MPEP § 403 — MPEP § 403
Current through: 2022-07-01

403-Correspondence — With Whom Held; Customer Number Practice 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Chapter 0400 

 Section 403 
 

 
 
 
 
 
 403 Correspondence — With Whom Held; Customer Number Practice [R-01.2024]

 37 CFR
 1.33 states that when an attorney or agent has been duly appointed to
 prosecute an application, correspondence will be held with the attorney or agent unless
 some other correspondence address has been given. If an attorney or agent of record assigns
 a correspondence address which is different than an address where the attorney or agent
 normally receives mail, the attorney or agent is reminded that (1) 37 CFR
 11.106 requires the attorney or agent to keep information obtained by
 attorney/agent – client relationship in confidence; and (2) the attorney or agent is still
 responsible for responding to any notice or action from the Office. See 37 CFR
 11.101 , 11.103 and 11.804 .
 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) .
 

 If double correspondence is attempted, form paragraph
 4.01 should be included in the next Office action.
 

 ¶ 4.01 Double Correspondence

 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 .
 

 Examiner Note:
 
 1. The first time a reply is received directly from applicant, include
 this paragraph in the Office action and send a copy of the action to the applicant. See
 MPEP §§
 403 and 714.01 .
 

 2. Should applicant file additional replies, do not send copies of
 subsequent Office actions to the applicant.
 

 3. Status letters from the applicant may be acknowledged in isolated
 instances.
 
 
 

 See MPEP § 403.01(a) for additional
 information pertaining to correspondence in applications filed on or after September 16,
 2012. See MPEP
 § 403.01(b) for additional information pertaining to
 correspondence in applications filed before September 16, 2012.
 

 I. CUSTOMER NUMBER PRACTICE A Customer Number (previously a “Payor Number”) may be
 used to: 
 

 
 (A) designate the correspondence address of a patent
 application or patent such that the correspondence address for the patent
 application or patent would be the address associated with the Customer Number
 ( 37 CFR
 1.32(a)(5)(i) ); 
 

 (B) designate the fee address ( 37 CFR
 1.363 ) of a patent such that the fee address for the patent
 would be the address associated with the Customer Number ( 37 CFR
 1.32(a)(5)(ii) ); and
 

 (C) submit a list of practitioners such that those
 practitioners associated with the Customer Number would have power of attorney
 ( 37 CFR
 1.32(a)(5)(iii) ). 
 

 
 Thus, a Customer Number may be used to designate the
 address associated with the Customer Number as the correspondence address of an
 application (or patent) or the fee address of a patent, and may also be used to submit a
 power of attorney in the application (or patent) to the registered practitioners
 associated with the Customer Number.
 

 Applicant may use either the same or different customer
 number(s) for the correspondence address, the fee address and/or a list of
 practitioners. The customer number associated with the correspondence address is
 the Customer Number that can be used to obtain full access to the USPTO patent
 electronic filing system at www.uspto.gov/PatentCenter . See MPEP § 1730 for
 additional information regarding the USPTO patent electronic filing system.
 

 The Office will accept requests for changes to the
 Customer Number information through the USPTO patent electronic filing system. See
 MPEP §
 502.05 for information pertaining to the USPTO patent
 electronic filing system.
 

 The following forms are suggested for use with the
 Customer Number practice:
 

 
 (A) the “Request for Customer Number” (PTO/SB/125) to
 request a Customer Number; 
 

 (B) the “Request for Customer Number Data Change”
 (PTO/SB/124) to request a change in the data (address or list of practitioners)
 associated with an existing Customer Number; 
 

 (C) the “Change of Correspondence Address, Application”
 (PTO/AIA/122 for applications filed on or after September 16, 2012, or PTO/SB/122
 for applications filed before September 16, 2012) to change the correspondence
 address of an individual application to the address associated with a Customer
 Number; and 
 

 (D) the “Change of Correspondence Address, Patent”
 (PTO/AIA/123 for applications filed on or after September 16, 2012, or PTO//SB/123
 for applications filed before September 16, 2012) to change the correspondence
 address of an individual patent to the address associated with a Customer Number.
 
 

 
 The Office will also accept requests on electronic storage
 media submitted electronically to change the correspondence address of a list of
 applications or patents or the fee address for a list of patents to the address
 associated with a Customer Number. Instructions for submitting such requests are
 available on the “Customer Number Upload Spreadsheet” available at www.uspto.gov/Ebc . 
 

 Such electronic requests must comply with the requirements
 set forth in the Notice entitled “Extension of the Payor Number Practice (through
 “Customer Numbers”) to Matters Involving Pending Patent Applications,” published in the
 Federal Register at 61 FR 54622, 54623-24 (October 21, 1996), and
 in the Official Gazette at 1191 O. G. 187, 188-89 (October 29, 1996). 
 

 With Customer Number practice, a patentee is also able to
 designate a “fee address” for the receipt of maintenance fee correspondence, and a
 different address for the receipt of all other correspondence. The designation of a “fee
 address” by reference to a Customer Number will not affect or be affected by the
 designation of a correspondence address by reference to another Customer Number, in that
 the Office will send maintenance fee correspondence to the address associated with the
 Customer Number designated as the “fee address” and will send all other correspondence
 to the address associated with the Customer Number designated as the correspondence
 address.
 

 The association of a list of practitioners with a Customer
 Number will permit an applicant to appoint all of the practitioners associated with the
 Customer Number merely by reference to the Customer Number in the Power of Attorney
 (i.e., without individually listing the practitioners in the Power of Attorney). The
 addition and/or deletion of a practitioner from the list of practitioners associated
 with a Customer Number by submitting a corresponding “Request for Customer Number Data
 Change” (PTO/SB/124) will result in the addition or deletion of such practitioner from
 the list of persons authorized to represent any applicant or assignee of the entire
 interest of the applicant who appointed all of the practitioners associated with such
 Customer Number. This will avoid the necessity for the filing of additional papers in
 each patent application affected by a change in the practitioners of the law firm
 prosecuting the application. The appointment of practitioners associated with a Customer
 Number is optional, in that any applicant may continue to individually name those
 practitioners to represent the applicant in a patent application, so long as fewer than
 ten patent practitioners are named. See 37 CFR 1.32(c)(3) .
 

 Effective January 2, 2024, the USPTO created the design
 patent practitioner bar for practicing before the Office in design patent matters.
 Design patent practitioners are registered under 37 CFR
 11.6(d) and can only practice in design patent matters.
 37 CFR
 1.32(a)(1) . In contrast, patent practitioners registered under
 37 CFR
 11.6(a) - (c) can practice in all patent
 matters, which includes design patent matters. See MPEP §
 1502.02 . A power of attorney naming the practitioners
 associated with a Customer Number may only include practitioners who are authorized to
 practice in the applicable patent matter. Therefore, if a design patent practitioner is
 associated with a Customer Number, that Customer Number can only be used to establish
 power of attorney in design patent matters. This applies even if a practitioner that is
 authorized to practice in all patent matters is also associated with the same Customer
 Number.
 

 The Customer Number practice does not affect the
 prohibition against, and does not amount to, an appointment of a law firm (rather than
 specified practitioners). The Office prohibits an appointment of a specified law firm
 because the Office cannot ascertain from its records whether a particular practitioner
 submitting a paper to the Office is associated with the law firm specified in an
 appointment. The Office will permit an appointment of all of the practitioners
 associated with a specified Customer Number because the Office can ascertain from its
 records for the specified Customer Number whether a particular practitioner is
 associated with that Customer Number.
 

 A law firm should promptly remove any practitioner who
 leaves the firm from the list of practitioners associated with any Customer Number used
 by the law firm, so that the practitioner will not have access to the applications
 associated with the Customer Number. A practitioner leaving a law firm can also remove
 themselves from any Customer Number used by the law firm. In order to continue
 representing an applicant who had appointed the practitioners associated with the
 Customer Number of a law firm, a practitioner leaving the law firm must obtain a new
 power of attorney. 
 

 Similarly, a practitioner who has a USPTO patent
 electronic filing system account should remove sponsorship of any support staff
 individual when that individual leaves the firm so that the support staff individual
 will not have access to any applications associated with any Customer Number linked to
 the practitioner. 
 

 As the Office will not recognize more than one
 correspondence address ( 37 CFR 1.33(a) ), any inconsistencies
 between the correspondence address resulting from a Customer Number being provided in an
 application for the correspondence address and any other correspondence address provided
 in that application will generally be resolved in favor of the address of the Customer
 Number or the application data sheet ( 37 CFR 1.76(d) ). Due to the
 prohibition against double correspondence in an application ( 37 CFR
 1.33(a) ), an applicant will be permitted to provide only a single
 number at a time as the Customer Number for the correspondence address. Applicants are
 strongly cautioned not to attempt to appoint more than one Customer Number for a
 particular purpose (e.g., correspondence address) in a single communication, as such
 action will not have a cumulative effect. 
 

 Where an applicant appoints all of the practitioners
 associated with a Customer Number as well as a list of individually named practitioners,
 such action would be treated as only an appointment of all of the practitioners
 associated with a Customer Number due to the potential for confusion and data entry
 errors in entering registration numbers from plural sources. Furthermore, Office
 computer systems do not allow for entry of both a power of attorney to a list of
 practitioners associated with a Customer Number and a list of practitioners.
 

 Although Customer Numbers are designed to designate both a
 correspondence address and to associate one or more patent practitioners with an
 application, one Customer Number may be used for the correspondence address, and another
 Customer Number may be used for the power of attorney. As stated previously, the
 customer number associated with the correspondence address is the Customer Number that
 can be used to obtain full access to the USPTO patent electronic filing system. For
 example, where one customer number is associated with the correspondence address (e.g.,
 a customer number that lists all of the practitioners at a particular firm) and a
 different customer number is used to appoint practitioners as having power of attorney
 (e.g., a customer number that lists a small number of practitioners from the particular
 firm as well as a few practitioners who are employees of the applicant), only the
 practitioners associated with the customer number being used for the correspondence
 address will be able to access the application in the USPTO patent electronic filing
 system. 
 

 The Office has created a Mail Stop designation for
 correspondence related to a Customer Number (“Mail Stop EBC”), and all correspondence
 related to a Customer Number (e.g., requests for a Customer Number) should be addressed
 to this mail stop designation.
 

 The following persons are authorized to change the
 information associated with an established Customer Number: (1) a registered
 practitioner associated with the Customer Number; and (2) the person who requested the
 Customer Number (signed the Request for Customer Number, Form PTO/SB/125).
 

 II. PATENT APPLICATION FILED WITHOUT CORRESPONDENCE ADDRESS If a patent application as filed has been accorded a
 filing date but is not complete, the applicant is notified and given a period of time
 within which to file the missing parts to complete the application and pay the
 applicable surcharge. See MPEP § 601.01et seq. for a discussion of
 the requirements for a complete application. In order for the Office to so notify the
 applicant, a correspondence address must also be provided by the applicant. The address
 may be different from the post office address of the applicant. For example, the address
 of the applicant’s registered attorney or agent may be used as the correspondence
 address. If the applicant fails to provide the Office with a correspondence address, the
 Office will be unable to provide the applicant with notification to complete the
 application and to pay the surcharge as set forth in 37 CFR 1.16(f) for nonprovisional
 applications and 37
 CFR 1.16(g) for provisional applications. In such a case, the
 applicant will be considered to have constructive notice as of the filing date that the
 application must be completed and the applicant will have 2 months from the filing date
 in which to do so before abandonment occurs.
 

 The periods of time within which the applicant must
 complete the application may be extended under the provisions of 37 CFR 1.136 .
 Applications which are not completed in a timely manner will be abandoned.
 

 
 403.01 Correspondence in Applications [R-07.2022]

 

 
 403.01(a) Correspondence in Applications Filed On or
 After September 16, 2012 [R-01.2024]
 

 
 37 CFR 1.33 Correspondence respecting patent applications, reexamination proceedings,
 and other proceedings. 

 
 (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(b)(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 USPTO
 patent 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, 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. 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 by the parties set forth in paragraph (b)(1) or (b)(3) of this
 section. Prior to the appointment of any power of attorney under §
 1.32(b) , the correspondence address may also be
 changed by any patent practitioner named in the application transmittal
 papers who acts in a representative capacity under the provisions of §
 1.34 . 
 

 (b) Amendments and other papers. Amendments and other papers,
 except for written assertions pursuant to § 1.27(c)(2)(iii) or (c)(2)(iv) , filed in the application must be signed
 by:
 
 (1) A patent practitioner of record;

 (2) A patent practitioner not of record who acts in a
 representative capacity under the provisions of § 1.34 ; or
 

 (3) The applicant (§ 1.42 ). Unless otherwise specified, all papers
 submitted on behalf of a juristic entity must be signed by a patent
 practitioner.
 

 
 

 (c) All notices, official letters, and other communications for
 the patent owner or owners in a reexamination or supplemental examination
 proceeding will be directed to the correspondence address in the patent
 file. Amendments filed in a reexamination proceeding, and other papers filed
 in a reexamination or supplemental examination proceeding, on behalf of the
 patent owner must be signed by the patent owner, or if there is more than
 one owner by all the owners, or by an attorney or agent of record in the
 patent file, or by a registered attorney or agent not of record who acts in
 a representative capacity under the provisions of § 1.34 .
 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.
 

 (d) A “correspondence address” or change thereto may be filed
 with the Patent and Trademark Office during the enforceable life of the
 patent. The “correspondence address” will be used in any correspondence
 relating to maintenance fees unless a separate “fee address” has been
 specified. See § 1.363 for “fee address”
 used solely for maintenance fee purposes.
 

 (e) A change of address filed in a patent application or patent
 does not change the address for a patent practitioner in the roster of
 patent attorneys and agents. See § 11.11 of this title.
 

 (f) Where application papers from a prior
 application are used in a continuing application and the correspondence
 address was changed during the prosecution of the prior application, an
 application data sheet or separate paper identifying the correspondence
 address to be used for the continuing application must be submitted.
 Otherwise, the Office may not recognize the change of correspondence address
 effected during the prosecution of the prior application.
 

 (g) A patent practitioner acting in a
 representative capacity whose correspondence address is the correspondence
 address of record in an application may change the correspondence address
 after the patent has issued, provided that the change of correspondence
 address is accompanied by a statement that notice has been given to the
 patentee or owner.
 

 
 

 37 CFR
 1.33(a) specifies that if an applicant provides more than one
 correspondence address (in a single paper or in different papers), the Office will
 select one of the specified addresses for use as the correspondence address and, if
 given, may select the correspondence address associated with a Customer Number over a
 typed correspondence address. However, the hierarchy provided in 37 CFR
 1.76(d) for inconsistencies between an application data sheet
 and other documents will still apply. 
 

 37 CFR
 1.33(a) also provides that the correspondence address may be
 changed by the parties set forth in 37 CFR 1.33(b)(1) (a patent
 practitioner of record) or 37 CFR 1.33(b)(3) (the applicant
 under 37 CFR
 1.42 )). Prior to the appointment of any power of attorney under
 37 CFR
 1.32(b) , the correspondence address may also be changed by any
 patent practitioner named in the application transmittal papers who acts in a
 representative capacity under the provisions of 37 CFR 1.34 . While a practitioner
 acting in a representative capacity cannot change the correspondence address in an
 application after a power of attorney has been appointed, 37 CFR
 1.33(g) provides that a practitioner acting in a representative
 capacity whose correspondence address is the correspondence address of record in an
 application may change the correspondence address after the patent has issued,
 provided that the change of correspondence address is accompanied by a statement that
 notice has been given to the patentee or owner.
 

 Amendments and other papers, except for written
 assertions pursuant to 37 CFR 1.27(c)(2)(iii) or
 (c)(2)(iv) , filed in the application must be signed by: (1) A
 patent practitioner of record; (2) a patent practitioner not of record who acts in a
 representative capacity under the provisions of 37 CFR 1.34 ; or (3) the applicant
 ( 37 CFR
 1.42 ). Pursuant to 37 CFR 1.33(b)(3) , unless
 otherwise specified (e.g., terminal disclaimers and 37 CFR
 3.73(c) statements; see MPEP §
 325 ), all papers submitted on behalf of a juristic entity
 must be signed by a patent practitioner, as 37 CFR 1.31 provides that a
 juristic entity may prosecute a patent application only through a patent
 practitioner.
 

 Where application papers (e.g., the inventor’s oath or
 declaration) from a prior application are used in a continuing application and the
 correspondence address was changed during the prosecution of the prior application,
 an application data sheet or separate paper identifying the correspondence address to
 be used for the continuing application must be submitted. See 37 CFR
 1.33(f) . Otherwise, the Office may not recognize the change of
 correspondence address effected during the prosecution of the prior application. 
 

 

 
 403.01(b) Correspondence in Applications Filed Before
 September 16, 2012 [R-10.2019]
 

 
 37 CFR 1.33 (pre-AIA) Correspondence respecting patent applications, reexamination proceedings,
 and other proceedings. 

 
 (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.
 

 
 

 (c) All notices, official letters, and other
 communications for the patent owner or owners in a reexamination proceeding
 will be directed to the correspondence address. Amendments and other papers
 filed in a reexamination proceeding on behalf of the patent owner must be
 signed by the patent owner, or if there is more than one owner by all the
 owners, or by an attorney or agent of record in the patent file, or by a
 registered attorney or agent not of record who acts in a representative
 capacity under the provisions of § 1.34 . 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.
 

 (d) A “correspondence address” or change thereto
 may be filed with the Patent and Trademark Office during the enforceable
 life of the patent. The “correspondence address” will be used in any
 correspondence relating to maintenance fees unless a separate “fee address”
 has been specified. See § 1.363 for “fee address”
 used solely for maintenance fee purposes.
 

 (e) A change of address filed in a patent
 application or patent does not change the address for a patent practitioner
 in the roster of patent attorneys and agents. See § 11.11 
 of this title.
 

 
 

 Pre-AIA 37 CFR
 1.33(a) provides for an applicant to supply an address to
 receive correspondence from the U.S. Patent and Trademark Office so that the Office
 may direct mail to any address of applicant’s selection, such as a corporate patent
 department, a firm of attorneys or agents, or an individual attorney, agent, or other
 person.
 

 Pre-AIA 37 CFR
 1.33(a) provides that when filing a patent application the
 applicant must specify a correspondence address to which the Office will send
 notices, letters and other communications relating to the application. The
 correspondence address must appear either in an application data sheet
 ( 37 CFR
 1.76 ) or in a clearly identifiable manner elsewhere in any
 papers submitted with an application filing. Where more than one correspondence
 address is specified, the Office will select one of the correspondence addresses for
 use as the correspondence address. This is intended to cover, for example, the
 situation where an application is submitted with multiple addresses, such as one
 correspondence address being given in the application transmittal letter, and a
 different one in an accompanying pre-AIA 37 CFR 1.63 oath or
 declaration, or other similar situations. The Office will select which of the
 multiple correspondence addresses to use according to the following order: (A)
 application data sheet (ADS); (B) application transmittal; (C) oath or declaration
 (unless power of attorney is more current); and (D) power of attorney. If more than
 one correspondence address is specified in a single document, the Office will select
 the address associated with a Customer Number over a typed correspondence
 address.
 

 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.
 The telephone number would be changeable by any party who could change the
 correspondence address.
 

 Pre-AIA 37 CFR
 1.33(a)(1) provides that any party filing the application and
 setting forth a correspondence address could later change the correspondence address
 provided that a pre-AIA 37 CFR 1.63 oath/declaration by any of the inventors
 has not been submitted. If one joint inventor filed an application, the person who
 may change the correspondence address would include only the one inventor who filed
 the application, even if another inventor was identified on the application
 transmittal letter. If two of three inventors filed the application, the two
 inventors filing the application would be needed to change the correspondence
 address. Additionally, any registered practitioner named in the application
 transmittal letter, or a person who has the authority to act on behalf of the party
 that will be the assignee (if the application was filed by the party that will be the
 assignee), could change the correspondence address. A registered practitioner named
 in a letterhead would not be sufficient, but rather a clear identification of the
 individual as being a representative would be required. A company (to whom the
 invention has been assigned, or to whom there is an obligation to assign the
 invention) who files an application, is permitted to designate the correspondence
 address, and to change the correspondence address, until such time as a (first)
 pre-AIA 37 CFR
 1.63 oath/declaration is filed. The mere filing of a
 pre-AIA 37 CFR
 1.63 oath/declaration that does not include a correspondence
 address does not affect any correspondence address previously established on the
 filing of the application, or changed per pre-AIA 37 CFR 1.63(a)(1) , even
 if the application was filed by a company that is only a partial assignee. The
 expression “party that will be the assignee,” rather than assignee, is used in that
 until a declaration is submitted, inventors have only been identified, and any
 attempted assignment, or partial assignment, cannot operate for Office purposes until
 the declaration is supplied. Hence, if the application transmittal letter indicates
 that the application is being filed on behalf of XYZ company, with an assignment to
 be filed later, XYZ company would be allowed to change the correspondence address
 without resort to pre-AIA 37 CFR 3.73 (b) until an executed oath or declaration
 is filed, and with resort to pre-AIA 37 CFR 3.73(b) after the
 oath or declaration is filed.
 

 Where a correspondence address was set forth or changed pursuant to
 pre-AIA 37 CFR
 1.33(a)(1) (prior to the filing of a pre-AIA 37 CFR
 1.63 oath or declaration), that correspondence address remains
 in effect upon filing of a pre-AIA 37 CFR 1.63 declaration
 and can then only be changed pursuant to pre-AIA 37 CFR 1.33(a)(2) .
 

 In a joint application with no power of attorney to either a
 registered practitioner or joint inventor, the applicant whose name first appears in
 the papers receives the correspondence, unless other instructions are given. All
 applicants must sign the replies. See MPEP §§ 402 and
 714.01(a) . If the assignee of the entire interest of the
 applicant is prosecuting the application ( MPEP § 402.07 ), the assignee may
 specify a correspondence address.
 

 Pre-AIA 37 CFR
 1.33(c) relates to which address communications for the patent
 owner will be sent in reexamination proceedings. See also MPEP § 2224 .
 

 Powers of attorney to firms are not recognized by the U.S. Patent and
 Trademark Office. See MPEP § 402 . However, the firm’s address may be used for
 the correspondence address. The address should appear as follows:
 

 John Doe (inventor)
In care of Able, Baker, and Charlie
 (firm)
1234 Main Street 
Arlington, Virginia 22202

 Patent practitioners are reminded that the attorney and agent roster
 must be updated separately from and in addition to any change of address filed in
 individual patent applications.
 

 See MPEP § 601.03 for change of
 correspondence address.
 

 See MPEP § 201.06(c) regarding change of
 correspondence address in continuation or divisional applications filed under
 37 CFR
 1.53(b) .
 

 

 

 
 403.02 Two Patent Practitioners for Same Application [R-10.2019]

 If the applicant simultaneously appoints two patent practitioners,
 applicant should indicate with whom correspondence is to be conducted by specifying a
 correspondence address. See MPEP §§ 403 , 403.01(a) , and MPEP §
 403.01(b) . 
 

 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. See 37 CFR
 1.33 and 1.76 . Note that if the later-filed
 power of attorney only lists the second practitioner, the later-filed power of attorney
 serves as a revocation of the earlier-filed power of attorney, even without an express
 revocation of the power of the first patent practitioner.
 

 

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 401-U.S. Patent and Trademark Office Cannot Aid in Selection of Patent Practitioner 

 402-Power of Attorney; Naming Representative 
 402.01-Limited Recognition in Patent Matters 

 402.02-Appointment of Power of Attorney 
 402.02(a)-Appointment in Application Filed On or After September 16, 2012 

 402.02(b)-Appointment in Application Filed Before September 16, 2012 

 
 

 402.03-Signature Requirements for Papers Filed in an Application 

 402.04-Acting in a Representative Capacity 

 402.05-Revocation of Power of Attorney 
 402.05(a)-Applicant Revocation - Application Filed On or After September 16, 2012 

 402.05(b)-Applicant Revocation - Application Filed Before September 16, 2012 

 
 

 402.06-Attorney or Agent Withdraws 

 402.07-Assignee Revocation of Power of Attorney of Applicant and Appointment of New Power of Attorney 

 402.08-Application in Interference or Derivation Proceeding 

 402.09-International Application 

 402.10-Appointment/Revocation by Less Than All Applicants or Owners 

 
 

 403-Correspondence — With Whom Held; Customer Number Practice 
 403.01-Correspondence in Applications 
 403.01(a)-Correspondence in Applications Filed On or After September 16, 2012 

 403.01(b) -Correspondence in Applications Filed Before September 16, 2012 

 
 

 403.02-Two Patent Practitioners for Same Application 

 
 

 404-[Reserved] 

 405-Interviews With Patent Practitioner Not of Record 

 406-Death of Patent Practitioner 

 407-Suspended or Excluded Patent Practitioner 

 408-Interviews With Patent Practitioner of Record 

 409-Death, Legal Incapacity, or Unavailability of Inventor 
 409.01-Deceased or Legally Incapacitated Inventor 
 409.01(a)-Deceased or Legally Incapacitated Inventor - Application Filed on or After September 16, 2012 

 409.01(b)-Deceased or Legally Incapacitated Inventor- Application Filed Before September 16, 2012 

 
 

 409.02-Unavailable Joint Inventor – Application Filed on or after September 16, 2012 

 409.03-Unavailability of Inventor – Application Filed Before September 16, 2012 
 409.03(a)-At Least One Joint Inventor Available 

 409.03(b)-No Inventor Available 

 409.03(c)-Unavailable Legal Representative of Deceased Inventor 

 409.03(d)-Proof of Unavailability or Refusal 

 409.03(e)-Statement of Last Known Address 

 409.03(f)-Proof of Proprietary Interest 

 409.03(g)-Proof of Irreparable Damage 

 409.03(h)-Processing and Acceptance of a Pre-AIA 37 CFR 1.47 Application 

 409.03(i)-Rights of the Nonsigning Inventor 

 409.03(j)-Action Following Acceptance of a Pre-AIA 37 CFR 1.47 Application 

 
 

 409.04-[Reserved] 

 409.05-Application For Patent by an Assignee, Obligated Assignee, or a Person Who Otherwise Shows Sufficient Proprietary Interest
 – Application Filed On or After September 16, 2012 

 
 

 410-Representations to the U.S. Patent and Trademark Office 

 

 

 
 

 
 
 

 
 

 

 
 
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 03/09/2026 20:49:43