1. Correspondence Respecting Patent Applications, Patent Re-examination Proceedings, and Other Proceedings
2. Specification of Correspondence Address
3. Who Can Change Correspondence Address?

Correspondence Respecting Patent Applications, Patent Re-examination Proceedings, and Other Proceedings

Under § 1.76 of 37 CFR 1.3.3., an application for a patent must list a correspondence address either as an application data sheet or otherwise in a way that is easily identifiable such as in a paper attached to the application documents. If the applications have no correspondence address, the Office may use the mailing address of the first named inventor.

Every notice, official letters and other information associated with the application will be sent to the correspondence address specified in the form. However, the Office sends an electronic acknowledgment receipt to applicants who applied through its electronic filing system.

Specification of Correspondence Address

Unless with the approval of the Director, the Office will not send double correspondence to an applicant and a patent practitioner, or multiple patent practitioners. If the application includes more than one correspondence address, the Office will choose the specified addresses for correspondence purposes. Typically, the Office prefers a Customer Number to a typed correspondence address.

The party giving a correspondence address must specify a daytime telephone number in an identifiable form, and a qualified party may change the correspondence address. Under § 1.34, any patent practitioner mentioned in the application filing documents in a representative capacity can change the correspondence address before the appointment of any power of attorney. Except for written claims under § 1.27(c) (2) (iii) or (c) (2)(iv), paperwork filed in the application documentation must be signed by the following people:

  • A patent practitioner of record.
  • A nonrecord patent practitioner acting in a representative capacity under § 1.34, or;
  • The applicant under § 1.42. Unless where exceptions are given, a patent practitioner must sign all documents submitted on behalf of a juristic entity.

All notices, official letters, and other information relevant to the owners of a patent under re-examination or continuous examination will be sent to the correspondence address specified in the patent application. Additionally, the patent practitioner must sign amendments and other papers filed in a re-examination, or supplemental re-examination proceeding.

Who Can Change Correspondence Address?

If the application involves more than one owner, the documents must carry the signature of all the owners, an attorney or agent of record in the patent file, or a registered attorney or agent not of record acting on behalf of the owners under § 1.34. If all these requirements are met, it is possible for the patent owners to apply for a change of correspondence address at the Patent and Trademark Office within the enforceable life of the patent. The Office directs any communication regarding maintenance fees to the correspondence address, except where the applicant specified a different fee address under § 1.363.

Under § 11.11 of 37 CFR 1.3.3., changing the address in the patent application or patent doesn't affect the address of a patent practitioner in the records of patent attorneys and agents.

If a continuing application is based on the documentation of a prior application in which there was a change of correspondence address, the papers for the continuing application must include an application data sheet or separate paper specifying the correspondence address. Not doing this can lead to a nonrecognition of the change of correspondence carried out during the original patent application proceedings.

If the correspondence address of a patent practitioner acting on behalf of the patentee or patent owner is the correspondence address of record in a patent application, the patent practitioner can change the correspondence address after the issuance of the patent, but the patentee or patent owner must be informed of the modification.

While it is possible for patent practitioners mentioned in the transmittal papers to change the correspondence address before the appointment of any power of attorney, a patent practitioner whose name appears in a letterhead is not qualified to change the correspondence address. Before an individual can change the correspondence address, they must be identified as a representative of the applicant.

If a company which has been assigned the invention or promised to be assigned the invention applied, a representative of the company who is not a patent practitioner is not qualified to change the correspondence address as a patent practitioner is required to sign all the papers as a representative of a juristic entity.

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