideration.
2.130 New matter suggested by Examiner of Trademarks.
2.131 Remand after decision in inter partes proceeding.
2.132 Involuntary dismissal for failure to take testimony.
2.133 Amendment of application or registration during proceedings.
2.134 Surrender or voluntary cancellation of registration.
2.135 Abandonment of application or mark.
2.136 Status of application
on termination of proceeding.
2.142 Time and manner of ex parte appeals.
2.144 Reconsideration of decision on ex parte appeal.
2.145 Appeal to court and
civil action.
2.147 [Reserved]
2.148 Commissioner may suspend
certain rules.
2.154 Publication in Official Gazette.
2.155 Notice of publication.
2.156 Not subject to opposition;
subject to cancellation.
2.161 Requirements for a complete affidavit or declaration of continued use or excusable nonuse.
2.162 Notice to registrant.
2.163 Acknowledgment of receipt of affidavit or declaration.
2.164 Correcting deficiencies in affidavit or declaration.
2.165 Petition to Commissioner to review refusal.
2.166 Affidavit of continued
use or excusable nonuse combined with renewal application.
2.168 Affidavit or declaration
under section 15 combined with affidavit or declaration under section 8,
or with renewal application.
2.172 Surrender for cancellation.
2.173 Amendment of registration.
2.174 Correction of Office mistake.
2.175 Correction of mistake by registrant.
2.176 Consideration of above
matters.
2.182 Time for filing renewal application.
2.183 Requirements for a complete renewal application.
2.184 Refusal of renewal.
2.185 Correcting deficiencies in renewal application.
2.186 Petition to Commissioner
to review refusal of renewal.
3.16 Assignability of trademarks
prior to filing of an allegation of use.
3.24 Requirements for documents and cover sheets relating to patents and patent applications.
3.25 Requirements for documents and cover sheets relating to trademark applications and registrations.
3.26 English language requirement.
3.27 Mailing address for submitting documents to be recorded.
3.28 Requests for recording.
3.34 Correction of cover
sheet errors.
3.54 Effect of recording.
3.56 Conditional assignments.
3.58 Governmental registers.
3.73 Establishing right of
assignee to take action.
3.85 Issue of registration
to assignee.
CLASSIFICATION OF GOODS AND SERVICES UNDER THE TRADEMARK ACT
6.2 Prior U.S. schedule of classes of goods and services
6.3 Schedule for certification marks.
6.4 Schedule for collective
membership marks.
Sec. 10.2 Director of Enrollment and Discipline
Sec. 10.3 Committee on Enrollment
Sec. 10.4 Committee on Discipline
Sec. 10.6 Registration of attorneys and agents
Sec. 10.7 Requirements for registration
Sec. 10.8 Oath and registration fee
Sec. 10.9 Limited recognition in patent cases
Sec. 10.10 Restrictions on practice in patent cases
Sec. 10.11 Removing names from the register
Secs. 10.12 - 10.13 [Reserved]
Sec. 10.14 Individuals who may practice before the Office in trademark and other non-patent cases
Sec. 10.15 Refusal to recognize a practitioner
Secs. 10.16 - 10.17 [Reserved]
Sec. 10.18 Signature and certificate for correspondence filed in the Patent and Trademark Office
Sec. 10.19 [Reserved]
Sec. 10.21 Canon 1
Sec. 10.22 Maintaining integrity and competence of the legal profession
Sec. 10.23 Misconduct
Sec. 10.24 Disclosure of information to authorities
Sec. 10.25 - 10.29 [Reserved]
Sec. 10.30 Canon 2
Sec. 10.31 Communications concerning a practitioner’s services
Sec. 10.32 Advertising
Sec. 10.33 Direct contact with prospective clients
Sec. 10.34 Communications of fields of practice
Sec. 10.35 Firm names and letterheads
Sec. 10.36 Fees for legal services
Sec. 10.37 Division of fees among practitioners
Sec. 10.38 Agreements restricting the practice of a practitioner
Sec. 10.39 Acceptance of employment
Sec. 10.40 Withdrawal from employment
Secs. 10.41 - 10.45 [Reserved]
Sec. 10.46 Canon 3
Sec. 10.47 Aiding unauthorized practice of law
Sec. 10.48 Sharing legal fees
Sec. 10.49 Forming a partnership with a non-practitioner
Secs. 10.50 - 10.55 [Reserved]
Sec. 10.56 Canon 4
Sec. 10.57 Preservation of confidences and secrets of a client
Secs. 10.58 - 10.60 [Reserved]
Sec. 10.61 Canon 5
Sec. 10.62 Refusing employment when the interest of the practitioner may impair the practitioner’s independent professional judgment
Sec. 10.63 Withdrawal when the practitioner becomes a witness
Sec. 10.64 Avoiding acquisition of interest in litigation or proceeding before the Office
Sec. 10.65 Limiting business relations with a client
Sec. 10.66 Refusing to accept or continue employment if the interests of another client may impair the independent professional judgment of the practitioner
Sec. 10.67 Settling similar claims of clients
Sec. 10.68 Avoiding influence by others than the client
Secs. 10.69 - 10.75 [Reserved]
Sec. 10.76 Canon 6
Sec. 10.77 Failing to act competently
Sec. 10.78 Limiting liability to client
Secs. 10.79 - 10.82 [Reserved]
Sec. 10.83 Canon 7
Sec. 10.84 Representing a client zealously
Sec. 10.85 Representing a client within the bounds of the law
Sec. 10.86 [Reserved]
Sec. 10.87 Communicating with one of adverse interest
Sec. 10.88 Threatening criminal prosecution
Sec. 10.89 Conduct in proceedings
Secs. 10.90 - 10.91 [Reserved]
Sec. 10.92 Contact with witnesses
Sec. 10.93 Contact with officials
Secs. 10.94 - 10.99 [Reserved]
Sec. 10.100 Canon 8
Sec. 10.101 Action as a public official
Sec. 10.102 Statements concerning officials
Sec. 10.103 Practitioner candidate for judicial office
Secs. 10.104 - 10.109 [Reserved]
Sec. 10.110 Canon 9
Sec. 10.111 Avoiding even the appearance of impropriety
Sec. 10.112 Preserving identity of funds and property of client
Secs. 10.113 - 10.129 [Reserved]
Sec. 10.131 Investigations
Sec. 10.132 Initiating a disciplinary proceeding; reference to an administrative law judge
Sec. 10.133 Conference between Director and practitioner; resignation
Sec. 10.134 Complaint
Sec. 10.135 Service of complaint
Sec. 10.136 Answer to complaint
Sec. 10.137 Supplemental complaint
Sec. 10.138 Contested case
Sec. 10.139 Administrative law judge; appointment; responsibilities; review of interlocutory orders; stays
Sec. 10.140 Representative for Director or respondent
Sec. 10.141 Filing of papers
Sec. 10.142 Service of papers
Sec. 10.143 Motions
Sec. 10.144 Hearings
Sec. 10.145 Proof; variance; amendment of pleadings
Secs. 10.146 - 10.148 [Reserved]
Sec. 10.149 Burden of proof
Sec. 10.150 Evidence
Sec. 10.151 Depositions
Sec. 10.152 Discovery
Sec. 10.153 Proposed findings and conclusions; post-hearing memorandum
Sec. 10.154 Initial decision of administrative law judge
Sec. 10.155 Appeal to the Commissioner
Sec. 10.156 Decision of the Commissioner
Sec. 10.157 Review of Commissioner’s final decision
Sec. 10.158 Suspended or excluded practitioner
Sec. 10.159 Notice of suspension or exclusion
Sec. 10.160 Petitioner for reinstatement
Sec. 10.161 Savings clause
Secs. 10.162 - 10.169 [Reserved]
Sec. 10.170 Suspension of
rules
TITLE I - THE PRINCIPAL REGISTER
Sec. 2 (15 U.S.C. §1052). Trademarks registrable on the principal register; concurrent registration
Sec. 3 (15 U.S.C. §1053). Service marks registrable
Sec. 4 (15 U.S.C. §1054). Collective marks and certification marks registrable
Sec. 5 (15 U.S.C. §1055). Use by related companies
Sec. 6 (15 U.S.C. §1056). Disclaimers
Sec. 7 (15 U.S.C. §1057). Certificates of registration
Sec. 8 (15 U.S.C. §1058). Duration
Sec. 9 (15 U.S.C. §1059). Renewal
Sec. 10 (15 U.S.C. §1060). Assignment
Sec. 11 (15 U.S.C. §1061). Acknowledgments and verifications
Sec. 12 (15 U.S.C. §1062). Publication
Sec. 13 (15 U.S.C. §1063). Opposition
Sec. 14 (15 U.S.C. §1064). Cancellation
Sec. 15 (15 U.S.C. §1065). Incontestability of right to use mark
Sec. 16 (15 U.S.C. §1066). Interference
Sec. 17 (15 U.S.C. §1067). Notice of inter partes proceedings; hearing by Trademark Trial and Appeal Board
Sec. 18 (15 U.S.C. §1068). Refusal, cancellation, or restriction of registration; concurrent use
Sec. 19 (15 U.S.C. §1069). Applicability, in inter partes proceeding, of equitable principles of laches, estoppel and acquiescence
Sec. 20 (15 U.S.C. §1070). Appeal from examiner to Trademark Trial and Appeal Board
Sec. 21 (15 U.S.C. §1071). Review of Director's or Trademark Trial and Appeal Board's decision
Sec. 22 (15 U.S.C. §1072).
Registration as notice
Sec. 24 (15 U.S.C. §1092). Cancellation
Sec. 25 (15 U.S.C. §1093). Supplemental registration certificate
Sec. 26 (15 U.S.C. §1094). General provisions
Sec. 27 (15 U.S.C. §1095). Principal registration not precluded by supplemental registration
Sec. 28 (15 U.S.C. §1096).
Department of Treasury; supplemental registration not filed
Sec. 33 (15 U.S.C. §1115). Registration as evidence of right to exclusive use; defenses
Sec. 34 (15 U.S.C. §1116). Injunctions; enforcement; notice of filing suit given Director
Sec. 35 (15 U.S.C. §1117). Recovery of profits, damages, and costs
Sec. 36 (15 U.S.C. §1118). Destruction of infringing articles
Sec. 37 (15 U.S.C. §1119). Power of court over registration; certification of decrees and orders
Sec. 38 (15 U.S.C. §1120). Fraud; civil liability
Sec. 39 (15 U.S.C. §1121). Jurisdiction of Federal courts; State, local, and other agency requirements
Sec. 40 (15 U.S.C. §1122). Liability of States, instrumentalities of States and State officials
Sec. 41 (15 U.S.C. §1123).
Rules and regulations
Sec. 46(b) (15 U.S.C. §1051 note). Existing registrations under prior acts
Sec. 47(a) (15 U.S.C. §1051 note). Applications pending on effective date of Act
Sec. 47(b) (15 U.S.C. §1051 note). Appeals pending on effective date of Act
Sec. 48 (15 U.S.C. §1051 note). Prior acts not repealed
Sec. 49 (15 U.S.C. §1051 note). Preservation of existing rights
Sec. 50 (15 U.S.C. §1051 note). Severability
Sec. 51 (15 U.S.C. §1058
note). Applications pending on effective date of the Trademark Law Revision
Act of 1988
PART 1-THE UNITED STATES PATENT AND TRADEMARK OFFICE
CHAPTER 1-ESTABLISHMENT, OFFICERS AND EMPLOYEES, FUNCTIONS
35 U.S.C. §2. Powers and duties.
35 U.S.C. §3. Officers and employees.
35 U.S.C. §4. Restrictions on officers and employees as to interest in patents
35 U.S.C. §5. Patent and Trademark Office Public Advisory Committees.
35 U.S.C. §6. Board of Patent Appeals and Interferences.
35 U.S.C. §7. Library.
35 U.S.C. §8. Classification of patents.
35 U.S.C. §9. Certified copies of records.
35 U.S.C. §10. Publications.
35 U.S.C. §11. Exchange of copies of patents.
35 U.S.C. §12. Copies of patents and applications for public libraries.
35 U.S.C. §13. Annual
report to Congress.
5 U.S.C. §6103. Holidays.
District of Columbia Code - Sec. 28-2701.
35 U.S.C. §22. Printing of papers filed.
35 U.S.C. §23. Testimony in Patent and Trademark Office cases.
35 U.S.C. §24. Subpoenas, witnesses.
35 U.S.C. §25. Declaration in lieu of oath.
35 U.S.C. §26. Effect
of defective execution.
35 U.S.C. §32. Suspension or exclusion from practice.
35 U.S.C. §33. Unauthorized
representation as practitioner.
35 U.S.C. §42. Patent
and Trademark Office funding.
AUTHORITY: 35 U.S.C. 6, unless otherwise noted.
SOURCE: 24 FR 10332, Dec. 22, 1959, unless otherwise noted.
§1.1 Addresses for correspondence with the Patent and Trademark Office.
(a) Except for §§1.1(a)(3)(i) and (ii), all correspondence intended for the Patent and Trademark Office must be addressed to either "Commissioner of Patents and Trademarks, Washington, D.C. 20231" or to specific areas within the Office as set out in paragraphs (a)(1), (2) and (3)(iii) of this section. When appropriate, correspondence should also be marked for the attention of a particular office or individual.
(1) Patent correspondence. All correspondence concerning patent matters processed by organizations reporting to the Assistant Commissioner for Patents should be addressed to "Assistant Commissioner for Patents, Washington, D.C. 20231."
(2) Trademark correspondence.
(i) Send all trademark filings and correspondence, except as specified
below or unless submitting electronically, to:
(3) Office of Solicitor correspondence.
(i) Correspondence relating to pending litigation required by court rule or order 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. 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.
(ii) Correspondence relating to disciplinary proceedings pending before an Administrative Law Judge or the Commissioner shall be mailed to: Office of the Solicitor, P.O. Box 16116, Arlington, Virginia 22215.
(iii) All other correspondence to the Office of the Solicitor shall be addressed to: Box 8, Commissioner of Patents and Trademarks, Washington, D.C. 20231.
(iv) Correspondence improperly addressed to a Post Office Box specified in subsection (a)(3)(i) and (ii) of this section will not be filed elsewhere in the Patent and Trademark Office, and may be returned.
(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) [Reserved]
(h) In applications under section 1(b) of the Trademark Act, 15 U.S.C. 1051(b), all statements of use filed under section 1(d) of the Act, and requests for extensions of time therefor, should be additionally marked "Box ITU."
(i) The filing of all provisional applications and any communications relating thereto should be additionally marked "Box Provisional Patent Application."
(Pub. L. 94-131, 89 Stat. 685)
[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; 60 FR 20220, Apr. 25, 1995; 61 FR 56439, Nov. 1, 1996; 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999]
§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.
§1.3 Business to be conducted with decorum and courtesy.
Applicants and their attorneys or agents are required to conduct their business with the Patent and Trademark Office with decorum and courtesy. Papers presented in violation of this requirement will be submitted to the Commissioner and will be returned by the Commissioner's direct order. Complaints against examiners and other employees must be made in correspondence separate from other papers.
§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 or trademark registrations, 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, §§1.31 to 1.378; of international applications in subpart C, §§1.401 to 1.499; of reexamination of patents in subpart D, §§1.501 to 1.570; of interferences in subpart E, §§1.601 to 1.690; of extension of patent term in subpart F, §§1.710 to 1.785; and of trademark applications and registrations, §§2.11 to 2.186.
(b) Since each application file should be complete in itself, a separate copy of every paper to be filed in an application should be furnished for each application to which the paper pertains, even though the contents of the papers filed in two or more applications may be identical.
(c) Since different matters may be considered by different branches or sections of the Patent and Trademark Office, each distinct subject, inquiry or order should be contained in a separate letter to avoid confusion and delay in answering letters dealing with different subjects.
(d)(1) Each piece of correspondence, except as provided in paragraphs (e) and (f) of this section, filed in an application, patent file, trademark registration file, or other proceeding in the Office which requires a person's signature, must:
(i) Be an original, that is, have an original signature personally signed in permanent ink by that person; or
(ii) Be a direct or indirect copy, such as a photocopy or facsimile transmission(§1.6(d)), 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; or
(iii) Where an electronically transmitted trademark filing is permitted, the person who signs the filing must either:
(A) Place a symbol comprised of numbers and/or letters between two forward slash marks in the signature block on the electronic submission; and print, sign and date in permanent ink, and maintain a paper copy of the electronic submission; or
(B) Sign the verified statement using some other form of electronic signature specified by the Commissioner.
(2) 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 §10.18(b) of this chapter. Violations of §10.18(b)(2) of this chapter by a party, whether a practitioner or non-practitioner, may result in the imposition of sanctions under §10.18(c) of this chapter. Any practitioner violating §10.18(b) may also be subject to disciplinary action. See §§10.18(d) and 10.23(c)(15).
(e) 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 must be submitted with an original signature personally signed in permanent ink by that person.
(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.
(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247)
[24 FR 10332, Dec. 22, 1959, as amended at 48 FR 2707, Jan. 20, 1982; 49 FR 48451, Dec. 12, 1984; 53 FR 47807, Nov. 28, 1988; 58 FR 54501, Oct. 22, 1993; 62 FR 53186, Oct. 10, 1997; 61 FR 56439, Nov. 1, 1996; 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999]
§1.5 Identification of application, patent or registration.
(a) No correspondence relating to an application should be filed prior to receipt of the application number from the Patent and Trademark Office. When a letter directed to the Patent and Trademark Office concerns a previously filed application for a patent, it must identify on the top page in a conspicuous location, the application number (consisting of the series code and the serial number; e.g., 07/123,456), or the serial number and filing date assigned to that application by the Patent and Trademark Office, or the international application number of the international application. Any correspondence not containing such identification will be returned to the sender where a return address is available. The returned correspondence will be accompanied by a cover letter which will indicate to the sender that if the returned correspondence is resubmitted to the Patent and Trademark Office within two weeks of the mailing date on the cover letter, the original date of receipt of the correspondence will be considered by the Patent and Trademark Office as the date of receipt of the correspondence. Applicants may use either the Certificate of Mailing or Transmission procedure under §1.8 or the Express Mail procedure under §1.10 for resubmissions of returned correspondence if they desire to have the benefit of the date of deposit with the United States Postal Service. If the returned correspondence is not resubmitted within the two-week period, the date of receipt of the resubmission will be considered to be the date of receipt of the correspondence. The two-week period to resubmit the returned correspondence will not be extended. In addition to the application number, all letters directed to the Patent and Trademark Office concerning applications for patents should also state the name of the applicant, the title of the invention, the date of filing the same, and, if known, the group art unit or other unit within the Patent and Trademark Office responsible for considering the letter and the name of the examiner or other person to which it has been assigned.
(b) When the letter concerns a patent other than for purposes of paying a maintenance fee, it should state the number and date of issue of the patent, the name of the patentee, and the title of the invention. For letters concerning payment of a maintenance fee in a patent, see the provisions of §1.366(c).
(c)(1) A letter about a trademark application should identify the serial number, the name of the applicant, and the mark.
(2) A letter about a registered trademark should identify the registration number, the name of the registrant, and the mark.
(d) A letter relating to a reexamination proceeding should identify it as such by the number of the patent undergoing reexamination, the reexamination request control number assigned to such proceeding and, if known, the group art unit and name of the examiner to which it has been assigned.
(e) When a paper concerns an interference, it should state the names of the parties and the number of the interference. The name of the examiner-in-chief assigned to the interference (§1.610) and the name of the party filing the paper should appear conspicuously on the first page of the paper.
(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247)
[24 FR 10332, Dec. 22, 1959, as amended at 46 FR 29181, May 29, 1981; 49 FR 552, Jan. 4, 1984; 49 FR 48451, Dec. 12, 1984; 53 FR 47807, Nov. 28, 1988; 58 FR 54501, Oct. 22, 1993; 61 FR 56439, Nov. 1, 1996; 61 FR 56439, Nov. 1, 1996; 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999]
§1.6 Receipt of correspondence.
(a) Date of receipt and Express Mail date of deposit.
Correspondence received in the Patent and Trademark Office is stamped with the date of receipt except as follows:
(1) The Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday, or Federal holiday within the District of Columbia. Except for correspondence transmitted by facsimile under paragraph (a)(3) of this section, or filed electronically under paragraph (a)(4) of this section, no correspondence is received in the Office on Saturdays, Sundays, or Federal holidays within the District of Columbia.
(2) Correspondence filed in accordance with §1.10 will be stamped with the date of deposit as "Express Mail" with the United States Postal Service.
(3) Correspondence transmitted by facsimile to the Patent and Trademark Office will be stamped with the date on which the complete transmission is received in the Patent and Trademark Office unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the date stamped will be the next succeeding day which is not a Saturday, Sunday, or Federal holiday within the District of Columbia.
(4) Trademark-related correspondence transmitted electronically will be stamped with the date on which the Office receives the transmission.
(b) Patent and Trademark Office Post Office pouch. Mail placed in the Patent and Trademark Office pouch up to midnight on any day, except Saturdays, Sundays and Federal holidays within the District of Columbia, by the post office at Washington, DC, serving the Patent and Trademark Office, is considered as having been received in the Patent and Trademark Office on the day it was so placed in the pouch by the U.S. Postal Service.
(c) Correspondence delivered by hand. In addition to being mailed, correspondence may be delivered by hand during hours the Office is open to receive correspondence.
(d) Facsimile transmission. Except in the cases enumerated below, correspondence, including authorizations to charge a deposit account, may be transmitted by facsimile. The receipt date accorded to the correspondence will be the date on which the complete transmission is received in the Patent and Trademark Office, unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. See §1.6(a)(3). To facilitate proper processing, each transmission session should be limited to correspondence to be filed in a single application or other proceeding before the Patent and Trademark Office. The application number of a patent or trademark application, the control number of a reexamination proceeding, the interference number of an interference proceeding, the patent number of a patent, or the registration number of a trademark should be entered as a part of the sender's identification on a facsimile cover sheet. Facsimile transmissions are not permitted and if submitted, will not be accorded a date of receipt, in the following situations:
(1) Correspondence as specified in §1.4(e), requiring an original signature;
(2) Certified documents as specified in §1.4(f);
(3) Correspondence which cannot receive the benefit of the certificate of mailing or transmission as specified in §1.8(a)(2)(i)(A) through (D) and (F), §1.8(a)(2)(ii)(A), and §1.8(a)(2)(iii)(A), except that a continued prosecution application under §1.53(d) may be transmitted to the Office by facsimile;
(4) Drawings submitted under §§1.81, 1.83 through 1.85, 1.152, 1.165, 1.174, 1.437, 2.51, 2.52, or 2.72;
(5) A request for reexamination under §1.510;
(6) Correspondence to be filed in a patent application subject to a secrecy order under §§5.1 through 5.5 of this chapter and directly related to the secrecy order content of the application;
(7) Requests for cancellation or amendment of a registration under section 7(e) of the Trademark Act, 15 U.S.C. 1057(e); and certificates of registration surrendered for cancellation or amendment under section 7(e) of the Trademark Act, 15 U.S.C. 1057(e);
(8) Correspondence to be filed with the Trademark Trial and Appeal Board, except the notice of ex parte appeal;
(9) Correspondence to be filed in an interference proceeding which consists of a preliminary statement under §1.621; a transcript of a deposition under §1.676 or of interrogatories, cross-interrogatories, or recorded answers under §1.684(c); or an evidentiary record and exhibits under §1.653.
(e) Interruptions in U.S. Postal Service. If interruptions or emergencies in the United States Postal Service which have been so designated by the Commissioner occur, the Patent and Trademark Office will consider as filed on a particular date in the Office any correspondence which is:
(1) Promptly filed after the ending of the designated interruption or emergency; and
(2) Accompanied by a statement indicating that such correspondence would have been filed on that particular date if it were not for the designated interruption or emergency in the United States Postal Service.
(f) Facsimile transmission of a patent application under §1.53(d). In the event that the Office has no evidence of receipt of an application under §1.53(d) (a continued prosecution application) transmitted to the Office by facsimile transmission, the party who transmitted the application under §1.53(d) may petition the Commissioner to accord the application under §1.53(d) a filing date as of the date the application under §1.53(d) is shown to have been transmitted to and received in the Office,
(1) Provided that the party who transmitted such application under §1.53(d):
(i) Informs the Office of the previous transmission of the application under §1.53(d) promptly after becoming aware that the Office has no evidence of receipt of the application under §1.53(d);
(ii) Supplies an additional copy of the previously transmitted application under §1.53(d); and
(iii) Includes a statement which attests on a personal knowledge basis or to the satisfaction of the Commissioner to the previous transmission of the application under §1.53(d) and is accompanied by a copy of the sending unit's report confirming transmission of the application under §1.53(d) or evidence that came into being after the complete transmission and within one business day of the complete transmission of the application under §1.53(d).
(2) The Office may require additional evidence to determine if the application under §1.53(d) was transmitted to and received in the Office on the date in question.
[58 FR 54501, Oct. 22, 1993; 58 FR 64154, Dec. 6, 1993; 61 FR 56439, Nov. 1, 1996; 62 FR 53186, Oct. 10, 1997; 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999]
§1.7 Times for taking action: Expiration on Saturday, Sunday or Federal holiday.
Whenever periods of time are specified in this part in days, calendar days are intended. When the day, or the last day fixed by statute or by or under this part for taking any action or paying any fee in the Patent and Trademark Office falls on Saturday, Sunday, or on a Federal holiday within the District of Columbia, the action may be taken, or the fee paid, on the next succeeding day which is not a Saturday, Sunday, or a Federal holiday. See §1.304 for time for appeal or for commencing civil action.
(35 U.S.C. 6, Pub. L. 97-247)
[48 FR 2707, Jan. 20, 1983; 48 FR 4285, Jan. 31, 1983; 61 FR 56439, Nov. 1, 1996]
§1.8 Certificate of mailing or transmission.
(a) Except in the cases enumerated in paragraph (a)(2) of this section, correspondence required to be filed in the Patent and Trademark Office within a set period of time will be considered as being timely filed if the procedure described in this section is followed. The actual date of receipt will be used for all other purposes.
(1) Correspondence will be considered as being timely filed if:
(i) The correspondence is mailed or transmitted prior to expiration of the set period of time by being:
(A) Addressed as set out in §1.1(a) and deposited with the U.S. Postal Service with sufficient postage as first class mail; or
(B) Transmitted by facsimile to the Patent and Trademark Office in accordance with §1.6(d); and
(ii) The correspondence includes a certificate for each piece of correspondence stating the date of deposit or transmission. The person signing the certificate should have reasonable basis to expect that the correspondence would be mailed or transmitted on or before the date indicated.
(2) The procedure described in paragraph (a)(1) of this section does not apply to, and no benefit will be given to a Certificate of Mailing or Transmission on the following:
(i) Relative to Patents and Patent Applications --
(A) The filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an application filing date, including a request for a continued prosecution application under §1.53(d);
(B) The filing of correspondence in an interference which an examiner-in-chief orders to be filed by hand or "Express Mail";
(C) The filing of agreements between parties to an interference under 35 U.S.C. 135(c);
(D) The filing of an international application for patent;
(E) The filing of correspondence in an international application before the U.S. Receiving Office, the U.S. International Searching Authority, or the U.S. International Preliminary Examining Authority;
(F) The filing of a copy of the international application and the basic national fee necessary to enter the national stage, as specified in §1.494(b) or §1.495(b).
(ii) Relative to Trademark Registrations and Trademark Applications --
(A) The filing of a trademark application;
(B) [Reserved]
(C) [Reserved]
(D) [Reserved]
(E) [Reserved]
(F) [Reserved]
(iii) Relative to Disciplinary Proceedings
(A) Correspondence filed in connection with a disciplinary proceeding under part 10 of this chapter.
(B) [Reserved]
(b) In the event that correspondence is considered timely filed by being mailed or transmitted 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 is dismissed, terminated, or decided with prejudice, the correspondence will be considered timely if the party who forwarded such correspondence:
(1) Informs the Office of the previous mailing or transmission of the correspondence promptly after becoming aware that the Office has no evidence of receipt of the correspondence;
(2) Supplies an additional copy of the previously mailed or transmitted correspondence and certificate; and
(3) Includes a statement which attests on a personal knowledge basis or to the satisfaction of the Commissioner to the previous timely mailing or transmission. If the correspondence was sent by facsimile transmission, a copy of the sending unit's report confirming transmission may be used to support this statement.
(c) The Office may require additional evidence to determine if the correspondence was timely filed.
[58 FR 54502, Oct. 22, 1993; 58 FR 64154, Dec. 6, 1993; 61 FR 56439, Nov. 1, 1996; 62 FR 53186, Oct. 10, 1997]
(a)(1) A national application as used in this chapter means a U.S. application for patent which was either filed in the Office under 35 U.S.C. 111, or which entered the national stage from an international application after compliance with 35 U.S.C. 371.
(2) A provisional application as used in this chapter means a U.S. national application for patent filed in the Office under 35 U.S.C. 111(b).
(3) A nonprovisional application as used in this chapter means a U.S. national application for patent which was either filed in the Office under 35 U.S.C. 111(a), or which entered the national stage from an international application after compliance with 35 U.S.C. 371.
(b) An international application as used in this chapter means an international application for patent filed under the Patent Cooperation Treaty prior to entering national processing at the Designated Office stage.
(c) An independent inventor as used in this chapter means any inventor who (1) has not assigned, granted, conveyed, or licensed, and (2) is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person who could not likewise be classified as an independent inventor if that person had made the invention, or to any concern which would not qualify as a small business concern or a nonprofit organization under this section.
(d) A small business concern as used in this chapter means any business concern meeting the size standards set forth in 13 CFR Part 121 to be eligible for reduced patent fees. Questions related to size standards for a small business concern may be directed to: Small Business Administration, Size Standards Staff, 409 Third Street, SW, Washington, DC 20416.
(e) A nonprofit organization as used in this chapter means (1) a university or other institution of higher education located in any country; (2) an organization of the type described in section 501(c)(3) of the Internal Revenue Code of 1954 (26 U.S.C. 501(c)(3)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a)); (3) any nonprofit scientific or educational organization qualified under a nonprofit organization statute of a state of this country (35 U.S.C. 201(i)); or (4) any non-profit organization located in a foreign country which would qualify as a nonprofit organization under paragraphs (e) (2) or (3) of this section if it were located in this country.
(f) A small entity as used in this chapter means an independent inventor, a small business concern, or a non-profit organization eligible for reduced patent fees.
(g) For definitions in interferences see §1.601.
(h) A "Federal holiday within the District of Columbia" as used in this chapter means any day, except Saturdays and Sundays, when the Patent and Trademark Office is officially closed for business for the entire day.
[43 FR 20461, May 11, 1978; as amended at 47 FR 40139, Sept. 10, 1982; 47 FR 43275, Sept. 30, 1982; para. (d), 49 FR 34724, Aug. 31, 1984; 49 FR 48451, Dec. 12, 1984; 58 FR 54508, Oct. 22, 1993; 61 FR 56439, Nov. 1, 1996; 62 FR 53186, Oct. 10, 1997]
§1.10 Filing of correspondence by "Express Mail."
(a) Any correspondence received by the Patent and Trademark Office (Office) that was delivered by the "Express Mail Post Office to Addressee" service of the United States Postal Service (USPS) will be considered filed in the Office on the date of deposit with the USPS. The date of deposit with the USPS is shown by the "date-in" on the "Express Mail" mailing label or other official USPS notation. If the USPS deposit date cannot be determined, the correspondence will be accorded the Office receipt date as the filing date. See §1.6(a).
(b) Correspondence should be deposited directly with an employee of the USPS to ensure that the person depositing the correspondence receives a legible copy of the "Express Mail" mailing label with the "date-in" clearly marked. Persons dealing indirectly with the employees of the USPS (such as by deposit in an "Express Mail" drop box) do so at the risk of not receiving a copy of the "Express Mail" mailing label with the desired "date-in" clearly marked. The paper(s) or fee(s) that constitute the correspondence should also include the "Express Mail" mailing label number thereon. See paragraphs (c), (d) and (e) of this section.
(c) Any person filing correspondence under this section that was received by the Office and delivered by the "Express Mail Post Office to Addressee" service of the USPS, who can show that there is a discrepancy between the filing date accorded by the Office to the correspondence and the date of deposit as shown by the "date-in" on the "Express Mail" mailing label or other official USPS notation, may petition the Commissioner to accord the correspondence a filing date as of the "date-in" on the "Express Mail" mailing label or other official USPS notation, provided that:
(1) The petition is filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date other than the USPS deposit date;
(2) The number of the "Express Mail" mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by "Express Mail;" and
(3) The petition includes a true copy of the "Express Mail" mailing label showing the "date-in," and of any other official notation by the USPS relied upon to show the date of deposit.
(d) Any person filing correspondence under this section that was received by the Office and delivered by the "Express Mail Post Office to Addressee" service of the USPS, who can show that the "date-in" on the "Express Mail" mailing label or other official notation entered by the USPS was incorrectly entered or omitted by the USPS, may petition the Commissioner to accord the correspondence a filing date as of the date the correspondence is shown to have been deposited with the USPS, provided that:
(1) The petition is filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date based upon an incorrect entry by the USPS;
(2) The number of the "Express Mail" mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by "Express Mail"; and
(3) The petition includes a showing which establishes, to the satisfaction of the Commissioner, that the requested filing date was the date the correspondence was deposited in the "Express Mail Post Office to Addressee" service prior to the last scheduled pickup for that day. Any showing pursuant to this paragraph must be corroborated by evidence from the USPS or that came into being after deposit and within one business day of the deposit of the correspondence in the "Express Mail Post Office to Addressee" service of the USPS.
(e) Any person mailing correspondence addressed as set out in § 1.1(a) to the Office with sufficient postage utilizing the "Express Mail Post Office to Addressee" service of the USPS but not received by the Office, may petition the Commissioner to consider such correspondence filed in the Office on the USPS deposit date, provided that:
(1) The petition is filed promptly after the person becomes aware that the Office has no evidence of receipt of the correspondence;
(2) The number of the "Express Mail" mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by "Express Mail";
(3) The petition includes a copy of the originally deposited paper(s) or fee(s) that constitute the correspondence showing the number of the "Express Mail" mailing label thereon, a copy of any returned postcard receipt, a copy of the "Express Mail" mailing label showing the "date-in," a copy of any other official notation by the USPS relied upon to show the date of deposit, and, if the requested filing date is a date other than the "date-in" on the "Express Mail" mailing label or other official notation entered by the USPS, a showing pursuant to paragraph (d)(3) of this section that the requested filing date was the date the correspondence was deposited in the "Express Mail Post Office to Addressee" service prior to the last scheduled pickup for that day; and
(4) The petition includes a statement which establishes, to the satisfaction of the Commissioner, the original deposit of the correspondence and that the copies of the correspondence, the copy of the "Express Mail" mailing label, the copy of any returned postcard receipt, and any official notation entered by the USPS are true copies of the originally mailed correspondence, original "Express Mail" mailing label, returned postcard receipt, and official notation entered by the USPS.
(f) The Office may require additional evidence to determine if the correspondence was deposited as "Express Mail" with the USPS on the date in question.
(35 U.S.C. 6, Pub. L. 97-247)
[48 FR 2708, Jan. 20, 1983; 48 FR 4285, Jan. 31, 1983, as amended at 49 FR 552, Jan. 4, 1984; 61 FR 56439, Nov. 1, 1996; 62 FR 53186, Oct. 10, 1997]
§1.11 Files open to the public. (Section 1.11 pertains to patent files. See Section 2.27 regarding trademark files.)
§1.12 Assignment records open to public inspection.
(a)(1) Separate assignment records are maintained in the Patent and Trademark Office for patents and trademarks. The assignment records, relating to original or reissue patents, including digests and indexes, for assignments recorded on or after May 1, 1957, and assignment records relating to pending or abandoned trademark applications and to trademark registrations, for assignments recorded on or after January 1, 1955, are open to public inspection at the Patent and Trademark Office, and copies of those assignment records may be obtained upon request and payment of the fee set forth in §§1.19 and 2.6 of this chapter.
(2) All records of assignments of patents recorded before May 1, 1957, and all records of trademark assignments recorded before January 1, 1955, are maintained by the National Archives and Records Administration (NARA). The records are open to public inspection. Certified and uncertified copies of those assignment records are provided by NARA upon request and payment of the fees required by NARA.
(b) Assignment records, digests, and indexes, relating to any pending or abandoned patent application are not available to the public. Copies of any such assignment records and information with respect thereto shall be obtainable only upon written authority of the applicant or applicant's assignee or attorney or agent or upon a showing that the person seeking such information is a bona fide prospective or actual purchaser, mortgagee, or licensee of such application, unless it shall be necessary to the proper conduct of business before the Office or as provided by these rules.
(c) Any request by a member of the public seeking copies of any assignment records of any pending or abandoned patent application preserved in secrecy under §1.14, or any information with respect thereto, must
(1) Be in the form of a petition accompanied by the petition fee set forth in §1.17(i), or
(2) Include written authority granting access to the member of the public to the particular assignment records from the applicant or applicant's assignee or attorney or agent of record.
(d) An order for a copy of an assignment or other document should identify the reel and frame number where the assignment or document is recorded. If a document is identified without specifying its correct reel and frame, an extra charge as set forth in §1.21(j) will be made for the time consumed in making a search for such assignment.
(35 U.S.C. 6; 15 U.S.C. 1113, 1123)
[47 FR 41272, Sept. 17, 1982, as amended at 54 FR 6900, Feb. 15, 1989; 56 FR 65151, Dec. 13, 1991; 56 FR 66670, Dec. 24, 1991; 57 FR 29641, July 6, 1992; 60 FR 20221, Apr. 25, 1995]
§1.13 Copies and certified copies.
(a) Non-certified copies of patents and trademark registrations and of any records, books, papers, or drawings within the jurisdiction of the Patent and Trademark Office and open to the public, will be furnished by the Patent and Trademark Office to any person, and copies of other records or papers will be furnished to persons entitled thereto, upon payment of the fee therefor.
(b) Certified copies of the patents and trademark registrations and of any records, books, papers, or drawings within the jurisdiction of the Patent and Trademark Office and open to the public or persons entitled thereto will be authenticated by the seal of the Patent and Trademark Office and certified by the Commissioner, or in his name attested by an officer of the Patent and Trademark Office authorized by the Commissioner, upon payment of the fee for the certified copy.
[58 FR 54508, Oct. 22, 1993]
§1.15 Requests for identifiable records.
(a) Requests for records, not disclosed to the public as part of the regular informational activity of the Patent and Trademark Office and which are not otherwise dealt with in the rules in this part, shall be made in writing, with the envelope and the letter clearly marked "Freedom of Information Request." Each such request, so marked, should be submitted by mail addressed to the "Patent and Trademark Office, Freedom of Information Request Control Desk, Box 8, Washington, DC 20231," or hand delivered to the Office of the Solicitor, Patent and Trademark Office, Arlington, Virginia. The request will be processed in accordance with the procedures set forth in part 4 of title 15, Code of Federal Regulations.
(b) Any person whose request for records has been initially denied in whole or in part, or has not been timely determined, may submit a written appeal as provided in §4.8 of title 15, Code of Federal Regulations.
(c) Procedures applicable in the event of service of process or in connection with testimony of employees on official matters and production of official documents of the Patent and Trademark Office in civil legal proceedings not involving the United States shall be those established in parts 15 and 15a of title 15, Code of Federal Regulations.
[53 FR 47686, Nov. 25, 1988]
§1.21 Miscellaneous fees and charges. (See §2.6 regarding trademark-related fees.)
The Patent and Trademark Office has established the following fees for
the services indicated:
(l) For admission to examination for registration to practice 130.00
(i) Application fee (non-refundable) 40.00
(ii) Registration examination fee 310.00
(2) On registration to practice 100.00
(3) For reinstatement to practice 40.00
(4) For certificate of good standing as an attorney or agent 10.00
Suitable for framing 20.00
(5) For review of decision of the Director of Enrollment and Discipline under §10.2(c) 130.00
(6) For requesting regrading of an examination under §10.2(c) 100
(i) Regrading of morning section (PTO Practice and Procedure) 230.00
(ii) Regrading of afternoon section (Claim Drafting) 230.00
(b) Deposit accounts:
(1) For establishing a deposit account 10.00
(2) Service charge for each month when the balance at the end of the month is below $1,000 25.00
(3) Service charge for each month when the balance at
the end of the month is below $300 for
restricted subscription deposit accounts used exclusively
for subscription order of patent
copies as issued 25.00
(c) Disclosure document: For filing a disclosure document 10.00
(d) Delivery box: Local delivery box rental, per annum 50.00
(e) International-type search reports:: For preparing
an international-type search report of an
international type search made at the time of the first
action on the merits in a national patent
application 40.00
(f) [Reserved]
(g) Self-service copy charge, per page 0.25
(h) For recording each assignment, agreement, or other
paper relating to the property in a patent
or application, per property 40.00
(i) Publication in Official Gazette: For publication
in the Official Gazette of a notice of the
availability of an application or a patent for licensing
or sale, each application or patent 25.00
(j) Labor charges for services, per hour or fraction thereof 40.00
(k) For items and services, that the Commissioner finds
may be supplied, for which fees are not
specified by statute or by this part, such charges as
may be determined by the Commissioner
with respect to each such item or service Actual cost
(l) For processing and retaining any application abandoned
pursuant to §1.53(f) unless the required
basic filing fee (§1.16) has been paid 130.00
(m) For processing each check returned "unpaid" by a bank 50.00
(n) For handling an application in which proceedings are terminated pursuant to §1.53(e) 130.00
(o) Marginal cost, paid in advance, for each hour of terminal
session time, including print time, using Automated Patent System full-text
search capabilities, prorated for the actual time used. The
Commissioner may waive the payment by an individual for
access to the Automated Patent System
full-text search capability (APS-Text) upon a showing
of need or hardship and if such waiver
is in the public interest 40.00
(a) Patent and trademark fees and charges payable to the Patent and Trademark Office are required to be paid in advance, that is, at the time of requesting any action by the Office for which a fee or charge is payable with the exception that under §1.53 applications for patent may be assigned a filing date without payment of the basic filing fee.
(b) All patent and trademark fees paid to the Patent and Trademark Office should be itemized in each individual application, patent or other proceeding in such a manner that it is clear for which purpose the fees are paid.
(35 U.S.C. 6, Pub. L. 97-247)
[48 FR 2708 Jan. 20, 1983]
(a) All payments of money required for Patent and Trademark Office fees, including fees for the processing of international applications (§1.445), shall be made in U.S. dollars and in the form of a cashier’s or certified check, Treasury note, or United States Postal Service money order. If sent in any other form, the Office may delay or cancel the credit until collection is made. Checks and money orders must be made payable to the Commissioner of Patents and Trademarks. Payments from foreign countries must be payable and immediately negotiable in the United States for the full amount of the fee required. Money sent by mail to the Office will be at the risk of the sender, and letters containing money should be registered with the United States Postal Service.
(b) Payments of money required for Patent and Trademark Office fees in an electronically filed trademark application or electronic submission in a trademark application may also be made by credit card. Payment of a fee by credit card must specify the amount to be charged to the credit card and such other information as is necessary to process the charge, and is subject to collection of the fee. The Office will not accept a general authorization to charge fees to a credit card. If credit card information is provided on a form or document other than a form provided by the Office for the payment of fees by credit card, the Office will not be liable if the credit card number becomes public knowledge.
(Pub. L. 94-131, 89 Stat. 685)
[43 FR 20462, May 11, 1978; 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999]
Coupons in denominations of three dollars, for the purchase of patents, designs, defensive publications, statutory invention registrations, and trademark registrations are sold by the Patent and Trademark Office for the convenience of the general public; these coupons may not be used for any other purpose. The three-dollar coupons are sold individually and in books of 50 for $150.00. These coupons are good until used; they may be transferred but cannot be redeemed.
[56 FR 65153, Dec. 13, 1991]
(a) For the convenience of attorneys, and the general public in paying any fees due, in ordering services offered by the Office, copies of records, etc., deposit accounts may be established in the Patent and Trademark Office upon payment of the fee for establishing a deposit account (§1.21(b)(1)). A minimum deposit of $1,000 is required for paying any fees due or in ordering any services offered by the Office. However, a minimum deposit of $300 may be paid to establish a restricted subscription deposit account used exclusively for subscription order of patent copies as issued. At the end of each month, a deposit account statement will be rendered. A remittance must be made promptly upon receipt of the statement to cover the value of items or services charged to the account and thus restore the account to its established normal deposit. An amount sufficient to cover all fees, services, copies, etc., requested must always be on deposit. Charges to accounts with insufficient funds will not be accepted. A service charge (§1.21(b)(2)) will be assessed for each month that the balance at the end of the month is below $1,000. For restricted subscription deposit accounts, a service charge (§1.21(b)(3)) will be assessed for each month that the balance at the end of the month is below $300.
(b) Filing, issue, appeal, international-type search report, international application processing, petition, and post-issuance fees may be charged against these accounts if sufficient funds are on deposit to cover such fees. A general authorization to charge all fees, or only certain fees, set forth in §§1.16 to 1.18 to a deposit account containing sufficient funds may be filed in an individual application, either for the entire pendency of the application or with respect to a particular paper filed. An authorization to charge to a deposit account the fee for a request for reexamination pursuant to §1.510 and any other fees required in a reexamination proceeding in a patent may also be filed with the request for reexamination. An authorization to charge a fee to a deposit account will not be considered payment of the fee on the date the authorization to charge the fee is effective as to the particular fee to be charged unless sufficient funds are present in the account to cover the fee.
(35 U.S.C. 6, Pub. L. 97-247)
[49 FR 553, Jan. 4, 1984, as amended at 50 FR 31826, Aug. 6, 1985]
(a) Any fee paid by actual mistake or in excess of that required will be refunded, but a mere change of purpose after the payment of money, as when a party desires to withdraw an application, an appeal, or a request for oral hearing, will not entitle a party to demand such a return. Amounts of twenty-five dollars or less will not be returned unless specifically requested within a reasonable time, nor will the payer be notified of such amounts; amounts over twenty-five dollars may be returned by check or, if requested, by credit to a deposit account.
(b) [Reserved]
(c) If the Commissioner decides not to institute a reexamination proceeding, a refund of $1,690 will be made to the requester of the proceeding. Reexamination requesters should indicate whether any refund should be made by check or by credit to a deposit account.
(35 U.S.C. 6, 15 U.S.C. 1113, 1123)
[47 FR 41274, Sept. 17, 1982, as amended at 50 FR 31826, Aug. 6, 1985; 54 FR 6902, Feb. 15, 1989; 56 FR 65153, Dec. 13, 1991; 57 FR 38195, Aug. 21, 1992; 62 FR 53186, Oct. 10, 1997]
AUTHORITY: 15 U.S.C. 1123, 35 U.S.C. 6, unless otherwise noted.
SOURCE: 30 FR 13193, Oct. 16, 1965, unless otherwise noted.
§2.1 Sections of part 1 applicable.
Sections 1.1 to 1.26 of this chapter apply to trademark cases, except those parts that specifically refer to patents, and except §1.22 to the extent that it is inconsistent with §§2.85(e), 2.101(d), 2.111(c), 2.164, or 2.185. Other sections of part 1 incorporated by reference in part 2 also apply to trademark cases.
[51 FR 28709, Aug. 11, 1986; 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999]
(a) The Act as used in this part means the Trademark Act of 1946, 60 Stat. 427, as amended, codified in 15 U.S.C. 1051 et. seq.
(b) Entity as used in this part includes both natural and juristic persons.
[54 FR 37588, Sept. 11, 1989]
The Patent and Trademark Office requires following fees and charges:
(1) For filing an application, per class. .$325.00
(2) For filing an amendment to allege use under section 1(c) of the Act, per class. $100.00
(3) For filing a statement of use under section 1(d)(1) of the Act, per class. $100.00
(4) For filing a request under section 1(d)(2) of the
Act for a six-month extension of time for
filing a statement of use under section 1(d)(1) of the
Act, per class. $150.00
(5) For filing an application for renewal of a registration, per class. $400.00
(6) Additional fee for filing a renewal application during the grace period, per class $100.00
(7) For filing to publish a mark under section 12(c), per class. .$100.00
(8) For issuing a new certificate of registration upon request of assignee. $100.00
(9) For a certificate of correction of registrant's error. $100.00
(10) For filing a disclaimer to a registration. $100.00
(11) For filing an amendment to a registration. $100.00
(12) For filing an affidavit under §8 of the Act, per class. $100.00
(13) For filing an affidavit under §15 of the Act, per class $200.00
(14) Additional fee for filing a section 8 affidavit during the grace period, per class $100.00
(15) For petitions to the Commissioner. $100.00
(16) For filing a petition to cancel, per class. $300.00
(17) For filing a notice of opposition, per class. $300.00
(18) For ex parte appeal to the Trademark Trial and Appeal Board, per class $100.00
(19) Dividing an application, per new application (file wrapper) created. $100.00
(20) For correcting a deficiency in a section 8 affidavit $100.00
(21) For correcting a deficiency in a renewal application $100.00
(b) Trademark service fees.
(1) For printed copy of registered mark, copy only
(i) Regular service, which includes preparation of copies
by the PTO within 2-3 business days of
receipt and delivery by United States Postal Service,
fax, or to a PTO Box. $3.00
(ii) Delivery on next business day to PTO Box or fax delivery
within one business day to
U.S./Canada/Mexico $6.00
(iii) Expedited delivery by commercial delivery service $25.00
(2) Certified or uncertified copy of trademark application as filed:
(i) Regular service. $15.00
(ii) Expedited local service. $30.00
(3) Certified or uncertified copy of a trademark-related file wrapper and contents. $50.00
(4) Certified copy of a registered mark, showing title and/or status:
(i) Regular service. $15.00
(ii) Expedited local service. $30.00
(5) Certified or uncertified copy of trademark records,
per document except as otherwise provided
in this section. $25.00
(6) For recording each trademark assignment, agreement
or other paper relating to the property
in a registration or application
(i) First property in a document. $40.00
(ii) For each additional property in the same document. $25.00
(7) For assignment records, abstract of title and certification, per registration. $25.00
(8) Marginal cost, paid in advance, for each hour of terminal
session time, including print time,
using T-Search capabilities, prorated for the actual
time used. The Commissioner may waive
the payment by an individual for access to T-Search upon
a showing of need or hardship, and
if such waiver is in the public interest. $40.00
(9) Self-service copy charge, per page. $0.25
(10) Labor charges for services, per hour or fraction thereof. $40.00
(11) For items and services that the Commissioner finds
may be supplied, for which fees are not
specified by statute or by this part, such charges as
may be determined by the Commissioner
with respect to each such item or service. Actual Cost
§2.7 Fastener Recordal Fees.
(b) Renewal of insignia recordal 20.00
(c) Surcharge for late renewal of insignia recordal 20.00
AUTHORITY: Sections 2.11 to 2.19 also issued under 35 U.S.C. 31, 32.
§2.11 Applicants may be represented by an attorney.
The owner of a trademark may file and prosecute his or her own application for registration of such trademark, or he or she may be represented by an attorney or other individual authorized to practice in trademark cases under §10.14 of this subchapter. The Patent and Trademark Office cannot aid in the selection of an attorney or other representative.
[50 FR 5171, Feb. 6, 1985]
§2.17 Recognition for representation.
(a) When an attorney as defined in §10.1(c) of this subchapter acting in a representative capacity appears in person or signs a paper in practice before the Patent and Trademark Office in a trademark case, his or her personal appearance or signature shall constitute a representation to the Patent and Trademark Office that, under the provisions of §10.14 and the law he or she is authorized to represent the particular party in whose behalf he or she acts. Further proof of authority to act in a representative capacity may be required.
(b) Before any non-lawyer will be allowed to take action of any kind in any application or proceeding, a written authorization from the applicant, party to the proceeding, or other person entitled to prosecute such application or proceeding must be filed therein.
(c) To be recognized as a representative, an attorney as defined in §10.1(c) of this chapter may file a power of attorney, appear in person, or sign a paper on behalf of an applicant or registrant that is filed with the Office in a trademark case.
(d) A party may file a power of attorney that relates to more than one trademark application or registration, or to all existing and future applications and registrations of that party. A party relying on such a power of attorney must:
(1) Include a copy of the previously filed power of attorney; or
(2) Refer to the power of attorney, specifying the filing date of the previously filed power of attorney; the application serial number (if known), registration number, or inter partes proceeding number for which the original power of attorney was filed; and the name of the party who signed the power of attorney; or, if the application serial number is not known, submit a copy of the application or a copy of the mark, and specify the filing date.
[30 FR 13193, Oct. 16, 1965, as amended at 50 FR 5171, Feb. 6, 1985; 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999]
§2.18 Correspondence, with whom held.
Correspondence will be sent to the applicant or a party to a proceeding at its address unless papers are transmitted by an attorney at law, or a written power of attorney is filed, or written authorization of other person entitled to be recognized is filed, or the applicant or party designates in writing another address to which correspondence is to be sent, in which event correspondence will be sent to the attorney at law transmitting the papers, or to the attorney at law designated in the power of attorney, or to the other person designated in the written authorization, or to the address designated by the applicant or party for correspondence. Correspondence will continue to be sent to such address until the applicant or party, or the attorney at law or other authorized representative of the applicant or party, indicates in writing that correspondence is to be sent to another address. Correspondence will be sent to the domestic representative of a foreign applicant unless the application is being prosecuted by an attorney at law or other qualified person duly authorized, in which event correspondence will be sent to the attorney at law or other qualified person duly authorized. Double correspondence will not be undertaken by the Patent and Trademark Office, and if more than one attorney at law or other authorized representative appears or signs a paper, the Office reply will be sent to the address already established in the file until another correspondence address is specified by the applicant or party or by the attorney or other authorized representative of the applicant or party.
[41 FR 758, Jan. 5 1976, as amended at 54 FR 37588, Sept. 11, 1989]
§2.19 Revocation of power of attorney or of other authorization to represent; withdrawal.
(a) Authority to represent an applicant or a party to a proceeding may be revoked at any stage in the proceedings of a case upon notification to the Commissioner; and when it is so revoked, the Office will communicate directly with the applicant or party to the proceeding or with such other qualified person as may be authorized. The Patent and Trademark Office will notify the person affected of the revocation of his or her authorization.
(b) An individual authorized to represent an applicant or party in a trademark case may withdraw upon application to and approval by the Commissioner.
[50 FR 5171, Feb. 6, 1985]
§2.20 Declarations in lieu of oaths.
Instead of an oath, affidavit, verification, or sworn statement, the
language of 28 U.S.C. 1746, or the following language, may be used: