[Federal Register Volume 79, Number 204 (Wednesday, October 22, 2014)]
[Rules and Regulations]
[Pages 63036-63044]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2014-24891]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Parts 1, 2, 7, 11, 41, and 42

[Docket No.: PTO-P-2014-0045]
RIN 0651-AC98


Renaming of Express Mail[supreg] to Priority Mail Express[supreg]

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark (Office) is revising 
the rules of practice to change the phrase Express Mail or EXPRESS 
MAIL[supreg] to Priority Mail Express[supreg] due to the United States 
Postal Service (USPS) renaming Express Mail[supreg] to Priority Mail 
Express[supreg] on July 28, 2013, and to make other changes to conform 
the nomenclature used in the

[[Page 63037]]

rules of practice to the current nomenclature used by the USPS.

DATES: Effective Date: The changes in this final rule are effective on 
October 22, 2014.

FOR FURTHER INFORMATION CONTACT: Eugenia A. Jones, Senior Legal 
Advisor, at (571) 272-7727, or Erin M. Harriman, Legal Advisor, at 
(571) 272-7747; or by mail addressed to: United States Patent and 
Trademark Office, Mail Stop Comments-Patents, Commissioner for Patents, 
P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of 
Eugenia A. Jones.

SUPPLEMENTARY INFORMATION: 
    Executive Summary: Purpose: Effective July 28, 2013, the USPS 
changed the name of Express Mail[supreg] to Priority Mail 
Express[supreg]. Accordingly, the Office is revising the rules of 
practice to conform the nomenclature used in the rules of practice to 
the current nomenclature used by the USPS.
    More specifically, the Office is changing the phrase Express Mail 
or EXPRESS MAIL[supreg] to Priority Mail Express[supreg] in 37 CFR 1.5, 
1.6, 1.10, 2.119, 2.195, 2.198, 7.4, 11.35, 11.41, 11.42, 11.51, 
41.106, 42.6, 42.105, 42.205, and 42.406. In addition, the USPS has 
updated the Priority Mail Express[supreg] mailing label. The mailing 
label now has a ``date accepted'' field rather than a ``date-in'' 
field, which was previously used on the Express Mail[supreg] mailing 
label. The Office is revising 37 CFR 1.10, 2.198, and 41.106 
accordingly.
    All characteristics of the Priority Mail Express[supreg] service 
are the same as those of the former Express Mail[supreg] service, 
although the mailing labels differ. The modifications to the rules are 
purely changes in terminology resulting from the renaming implemented 
by the USPS on July 28, 2013. There is no substantive change in 
practice before the Office as a result of these rule changes. Thus, 
parties still cannot use a foreign or international mail service (such 
as the newly renamed Priority Mail Express International[supreg]) or 
other forms of U.S. mail, such as certified mail, to obtain the benefit 
under 37 CFR 1.10 and 2.198. The procedure in 37 CFR 1.10 and 2.198 is 
limited to correspondence deposited in Priority Mail Express[supreg] 
Post Office to Addressee service of the USPS.
    The changes in this final rule are effective on the date of 
publication in the Federal Register. Papers submitted prior to the 
effective date containing language pertaining to Express Mail[supreg] 
and the mailing label ``date-in'' field will be accepted by the Office. 
Papers submitted after the effective date containing language 
pertaining to Express Mail[supreg] and the mailing label ``date-in'' 
field will be accepted by the Office. Although the new terminology 
should be used, papers submitted using the former language of Express 
Mail[supreg] and ``date-in'' will be presumed by the Office to mean 
Priority Mail Express[supreg] and ``date accepted'' after the effective 
date. The Office is in the process of updating its patent application 
transmittal forms (e.g., PTO/AIA/15, PTO/AIA/18, PTO/AIA/19, PTO/AIA/
50, PTO/SB/16, PTO/SB/29) to change the reference Express Mail[supreg] 
Label No. to Priority Mail Express[supreg] Label No.
    Costs and Benefits: This rulemaking is not economically significant 
under Executive Order 12866 (Sept. 30, 1993).
    Background: Effective July 28, 2013, the USPS changed the name of 
Express Mail[supreg] to Priority Mail Express[supreg]. This final rule 
revises the rules of practice to change the phrase Express Mail to 
Priority Mail Express[supreg] and to make other changes to conform the 
nomenclature used in the rules of practice to the current nomenclature 
used by the USPS.

Discussion of Specific Rules

    The following is a discussion of amendments to Title 37 of the Code 
of Federal Regulations, Parts 1, 2, 7, 11, 41, and 42.

37 CFR Part 1

    Section 1.5: Section 1.5(a) is amended to change ``Express Mail 
procedure'' to ``Priority Mail Express[supreg] procedure.''
    Section 1.6: Section 1.6(a) is amended to change ``Express Mail 
date of deposit'' to ``Priority Mail Express[supreg] date of deposit.'' 
Section 1.6(a)(2) is amended to change ``Express Mail'' to ``Priority 
Mail Express[supreg].''
    Section 1.10: Section 1.10 is amended to change ``Express Mail'' to 
``Priority Mail Express[supreg]'' and to change ``date-in'' or ``date 
in'' to ``date accepted.'' In particular, 37 CFR 1.10(a)(1), (c), (d), 
(d)(3), (e), (e)(3), (g), and (h) are amended to change ``Express Mail 
Post Office to Addressee'' to ``Priority Mail Express[supreg] Post 
Office to Addressee'' and 37 CFR 1.10(a)(2), (b), (c), (c)(2), (c)(3), 
(d), (d)(2), (e)(2)-(4), (f), (g), (g)(2)-(4), (h), (h)(2)-(4), (i), 
(i)(1), and (i)(3) are amended to change ``Express Mail'' to ``Priority 
Mail Express[supreg].'' In addition, 37 CFR 1.10(a)(2), (b), (c), 
(c)(3), (d), (e)(3), and (g)(3) are amended to change ``date-in'' or 
``date in'' to ``date accepted.''

37 CFR Part 2

    Section 2.119: Section 2.119(b)(4) is amended to change ``Express 
Mail Post Office to Addressee'' to ``Priority Mail Express[supreg] Post 
Office to Addressee'' and 37 CFR 2.119(c) is amended to change 
``Express Mail'' to ``Priority Mail Express[supreg].''
    Section 2.195: Sections 2.195(a), (a)(4), (e)(2)(iii), and (e)(3) 
are amended to change ``Express Mail'' to ``Priority Mail 
Express[supreg],'' and 37 CFR 2.195(e)(1) is amended to change 
``Express Mail Post Office to Addressee'' to ``Priority Mail 
Express[supreg] Post Office to Addressee.''
    Section 2.198: Section 2.198 is amended to change ``Express Mail'' 
to ``Priority Mail Express[supreg]'' and to change ``date in'' or 
``date-in'' to ``date accepted.'' In particular, 37 CFR 2.198(a)(1), 
(c), (d), (d)(3), (e), and (e)(3) are amended to change ``Express Mail 
Post Office to Addressee'' to ``Priority Mail Express[supreg] Post 
Office to Addressee'' and 37 CFR 2.198(a)(1), (a)(2), (b), (c), (c)(2), 
(c)(3), (d), (d)(2), (e)(2)-(4), and (f) are amended to change 
``Express Mail'' to ``Priority Mail Express[supreg].'' In addition, 37 
CFR 2.198(a)(2), (b), (c), (c)(3), (d), and (e)(3) are amended to 
change ``date in'' or ``date-in'' to ``date accepted.''

37 CFR Part 7

    Section 7.4: Section 7.4(b)(1) is amended to change ``Express 
Mail'' to ``Priority Mail Express[supreg].''

37 CFR Part 11

    Section 11.35: Section 11.35(a)(2) is amended to change ``Express 
Mail'' to ``Priority Mail Express[supreg].''
    Section 11.41: Section 11.41(b) is amended to change ``Express 
Mail'' to ``Priority Mail Express[supreg].''
    Section 11.42: Sections 11.42(a)(2), (b)(2), (c)(2), and (e) are 
amended to change ``Express Mail'' to ``Priority Mail 
Express[supreg].''
    Section 11.51: Section 11.51(a) is amended to change ``Express 
Mail'' to ``Priority Mail Express[supreg].''

37 CFR Part 41

    Section 41.106: Section 41.106(d)(1) is amended to change each 
occurrence of ``EXPRESS MAIL[supreg]'' to ``Priority Mail 
Express[supreg]'' and to change ``date-in'' to ``date accepted.''

37 CFR Part 42

    Section 42.6: Section 42.6(e)(1) is amended to change each 
occurrence of ``EXPRESS MAIL[supreg]'' to ``Priority Mail 
Express[supreg].''
    Section 42.105: Section 42.105(b) is amended to change each 
occurrence of ``EXPRESS MAIL[supreg]'' to ``Priority Mail 
Express[supreg].''
    Section 42.205: Section 42.205(b) is amended to change each 
occurrence of ``EXPRESS MAIL[supreg]'' to ``Priority Mail 
Express[supreg].''
    Section 42.406: Section 42.406(b) is amended to change each 
occurrence of

[[Page 63038]]

``EXPRESS MAIL[supreg]'' to ``Priority Mail Express[supreg].''

Rulemaking Considerations

    A. Administrative Procedure Act: This rulemaking revises the rules 
of practice to change the phrase Express Mail or EXPRESS MAIL[supreg] 
to Priority Mail Express[supreg] due to the United States Postal 
Service (USPS) renaming Express Mail[supreg] to Priority Mail 
Express[supreg] on July 28, 2013, and to make other changes to conform 
the nomenclature used in the rules of practice to the current 
nomenclature used by the USPS. Therefore, the changes in this 
rulemaking involve rules of agency practice and procedure and/or 
interpretive rules. See Bachow Commc'ns Inc. v. F.C.C., 237 F.3d 683, 
690 (D.C. Cir. 2001) (stating that rules governing an application 
process are procedural under the Administrative Procedure Act); Inova 
Alexandria Hosp. v. Shalala, 244 F.3d 342, 350 (4th Cir. 2001) (holding 
that rules for handling appeals were procedural where they did not 
change the substantive standard for reviewing claims).
    Accordingly, prior notice and opportunity for public comment were 
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law). See 
Cooper Techs. Co. v.  Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008) 
(stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does not 
require notice and comment rulemaking for ``interpretative rules, 
general statements of policy, or rules of agency organization, 
procedure, or practice'' (quoting 5 U.S.C. 553(b)(3)(A))).
    B. Regulatory Flexibility Act: As prior notice and an opportunity 
for public comment are not required pursuant to 5 U.S.C. 553 or any 
other law, neither a regulatory flexibility analysis nor a 
certification under the Regulatory Flexibility Act (5 U.S.C. 601 et 
seq.) is required. See 5 U.S.C. 603. Further, this rulemaking only 
revises nomenclature to be consistent with the current nomenclature 
used by the USPS, and therefore the changes in this rulemaking will not 
have a significant economic impact on a substantial number of small 
entities.
    C. Executive Order 12866 (Regulatory Planning and Review): This 
rulemaking has been determined to be not significant for purposes of 
Executive Order 12866 (Sept. 30, 1993).
    D. Executive Order 13563 (Improving Regulation and Regulatory 
Review): The Office has complied with Executive Order 13563 (Jan. 18, 
2011). Specifically, the Office has, to the extent feasible and 
applicable: (1) Made a reasoned determination that the benefits justify 
the costs of the rule; (2) tailored the rule to impose the least burden 
on society consistent with obtaining the regulatory objectives; (3) 
selected a regulatory approach that maximizes net benefits; (4) 
specified performance objectives; (5) identified and assessed available 
alternatives; (6) involved the public in an open exchange of 
information and perspectives among experts in relevant disciplines, 
affected stakeholders in the private sector, and the public as a whole, 
and provided on-line access to the rulemaking docket; (7) attempted to 
promote coordination, simplification, and harmonization across 
government agencies and identified goals designed to promote 
innovation; (8) considered approaches that reduce burdens and maintain 
flexibility and freedom of choice for the public; and (9) ensured the 
objectivity of scientific and technological information and processes.
    E. Executive Order 13132 (Federalism): This rulemaking does not 
contain policies with federalism implications sufficient to warrant 
preparation of a Federalism Assessment under Executive Order 13132 
(Aug. 4, 1999).
    F. Executive Order 13175 (Tribal Consultation): This rulemaking 
will not: (1) Have substantial direct effects on one or more Indian 
tribes; (2) impose substantial direct compliance costs on Indian tribal 
governments; or (3) preempt tribal law. Therefore, a tribal summary 
impact statement is not required under Executive Order 13175 (Nov. 6, 
2000).
    G. Executive Order 13211 (Energy Effects): This rulemaking is not a 
significant energy action under Executive Order 13211 because this 
rulemaking is not likely to have a significant adverse effect on the 
supply, distribution, or use of energy. Therefore, a Statement of 
Energy Effects is not required under Executive Order 13211 (May 18, 
2001).
    H. Executive Order 12988 (Civil Justice Reform): This rulemaking 
meets applicable standards to minimize litigation, eliminate ambiguity, 
and reduce burden as set forth in sections 3(a) and 3(b)(2) of 
Executive Order 12988 (Feb. 5, 1996).
    I. Executive Order 13045 (Protection of Children): This rulemaking 
does not concern an environmental risk to health or safety that may 
disproportionately affect children under Executive Order 13045 (Apr. 
21, 1997).
    J. Executive Order 12630 (Taking of Private Property): This 
rulemaking will not affect a taking of private property or otherwise 
have taking implications under Executive Order 12630 (Mar. 15, 1988).
    K. Congressional Review Act: Under the Congressional Review Act 
provisions of the Small Business Regulatory Enforcement Fairness Act of 
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the 
United States Patent and Trademark Office will submit a report 
containing the final rule and other required information to the United 
States Senate, the United States House of Representatives, and the 
Comptroller General of the Government Accountability Office. The 
changes in this document are not expected to result in an annual effect 
on the economy of 100 million dollars or more, a major increase in 
costs or prices, or significant adverse effects on competition, 
employment, investment, productivity, innovation, or the ability of 
United States-based enterprises to compete with foreign-based 
enterprises in domestic and export markets. Therefore, this document is 
not expected to result in a ``major rule'' as defined in 5 U.S.C. 
804(2).
    L. Unfunded Mandates Reform Act of 1995: The changes set forth in 
this document do not involve a Federal intergovernmental mandate that 
will result in the expenditure by State, local, and tribal governments, 
in the aggregate, of 100 million dollars (as adjusted) or more in any 
one year, or a Federal private sector mandate that will result in the 
expenditure by the private sector of 100 million dollars (as adjusted) 
or more in any one year, and will not significantly or uniquely affect 
small governments. Therefore, no actions are necessary under the 
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 
1501 et seq.
    M. National Environmental Policy Act: This rulemaking will not have 
any effect on the quality of the environment and is thus categorically 
excluded from review under the National Environmental Policy Act of 
1969. See 42 U.S.C. 4321 et seq.
    N. National Technology Transfer and Advancement Act: The 
requirements of section 12(d) of the National Technology Transfer and 
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because 
this rulemaking does not contain provisions which involve the use of 
technical standards.
    O. Paperwork Reduction Act: This rulemaking does not contain any 
information collection requirements under the Paperwork Reduction Act 
of 1995 (44 U.S.C. 3501 et seq.).
    Notwithstanding any other provision of law, no person is required 
to respond to, nor shall a person be subject to a penalty for failure 
to comply with, a

[[Page 63039]]

collection of information subject to the requirements of the Paperwork 
Reduction Act unless that collection of information displays a 
currently valid OMB control number.

List of Subjects

37 CFR Part 1

    Administrative practice and procedure, Courts, Freedom of 
information, Inventions and patents, Reporting and recordkeeping 
requirements, Small businesses.

37 CFR Part 2

    Administrative practice and procedure, Courts, Lawyers, Trademarks.

37 CFR Part 7

    Administrative practice and procedure, Trademarks.

37 CFR Part 11

    Administrative practice and procedure, Inventions and patents, 
Lawyers, Reporting and recordkeeping requirements.

37 CFR Part 41

    Administrative practice and procedure, Inventions and patents, 
Lawyers.

37 CFR Part 42

    Administrative practice and procedure, Inventions and patents, 
Lawyers.

    For the reasons set forth in the preamble, 37 CFR parts 1, 2, 7, 
11, 41, and 42 are amended as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority citation for 37 CFR Part 1 continues to read as 
follows:

    Authority:  35 U.S.C. 2(b)(2), unless otherwise noted.


0
2. Section 1.5 is amended by revising paragraph (a) to read as follows:


Sec.  1.5  Identification of patent, patent application, or patent-
related proceeding.

    (a) No correspondence relating to an application should be filed 
prior to receipt of the application number from the Patent and 
Trademark Office. When a letter directed to the Patent and Trademark 
Office concerns a previously filed application for a patent, it must 
identify on the top page in a conspicuous location, the application 
number (consisting of the series code and the serial number; e.g., 07/
123,456), or the serial number and filing date assigned to that 
application by the Patent and Trademark Office, or the international 
application number of the international application. Any correspondence 
not containing such identification will be returned to the sender where 
a return address is available. The returned correspondence will be 
accompanied with a cover letter which will indicate to the sender that 
if the returned correspondence is resubmitted to the Patent and 
Trademark Office within two weeks of the mail date on the cover letter, 
the original date of receipt of the correspondence will be considered 
by the Patent and Trademark Office as the date of receipt of the 
correspondence. Applicants may use either the Certificate of Mailing or 
Transmission procedure under Sec.  1.8 or the Priority Mail 
Express[supreg] procedure under Sec.  1.10 for resubmissions of 
returned correspondence if they desire to have the benefit of the date 
of deposit in the United States Postal Service. If the returned 
correspondence is not resubmitted within the two-week period, the date 
of receipt of the resubmission will be considered to be the date of 
receipt of the correspondence. The two-week period to resubmit the 
returned correspondence will not be extended. In addition to the 
application number, all letters directed to the Patent and Trademark 
Office concerning applications for patent should also state the name of 
the first listed inventor, the title of the invention, the date of 
filing the same, and, if known, the group art unit or other unit within 
the Patent and Trademark Office responsible for considering the letter 
and the name of the examiner or other person to which it has been 
assigned.
* * * * *

0
3. Section 1.6 is amended by revising the introductory text of 
paragraph (a) and revising paragraph (a)(2) to read as follows:


Sec.  1.6  Receipt of correspondence.

    (a) Date of receipt and Priority Mail Express[supreg] date of 
deposit. Correspondence received in the Patent and Trademark Office is 
stamped with the date of receipt except as follows:
* * * * *
    (2) Correspondence filed in accordance with Sec.  1.10 will be 
stamped with the date of deposit as Priority Mail Express[supreg] with 
the United States Postal Service.
* * * * *

0
4. Section 1.10 is revised to read as follows:


Sec.  1.10  Filing of correspondence by Priority Mail Express[supreg].

    (a)(1) Any correspondence received by the U.S. Patent and Trademark 
Office (USPTO) that was delivered by the Priority Mail Express[supreg] 
Post Office to Addressee service of the United States Postal Service 
(USPS) will be considered filed with the USPTO on the date of deposit 
with the USPS.
    (2) The date of deposit with USPS is shown by the ``date accepted'' 
on the Priority Mail Express[supreg] label or other official USPS 
notation. If the USPS deposit date cannot be determined, the 
correspondence will be accorded the USPTO receipt date as the filing 
date. See Sec.  1.6(a).
    (b) Correspondence should be deposited directly with an employee of 
the USPS to ensure that the person depositing the correspondence 
receives a legible copy of the Priority Mail Express[supreg] mailing 
label with the ``date accepted'' clearly marked. Persons dealing 
indirectly with the employees of the USPS (such as by deposit in a 
Priority Mail Express[supreg] drop box) do so at the risk of not 
receiving a copy of the Priority Mail Express[supreg] mailing label 
with the desired ``date accepted'' clearly marked. The paper(s) or 
fee(s) that constitute the correspondence should also include the 
Priority Mail Express[supreg] mailing label number thereon. See 
paragraphs (c), (d) and (e) of this section.
    (c) Any person filing correspondence under this section that was 
received by the Office and delivered by the Priority Mail 
Express[supreg] Post Office to Addressee service of the USPS, who can 
show that there is a discrepancy between the filing date accorded by 
the Office to the correspondence and the date of deposit as shown by 
the ``date accepted'' on the Priority Mail Express[supreg] mailing 
label or other official USPS notation, may petition the Director to 
accord the correspondence a filing date as of the ``date accepted'' on 
the Priority Mail Express[supreg] mailing label or other official USPS 
notation, provided that:
    (1) The petition is filed promptly after the person becomes aware 
that the Office has accorded, or will accord, a filing date other than 
the USPS deposit date;
    (2) The number of the Priority Mail Express[supreg] mailing label 
was placed on the paper(s) or fee(s) that constitute the correspondence 
prior to the original mailing by Priority Mail Express[supreg]; and
    (3) The petition includes a true copy of the Priority Mail 
Express[supreg] mailing label showing the ``date accepted,'' and of any 
other official notation by the USPS relied upon to show the date of 
deposit.

[[Page 63040]]

    (d) Any person filing correspondence under this section that was 
received by the Office and delivered by the Priority Mail 
Express[supreg] Post Office to Addressee service of the USPS, who can 
show that the ``date accepted'' on the Priority Mail Express[supreg] 
mailing label or other official notation entered by the USPS was 
incorrectly entered or omitted by the USPS, may petition the Director 
to accord the correspondence a filing date as of the date the 
correspondence is shown to have been deposited with the USPS, provided 
that:
    (1) The petition is filed promptly after the person becomes aware 
that the Office has accorded, or will accord, a filing date based upon 
an incorrect entry by the USPS;
    (2) The number of the Priority Mail Express[supreg] mailing label 
was placed on the paper(s) or fee(s) that constitute the correspondence 
prior to the original mailing by Priority Mail Express[supreg]; and
    (3) The petition includes a showing which establishes, to the 
satisfaction of the Director, that the requested filing date was the 
date the correspondence was deposited in the Priority Mail 
Express[supreg] Post Office to Addressee service prior to the last 
scheduled pickup for that day. Any showing pursuant to this paragraph 
must be corroborated by evidence from the USPS or that came into being 
after deposit and within one business day of the deposit of the 
correspondence in the Priority Mail Express[supreg] Post Office to 
Addressee service of the USPS.
    (e) Any person mailing correspondence addressed as set out in Sec.  
1.1(a) to the Office with sufficient postage utilizing the Priority 
Mail Express[supreg] Post Office to Addressee service of the USPS but 
not received by the Office, may petition the Director to consider such 
correspondence filed in the Office on the USPS deposit date, provided 
that:
    (1) The petition is filed promptly after the person becomes aware 
that the Office has no evidence of receipt of the correspondence;
    (2) The number of the Priority Mail Express[supreg] mailing label 
was placed on the paper(s) or fee(s) that constitute the correspondence 
prior to the original mailing by Priority Mail Express[supreg];
    (3) The petition includes a copy of the originally deposited 
paper(s) or fee(s) that constitute the correspondence showing the 
number of the Priority Mail Express[supreg] mailing label thereon, a 
copy of any returned postcard receipt, a copy of the Priority Mail 
Express[supreg] mailing label showing the ``date accepted,'' a copy of 
any other official notation by the USPS relied upon to show the date of 
deposit, and, if the requested filing date is a date other than the 
``date accepted'' on the Priority Mail Express[supreg] mailing label or 
other official notation entered by the USPS, a showing pursuant to 
paragraph (d)(3) of this section that the requested filing date was the 
date the correspondence was deposited in the Priority Mail 
Express[supreg] Post Office to Addressee service prior to the last 
scheduled pickup for that day; and
    (4) The petition includes a statement which establishes, to the 
satisfaction of the Director, the original deposit of the 
correspondence and that the copies of the correspondence, the copy of 
the Priority Mail Express[supreg] mailing label, the copy of any 
returned postcard receipt, and any official notation entered by the 
USPS are true copies of the originally mailed correspondence, original 
Priority Mail Express[supreg] mailing label, returned postcard receipt, 
and official notation entered by the USPS.
    (f) The Office may require additional evidence to determine if the 
correspondence was deposited as Priority Mail Express[supreg] with the 
USPS on the date in question.
    (g) Any person who mails correspondence addressed as set out in 
Sec.  1.1(a) to the Office with sufficient postage utilizing the 
Priority Mail Express[supreg] Post Office to Addressee service of the 
USPS, but has the correspondence returned by the USPS due to an 
interruption or emergency in Priority Mail Express[supreg] service, may 
petition the Director to consider such correspondence as filed on a 
particular date in the Office, provided that:
    (1) The petition is filed promptly after the person becomes aware 
of the return of the correspondence;
    (2) The number of the Priority Mail Express[supreg] mailing label 
was placed on the paper(s) or fee(s) that constitute the correspondence 
prior to the original mailing by Priority Mail Express[supreg];
    (3) The petition includes the original correspondence or a copy of 
the original correspondence showing the number of the Priority Mail 
Express[supreg] mailing label thereon and a copy of the Priority Mail 
Express[supreg] mailing label showing the ``date accepted''; and
    (4) The petition includes a statement which establishes, to the 
satisfaction of the Director, the original deposit of the 
correspondence and that the correspondence or copy of the 
correspondence is the original correspondence or a true copy of the 
correspondence originally deposited with the USPS on the requested 
filing date. The Office may require additional evidence to determine if 
the correspondence was returned by the USPS due to an interruption or 
emergency in Priority Mail Express[supreg] service.
    (h) Any person who attempts to mail correspondence addressed as set 
out in Sec.  1.1(a) to the Office with sufficient postage utilizing the 
Priority Mail Express[supreg] Post Office to Addressee service of the 
USPS, but has the correspondence refused by an employee of the USPS due 
to an interruption or emergency in Priority Mail Express[supreg] 
service, may petition the Director to consider such correspondence as 
filed on a particular date in the Office, provided that:
    (1) The petition is filed promptly after the person becomes aware 
of the refusal of the correspondence;
    (2) The number of the Priority Mail Express[supreg] mailing label 
was placed on the paper(s) or fee(s) that constitute the correspondence 
prior to the attempted mailing by Priority Mail Express[supreg];
    (3) The petition includes the original correspondence or a copy of 
the original correspondence showing the number of the Priority Mail 
Express[supreg] mailing label thereon; and
    (4) The petition includes a statement by the person who originally 
attempted to deposit the correspondence with the USPS which 
establishes, to the satisfaction of the Director, the original attempt 
to deposit the correspondence and that the correspondence or copy of 
the correspondence is the original correspondence or a true copy of the 
correspondence originally attempted to be deposited with the USPS on 
the requested filing date. The Office may require additional evidence 
to determine if the correspondence was refused by an employee of the 
USPS due to an interruption or emergency in Priority Mail 
Express[supreg] service.
    (i) Any person attempting to file correspondence under this section 
that was unable to be deposited with the USPS due to an interruption or 
emergency in Priority Mail Express[supreg] service which has been so 
designated by the Director, may petition the Director to consider such 
correspondence as filed on a particular date in the Office, provided 
that:
    (1) The petition is filed in a manner designated by the Director 
promptly after the person becomes aware of the designated interruption 
or emergency in Priority Mail Express[supreg] service;
    (2) The petition includes the original correspondence or a copy of 
the original correspondence; and
    (3) The petition includes a statement which establishes, to the 
satisfaction of the Director, that the correspondence would have been 
deposited with the USPS but for the designated interruption or 
emergency in Priority

[[Page 63041]]

Mail Express[supreg] service, and that the correspondence or copy of 
the correspondence is the original correspondence or a true copy of the 
correspondence originally attempted to be deposited with the USPS on 
the requested filing date.

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

0
5. The authority citation for 37 CFR part 2 continues to read as 
follows:

    Authority: 15 U.S.C. 1123; 35 U.S.C. 2, unless otherwise noted.


0
6. Section 2.119 is amended by revising paragraphs (b)(4) and (c) to 
read as follows:


Sec.  2.119  Service and signing of papers.

* * * * *
    (b) * * *
    (4) Transmission by the Priority Mail Express[supreg] Post Office 
to Addressee service of the United States Postal Service or by first-
class mail, which may also be certified or registered;
* * * * *
    (c) When service is made by first-class mail, Priority Mail 
Express[supreg], or overnight courier, the date of mailing or of 
delivery to the overnight courier will be considered the date of 
service. Whenever a party is required to take some action within a 
prescribed period after the service of a paper upon the party by 
another party and the paper is served by first-class mail, Priority 
Mail Express[supreg], or overnight courier, 5 days shall be added to 
the prescribed period.
* * * * *

0
7. Section 2.195 is revised to read as follows:


Sec.  2.195  Receipt of trademark correspondence.

    (a) Date of receipt and Priority Mail Express[supreg] date of 
deposit. Trademark correspondence received in the Office is given a 
filing date as of the date of receipt except as follows:
    (1) The Office is not open for the filing of correspondence on any 
day that is a Saturday, Sunday, or Federal holiday within the District 
of Columbia. Except for correspondence transmitted electronically under 
paragraph (a)(2) of this section or transmitted by facsimile under 
paragraph (a)(3) of this section, no correspondence is received in the 
Office on Saturdays, Sundays, or Federal holidays within the District 
of Columbia.
    (2) Trademark-related correspondence transmitted electronically 
will be given a filing date as of the date on which the Office receives 
the transmission.
    (3) Correspondence transmitted by facsimile will be given a filing 
date as of the date on which the complete transmission is received in 
the Office unless that date is a Saturday, Sunday, or Federal holiday 
within the District of Columbia, in which case the filing date will be 
the next succeeding day that is not a Saturday, Sunday, or Federal 
holiday within the District of Columbia.
    (4) Correspondence filed in accordance with Sec.  2.198 will be 
given a filing date as of the date of deposit as Priority Mail 
Express[supreg] with the United States Postal Service.
    (b) Correspondence delivered by hand. Correspondence may be 
delivered by hand during hours the Office is open to receive 
correspondence.
    (c) Facsimile transmission. Except in the cases enumerated in 
paragraph (d) of this section, correspondence, including authorizations 
to charge a deposit account, may be transmitted by facsimile. The 
receipt date accorded to the correspondence will be the date on which 
the complete transmission is received in the Office, unless that date 
is a Saturday, Sunday, or Federal holiday within the District of 
Columbia. See Sec.  2.196. To facilitate proper processing, each 
transmission session should be limited to correspondence to be filed in 
a single application, registration or proceeding before the Office. The 
application serial number, registration number, or proceeding number 
should be entered as a part of the sender's identification on a 
facsimile cover sheet.
    (d) Facsimile transmissions are not permitted and if submitted, 
will not be accorded a date of receipt, in the following situations:
    (1) Applications for registration of marks;
    (2) Drawings submitted under Sec.  2.51, Sec.  2.52, Sec.  2.72, or 
Sec.  2.173;
    (3) Correspondence to be filed with the Trademark Trial and Appeal 
Board, except notices of ex parte appeal;
    (4) Requests for cancellation or amendment of a registration under 
section 7(e) of the Trademark Act; and certificates of registration 
surrendered for cancellation or amendment under section 7(e) of the 
Trademark Act; and
    (5) Madrid-related correspondence submitted under Sec.  7.11, Sec.  
7.21, Sec.  7.14, Sec.  7.23, Sec.  7.24, or Sec.  7.31.
    (e) Interruptions in U.S. Postal Service. (1) If the Director 
designates a postal service interruption or emergency within the 
meaning of 35 U.S.C. 21(a), any person attempting to file 
correspondence by Priority Mail Express[supreg] Post Office to 
Addressee service who was unable to deposit the correspondence with the 
United States Postal Service due to the interruption or emergency may 
petition the Director to consider such correspondence as filed on a 
particular date in the Office.
    (2) The petition must:
    (i) Be filed promptly after the ending of the designated 
interruption or emergency;
    (ii) Include the original correspondence or a copy of the original 
correspondence; and
    (iii) Include a statement that the correspondence would have been 
deposited with the United States Postal Service on the requested filing 
date but for the designated interruption or emergency in Priority Mail 
Express[supreg] service; and that the correspondence attached to the 
petition is the original correspondence or a true copy of the 
correspondence originally attempted to be deposited as Priority Mail 
Express[supreg] on the requested filing date.
    (3) Paragraphs (e)(1) and (e)(2) of this section do not apply to 
correspondence that is excluded from the Priority Mail Express[supreg] 
procedure pursuant to Sec.  2.198(a)(1).

0
8. Section 2.198 is revised to read as follows:


Sec.  2.198  Filing of correspondence by Priority Mail Express[supreg].

    (a)(1) Except for documents listed in paragraphs (a)(1)(i) through 
(vii) of this section, any correspondence received by the Office that 
was delivered by the Priority Mail Express[supreg] Post Office to 
Addressee service of the United States Postal Service (USPS) will be 
considered filed with the Office on the date of deposit with the USPS. 
The Priority Mail Express[supreg] procedure does not apply to:
    (i) Applications for registration of marks;
    (ii) Amendments to allege use under section 1(c) of the Act;
    (iii) Statements of use under section 1(d) of the Act;
    (iv) Requests for extension of time to file a statement of use 
under section 1(d) of the Act;
    (v) Affidavits of continued use under section 8 of the Act;
    (vi) Renewal requests under section 9 of the Act; and
    (vii) Requests to change or correct addresses.
    (2) The date of deposit with USPS is shown by the ``date accepted'' 
on the Priority Mail Express[supreg] label or other official USPS 
notation. If the USPS deposit date cannot be determined, the 
correspondence will be accorded the date of receipt in the Office as 
the filing date.
    (b) Correspondence should be deposited directly with an employee of 
the USPS to ensure that the person depositing the correspondence 
receives

[[Page 63042]]

a legible copy of the Priority Mail Express[supreg] mailing label with 
the ``date accepted'' clearly marked. Persons dealing indirectly with 
the employees of the USPS (such as by deposit in a Priority Mail 
Express[supreg] drop box) do so at the risk of not receiving a copy of 
the Priority Mail Express[supreg] mailing label with the desired ``date 
accepted'' clearly marked. The paper(s) or fee(s) that constitute the 
correspondence should also include the Priority Mail Express[supreg] 
mailing label number thereon. See paragraphs (c), (d) and (e) of this 
section.
    (c) Any person filing correspondence under this section that was 
received by the Office and delivered by the Priority Mail 
Express[supreg] Post Office to Addressee service of the USPS, who can 
show that there is a discrepancy between the filing date accorded by 
the Office to the correspondence and the date of deposit as shown by 
the ``date accepted'' on the Priority Mail Express[supreg] mailing 
label or other official USPS notation, may petition the Director to 
accord the correspondence a filing date as of the ``date accepted'' on 
the Priority Mail Express[supreg] mailing label or other official USPS 
notation, provided that:
    (1) The petition is filed within two months after the person 
becomes aware that the Office has accorded, or will accord, a filing 
date other than the USPS deposit date;
    (2) The number of the Priority Mail Express[supreg] mailing label 
was placed on the paper(s) or fee(s) that constitute the correspondence 
prior to the original mailing; and
    (3) The petition includes a true copy of the Priority Mail 
Express[supreg] mailing label showing the ``date accepted,'' and of any 
other official notation by the USPS relied upon to show the date of 
deposit.
    (d) Any person filing correspondence under this section that was 
received by the Office and delivered by the Priority Mail 
Express[supreg] Post Office to Addressee service of the USPS, who can 
show that the ``date accepted'' on the Priority Mail Express[supreg] 
mailing label or other official notation entered by the USPS was 
incorrectly entered or omitted by the USPS, may petition the Director 
to accord the correspondence a filing date as of the date the 
correspondence is shown to have been deposited with the USPS, provided 
that:
    (1) The petition is filed within two months after the person 
becomes aware that the Office has accorded, or will accord, a filing 
date based upon an incorrect entry by the USPS;
    (2) The number of the Priority Mail Express[supreg] mailing label 
was placed on the paper(s) or fee(s) prior to the original mailing; and
    (3) The petition includes a showing that establishes, to the 
satisfaction of the Director, that the correspondence was deposited in 
the Priority Mail Express[supreg] Post Office to Addressee service 
prior to the last scheduled pickup on the requested filing date. Any 
showing pursuant to this paragraph must be corroborated by evidence 
from the USPS or evidence that came into being within one business day 
after the deposit of the correspondence in the Priority Mail 
Express[supreg] Post Office to Addressee service of the USPS.
    (e) If correspondence is properly addressed to the Office pursuant 
to Sec.  2.190 and deposited with sufficient postage in the Priority 
Mail Express[supreg] Post Office to Addressee service of the USPS, but 
not received by the Office, the party who mailed the correspondence may 
petition the Director to consider such correspondence filed in the 
Office on the USPS deposit date, provided that:
    (1) The petition is filed within two months after the person 
becomes aware that the Office has no evidence of receipt of the 
correspondence;
    (2) The number of the Priority Mail Express[supreg] mailing label 
was placed on the paper(s) or fee(s) prior to the original mailing;
    (3) The petition includes a copy of the originally deposited 
paper(s) or fee(s) showing the number of the Priority Mail 
Express[supreg] mailing label thereon, a copy of any returned postcard 
receipt, a copy of the Priority Mail Express[supreg] mailing label 
showing the ``date accepted,'' a copy of any other official notation by 
the USPS relied upon to show the date of deposit, and, if the requested 
filing date is a date other than the ``date accepted'' on the Priority 
Mail Express[supreg] mailing label or other official notation entered 
by the USPS, a showing pursuant to paragraph (d)(3) of this section 
that the correspondence was deposited in the Priority Mail 
Express[supreg] Post Office to Addressee service prior to the last 
scheduled pickup on the requested filing date; and
    (4) The petition includes a statement that establishes, to the 
satisfaction of the Director, the original deposit of the 
correspondence and that the copies of the correspondence, the copy of 
the Priority Mail Express[supreg] mailing label, the copy of any 
returned postcard receipt, and any official notation entered by the 
USPS are true copies of the originally mailed correspondence, original 
Priority Mail Express[supreg] mailing label, returned postcard receipt, 
and official notation entered by the USPS.
    (f) The Office may require additional evidence to determine whether 
the correspondence was deposited as Priority Mail Express[supreg] with 
the USPS on the date in question.

PART 7--RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL 
RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL 
REGISTRATION OF MARKS

0
9. The authority citation for 37 CFR part 7 continues to read as 
follows:

    Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.


0
10. Section 7.4 is amended by revising paragraph (b)(1) to read as 
follows:


Sec.  7.4  Receipt of correspondence.

* * * * *
    (b) * * *
    (1) International applications under Sec.  7.11, subsequent 
designations under Sec.  7.21, requests to record changes in the 
International Register under Sec.  7.23 and Sec.  7.24, and petitions 
to the Director to review an action of the Office's Madrid Processing 
Unit, when filed by mail, will be accorded the date of receipt in the 
Office, unless they are sent by Priority Mail Express[supreg] pursuant 
to Sec.  2.198, in which case they will be accorded the date of deposit 
with the United States Postal Service.
* * * * *

PART 11--REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT 
AND TRADEMARK OFFICE

0
11. The authority citation for 37 CFR part 11 continues to read as 
follows:

    Authority: 5 U.S.C. 500, 15 U.S.C. 1123, 35 U.S.C. 2(b)(2), 32, 
41.


0
12. Section 11.35 is amended by revising the introductory text of 
paragraph (a)(2) to read as follows:


Sec.  11.35  Service of complaint.

    (a) * * *
    (2) By mailing a copy of the complaint by Priority Mail 
Express[supreg], first-class mail, or any delivery service that 
provides ability to confirm delivery or attempted delivery to:
* * * * *

0
13. Section 11.41 is amended by revising paragraph (b) to read as 
follows:


Sec.  11.41  Filing of papers.

* * * * *
    (b) All papers filed after entry of an initial decision by the 
hearing officer shall be filed with the USPTO Director. A copy of the 
paper shall be served on

[[Page 63043]]

the OED Director. The hearing officer or the OED Director may provide 
for filing papers and other matters by hand, by Priority Mail 
Express[supreg], or by other means.

0
14. Section 11.42 is revised to read as follows:


Sec.  11.42  Service of papers.

    (a) All papers other than a complaint shall be served on a 
respondent who is represented by an attorney by:
    (1) Delivering a copy of the paper to the office of the attorney; 
or
    (2) Mailing a copy of the paper by first-class mail, Priority Mail 
Express[supreg], or other delivery service to the attorney at the 
address provided by the attorney under Sec.  11.40(a)(1); or
    (3) Any other method mutually agreeable to the attorney and a 
representative for the OED Director.
    (b) All papers other than a complaint shall be served on a 
respondent who is not represented by an attorney by:
    (1) Delivering a copy of the paper to the respondent; or
    (2) Mailing a copy of the paper by first-class mail, Priority Mail 
Express[supreg], or other delivery service to the respondent at the 
address to which a complaint may be served or such other address as may 
be designated in writing by the respondent; or
    (3) Any other method mutually agreeable to the respondent and a 
representative for the OED Director.
    (c) A respondent shall serve on the representative for the OED 
Director one copy of each paper filed with the hearing officer or the 
OED Director. A paper may be served on the representative for the OED 
Director by:
    (1) Delivering a copy of the paper to the representative; or
    (2) Mailing a copy of the paper by first-class mail, Priority Mail 
Express[supreg], or other delivery service to an address designated in 
writing by the representative; or
    (3) Any other method mutually agreeable to the respondent and the 
representative.
    (d) Each paper filed in a disciplinary proceeding shall contain 
therein a certificate of service indicating:
    (1) The date on which service was made; and
    (2) The method by which service was made.
    (e) The hearing officer or the USPTO Director may require that a 
paper be served by hand or by Priority Mail Express[supreg].
    (f) Service by mail is completed when the paper mailed in the 
United States is placed into the custody of the U.S. Postal Service.

0
15. Section 11.51 is amended by revising paragraph (a) to read as 
follows:


Sec.  11.51  Depositions.

    (a) Depositions for use at the hearing in lieu of personal 
appearance of a witness before the hearing officer may be taken by 
respondent or the OED Director upon a showing of good cause and with 
the approval of, and under such conditions as may be deemed appropriate 
by, the hearing officer. Depositions may be taken upon oral or written 
questions, upon not less than ten days' written notice to the other 
party, before any officer authorized to administer an oath or 
affirmation in the place where the deposition is to be taken. The 
parties may waive the requirement of ten days' notice and depositions 
may then be taken of a witness at a time and place mutually agreed to 
by the parties. When a deposition is taken upon written questions, 
copies of the written questions will be served upon the other party 
with the notice, and copies of any written cross-questions will be 
served by hand or Priority Mail Express[supreg] not less than five days 
before the date of the taking of the deposition unless the parties 
mutually agree otherwise. A party on whose behalf a deposition is taken 
shall file a copy of a transcript of the deposition signed by a court 
reporter with the hearing officer and shall serve one copy upon the 
opposing party. Expenses for a court reporter and preparing, serving, 
and filing depositions shall be borne by the party at whose instance 
the deposition is taken. Depositions may not be taken to obtain 
discovery, except as provided for in paragraph (b) of this section.
* * * * *

PART 41--PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

0
16. The authority citation for 37 CFR part 41 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134, 
135, and Public Law 112-29.


0
17. Section 41.106 is amended by revising paragraphs (d)(1) and (e)(3) 
to read as follows:


Sec.  41.106  Filing and service.

* * * * *
    (d) Specific filing forms--(1) Filing by mail. A paper filed using 
the Priority Mail Express[supreg] service of the United States Postal 
Service will be deemed to be filed as of ``date accepted'' on the 
Priority Mail Express[supreg] mailing label; otherwise, mail will be 
deemed to be filed as of the stamped date of receipt at the Board.
* * * * *
    (e) * * *
    (3) Service must be by Priority Mail Express[supreg] or by means at 
least as fast and reliable as Priority Mail Express[supreg]. Electronic 
service is not permitted without Board authorization.
* * * * *

PART 42--TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

0
18. The authority citation for 37 CFR part 42 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2), 6, 21, 23, 41, 135, 311, 312, 316, 
321-326 and Public Law 112-29.


0
19. Section 42.6 is amended by revising paragraph (e)(1) to read as 
follows:


Sec.  42.6  Filing of documents, including exhibits; service.

* * * * *
    (e) * * *
    (1) Electronic or other mode. Service may be made electronically 
upon agreement of the parties. Otherwise, service may be by Priority 
Mail Express[supreg] or by means at least as fast and reliable as 
Priority Mail Express[supreg].
* * * * *

0
20. Section 42.105 is amended by revising paragraph (b) to read as 
follows:


Sec.  42.105  Service of petition.

* * * * *
    (b) Upon agreement of the parties, service may be made 
electronically. Service may be by Priority Mail Express[supreg] or by 
means at least as fast and reliable as Priority Mail Express[supreg]. 
Personal service is not required.

0
21. Section 42.205 is amended by revising paragraph (b) to read as 
follows:


Sec.  42.205  Service of petition.

* * * * *
    (b) Upon agreement of the parties, service may be made 
electronically. Service may be by Priority Mail Express[supreg] or by 
means at least as fast and reliable as Priority Mail Express[supreg]. 
Personal service is not required.

0
22. Section 42.406 is amended by revising paragraph (b) to read as 
follows:


Sec.  42.406  Service of petition.

* * * * *
    (b) Upon agreement of the parties, service may be made 
electronically. Service may be by Priority Mail Express[supreg] or by 
means at least as fast and reliable as Priority Mail Express[supreg]. 
Personal service is not required.


[[Page 63044]]


    Dated: October 10, 2014.
Michelle K. Lee,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy 
Director of the United States Patent and Trademark Office.
[FR Doc. 2014-24891 Filed 10-21-14; 8:45 am]
BILLING CODE 3510-16-P