What information should I include when submitting a maintenance fee payment?
When submitting a maintenance fee payment, it is strongly recommended to include both a telephone number and a mailing address for the fee submitter. As stated in the MPEP, It is strongly recommended that a maintenance fee submission by mail or facsimile include both a telephone number and a mailing address for the fee submitter…
Read MoreHow does the USPTO handle correspondence in ex parte reexamination with multiple patent owners?
In ex parte reexamination proceedings involving multiple patent owners, the USPTO has specific procedures to manage correspondence efficiently. According to MPEP 2264: “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…
Read MoreHow are decisions on inter partes reexamination requests communicated?
Decisions on inter partes reexamination requests are communicated through formal office actions issued by the USPTO. These decisions typically include: A clear statement granting or denying the reexamination request An explanation of the reasoning behind the decision Identification of claims to be reexamined (if granted) Instructions for further correspondence The MPEP provides example decision formats,…
Read MoreWhat are the submission methods for inter partes reexamination correspondence?
The MPEP outlines several methods for submitting correspondence in inter partes reexamination proceedings: Electronic Filing System (EFS-Web): Registered users may submit via the electronic filing system EFS-Web, at https://efs.uspto.gov/efile/myportal/efs-registered Mail: Mail Stop Inter Partes Reexam, Attn: Central Reexamination Unit, Commissioner for Patents, United States Patent & Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450 Fax:…
Read MoreCan a fee address be directed to multiple addresses?
No, a fee address cannot be directed to multiple addresses. According to MPEP 2540: “Maintenance fee correspondence will not be directed to more than one address.” This means that all communications related to maintenance fees will be sent to a single designated fee address. It’s important for patent owners to ensure that the designated fee…
Read MoreWhat is double correspondence in patent reexamination proceedings?
MPEP 2622 addresses the issue of double correspondence in patent reexamination proceedings. The section states: “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.“ This means that the USPTO will not send multiple copies of the same…
Read MoreHow is correspondence handled for a third party requester in inter partes reexamination?
Correspondence for a third party requester in inter partes reexamination is typically addressed to the representative of the requester. According to MPEP 2613: “All correspondence for a third party requester is addressed to the representative of the requester, unless a specific indication is made to forward correspondence to another address.” This means that the USPTO…
Read MoreHow is the correspondence address determined for a nonprovisional international design application?
The correspondence address for a nonprovisional international design application is determined according to 37 CFR 1.1066(a), which states: “Unless the correspondence address is changed in accordance with § 1.33(a), the Office will use as the correspondence address in a nonprovisional international design application the address according to the following order: The correspondence address under §…
Read MoreWhat happens if the USPTO can’t reach a patent owner at their address of record?
What happens if the USPTO can’t reach a patent owner at their address of record? If the USPTO cannot reach a patent owner at their address of record, it may have serious consequences for the patent. According to MPEP 2805: “It is important for the Office to have a correct address for the patent owner.…
Read MoreDo I need to withdraw as a practitioner to change the correspondence address?
No, you do not need to withdraw as a practitioner solely to change the correspondence address. The MPEP clearly states: “It is not required that a practitioner file a request for permission to withdraw pursuant to 37 CFR 1.36 solely for the purpose of changing the correspondence address in a patented file.” This means that…
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