37 CFR 1.33 (pre-AIA) — Correspondence respecting patent applications, reexamination proceedings, and other proceedings
Ninth Edition, Revision 01.2024
[Editor Note: The paragraphs below are applicable only to patent applications filed under 35 U.S.C. 111 (pre‑AIA) or 363 (pre‑AIA) before Sept. 16, 2012]
- (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).
- (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.
- *****
[*See § 1.33 for more information and for the rule applicable to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012]
Cited authority
- 35 U.S.C. 111 (pre-AIA) Application
- 35 U.S.C. 363 (pre-AIA) International application designating the United States: Effect
- 37 CFR 1.76 (pre-AIA) Application data sheet
- 37 CFR 1.63 (pre-AIA) Oath or declaration
- 37 CFR 1.27 Definition of small entities and establishing status as a small entity to permit payment of small entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; fraud on the Office
- 37 CFR 1.32 (pre-AIA) Power of attorney
- 37 CFR 1.34 Acting in a representative capacity
- 37 CFR 3.71 (pre-AIA) Prosecution by assignee
- 37 CFR 1.41 (pre-AIA) Applicant for patent
- 37 CFR 1.33 Correspondence respecting patent applications, reexamination proceedings, and other proceedings
- 35 U.S.C. 111 Application
- 35 U.S.C. 363 International application designating the United States: Effect
Cited by
- 1122 Requests for Nonpublication
- 1123 Rescission of a Nonpublication Request
- 1204 Notice of Appeal
- 1303 Notice of Allowance
- 1480 Certificates of Correction — Office Mistake
- 2146.02 Establishing Common Ownership or Joint Research Agreement Under Pre-AIA 35 U.S.C. 103(c)
- 2208 Service of Prior Art or Section 301 Written Statements on Patent Owner
- 2210 Request for Ex Parte Reexamination under 35 U.S.C. 302
- 2213 Representative of Requester
- 2214 Content of Request for Ex Parte Reexamination Filed under 35 U.S.C. 302
- 2220 Certificate of Service
- 2222 Address of Patent Owner
- 2224 Correspondence
- 2239 Reexamination Ordered at the Director’s Initiative
- 2240 Decision on Request Filed under 35 U.S.C. 302
- 2266.03 Service of Papers
- 2267 Handling of Inappropriate or Untimely Filed Papers
- 2288 Issuance of Ex Parte Reexamination Certificate
- 2540 Fee Address for Maintenance Fee Purposes
- 2542 Change of Correspondence Address
- 2590 Acceptance of Delayed Payment of Maintenance Fee in Expired Patent to Reinstate Patent
- 324 Establishing Right of Assignee To Take Action in Application Filed Before September 16, 2012
- 402.04 Acting in a Representative Capacity
- 402.05(a) Applicant Revocation - Application Filed On or After September 16, 2012
- 403 Correspondence — With Whom Held; Customer Number Practice
- 403.01(a) Correspondence in Applications Filed On or After September 16, 2012
- 403.01(b) Correspondence in Applications Filed Before September 16, 2012
- 501 Filing Papers With the U.S. Patent and Trademark Office
- 502.02 Correspondence Signature Requirements
- 502.05 Correspondence Transmitted by EFS-Web
- 506 Completeness of Original Application
- 509.03 Claiming Small Entity Status
- 601.01 Complete Application
- 601.03(b) Change of Correspondence Address in Applications Filed Before September 16, 2012
- 601.05(b) Application Data Sheet (ADS) in Application Filed Before September 16, 2012
- 603 Supplemental Oath or Declaration
- 711 Abandonment of Patent Application
- 37 CFR 1.4 Nature of correspondence and signature requirements
- 37 CFR 1.27 Definition of small entities and establishing status as a small entity to permit payment of small entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; fraud on the Office
- 37 CFR 1.27 (pre-AIA) Definition of small entities and establishing status as a small entity to permit payment of small entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; fraud on the Office
- 37 CFR 1.33 Correspondence respecting patent applications, reexamination proceedings, and other proceedings
- 37 CFR 1.36 (pre-AIA) Revocation of power of attorney; withdrawal of patent attorney or agent
- 37 CFR 1.53 Application number, filing date, and completion of application
- 37 CFR 1.53 (pre-AIA) Application number, filing date, and completion of application
- 37 CFR 1.67 (pre-AIA) Supplemental oath or declaration
- 37 CFR 1.76 Application data sheet
- 37 CFR 1.76 (pre-AIA) Application data sheet
- 37 CFR 1.213 Nonpublication request
- 37 CFR 1.297 (pre-2013-03-16) Publication of statutory invention registration
- 37 CFR 1.311 Notice of Allowance
- 37 CFR 1.322 Certificate of correction of Office mistake
- 37 CFR 1.363 Fee address for maintenance fee purposes
- 37 CFR 1.510 Request for ex parte reexamination
- 37 CFR 1.520 Ex parte reexamination at the initiative of the Director
- 37 CFR 1.570 Issuance and publication of ex parte reexamination certificate concludes ex parte reexamination proceeding
- 37 CFR 1.915 Content of request for inter partes reexamination
- 37 CFR 1.923 Examiner’s determination on the request for inter partes reexamination
- 37 CFR 1.997 Issuance and publication of inter partes reexamination certificate concludes inter partes reexamination proceeding