Q: What types of patent-related correspondence can be sent by facsimile to the USPTO?

According to MPEP 502.01 , various types of patent-related correspondence can be transmitted by facsimile to the USPTO, including: Continued Prosecution Applications (CPAs) filed under 37 CFR 1.53(d) (for design applications only) Amendments Declarations Petitions Information Disclosure Statements (IDS) Terminal disclaimers Notices of appeal and appeal briefs Requests for Continued Examination (RCEs) under 37 CFR 1.114 Assignment documents Issue fee transmittals Authorizations to charge deposit accounts The MPEP states: "37 CFR 1.6(d) specifies the types of correspondence which may be transmitted by facsimile." However, it's important to note that certain types of correspondence are prohibited from being sent by fax, as outlined in 37 CFR 1.6(d)(2)-(7). To learn more: facsimile transmission patent correspondence USPTO communication patent application

Q: What types of patent-related correspondence are prohibited from being sent by facsimile to the USPTO?

According to MPEP 502.01 , certain types of patent-related correspondence are prohibited from being sent by facsimile to the USPTO. These include: Documents required by statute to be certified (37 CFR 1.4(f)) National patent application specifications and drawings for obtaining a filing date (except for CPAs under 37 CFR 1.53(d)) International patent applications International design applications Documents for entering the national stage of an international application (37 CFR 1.495(b)) Third-party submissions under 37 CFR 1.290 Correspondence related to registration to practice before the USPTO in patent cases Color drawings (37 CFR 1.81, 1.83-1.85, 1.152, 1.165, 1.173, 1.437, or 1.1026) Requests for reexamination (37 CFR 1.510 or 37 CFR 1.913) Requests for supplemental examination (37 CFR 1.610) Correspondence for patent applications under secrecy orders (37 CFR 5.1-5.5) Most correspondence for contested cases or trials before the Patent Trial and Appeal Board The MPEP states: "As a courtesy, the Office will attempt to notify senders whenever correspondence is sent to the Office by facsimile transmission that falls within one of the prohibitions." However, it's crucial to avoid submitting prohibited correspondence by fax, as it will not be accorded a receipt date. To learn more: facsimile transmission prohibited correspondence USPTO communication patent application

Q: What should be included in an Examiner's Letter or Action?

According to MPEP 707 , an Examiner's Letter or Action should include: The Office Action Summary Form PTOL-326 Period set for reply Any attachments A 'Summary of Action' on all claims Notice of References Cited (PTO-892) Reasons for rejections or objections Useful information for judging the propriety of continuing prosecution The MPEP states, Information useful in judging the propriety of continuing the prosecution may include, for example, the identification and a brief discussion of the particular figure(s) of the drawing(s), and/or page(s) or paragraph(s) of the best reference(s) cited by the examiner, the applicant, or a foreign office. Additionally, In rejecting claims for want of novelty or for obviousness, the pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified. To learn more: Office Action Content Patent Examination Procedure USPTO Communication Rejection Explanation

Q: What is the purpose of an Examiner's Letter or Action?

An Examiner's Letter or Action, as described in MPEP 707 , serves to communicate the examiner's findings and decisions regarding a patent application. It includes: Information about the period set for reply Any attachments A 'Summary of Action' detailing the position taken on all claims Reasons for rejection or objection Useful information for judging the propriety of continuing prosecution As stated in the MPEP, In accordance with the patent statute, 'Whenever, on examination, any claim for a patent is rejected, or any objection . . . made,' notification of the reasons for rejection and/or objection together with such information and references as may be useful in judging the propriety of continuing the prosecution (35 U.S.C. 132) should be given. To learn more: Office Action Patent Examination USPTO Communication Rejection Notification

Question 1

What types of patent-related correspondence can be sent by facsimile to the USPTO?

Accepted Answer

According to MPEP 502.01, various types of patent-related correspondence can be transmitted by facsimile to the USPTO, including:

Continued Prosecution Applications (CPAs) filed under 37 CFR 1.53(d) (for design applications only)
Amendments
Declarations
Petitions
Information Disclosure Statements (IDS)
Terminal disclaimers
Notices of appeal and appeal briefs
Requests for Continued Examination (RCEs) under 37 CFR 1.114
Assignment documents
Issue fee transmittals
Authorizations to charge deposit accounts

The MPEP states: "37 CFR 1.6(d) specifies the types of correspondence which may be transmitted by facsimile." However, it's important to note that certain types of correspondence are prohibited from being sent by fax, as outlined in 37 CFR 1.6(d)(2)-(7).

To learn more:

Question 2

What types of patent-related correspondence are prohibited from being sent by facsimile to the USPTO?

Accepted Answer

According to MPEP 502.01, certain types of patent-related correspondence are prohibited from being sent by facsimile to the USPTO. These include:

Documents required by statute to be certified (37 CFR 1.4(f))
National patent application specifications and drawings for obtaining a filing date (except for CPAs under 37 CFR 1.53(d))
International patent applications
International design applications
Documents for entering the national stage of an international application (37 CFR 1.495(b))
Third-party submissions under 37 CFR 1.290
Correspondence related to registration to practice before the USPTO in patent cases
Color drawings (37 CFR 1.81, 1.83-1.85, 1.152, 1.165, 1.173, 1.437, or 1.1026)
Requests for reexamination (37 CFR 1.510 or 37 CFR 1.913)
Requests for supplemental examination (37 CFR 1.610)
Correspondence for patent applications under secrecy orders (37 CFR 5.1-5.5)
Most correspondence for contested cases or trials before the Patent Trial and Appeal Board

The MPEP states: "As a courtesy, the Office will attempt to notify senders whenever correspondence is sent to the Office by facsimile transmission that falls within one of the prohibitions." However, it's crucial to avoid submitting prohibited correspondence by fax, as it will not be accorded a receipt date.

To learn more:

Question 3

What should be included in an Examiner's Letter or Action?

Accepted Answer

According to MPEP 707, an Examiner's Letter or Action should include:

The Office Action Summary Form PTOL-326
Period set for reply
Any attachments
A 'Summary of Action' on all claims
Notice of References Cited (PTO-892)
Reasons for rejections or objections
Useful information for judging the propriety of continuing prosecution

The MPEP states, Information useful in judging the propriety of continuing the prosecution may include, for example, the identification and a brief discussion of the particular figure(s) of the drawing(s), and/or page(s) or paragraph(s) of the best reference(s) cited by the examiner, the applicant, or a foreign office.

Additionally, In rejecting claims for want of novelty or for obviousness, the pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.

To learn more:

Office Action Content
Patent Examination Procedure
USPTO Communication
Rejection Explanation

Question 4

What is the significance of a Customer Number in patent application correspondence?

Accepted Answer

A Customer Number is a unique identifier assigned by the USPTO that can be associated with a correspondence address. It offers several advantages in managing patent application correspondence:

Simplified address changes: You can update the address for multiple applications at once by changing the address associated with the Customer Number.
Priority in address selection: When multiple addresses are provided, the USPTO may prioritize the address associated with a Customer Number.
Easier access to Patent Application Information Retrieval (PAIR) system: Customer Numbers can be used to access multiple applications in PAIR.

37 CFR 1.33(a) states: 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.

Using a Customer Number can streamline communication with the USPTO and make it easier to manage multiple patent applications.

To learn more:

Question 5

What is the receipt date for facsimile transmissions to the USPTO?

Accepted Answer

The receipt date for facsimile transmissions to the USPTO is determined according to specific rules outlined in MPEP 502.01:

The date of receipt accorded to any correspondence permitted to be sent by facsimile transmission, including a continued prosecution application (CPA) filed under 37 CFR 1.53(d), (available for design applications only) is the date the complete transmission is received by an Office facsimile unit, unless the transmission is completed on a Saturday, Sunday, or Federal holiday within the District of Columbia.

If the transmission is completed on a weekend or federal holiday in DC, the receipt date will be the next business day. For example, if a fax is completed at 9:05 p.m. Pacific time on a Friday, it would be received around 12:05 a.m. Eastern time on Saturday. The receipt date would then be the following Monday (assuming it's not a federal holiday).

It's important to note that the Certificate of Transmission under 37 CFR 1.8 can be used for certain documents to consider them timely filed on the date of transmission, even if received later by the USPTO.

To learn more:

Question 6

What is the purpose of MPEP ¶ 2.32 regarding inventor deletion in CPAs?

Accepted Answer

MPEP ¶ 2.32 provides guidance for patent examiners on how to acknowledge and process requests to delete a named inventor in Continued Prosecution Applications (CPAs) for design patents. The paragraph serves several purposes:

It offers a standardized response for examiners to use when acknowledging the receipt of a request to delete an inventor.
It confirms that the inventorship has been corrected as requested.
It clarifies the timing and procedure for inventor deletion requests in CPAs.

The paragraph states:

"Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested."

This standardized language ensures consistency in USPTO communications and helps applicants understand that their request has been processed successfully.

For more information on CPA, visit: CPA.

For more information on patent examination, visit: patent examination.

For more information on USPTO communication, visit: USPTO communication.

Question 7

What is the purpose of MPEP ¶ 2.32 in relation to Continued Prosecution Applications?

Accepted Answer

MPEP ¶ 2.32 provides guidance for patent examiners on how to respond to requests for deleting a named inventor in a Continued Prosecution Application (CPA) for design patents. The paragraph serves several purposes:

It offers a template for examiners to acknowledge receipt of a statement requesting inventor deletion.
It confirms that the inventorship has been corrected as requested.
It clarifies the timing and requirements for inventorship changes in CPAs.

The paragraph states: Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.

This standardized language ensures consistent communication between the USPTO and applicants regarding inventorship changes in CPAs.

For more information on CPA, visit: CPA.

For more information on patent examination, visit: patent examination.

For more information on USPTO communication, visit: USPTO communication.

Question 8

What is the purpose of Form Paragraph 2.38 in the MPEP regarding non-English provisional applications?

Accepted Answer

Form Paragraph 2.38 in the MPEP serves several important purposes regarding non-English provisional applications:

It notifies the applicant that an English translation and/or a statement of translation accuracy is required for a non-English language provisional application.
It informs the applicant about the specific documents that are missing from their application.
It provides clear instructions on what the applicant needs to do to rectify the situation.
It warns the applicant about the potential consequences of not providing the required documents.

The MPEP states: Use this form paragraph to notify applicant that an English translation of the non-English language provisional application and/or a statement that the translation is accurate is required.

This form paragraph is a crucial tool for patent examiners to communicate requirements and potential issues to applicants, ensuring that all necessary documents are properly filed for claiming benefit to a non-English provisional application.

For more information on patent examination, visit: patent examination.

For more information on USPTO communication, visit: USPTO communication.

Question 9

What is the purpose of an Examiner's Letter or Action?

Accepted Answer

An Examiner's Letter or Action, as described in MPEP 707, serves to communicate the examiner's findings and decisions regarding a patent application. It includes:

Information about the period set for reply
Any attachments
A 'Summary of Action' detailing the position taken on all claims
Reasons for rejection or objection
Useful information for judging the propriety of continuing prosecution

As stated in the MPEP, In accordance with the patent statute, 'Whenever, on examination, any claim for a patent is rejected, or any objection . . . made,' notification of the reasons for rejection and/or objection together with such information and references as may be useful in judging the propriety of continuing the prosecution (35 U.S.C. 132) should be given.

To learn more:

Question 10

What is the correspondence address in a patent application?

Accepted Answer

The correspondence address in a patent application is the address where the United States Patent and Trademark Office (USPTO) will send all official communications regarding the application. According to 37 CFR 1.33(a):

"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."

This address is crucial for ensuring that applicants receive all necessary information and notifications about their patent application.

To learn more:

Question 11

What is the central facsimile number for patent application-related correspondence at the USPTO?

Accepted Answer

The central facsimile number for patent application-related correspondence at the USPTO is (571) 273-8300. According to MPEP 502.01:

All patent application related correspondence transmitted by facsimile must be directed to the central facsimile number, with a few exceptions below. The central facsimile number is (571) 273-8300.

This central number should be used for most patent-related correspondence, including replies to Office actions and after-final amendments. However, there are specific exceptions for certain types of correspondence that should be sent to other facsimile numbers, as outlined in the MPEP.

To learn more:

Question 12

What is Form Paragraph 6.17 used for in patent examination?

Accepted Answer

Form Paragraph 6.17 is a tool used by patent examiners to notify applicants about issues with claim numbering. According to MPEP 608.01(j), this form paragraph is titled "Numbering of Claims, 37 CFR 1.126" and is used when the numbering of claims does not comply with the regulations. The paragraph states:

"The numbering of claims is not in accordance with 37 CFR 1.126, which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not)."

This form paragraph helps examiners communicate clearly with applicants about claim numbering issues and ensures compliance with USPTO regulations.

To learn more:

Form Paragraph 6.17

Question 13

What is considered a valid mailing address for inventors in patent applications?

Accepted Answer

The MPEP provides guidance on what constitutes a valid mailing address for inventors in patent applications. According to MPEP 602.08(a):

"The inventor's mailing address means that address at which he or she customarily receives his or her mail, even if it is not the main mailing address of the inventor. Either the inventor's home or business address is acceptable as the mailing address. A post office box is also acceptable."

The mailing address should include the ZIP Code designation. It's important to note that the address of an attorney with instructions to forward communications is not sufficient, as the purpose is to enable direct communication between the USPTO and the inventor if necessary.

To learn more:

Question 14

What information is included in the USPTO's acknowledgment of a CPA request?

Accepted Answer

When acknowledging a Continued Prosecution Application (CPA) request, the USPTO includes specific details as outlined in MPEP ¶ 2.35. The acknowledgment typically includes:

The filing date of the CPA request
The application number of the prior application on which the CPA is based
A statement that the CPA request is acceptable
Confirmation that a CPA has been established

The MPEP provides a template for this acknowledgment: Receipt is acknowledged of the 'conditional' request for a Continued Prosecution Application (CPA) filed on [1] under 37 CFR 1.53(d) based on prior Application No. [2].

This information helps applicants confirm that their CPA request has been received and processed correctly.

For more information on USPTO communication, visit: USPTO communication.

Question 15

What information is included in the first Office action of a CPA?

Accepted Answer

The first Office action of a Continued Prosecution Application (CPA) includes important information for the applicant. According to MPEP ¶ 2.35, the examiner should:

Advise the applicant that a 'conditional' request for a CPA is treated as an unconditional request
Confirm that the CPA is acceptable and has been established
Provide notice that an action on the CPA follows

This information is crucial because, as stated in the MPEP, "applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA." Therefore, this Office action serves as an important communication regarding the status of the application.

For more information on CPA, visit: CPA.

For more information on patent examination, visit: patent examination.

For more information on USPTO communication, visit: USPTO communication.

Question 16

What happens when one of multiple practitioners of record is suspended?

Accepted Answer

When one of multiple practitioners of record is suspended, the USPTO continues to communicate with the remaining unsuspended practitioners. MPEP § 407 provides guidance for this situation: “This form paragraph should be used when there is at least one registered practitioner still of record who has not been suspended or excluded from practice.” The Office action is mailed to the first named unsuspended registered practitioner at their address of record. Additionally, to ensure timely receipt, a copy is also sent to the first named applicant’s address of record.

For more information on USPTO communication, visit: USPTO communication.

Question 17

What happens if replacement drawings are not received by the USPTO?

Accepted Answer

If an applicant files an amendment stating that replacement sheets of drawings are included, but these drawings are not found in the Image File Wrapper (IFW), the examiner must take specific action. According to MPEP 608.02(h):

"When an amendment is filed stating that replacement sheets of drawings are filed with the amendment and such drawings are not in the IFW, in the next communication by the examiner, the applicant must be notified that replacement drawings do not appear to have been received and thus have not been entered in the application."

This notification ensures that the applicant is aware of the missing drawings and can take appropriate action to submit them. It's important to note that the USPTO will not return drawings to the applicant, as stated in MPEP § 608.02(y).

To learn more:

Question 18

What happens if an incorrect citation of a reference is discovered in a patent application?

Accepted Answer

When an incorrect citation of a reference is discovered in a patent application, the action taken depends on who discovers the error:

If discovered by the applicant: The applicant should notify the Office. As stated in MPEP 707.05(g), "Where an error in citation of a reference is brought to the attention of the Office by applicant, a letter correcting the error, together with a correct copy of the reference, is sent to applicant."
If discovered by the examiner: The examiner will notify the applicant and restart the period for reply. The MPEP states, "Where the error is discovered by the examiner, applicant is also notified and the period for reply restarted."

In both cases, the Office will take corrective action to ensure the accuracy of the patent examination process.

To learn more:

Question 19

What happens if an attorney or agent withdraws from representation in a patent application?

Accepted Answer

What happens if an attorney or agent withdraws from representation in a patent application?

When an attorney or agent withdraws from representation in a patent application, the following occurs:

The USPTO will correspond directly with the applicant until a new Power of Attorney or address change is filed.
The withdrawal is effective when approved by the Office, not when received.
The Office may require the applicant or assignee to revoke the previous Power of Attorney and appoint a new representative.

As stated in MPEP 402.06: 'In the event the power of attorney is withdrawn, the Office will communicate directly with the applicant... until a new registered attorney or agent is appointed.'

To learn more:

Question 20

What are the different work schedules for patent examiners and how are they communicated?

Accepted Answer

Patent examiners may have different work schedules, which are communicated in their office actions to help applicants understand their availability. The MPEP provides two main form paragraphs for this purpose:

Form Paragraph 7.101 for non-5/4/9 schedules
Form Paragraph 7.102 for 5/4/9 schedules

For example, Form Paragraph 7.102 states:

"The examiner can normally be reached on [3] from [4] to [5]. The examiner can also be reached on alternate [6]."

This allows examiners to specify their regular working days, normal duty hours, and any compressed days off. This information helps applicants plan their communication with examiners more effectively.

To learn more:

Question 21

Is a daytime telephone number required when submitting a patent application?

Accepted Answer

While not strictly required, the USPTO requests the submission of a daytime telephone number for the party to whom correspondence is to be addressed. According to 37 CFR 1.33(a):

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 MPEP explains that although business is conducted on the written record (as per 37 CFR 1.2), a daytime telephone number is useful for initiating contact that could later be reduced to writing. It's a practical way to facilitate communication between the USPTO and the applicant or their representative.

To learn more:

Question 22

Is a daytime telephone number required in patent applications?

Accepted Answer

While not strictly required, the USPTO recommends providing a daytime telephone number in patent applications. According to MPEP 601.03(b):

"The submission of a daytime telephone number of the party to whom correspondence is to be addressed is requested pursuant to pre-AIA 37 CFR 1.33(a)."

The MPEP further explains: "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." This means that while all official business must be in writing, a phone number can facilitate quick communication that can later be documented formally.

It's worth noting that any party who can change the correspondence address can also change the telephone number.

To learn more:

pre-AIA 37 CFR 1.33

Question 23

Is a daytime telephone number required for patent applications filed before September 16, 2012?

Accepted Answer

While not strictly required, the USPTO recommends providing a daytime telephone number for patent applications filed before September 16, 2012. According to MPEP 403.01(b):

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.

Key points about the daytime telephone number:

It is not mandatory but recommended
It can be changed by any party who can change the correspondence address
It facilitates initial contact that can later be documented in writing

To learn more:

Question 24

How should an applicant respond to an Office Action?

Accepted Answer

When responding to an Office Action, applicants should:

The MPEP section 707 states: Replies to Office actions should include the application number as well as the 4-digit art unit number and the examiner's name to expedite handling within the Office. Further, applicants are encouraged to include the 4-digit confirmation number on every paper filed in the Office.

For extensive amendments, it's preferable to have them filed by the attorney or agent of record, as this provides a better record in the file wrapper, including applicant's arguments for allowability.

To learn more:

Question 25

How is double correspondence handled in patent applications?

Accepted Answer

The USPTO generally does not engage in double correspondence with applicants and their representatives. Specifically:

The Office will not correspond with both an applicant and their attorney/agent.
The Office will not correspond with more than one attorney/agent.
If double correspondence is attempted, the examiner will include form paragraph 4.01 in the next Office action.

According to MPEP 403: "Double correspondence with an applicant and their attorney, or with two representatives, will not be undertaken. See MPEP §§ 403.01(a), 403.01(b), 403.02, and 714.01(d)."

Form paragraph 4.01 states: "Applicant has appointed an attorney or agent to conduct all business before the Patent and Trademark Office. Double correspondence with an applicant and applicant's attorney or agent will not be undertaken. Accordingly, applicant is required to conduct all future correspondence with this Office through the attorney or agent of record. See 37 CFR 1.33."

Question 26

How is correspondence handled when two patent practitioners are appointed?

Accepted Answer

When two patent practitioners are appointed, the handling of correspondence depends on how and when they were appointed. According to MPEP 403.02:

"If, after one patent practitioner is appointed, a second patent practitioner is later added by submission of a new power of attorney appointing both practitioners, correspondence will be mailed to the latest correspondence address of record."

This means that the USPTO will use the most recently provided correspondence address. It's important to note that this is governed by 37 CFR 1.33 and 37 CFR 1.76, which provide regulations on correspondence and application data sheets.

To learn more:

Question 27

How is an examiner's contact information provided in a patent office action?

Accepted Answer

In every patent office action, the examiner's contact information is provided for applicants to reach out with inquiries or to arrange interviews. According to MPEP 707.08, "The full surname of the examiner who prepares the Office action will, in all cases, be typed at the end of the action. The name and telephone number of the examiner who should be called if the application is to be discussed or an interview arranged will also be provided in the Office action."

Examiners use specific form paragraphs (7.100, 7.101, or 7.102) to provide this information, which typically includes:

Examiner's name
Telephone number
Normal working hours
Supervisor's name and contact information (if applicable)

Additionally, the form paragraphs include information on how to schedule interviews, including the option to use the USPTO Automated Interview Request (AIR) Form.

To learn more:

Question 28

How does withdrawal affect the correspondence address for a patent application?

Accepted Answer

When a practitioner withdraws and the correspondence address will change as a result, the withdrawing practitioner(s) must request that the USPTO direct all future correspondence to one of the following:

The first named inventor or assignee that has properly made itself of record (for applications filed before September 16, 2012)
The applicant (for applications filed on or after September 16, 2012)
The assignee of record (for proceedings involving issued patents)

Practitioners can specify either the correspondence address or the address associated with the Customer Number of the appropriate party. It's important to note that withdrawing practitioners cannot change the correspondence address to another law firm's Customer Number or any other address except those mentioned above.

This ensures that the patent application or proceeding remains properly managed after the practitioner's withdrawal.

To learn more:

Question 29

How does the USPTO handle communication after an attorney withdraws from a patent application?

Accepted Answer

After an attorney withdraws from a patent application, the USPTO adjusts its communication process as follows:

The Office communicates directly with the applicant or assignee.
This direct communication continues until a new registered patent practitioner is appointed.
The applicant or assignee who originally appointed the withdrawing attorney becomes the point of contact for all purposes in the application.

According to MPEP 402.06: 'For applications in which the attorney or agent has withdrawn from representation, the Office will communicate directly with the applicant ... until such time as a new attorney or agent is appointed.'

It's crucial for applicants to stay responsive and consider appointing new representation promptly to ensure smooth prosecution of their patent application.

To learn more:

Question 30

How does the USPTO determine the correspondence address when multiple patent practitioners are involved?

Accepted Answer

The USPTO determines the correspondence address based on the most recent information provided. According to MPEP 403.02:

"If, after one patent practitioner is appointed, a second patent practitioner is later added by submission of a new power of attorney appointing both practitioners, correspondence will be mailed to the latest correspondence address of record."

This means that the USPTO will use the most recently provided correspondence address, regardless of which practitioner it is associated with. This practice is governed by 37 CFR 1.33 and 37 CFR 1.76, which provide regulations on correspondence and application data sheets. It's crucial for applicants and practitioners to keep the correspondence address up to date to ensure proper communication with the USPTO.

To learn more:

Question 31

How does the USPTO communicate when an attorney or agent is suspended?

Accepted Answer

When an attorney or agent is suspended, the USPTO does not communicate with them. Instead:

For sole practitioners: The Office action is mailed to the address of the first named applicant in the application.
For multiple practitioners: The Office action is mailed to the first named unsuspended registered practitioner of record and to the first named applicant.

This is outlined in Form Paragraphs 4.07 and 4.08 of MPEP § 407.

Question 32

How does revocation of power of attorney affect pending applications?

Accepted Answer

When a power of attorney is revoked, it affects pending applications as follows:

The revocation is effective upon receipt in the USPTO.
It applies to all pending applications in which the attorney or agent was appointed, unless specifically limited.
The Office will not communicate further with the revoked attorney/agent.
The applicant must appoint a new representative or correspond directly with the Office.

As stated in MPEP 402.05: 'A power of attorney may be revoked at any stage in the proceedings of a case.' This means the revocation can occur at any point during the patent application process.

To learn more:

Question 33

How does attorney withdrawal affect pending patent applications?

Accepted Answer

How does attorney withdrawal affect pending patent applications?

When an attorney withdraws from representation in a pending patent application, it can have several implications:

The applicant becomes responsible for prosecuting the application.
Official correspondence will be sent directly to the applicant.
Deadlines and response periods remain in effect.
The applicant may need to find new representation quickly.

According to MPEP 402.06:

"Where an attorney or agent of record withdraws from an application, the Office will communicate directly with the applicant, or with a new registered attorney or agent if a power of attorney is filed."

It's important for applicants to act promptly after attorney withdrawal to ensure continuity in their patent prosecution. If a new attorney is hired, a new power of attorney should be filed with the USPTO to ensure proper communication and representation.

To learn more:

Question 34

How do applicants receive a copy of the processed IDS from the USPTO?

Accepted Answer

Applicants receive a copy of the processed Information Disclosure Statement (IDS) as part of an Office action from the USPTO. The MPEP 609.08 states:

a copy will be provided to applicant as part of an Office action.

This means that after the examiner has reviewed and processed the IDS, the applicant will receive a copy of the annotated IDS along with other communications from the USPTO, typically in an Office action document.

To learn more:

Question 35

How can an applicant schedule an interview with a patent examiner?

Accepted Answer

Applicants can schedule interviews with patent examiners through various methods, including telephone, in-person, and video conferencing. The USPTO encourages the use of the Automated Interview Request (AIR) Form for scheduling interviews.

According to MPEP 707: Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/patents/uspto-automated-interview-request-air-form.

Interviews can be beneficial for discussing the application, clarifying issues, and potentially advancing prosecution. The examiner may indicate in the Office Action if an interview might be helpful in placing the application in condition for allowance.

To learn more:

Question 36

How can an applicant authorize email communications with the USPTO?

Accepted Answer

To authorize email communications with the USPTO, an applicant must provide a written authorization. According to MPEP 502.03:

'The written authorization may be submitted via EFS-Web, mail, or fax. It cannot be submitted by email.'

The USPTO provides a sample authorization form:

'Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.'

To facilitate processing, the USPTO recommends using Form PTO/SB/439, available at www.uspto.gov/patent/patents-forms. This form can be filed via EFS-Web using the document description 'Internet Communications Authorized'.

To learn more:

Question 37

How are amendments containing objectionable remarks handled by the USPTO?

Accepted Answer

Amendments containing objectionable remarks are handled with special care by the USPTO. According to MPEP 714.19:

"An amendatory paper containing objectionable remarks that, in the opinion of the examiner, brings it within the condemnation of 37 CFR 1.3, will be submitted to the Deputy Commissioner for Patents who oversees the Office of Petitions. See MPEP § 714.25 and MPEP § 1002.02(b). If the Deputy Commissioner determines that the remarks are in violation of 37 CFR 1.3, they will notify the applicant of the non-entry of the paper."

This process ensures that amendments maintain a professional and respectful tone. If an examiner identifies objectionable content, the amendment is escalated to the Deputy Commissioner for review. If found to violate 37 CFR 1.3, which requires decorum and courtesy, the amendment will not be entered, and the applicant will be notified. It's crucial for applicants to maintain professionalism in all communications with the USPTO.

To learn more:

MPEP 714.19

Question 38

Can an applicant withdraw email communication authorization with the USPTO?

Accepted Answer

Yes, an applicant can withdraw their authorization for email communication with the USPTO. According to MPEP 502.03:

'A written authorization may be withdrawn by filing a signed paper clearly identifying the original authorization.'

The USPTO provides a sample form for withdrawing authorization:

'The authorization given on______, to the USPTO to communicate with any practitioner of record or acting in a representative capacity in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application via video conferencing, instant messaging, or electronic mail is hereby withdrawn.'

To facilitate processing, the USPTO recommends using Form PTO/SB/439, available at www.uspto.gov/patent/patents-forms. This form can be filed via EFS-Web using the document description 'Internet Communications Authorization Withdrawn'.

To learn more:

Question 39

Can an applicant communicate directly with the USPTO if they have a registered patent attorney?

Accepted Answer

Can an applicant communicate directly with the USPTO if they have a registered patent attorney?

Generally, when an applicant is represented by a registered patent attorney or agent, direct communication between the applicant and the USPTO is discouraged. The USPTO has specific rules regarding this situation:

The USPTO will communicate directly with the registered attorney or agent of record.
Applicants should channel their communications through their appointed representative.
Direct communication from the applicant may not be officially recognized or acted upon by the USPTO.

MPEP 403.01 clearly states: "The Office will 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." This policy ensures clear and efficient communication channels and prevents potential confusion or contradictory instructions. If an applicant wishes to communicate directly, they should first revoke the power of attorney or authorization of agent on record.

To learn more:

Question 40

Can an applicant appoint two patent practitioners for the same application?

Accepted Answer

Yes, an applicant can appoint two patent practitioners for the same application. However, when doing so, it's important to specify the correspondence address. As stated in the MPEP:

"If the applicant simultaneously appoints two patent practitioners, applicant should indicate with whom correspondence is to be conducted by specifying a correspondence address."

This ensures clear communication between the USPTO and the applicant's representatives. For more details, refer to MPEP § 403, MPEP § 403.01(a), and MPEP § 403.01(b).

To learn more:

Here’s the complete FAQ:

MPEP 200 - Types and Status of Application; Benefit and Priority (5)

What is the purpose of MPEP ¶ 2.32 regarding inventor deletion in CPAs?

What is the purpose of MPEP ¶ 2.32 in relation to Continued Prosecution Applications?

What is the purpose of Form Paragraph 2.38 in the MPEP regarding non-English provisional applications?

What information is included in the USPTO’s acknowledgment of a CPA request?

What information is included in the first Office action of a CPA?

MPEP 201 - Types of Applications (4)

What is the purpose of MPEP ¶ 2.32 regarding inventor deletion in CPAs?

What is the purpose of MPEP ¶ 2.32 in relation to Continued Prosecution Applications?

What information is included in the USPTO’s acknowledgment of a CPA request?

What information is included in the first Office action of a CPA?

MPEP 211 - Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e) (1)

What is the purpose of Form Paragraph 2.38 in the MPEP regarding non-English provisional applications?

MPEP 400 - Representative of Applicant or Owner (14)

What is the significance of a Customer Number in patent application correspondence?

What is the correspondence address in a patent application?

What happens when one of multiple practitioners of record is suspended?

What happens if an attorney or agent withdraws from representation in a patent application?

What happens if an attorney or agent withdraws from representation in a patent application?

How is double correspondence handled in patent applications?

How is correspondence handled when two patent practitioners are appointed?

How does withdrawal affect the correspondence address for a patent application?

How does the USPTO handle communication after an attorney withdraws from a patent application?

How does the USPTO determine the correspondence address when multiple patent practitioners are involved?

How does the USPTO communicate when an attorney or agent is suspended?

How does revocation of power of attorney affect pending applications?

How does attorney withdrawal affect pending patent applications?

How does attorney withdrawal affect pending patent applications?

Can an applicant communicate directly with the USPTO if they have a registered patent attorney?

Can an applicant communicate directly with the USPTO if they have a registered patent attorney?

Can an applicant appoint two patent practitioners for the same application?

MPEP 403 - Correspondence — With Whom Held; Customer Number Practice (1)

How is double correspondence handled in patent applications?

MPEP 407 - Suspended or Excluded Patent Practitioner (2)

What happens when one of multiple practitioners of record is suspended?

How does the USPTO communicate when an attorney or agent is suspended?

MPEP 500 - Receipt and Handling of Mail and Papers (6)

What types of patent-related correspondence can be sent by facsimile to the USPTO?

What types of patent-related correspondence are prohibited from being sent by facsimile to the USPTO?

What is the receipt date for facsimile transmissions to the USPTO?

What is the central facsimile number for patent application-related correspondence at the USPTO?

How can an applicant authorize email communications with the USPTO?

Can an applicant withdraw email communication authorization with the USPTO?

Patent Law (30)

What types of patent-related correspondence can be sent by facsimile to the USPTO?

What types of patent-related correspondence are prohibited from being sent by facsimile to the USPTO?

What is the significance of a Customer Number in patent application correspondence?

What is the receipt date for facsimile transmissions to the USPTO?

What is the purpose of MPEP ¶ 2.32 regarding inventor deletion in CPAs?

What is the purpose of MPEP ¶ 2.32 in relation to Continued Prosecution Applications?

What is the purpose of Form Paragraph 2.38 in the MPEP regarding non-English provisional applications?

What is the correspondence address in a patent application?

What is the central facsimile number for patent application-related correspondence at the USPTO?

What is Form Paragraph 6.17 used for in patent examination?

What is considered a valid mailing address for inventors in patent applications?

What information is included in the USPTO’s acknowledgment of a CPA request?

What information is included in the first Office action of a CPA?

What happens when one of multiple practitioners of record is suspended?

What happens if replacement drawings are not received by the USPTO?

What happens if an attorney or agent withdraws from representation in a patent application?

What happens if an attorney or agent withdraws from representation in a patent application?

Is a daytime telephone number required when submitting a patent application?

Is a daytime telephone number required in patent applications?

How is double correspondence handled in patent applications?

How is correspondence handled when two patent practitioners are appointed?

How does withdrawal affect the correspondence address for a patent application?

How does the USPTO handle communication after an attorney withdraws from a patent application?

How does the USPTO determine the correspondence address when multiple patent practitioners are involved?

How does the USPTO communicate when an attorney or agent is suspended?

How does revocation of power of attorney affect pending applications?

How does attorney withdrawal affect pending patent applications?

How does attorney withdrawal affect pending patent applications?

How can an applicant authorize email communications with the USPTO?

Can an applicant withdraw email communication authorization with the USPTO?

Can an applicant communicate directly with the USPTO if they have a registered patent attorney?

Can an applicant communicate directly with the USPTO if they have a registered patent attorney?

Can an applicant appoint two patent practitioners for the same application?

Patent Procedure (30)

What types of patent-related correspondence can be sent by facsimile to the USPTO?