MPEP 601.03(a)
Change of Correspondence Address in Applications Filed On or After September 16, 2012

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in Januay 2018

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601.03(a)    Change of Correspondence Address in Applications Filed On or After September 16, 2012 [R-07.2015]

[Editor Note: See MPEP § 601.03(b) for change of correspondence address in applications filed before September 16, 2012.]

37 C.F.R. 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 37 CFR 1.63(b)(2) ) as the correspondence address. The Office will direct, or otherwise make available, all notices, official letters, and other communications relating to the application to the person associated with the correspondence address. For correspondence submitted via the Office's electronic filing system, however, an electronic acknowledgment receipt will be sent to the submitter. The Office will generally 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, the Office will select one of the specified addresses for use as the correspondence address and, if given, may 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 by the parties set forth in paragraph (b)(1) or (b)(3) of this section. Prior to the appointment of any power of attorney under § 1.32(b), the correspondence address may also be changed by any patent practitioner named in the application transmittal papers who acts in a representative capacity under the provisions of § 1.34.
  • (b) Amendments and other papers. Amendments and other papers, except for written assertions pursuant to § 1.27(c)(2)(iii) or (c)(2)(iv), filed in the application must be signed by:
    • (1) A patent practitioner of record;
    • (2) A patent practitioner not of record who acts in a representative capacity under the provisions of § 1.34; or
    • (3) The applicant (§ 1.42 ). Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.

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  • (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.
  • (f) Where application papers from a prior application are used in a continuing application and the correspondence address was changed during the prosecution of the prior application, an application data sheet or separate paper identifying the correspondence address to be used for the continuing application must be submitted. Otherwise, the Office may not recognize the change of correspondence address effected during the prosecution of the prior application.
  • (g) A patent practitioner acting in a representative capacity whose correspondence address is the correspondence address of record in an application may change the correspondence address after the patent has issued, provided that the change of correspondence address is accompanied by a statement that notice has been given to the patentee or owner.

37 CFR 1.33(a) provides that the application must specify a correspondence address to which the Office will send notice, letters, and other communications relating to an application. The correspondence address must either be in an application data sheet (37 CFR 1.76 ) or in a clearly identifiable manner elsewhere in any papers submitted with the application filing.

Applicants should provide clear instructions regarding the correspondence address. If more than one correspondence address is specified, whether in a single paper or in multiple papers, the Office will select one of the specified addresses for use as the correspondence address and, if given, may select the address associated with a Customer Number over a typed correspondence address. If an applicant provides multiple correspondence addresses in a single paper (e.g., providing both a typed correspondence address and a Customer Number in a single paper) or multiple papers (e.g., an oath or declaration, a transmittal letter, and a preliminary amendment that each includes a different correspondence address), and the Office does not select the correspondence address actually desired by applicant, the Office will not re-mail papers to the desired address. Note however that the hierarchy provided in 37 CFR 1.76(d) for inconsistencies between an application data sheet and other documents governs. Accordingly, if the ADS includes a typed correspondence address, and the declaration submitted at the same time gives a different address (e.g., the address associated with a Customer Number) as the correspondence address, the Office will use the typed correspondence address as included on the ADS. After the correspondence address has been entered according to the above procedure, it will only be changed pursuant to 37 CFR 1.33(a).

For applications submitted via the Office’s electronic filing system, although an electronic acknowledgment receipt will be sent to the submitter, a correspondence address must still set be forth in either an application data sheet (37 CFR 1.76 ) or in a clearly identifiable manner elsewhere in any papers submitted with the application filing.

The submission of a daytime telephone number of the party to whom correspondence is to be addressed is requested pursuant to 37 CFR 1.33(a). While business is to be conducted on the written record (37 CFR 1.2 ), a daytime telephone number is useful in initiating contact that could later be reduced to writing. Any party who may change the correspondence address may also change the telephone number.

37 CFR 1.33(a) specifies that the correspondence address may be changed by the parties set forth in 37 CFR 1.33(b)(1) (a patent practitioner of record) or 37 CFR 1.33(b)(3) (the applicant under 37 CFR 1.42 ). 37 CFR 1.33(a) also provides that prior to the appointment of any power of attorney under 37 CFR 1.32(b), the correspondence address may be changed by any patent practitioner named in the application transmittal papers who acts in a representative capacity under the provisions of 37 CFR 1.34.

Prior to the appointment of any power of attorney, if a patent practitioner (i.e., registered attorney or agent) filed the application, any other patent practitioners named in the transmittal papers may also change the correspondence address. A patent practitioner named in a letterhead would not be considered as being named in the transmittal papers for purposes of changing the correspondence address. A clear identification of the individual as a representative is required. If an application is filed by a company to whom the invention has been assigned or to whom there is an obligation to assign the invention, a person (other than a patent practitioner) who has the authority to act on behalf of the company may not change the correspondence address, as all papers signed on behalf of a juristic entity must be signed by a patent practitioner.

The correspondence address will not be changed by filing a paper (such as an application data sheet) which includes a correspondence address which is different from the correspondence address of record if the paper does not clearly identify that an address change is being made.

37 CFR 1.33(e) provides that 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 37 CFR 11.11.

37 CFR 1.33(f) provides that where application papers (e.g., the inventor’s oath or declaration) from a prior application are used in a continuing application and the correspondence address was changed during the prosecution of the prior application, an application data sheet or separate paper identifying the correspondence address to be used for the continuing application must be submitted. If not submitted, the Office may not recognize the change of correspondence address effected during the prosecution of the prior application and correspondence may be mailed to a previously designated correspondence address.

37 CFR 1.33(g) provides that a practitioner acting in a representative capacity whose correspondence address is the correspondence address of record in an application may change the correspondence address after the patent has issued, provided that the change of correspondence address is accompanied by a statement that notice has been given to the patentee or owner. 37 CFR 1.33(g) provides a means for practitioners acting in a representative capacity in an application to effect a change in correspondence address after the patent has granted but does not provide authority to a practitioner acting under 37 CFR 1.34 to change the correspondence address in an application. See 37 CFR 1.33(a).

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