MPEP § 403.01(b) — Correspondence in Applications Filed Before September 16, 2012 (Annotated Rules)

§403.01(b) Correspondence in Applications Filed Before September 16, 2012

USPTO MPEP version: BlueIron's Update: 2025-12-31

This page consolidates and annotates all enforceable requirements under MPEP § 403.01(b), including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.

Correspondence in Applications Filed Before September 16, 2012

This section addresses Correspondence in Applications Filed Before September 16, 2012. Primary authority: 37 CFR 1.76, 37 CFR 1.76(b)(1), and 37 CFR 1.33. Contains: 4 requirements, 1 prohibition, 1 guidance statement, 9 permissions, and 6 other statements.

Key Rules

Topic

Correspondence Address Requirements

19 rules
StatutoryInformativeAlways
[mpep-403-01-b-d8b06dcd66c44d835108ccd9]
Change Before Inventor Oath
Note:
The correspondence address may be changed before any inventor files the §1.63 oath or declaration.

(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, 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 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 (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.

Jump to MPEP Source · 37 CFR 1.76Correspondence Address RequirementsAIA vs Pre-AIA PracticeCorrespondence Address
StatutoryPermittedAlways
[mpep-403-01-b-9c8adc84da5d4b01f54e5f45]
Change Before Oath Filing
Note:
The correspondence address may be changed by the party who filed the application before any inventors file a § 1.63 oath or declaration.

(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, 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 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 (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.

Jump to MPEP Source · 37 CFR 1.76Correspondence Address RequirementsCorrespondence with the OfficeCorrespondence Address
StatutoryInformativeAlways
[mpep-403-01-b-3c7db5c82dc182c5f7e81ea6]
Change of Correspondence Address After Oath Filing
Note:
Allows changing the correspondence address after an inventor files an oath or declaration.

(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, 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 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:

(2) Where a § 1.63 oath or declaration has been filed by any of the inventors.

Jump to MPEP Source · 37 CFR 1.76Correspondence Address RequirementsAIA vs Pre-AIA PracticeCorrespondence Address
StatutoryPermittedAlways
[mpep-403-01-b-f2265edb717a8f1880a6ae13]
Oath Filing Allows Correspondence Address Change
Note:
Allows parties to change the correspondence address after filing an oath or declaration by any of the inventors, except for paragraph (b)(2).

(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, 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 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:

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).

Jump to MPEP Source · 37 CFR 1.76Correspondence Address RequirementsCorrespondence with the OfficeCorrespondence Address
StatutoryPermittedAlways
[mpep-403-01-b-8a0137b34d3ceff9aecc6b9c]
Changeable During Patent Life
Note:
A correspondence address can be updated with the Patent and Trademark Office at any time during a patent's enforceable life.

(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.

Jump to MPEP Source · 37 CFR 1.363Correspondence Address RequirementsCorrespondence with the OfficeCorrespondence Address
StatutoryInformativeAlways
[mpep-403-01-b-a3fc091fd95bcbfcebb8274e]
Correspondence Address for Maintenance Fees
Note:
The correspondence address will be used for maintenance fee communications unless a separate fee address is specified.

(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.

Jump to MPEP Source · 37 CFR 1.363Correspondence Address RequirementsPost-Issuance & Maintenance FeesCorrespondence with the Office
StatutoryInformativeAlways
[mpep-403-01-b-09df4a70412f6561ca734c8f]
Change of Address Does Not Affect Patent Practitioner’s Roster Address
Note:
A change of address filed in a patent application or patent does not update the address for a patent practitioner listed in the roster of attorneys and agents.

(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.

Jump to MPEP Source · 37 CFR 11.11Correspondence Address RequirementsCorrespondence AddressPractitioner Recognition and Conduct
StatutoryRequiredAlways
[mpep-403-01-b-e27fdc41ff65b34fc9469de2]
Correspondence Address Requirement for Filing
Note:
The applicant must specify a clearly identifiable correspondence address in the application data sheet or other submitted papers.

Pre-AIA 37 CFR 1.33(a) provides that when filing 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 pre-AIA 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: (A) application data sheet (ADS); (B) application transmittal; (C) oath or declaration (unless power of attorney is more current); and (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.

Jump to MPEP Source · 37 CFR 1.33(a)Correspondence Address RequirementsCorrespondence with the OfficeCorrespondence Address
StatutoryInformativeAlways
[mpep-403-01-b-a8cfa120641cbf4965f25f0c]
Daytime Telephone Number Required for Correspondence
Note:
The rule requires the submission of a daytime telephone number for the party to whom correspondence is addressed in patent applications filed before September 16, 2012.

Pre-AIA 37 CFR 1.33(a) requests the submission of a daytime telephone number of the party to whom correspondence is to be addressed. While business is to be conducted on the written record (37 CFR 1.2), a daytime telephone number would be useful in initiating contact that could later be reduced to writing. The telephone number would be changeable by any party who could change the correspondence address.

Jump to MPEP Source · 37 CFR 1.33(a)Correspondence Address RequirementsCorrespondence with the OfficeCorrespondence Address
StatutoryInformativeAlways
[mpep-403-01-b-a8bcd24fdb0f0342c91f191c]
Daytime Telephone Number Requirement for Correspondence
Note:
A daytime telephone number is required to facilitate initial contact that can later be documented in writing.

Pre-AIA 37 CFR 1.33(a) requests the submission of a daytime telephone number of the party to whom correspondence is to be addressed. While business is to be conducted on the written record (37 CFR 1.2), a daytime telephone number would be useful in initiating contact that could later be reduced to writing. The telephone number would be changeable by any party who could change the correspondence address.

Jump to MPEP Source · 37 CFR 1.33(a)Correspondence Address RequirementsCorrespondence with the OfficeCorrespondence Address
StatutoryInformativeAlways
[mpep-403-01-b-5dcc3cb8508afdceaa8d2bf9]
Telephone Number Can Be Changed With Address Modification
Note:
The daytime telephone number for correspondence can be changed by any party who modifies the correspondence address.

Pre-AIA 37 CFR 1.33(a) requests the submission of a daytime telephone number of the party to whom correspondence is to be addressed. While business is to be conducted on the written record (37 CFR 1.2), a daytime telephone number would be useful in initiating contact that could later be reduced to writing. The telephone number would be changeable by any party who could change the correspondence address.

Jump to MPEP Source · 37 CFR 1.33(a)Correspondence Address RequirementsCorrespondence with the OfficeCorrespondence Address
StatutoryPermittedAlways
[mpep-403-01-b-5b3ec8b8117c32c26400ce95]
Only Joint Inventor Can Change Address
Note:
A joint inventor who filed an application is the only one permitted to change the correspondence address, even if other inventors are listed on the transmittal letter.

Pre-AIA 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 pre-AIA 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) pre-AIA 37 CFR 1.63 oath/declaration is filed. The mere filing of a pre-AIA 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 pre-AIA 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 pre-AIA 37 CFR 3.73 (b) until an executed oath or declaration is filed, and with resort to pre-AIA 37 CFR 3.73(b) after the oath or declaration is filed.

Jump to MPEP Source · 37 CFR 1.33(a)(1)Correspondence Address RequirementsCorrespondence with the OfficeCorrespondence Address
StatutoryInformativeAlways
[mpep-403-01-b-185b6f6b7166b3d6dcb115c8]
Two Inventors Must Change Correspondence Address
Note:
If two of three inventors file an application, they must change the correspondence address. A registered practitioner or assignee representative can also make changes.

Pre-AIA 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 pre-AIA 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) pre-AIA 37 CFR 1.63 oath/declaration is filed. The mere filing of a pre-AIA 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 pre-AIA 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 pre-AIA 37 CFR 3.73 (b) until an executed oath or declaration is filed, and with resort to pre-AIA 37 CFR 3.73(b) after the oath or declaration is filed.

Jump to MPEP Source · 37 CFR 1.33(a)(1)Correspondence Address RequirementsCorrespondence with the OfficeCorrespondence Address
StatutoryInformativeAlways
[mpep-403-01-b-cb80f68e8c17b59e1f3506ce]
Requirement for Reexamination Communication Address
Note:
Patent owners must provide an address where communications regarding reexamination proceedings will be sent.

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

Jump to MPEP Source · 37 CFR 1.33(c)Correspondence Address RequirementsCorrespondence AddressAIA vs Pre-AIA Practice
StatutoryPermittedAlways
[mpep-403-01-b-27fb7a349f5a82a6e1ee99af]
Firms Cannot Have Powers of Attorney but Can Use Their Address for Correspondence
Note:
The U.S. Patent and Trademark Office does not recognize powers of attorney to firms, but the firm’s address can be used as the correspondence address.

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. The address should appear as follows:

Jump to MPEP Source · 37 CFR 1.33Correspondence Address RequirementsCorrespondence with the OfficeCorrespondence Address
StatutoryRecommendedAlways
[mpep-403-01-b-e6cafb8c8d30a041bb879563]
Firm’s Address May Be Used for Correspondence
Note:
The U.S. Patent and Trademark Office does not recognize powers of attorney to firms, but the firm’s address can be used for correspondence if specified.

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. The address should appear as follows:

Jump to MPEP Source · 37 CFR 1.33Correspondence Address RequirementsCorrespondence AddressCorrespondence with the Office
StatutoryRequiredAlways
[mpep-403-01-b-7ac5121bc30d4ad9a65f9ec9]
Attorney and Agent Roster Must Be Updated Separately
Note:
Patent practitioners must update the attorney and agent roster independently of any address changes filed in individual patent applications.

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.

Jump to MPEP Source · 37 CFR 1.33Correspondence Address RequirementsCorrespondence AddressAIA vs Pre-AIA Practice
StatutoryInformativeAlways
[mpep-403-01-b-ead98783d69398dfa1eebce7]
Requirement for Changing Correspondence Address
Note:
The rule requires applicants to follow the procedures outlined in MPEP § 601.03 when changing their correspondence address for patent applications.

See MPEP § 601.03 for change of correspondence address.

Jump to MPEP Source · 37 CFR 1.33Correspondence Address RequirementsCorrespondence with the OfficeCorrespondence Address
StatutoryInformativeAlways
[mpep-403-01-b-177d581b004bb05f913af69d]
Change of Correspondence Address for Continuation/Divisional Applications
Note:
This rule outlines the requirements for changing the correspondence address in continuation or divisional patent applications filed under 37 CFR 1.53(b).

See MPEP § 201.06(c) regarding change of correspondence address in continuation or divisional applications filed under 37 CFR 1.53(b).

Jump to MPEP Source · 37 CFR 1.53(b)Correspondence Address RequirementsCorrespondence with the OfficeCorrespondence Address
Topic

AIA Oath/Declaration Requirements (37 CFR 1.63)

6 rules
StatutoryInformativeAlways
[mpep-403-01-b-9bc9564b19ba9a656caf3a30]
Office Will Select Correspondence Address
Note:
The Office will choose one of the specified correspondence addresses for communication purposes, resolving any conflicts between different addresses provided in various documents.

Pre-AIA 37 CFR 1.33(a) provides that when filing 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 pre-AIA 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: (A) application data sheet (ADS); (B) application transmittal; (C) oath or declaration (unless power of attorney is more current); and (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.

Jump to MPEP Source · 37 CFR 1.33(a)AIA Oath/Declaration Requirements (37 CFR 1.63)Pre-AIA Oath/Declaration RequirementsInventor's Oath/Declaration Requirements
StatutoryInformativeAlways
[mpep-403-01-b-4a483e253588f71810893de0]
Change of Correspondence Address Before Oath/Declaration
Note:
Allows changing the correspondence address before a pre-AIA 37 CFR 1.63 oath/declaration is submitted, with certain conditions.

Pre-AIA 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 pre-AIA 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) pre-AIA 37 CFR 1.63 oath/declaration is filed. The mere filing of a pre-AIA 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 pre-AIA 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 pre-AIA 37 CFR 3.73 (b) until an executed oath or declaration is filed, and with resort to pre-AIA 37 CFR 3.73(b) after the oath or declaration is filed.

Jump to MPEP Source · 37 CFR 1.33(a)(1)AIA Oath/Declaration Requirements (37 CFR 1.63)Pre-AIA Oath/Declaration RequirementsInventor's Oath/Declaration Requirements
StatutoryRequiredAlways
[mpep-403-01-b-86d4c59e4635be565f46b831]
Requirement for Clear Representative Identification
Note:
A registered practitioner must be clearly identified as a representative, not just named on a letterhead, to change the correspondence address.

Pre-AIA 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 pre-AIA 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) pre-AIA 37 CFR 1.63 oath/declaration is filed. The mere filing of a pre-AIA 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 pre-AIA 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 pre-AIA 37 CFR 3.73 (b) until an executed oath or declaration is filed, and with resort to pre-AIA 37 CFR 3.73(b) after the oath or declaration is filed.

Jump to MPEP Source · 37 CFR 1.33(a)(1)AIA Oath/Declaration Requirements (37 CFR 1.63)Pre-AIA Oath/Declaration RequirementsEstablishing Ownership
StatutoryPermittedAlways
[mpep-403-01-b-59c538f09f09a060648239f1]
Company Can Change Address Until Oath/Declaration Filed
Note:
A company filing an application can change the correspondence address until a pre-AIA 37 CFR 1.63 oath or declaration is submitted.

Pre-AIA 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 pre-AIA 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) pre-AIA 37 CFR 1.63 oath/declaration is filed. The mere filing of a pre-AIA 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 pre-AIA 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 pre-AIA 37 CFR 3.73 (b) until an executed oath or declaration is filed, and with resort to pre-AIA 37 CFR 3.73(b) after the oath or declaration is filed.

Jump to MPEP Source · 37 CFR 1.33(a)(1)AIA Oath/Declaration Requirements (37 CFR 1.63)Pre-AIA Oath/Declaration RequirementsInventor's Oath/Declaration Requirements
StatutoryInformativeAlways
[mpep-403-01-b-2b8de3d719ed1ff632877714]
Oath/Declaration Does Not Affect Established Address
Note:
The filing of a pre-AIA oath/declaration without an address does not change the correspondence address previously established or changed by inventors or assignees.

Pre-AIA 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 pre-AIA 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) pre-AIA 37 CFR 1.63 oath/declaration is filed. The mere filing of a pre-AIA 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 pre-AIA 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 pre-AIA 37 CFR 3.73 (b) until an executed oath or declaration is filed, and with resort to pre-AIA 37 CFR 3.73(b) after the oath or declaration is filed.

Jump to MPEP Source · 37 CFR 1.33(a)(1)AIA Oath/Declaration Requirements (37 CFR 1.63)Pre-AIA Oath/Declaration RequirementsInventor's Oath/Declaration Requirements
StatutoryPermittedAlways
[mpep-403-01-b-876ef1eb6a6cdeb622f557ce]
Correspondence Address Remains After Oath/Declaration
Note:
A correspondence address set before filing an oath or declaration remains effective and can only be changed after the declaration.

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

Jump to MPEP Source · 37 CFR 1.33(a)(1)AIA Oath/Declaration Requirements (37 CFR 1.63)Pre-AIA Oath/Declaration RequirementsInventor's Oath/Declaration Requirements
Topic

Assignee as Applicant Signature

5 rules
StatutoryPermittedAlways
[mpep-403-01-b-1003b8b94b4e57c81d1edb97]
Patent Practitioner Can Change Correspondence Address
Note:
A patent practitioner who filed an application can change the correspondence address, along with any other named practitioners or assignees.

(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, 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 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 (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.

Jump to MPEP Source · 37 CFR 1.76Assignee as Applicant SignatureCorrespondence Address RequirementsCorrespondence with the Office
StatutoryPermittedAlways
[mpep-403-01-b-b4a31f21bbca7b909a019796]
Applicant Must Provide Address for Correspondence
Note:
The rule requires applicants to provide an address where the U.S. Patent and Trademark Office can send correspondence, such as a corporate patent department or individual attorney.

Pre-AIA 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.

Jump to MPEP Source · 37 CFR 1.33(a)Assignee as Applicant SignatureApplicant and Assignee Filing Under AIACorrespondence Address Requirements
StatutoryRequiredAlways
[mpep-403-01-b-5c4506f46d1328c7f4017389]
Requirement for Specifying Correspondence Address
Note:
The applicant must specify a correspondence address where the Office will send all communications related to the patent application.

Pre-AIA 37 CFR 1.33(a) provides that when filing 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 pre-AIA 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: (A) application data sheet (ADS); (B) application transmittal; (C) oath or declaration (unless power of attorney is more current); and (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.

Jump to MPEP Source · 37 CFR 1.33(a)Assignee as Applicant SignatureApplicant and Assignee Filing Under AIACorrespondence Address Requirements
StatutoryInformativeAlways
[mpep-403-01-b-6816e0fad8635962de95b08d]
First Named Applicant Receives Correspondence
Note:
In a joint application without power of attorney, the first named applicant receives all correspondence unless otherwise specified.

In a joint application with no power of attorney to either a registered practitioner or joint inventor, 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 §§ 402 and 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.

Jump to MPEP Source · 37 CFR 1.33Assignee as Applicant SignatureApplicant and Assignee Filing Under AIACorrespondence with the Office
StatutoryPermittedAlways
[mpep-403-01-b-8be6d569a53fb3968ef68e97]
Assignee May Specify Correspondence Address When Prosecuting Application
Note:
If the assignee of the entire interest is prosecuting the application, they may specify a correspondence address.

In a joint application with no power of attorney to either a registered practitioner or joint inventor, 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 §§ 402 and 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.

Jump to MPEP Source · 37 CFR 1.33Assignee as Applicant SignatureApplicant and Assignee Filing Under AIACorrespondence Address Requirements
Topic

Correspondence Signature Requirements

3 rules
StatutoryInformativeAlways
[mpep-403-01-b-a9182a3322342c726abb1eee]
Notices and Communications to Correspondence Address
Note:
All notices, official letters, and other communications for patent owners in a reexamination proceeding must be directed to the correspondence address.

(c) All notices, official letters, and other communications for the patent owner or owners in a reexamination proceeding will be directed to the correspondence address. 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.

Jump to MPEP Source · 37 CFR 1.34Correspondence Signature RequirementsCorrespondence Address RequirementsCorrespondence with the Office
StatutoryRequiredAlways
[mpep-403-01-b-005b0a708eeb5325870641df]
Signature Required for Amendments in Reexamination
Note:
All amendments and other papers filed on behalf of the patent owner in a reexamination proceeding must be signed by the patent owner, all owners collectively, an attorney or agent of record, or a registered attorney or agent acting in a representative capacity.

(c) All notices, official letters, and other communications for the patent owner or owners in a reexamination proceeding will be directed to the correspondence address. 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.

Jump to MPEP Source · 37 CFR 1.34Correspondence Signature RequirementsDocuments Requiring SignatureSignature Requirements
StatutoryInformativeAlways
[mpep-403-01-b-0f46f5f7f6bf674f66794674]
Double Correspondence Not Allowed With Patent Owner
Note:
Do not communicate with the patent owner and their attorney or agent separately. Only one point of contact is permitted.

(c) All notices, official letters, and other communications for the patent owner or owners in a reexamination proceeding will be directed to the correspondence address. 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.

Jump to MPEP Source · 37 CFR 1.34Correspondence Signature RequirementsCorrespondence with the OfficeCorrespondence Address Requirements
Topic

Inventor's Oath/Declaration Requirements

2 rules
StatutoryInformativeAlways
[mpep-403-01-b-d75aa2e5d073a88368c56134]
Selection of Correspondence Address for Patent Applications
Note:
The Office will choose the correspondence address to use based on a specific order: application data sheet, application transmittal, oath or declaration (unless power of attorney is more current), and power of attorney.

Pre-AIA 37 CFR 1.33(a) provides that when filing 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 pre-AIA 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: (A) application data sheet (ADS); (B) application transmittal; (C) oath or declaration (unless power of attorney is more current); and (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.

Jump to MPEP Source · 37 CFR 1.33(a)Inventor's Oath/Declaration RequirementsCorrespondence with the OfficePower of Attorney Requirements
StatutoryProhibitedAlways
[mpep-403-01-b-e6cc65a7f8442dfbbe8e7d7a]
Inventor's Oath/Declaration Required for Address Changes
Note:
Before filing a declaration, inventors can't change the correspondence address unless it is filed by the party that will be the assignee.

Pre-AIA 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 pre-AIA 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) pre-AIA 37 CFR 1.63 oath/declaration is filed. The mere filing of a pre-AIA 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 pre-AIA 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 pre-AIA 37 CFR 3.73 (b) until an executed oath or declaration is filed, and with resort to pre-AIA 37 CFR 3.73(b) after the oath or declaration is filed.

Jump to MPEP Source · 37 CFR 1.33(a)(1)Inventor's Oath/Declaration RequirementsAIA Oath/Declaration Requirements (37 CFR 1.63)Pre-AIA Oath/Declaration Requirements
Topic

Identifying the Application

1 rules
StatutoryRequiredAlways
[mpep-403-01-b-e7e97b7bb04f6c71ffd1b15c]
Requirement for Correspondence Address and Daytime Telephone Number
Note:
The rule requires setting a clearly identifiable correspondence address and daytime telephone number in application filings, with the Office using these details to communicate with applicants.
(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, 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 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:
  • (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.
  • (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).
Jump to MPEP Source · 37 CFR 1.76Identifying the ApplicationAssignee as Applicant SignatureApplicant and Assignee Filing Under AIA
Topic

POA Form Requirements

1 rules
StatutoryRequiredAlways
[mpep-403-01-b-9b9b6c374e62f2ed84b104e8]
Signatures for Amendments and Other Papers Required
Note:
Amendments and other papers filed in applications must be signed by a patent practitioner, a representative, an assignee, or all applicants, unless there is an assignee of the entire interest who has taken action.
(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:
  • (1) A patent practitioner of record appointed in compliance with § 1.32(b);
  • (2) A patent practitioner not of record who acts in a representative capacity under the provisions of § 1.34;
  • (3) An assignee as provided for under § 3.71(b) of this chapter; or
  • (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.
Jump to MPEP Source · 37 CFR 1.27(c)(2)(ii)POA Form RequirementsCorrespondence Signature RequirementsDocuments Requiring Signature
Topic

POA via Customer Number

1 rules
StatutoryInformativeAlways
[mpep-403-01-b-74a3da451fffee6034a06785]
Customer Number Over Typed Address
Note:
When multiple addresses are specified in a single document, the Office selects the address associated with a Customer Number over a typed correspondence address.

Pre-AIA 37 CFR 1.33(a) provides that when filing 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 pre-AIA 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: (A) application data sheet (ADS); (B) application transmittal; (C) oath or declaration (unless power of attorney is more current); and (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.

Jump to MPEP Source · 37 CFR 1.33(a)POA via Customer NumberCorrespondence Address RequirementsCustomer Number Practice
Topic

Establishing Ownership

1 rules
StatutoryInformativeAlways
[mpep-403-01-b-469c91b7d2e2c60e741e6d04]
XYZ Company Can Change Address Until Oath Filed
Note:
XYZ company can change the correspondence address for an application filed on its behalf until an executed oath or declaration is submitted, after which it must follow pre-AIA 37 CFR 3.73(b).

Pre-AIA 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 pre-AIA 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) pre-AIA 37 CFR 1.63 oath/declaration is filed. The mere filing of a pre-AIA 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 pre-AIA 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 pre-AIA 37 CFR 3.73 (b) until an executed oath or declaration is filed, and with resort to pre-AIA 37 CFR 3.73(b) after the oath or declaration is filed.

Jump to MPEP Source · 37 CFR 1.33(a)(1)Establishing OwnershipInventor's Oath/Declaration RequirementsAssignee Rights to Take Action (MPEP 324-325)
Topic

POA for Joint Applicants

1 rules
StatutoryRequiredAlways
[mpep-403-01-b-4ba0a77e52b74bccdcdcd710]
All Applicants Must Sign Reponses
Note:
All applicants in a joint application must sign any replies, unless otherwise specified.

In a joint application with no power of attorney to either a registered practitioner or joint inventor, 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 §§ 402 and 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.

Jump to MPEP Source · 37 CFR 1.33POA for Joint ApplicantsCorrespondence Address RequirementsAIA vs Pre-AIA Practice

Citations

Primary topicCitation
Correspondence Address Requirements37 CFR § 1.2
POA Form Requirements37 CFR § 1.27(c)(2)(ii)
POA Form Requirements37 CFR § 1.32(b)
AIA Oath/Declaration Requirements (37 CFR 1.63)
Assignee as Applicant Signature
Correspondence Address Requirements
Inventor's Oath/Declaration Requirements
POA via Customer Number
37 CFR § 1.33(a)
AIA Oath/Declaration Requirements (37 CFR 1.63)
Correspondence Address Requirements
Establishing Ownership
Inventor's Oath/Declaration Requirements
37 CFR § 1.33(a)(1)
AIA Oath/Declaration Requirements (37 CFR 1.63)37 CFR § 1.33(a)(2)
Correspondence Address Requirements37 CFR § 1.33(c)
Correspondence Signature Requirements
POA Form Requirements
37 CFR § 1.34
Correspondence Address Requirements37 CFR § 1.363
POA Form Requirements37 CFR § 1.41(b)
Correspondence Address Requirements37 CFR § 1.53(b)
AIA Oath/Declaration Requirements (37 CFR 1.63)
Assignee as Applicant Signature
Correspondence Address Requirements
Establishing Ownership
Identifying the Application
Inventor's Oath/Declaration Requirements
POA via Customer Number
37 CFR § 1.63
AIA Oath/Declaration Requirements (37 CFR 1.63)
Correspondence Address Requirements
Establishing Ownership
Inventor's Oath/Declaration Requirements
37 CFR § 1.63(a)(1)
AIA Oath/Declaration Requirements (37 CFR 1.63)
Assignee as Applicant Signature
Correspondence Address Requirements
Identifying the Application
Inventor's Oath/Declaration Requirements
POA via Customer Number
37 CFR § 1.76
Assignee as Applicant Signature
Correspondence Address Requirements
Identifying the Application
37 CFR § 1.76(b)(1)
Correspondence Address Requirements37 CFR § 11.11
POA Form Requirements37 CFR § 3.71
POA Form Requirements37 CFR § 3.71(b)
AIA Oath/Declaration Requirements (37 CFR 1.63)
Correspondence Address Requirements
Establishing Ownership
Inventor's Oath/Declaration Requirements
37 CFR § 3.73
AIA Oath/Declaration Requirements (37 CFR 1.63)
Correspondence Address Requirements
Establishing Ownership
Inventor's Oath/Declaration Requirements
37 CFR § 3.73(b)
Correspondence Address RequirementsMPEP § 201.06(c)
Correspondence Address RequirementsMPEP § 2224
Assignee as Applicant Signature
Correspondence Address Requirements
POA for Joint Applicants
MPEP § 402
Assignee as Applicant Signature
POA for Joint Applicants
MPEP § 402.07
Correspondence Address RequirementsMPEP § 601.03

Source Text from USPTO’s MPEP

This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.

BlueIron Last Updated: 2025-12-31