UNIFORM CERTIFICATE OF ATTENDANCE FOR CLE To be ...

48808 Federal Register / Vol. 77, No. 157 / Tuesday, August 14, 2012 / Rules and Regulationssroberts on DSK5SPTVN1PROD with RULESwith no apparent benefit to eitherapplicants or the Office, particularly asthe Office does not provide the actualunderlying reason for the proposedchange.Response: Section 1.1(e) is beingrevised to reflect the current mail stopfor applications under 35 U.S.C. 156 forpatent term extension and additionalcorrespondence regarding applicationsfor patent term extension under 35U.S.C. 156. The current mail stop forsuch applications and correspondenceis ‘‘Mail Stop Hatch-Waxman PTE.’’ TheOffice published a notice including thisnew mail stop on November 21, 2006.See Mailing and Hand Carry Addressesfor the United States Patent andTrademark Office, 1312 Off. Gaz. Pat.Office 107 (Nov. 21, 2006). The mailstop designated as ‘‘Mail Stop PatentExt.’’ is for applications for patent termextension or adjustment under 35 U.S.C.154 and any communication relatingthereto (except when being mailedtogether with the issue fee). The twodifferent mail stops lead to moreefficient processing of the differenttypes of applications andcorrespondence for patent termextension and adjustment sincedifferent areas of the Office process thedifferent correspondence. Thus, § 1.1(e)has been revised to reflect the correctmail stop.2. Signatures (§ 1.4)Comment 55: Several commentsquestioned whether proposed § 1.4(e)would prevent the use of credit cardpayments with electronic submissions,such as EFS-Web, EPAS, the Office’sRevenue Accounting and Management(RAM) system, the Office’s Order EntryManagement System (OEMS), and theCentral Fax Number. Another commentquestioned whether the proposedchange means that patentees will not beable to pay maintenance fees onlinewith a credit card.Response: Section 1.4(e) does notprevent the use of credit card paymentswith electronic submissions via theOffice’s electronic filing systems such asEFS-Web. Section 1.4(e) has beenrevised to require an originalhandwritten signature personally signedin permanent dark ink or its equivalentfor payments by credit cards where thepayment is not being made via theOffice’s various electronic filingsystems. An original handwrittensignature is only required when thecredit card payment is being made inpaper, and thus the Office’s Credit CardPayment Form, PTO–2038, or anequivalent, is being used. The creditcard payment form is not required (andshould not be used) when making acredit card payment via EFS-Web orother electronic filing systems. Asubmission via the Central FacsimileNumber is not considered an electronicsubmission and thus credit cardpayments being made by facsimilesubmission to the Central FacsimileNumber require an original handwrittensignature.Comment 56: One comment statedthat there are various rules which seemto require an original signature andrequested that the Office clarify thatsuch ‘‘original signatures’’ include ‘‘esignatures.’’Response: The term ‘‘original’’ is usedin connection with handwrittensignatures in § 1.4(d)(1) and does notinclude S-signatures. Section 1.4(e)specifies when an original handwrittensignature is required. A handwrittensignature can be an original or a copythereof, except when an originalhandwritten signature is required, as setforth in § 1.4(e). See MPEP § 502.02.Unless § 1.4(e) is applicable, an S-signature, as provided for in § 1.4(d)(2),may be used.3. Juristic Entity (§ 1.31)Comment 57: One comment statedthat proposed § 1.33(f) seems to allow ajuristic entity to sign documents such asterminal disclaimers and statementsunder § 3.73(b) because of the language‘‘unless otherwise specified,’’ which iscontrary to the preamble discussionwhich stated that all papers submittedon behalf of a juristic entity must besigned by a patent practitioner.Response: Section 1.33(b)(3) containsthe language of proposed § 1.33(f).Section 3.73(c) now contains theprovisions for establishing ownership ina patent matter including the requiredstatement. Section 1.321 provides for aterminal disclaimer to be signed by theapplicant or an attorney or agent ofrecord. Thus, an assignee who is theapplicant may sign a terminaldisclaimer. Section 3.73(d) provides fora statement under § 3.73(c) to be signedby a person authorized to act on behalfof the assignee.4. Correspondence Address (§ 1.33)Comment 58: One comment suggestedthat § 1.33(a) be amended to state thatthe correspondence address must beprovided in an application data sheetsince the Office’s application data sheetform (PTO/SB/14) already has a field forcorrespondence address.Response: The Office encouragesapplicants to provide an applicationdata sheet containing a correspondenceaddress, but applicants may alsoprovide a correspondence address inanother paper (e.g., a transmittal letter)VerDate Mar2010 17:28 Aug 13, 2012 Jkt 226001 PO 00000 Frm 00034 Fmt 4701 Sfmt 4700 E:\FR\FM\14AUR6.SGM 14AUR6accompanying the application,particularly where an application datasheet is not being filed with theapplication. The Office needs to be ableto communicate with applicants evenwhen an application data sheet is notsubmitted.Comment 59: One comment suggestedmaintaining the language of current§ 1.33(a) to state that where more thanone correspondence address is specifiedin a single paper or multiple paperssubmitted on one day, the Office willuse a Customer Number for thecorrespondence address over a typedcorrespondence address. The commentindicated that the Office has used adifferent correspondence where aCustomer Number ‘‘has been properlypresented in the filings associated withan application.’’Response: The Office will generallyselect the address associated with aCustomer Number over a typedcorrespondence address when morethan one correspondence address isspecified in a paper or papers submittedon the same day. The Office, however,prefers not to be required by rule toselect the Customer Number since theremay be situations where it is clear thatthe Customer Number given is not theintended or current correspondenceaddress. Thus, the Office requires someflexibility in this regard.Comment 60: One comment suggestedthat to ensure prompt processing ofcorrespondence addresses, apractitioner using private PAIR shouldhave the ability to input a new/correctcorrespondence address which becomeseffective immediately upon submission.Response: The Office is currentlyconsidering changes to the PAIR systemthat may include the ability of a patentpractitioner of record to change thecorrespondence address in anapplication. The Office would notify thepublic of any changes to the PAIRsystem via a notice on the Office’sInternet web site.5. Person Making Declaration (§ 1.64)Comment 61: One comment suggestedthat: (1) § 1.64(a) which states that thedeclaration ‘‘must be made by all of theactual inventors, except as provided forin §§ 1.42, 1.43, 1.47, or 1.67,’’ berevised to employ the statutory languageof 35 U.S.C. 115, that ‘‘each individualwho is the inventor or a joint inventorof a claimed invention;’’ (2) the portionof § 1.64(b) that states ‘‘[i]f the personmaking the oath or declaration is not theinventor, the declaration shall state* * * ’’ should be removed as only aninventor or joint inventor may executean oath or declaration; and (3) therequirement for the residence of non-