MPEP § 2264 — Mailing of Office Action (Annotated Rules)
§2264 Mailing of Office Action
This page consolidates and annotates all enforceable requirements under MPEP § 2264, 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.
Mailing of Office Action
This section addresses Mailing of Office Action. Primary authority: 37 CFR 1.33(a). Contains: 1 requirement, 5 permissions, and 3 other statements.
Key Rules
Correspondence Address Requirements
Ex parte reexamination forms are structured so that the identifying information for the reexamination file and the correspondence address for the patent owner, which is the official correspondence address of record in the file of the patent requested to be reexamined, can be printed on the forms. Usually, the official correspondence address of the patent owner, which is of record in the file of the patent, is the mailing address of the patent owner's legal representative. If there is no official correspondence address of record in the patent file, the Office may treat the mailing address of the patent owner as the correspondence address. Where there are multiple patent owners, the Office may treat the mailing address of the first named patent owner of record as the correspondence address of the patent owner. The Office will not engage in double correspondence with more than one patent owner. See 37 CFR 1.33(a). Copies of Office actions may be obtained by accessing Patent Center at the Office's website www.uspto.gov.
Ex parte reexamination forms are structured so that the identifying information for the reexamination file and the correspondence address for the patent owner, which is the official correspondence address of record in the file of the patent requested to be reexamined, can be printed on the forms. Usually, the official correspondence address of the patent owner, which is of record in the file of the patent, is the mailing address of the patent owner's legal representative. If there is no official correspondence address of record in the patent file, the Office may treat the mailing address of the patent owner as the correspondence address. Where there are multiple patent owners, the Office may treat the mailing address of the first named patent owner of record as the correspondence address of the patent owner. The Office will not engage in double correspondence with more than one patent owner. See 37 CFR 1.33(a). Copies of Office actions may be obtained by accessing Patent Center at the Office's website www.uspto.gov.
Ex parte reexamination forms are structured so that the identifying information for the reexamination file and the correspondence address for the patent owner, which is the official correspondence address of record in the file of the patent requested to be reexamined, can be printed on the forms. Usually, the official correspondence address of the patent owner, which is of record in the file of the patent, is the mailing address of the patent owner's legal representative. If there is no official correspondence address of record in the patent file, the Office may treat the mailing address of the patent owner as the correspondence address. Where there are multiple patent owners, the Office may treat the mailing address of the first named patent owner of record as the correspondence address of the patent owner. The Office will not engage in double correspondence with more than one patent owner. See 37 CFR 1.33(a). Copies of Office actions may be obtained by accessing Patent Center at the Office's website www.uspto.gov.
Ex parte reexamination forms are structured so that the identifying information for the reexamination file and the correspondence address for the patent owner, which is the official correspondence address of record in the file of the patent requested to be reexamined, can be printed on the forms. Usually, the official correspondence address of the patent owner, which is of record in the file of the patent, is the mailing address of the patent owner's legal representative. If there is no official correspondence address of record in the patent file, the Office may treat the mailing address of the patent owner as the correspondence address. Where there are multiple patent owners, the Office may treat the mailing address of the first named patent owner of record as the correspondence address of the patent owner. The Office will not engage in double correspondence with more than one patent owner. See 37 CFR 1.33(a). Copies of Office actions may be obtained by accessing Patent Center at the Office's website www.uspto.gov.
Ex parte reexamination forms are structured so that the identifying information for the reexamination file and the correspondence address for the patent owner, which is the official correspondence address of record in the file of the patent requested to be reexamined, can be printed on the forms. Usually, the official correspondence address of the patent owner, which is of record in the file of the patent, is the mailing address of the patent owner's legal representative. If there is no official correspondence address of record in the patent file, the Office may treat the mailing address of the patent owner as the correspondence address. Where there are multiple patent owners, the Office may treat the mailing address of the first named patent owner of record as the correspondence address of the patent owner. The Office will not engage in double correspondence with more than one patent owner. See 37 CFR 1.33(a). Copies of Office actions may be obtained by accessing Patent Center at the Office's website www.uspto.gov.
Ex parte reexamination forms are structured so that the identifying information for the reexamination file and the correspondence address for the patent owner, which is the official correspondence address of record in the file of the patent requested to be reexamined, can be printed on the forms. Usually, the official correspondence address of the patent owner, which is of record in the file of the patent, is the mailing address of the patent owner's legal representative. If there is no official correspondence address of record in the patent file, the Office may treat the mailing address of the patent owner as the correspondence address. Where there are multiple patent owners, the Office may treat the mailing address of the first named patent owner of record as the correspondence address of the patent owner. The Office will not engage in double correspondence with more than one patent owner. See 37 CFR 1.33(a). Copies of Office actions may be obtained by accessing Patent Center at the Office's website www.uspto.gov.
Interviews in Reexamination
All actions in a third party requester ex parte reexamination will have a copy mailed to the third party requester. A transmittal form PTOL-465 must be used in providing the third party requester with a copy of each Office action. If there are more than one third party requester for a single request, and if a third party requester has not designated the mailing address of a registered patent practitioner as the correspondence address for the requester, the Office may treat the mailing address of the first named third party requester as the correspondence address for the third party requester.
All actions in a third party requester ex parte reexamination will have a copy mailed to the third party requester. A transmittal form PTOL-465 must be used in providing the third party requester with a copy of each Office action. If there are more than one third party requester for a single request, and if a third party requester has not designated the mailing address of a registered patent practitioner as the correspondence address for the requester, the Office may treat the mailing address of the first named third party requester as the correspondence address for the third party requester.
All actions in a third party requester ex parte reexamination will have a copy mailed to the third party requester. A transmittal form PTOL-465 must be used in providing the third party requester with a copy of each Office action. If there are more than one third party requester for a single request, and if a third party requester has not designated the mailing address of a registered patent practitioner as the correspondence address for the requester, the Office may treat the mailing address of the first named third party requester as the correspondence address for the third party requester.
Citations
| Primary topic | Citation |
|---|---|
| Correspondence Address Requirements | 37 CFR § 1.33(a) |
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.
Official MPEP § 2264 — Mailing of Office Action
Source: USPTO2264 Mailing of Office Action [R-07.2022]
Ex parte reexamination forms are structured so that the identifying information for the reexamination file and the correspondence address for the patent owner, which is the official correspondence address of record in the file of the patent requested to be reexamined, can be printed on the forms. Usually, the official correspondence address of the patent owner, which is of record in the file of the patent, is the mailing address of the patent owner’s legal representative. If there is no official correspondence address of record in the patent file, the Office may treat the mailing address of the patent owner as the correspondence address. Where there are multiple patent owners, the Office may treat the mailing address of the first named patent owner of record as the correspondence address of the patent owner. The Office will not engage in double correspondence with more than one patent owner. See 37 CFR 1.33(a). Copies of Office actions may be obtained by accessing Patent Center at the Office’s website www.uspto.gov.
All actions in a third party requester ex parte reexamination will have a copy mailed to the third party requester. A transmittal form PTOL-465 must be used in providing the third party requester with a copy of each Office action. If there are more than one third party requester for a single request, and if a third party requester has not designated the mailing address of a registered patent practitioner as the correspondence address for the requester, the Office may treat the mailing address of the first named third party requester as the correspondence address for the third party requester.
A completed transmittal form PTOL-465 will be provided as needed for any third party requester, and the appropriate address will be entered on it. The number of transmittal forms provides a ready reference for the number of copies of each Office action to be made, and the transmittal form permits use of the window envelopes in mailing the copies of the action to parties other than the patent owner.