REMINDER FOR ALL REGISTERED PATENT ATTORNEYS AND AGENTS PLEASE UPDATE YOUR CONTACT INFORMATION

As a registered patent attorney or agent, you will in the near future be able to self-manage your contact information online, at the United States Patent and Trademark Office’s (USPTO) website link dedicated to the official roster of attorneys and agents.

How to Update
The following are the steps to get started on self-managing your information.

1. By March 1, 2009 - Please check the current roster to ensure that your business mailing address is accurate. If it needs to be changed, please provide the USPTO’s Office of Enrollment and Discipline (OED) with your current business mailing address. (“How To Correct Your Information” steps are detailed below.)
2. OED will mail to you a password. Separately, OED will mail you a valid user identification. Thus, you should expect two mailings. OED plans to mail the password and valid user ID to all practitioners after March 1, 2009.
3. After you receive your password and valid user ID, you will be able to change your address and telephone number information, as well as input your e-mail address. OED will not insert or change a practitioner’s e-mail address. To avoid unsolicited spamming and communications, a practitioner’s e-mail address will not be made public.

Benefits of Using the On-Line Register
Managing your own contact information eliminates processing errors, reduces losses due to mailings to incorrect addresses, and helps ensure that you receive critical notices and confirmations from the USPTO when you need them.

How the USPTO Uses This Information
The USPTO will use the address information you provide, including e-mail addresses furnished and maintained by you, to communicate with you. For example, communications about future annual practitioner maintenance fees will be sent to your address on the roster. Changes of address filed in applications or for customer numbers do not change a practitioner’s contact information on the roster. [Note: Please remember that you are required to update your practitioner contact information on the roster within 30 days of any change. See 37 CFR 11.11(a).]

How to Check the Roster
To check the roster, go to https://oedci.uspto.gov/OEDCI/ and search by your last name. A page opens listing all registered practitioners who have the same last name. If your name appears on the page, click on your name, and the next page will display the most current business address and telephone number the roster has for you. If your address on the roster is correct, no action by you is necessary.

How to Correct Your Information
If the information is incorrect or out of date, please go to http://www.uspto.gov/web/offices/dcom/olia/oed/aboutaddress.htm, click on the “Change of Address Form” link, complete the Change of Address Form and mail the form to: Mail Stop OED, Director, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450. OED will update your information.

What If My Name Is Not On the USPTO’s Roster?
If your name is not on the roster, you are not authorized to practice before the USPTO in patent cases. In many instances, a practitioner’s name may have been removed pursuant to 37 CFR 10.11(b) or 11.11 for lack of response to a previous survey or communication from OED.

If you believe you should be listed on the roster but are not, you must take steps to be reinstated, as described below.

• A practitioner whose name has been removed from the roster pursuant to 37 CFR 10.11(b) or 11.11, and the removal occurred less than five years before seeking reinstatement, the practitioner may apply for reinstatement by completing and filing a Reinstatement Data Sheet, available at http://www.uspto.gov/web/offices/dcom/olia/oed/reinstatproc.htm, and paying the required reinstatement fee.
• A practitioner whose has been removed from the roster pursuant to 37 CFR 10.11(b), and the removal occurred five or more years before seeking reinstatement, the practitioner may apply for reinstatement by completing and filing a Reinstatement Data Sheet, available at http://www.uspto.gov/web/offices/dcom/olia/oed/reinstatproc.htm, paying the required reinstatement fee; and providing evidence demonstrating that the practitioner is familiar with current patent laws and regulations, as well as the current policies, practices and procedures for preparing and prosecuting patent applications. See “Reinstatement of Patent Attorneys and Agents to Practice Before the U.S. Patent and Trademark Office,” 1064 OG 12 (March 11, 1986).

Relevance to Annual Maintenance Fee
The USPTO has adopted new rules that provide for an annual practitioner maintenance fee for those recognized to practice before the Office 73 Fed. Reg. 67750 (Nov. 17, 2008). In response to suggestions of law firms and companies, such entities will be able to make a single payment of the annual fee for all practitioners who are members of their firms or companies. To ensure that a single payment is properly attributed to all the relevant practitioners, the firm or company name should be the same for all practitioners in the firm or company. This is so all practitioners in the firm or company are retrievable in a single search request to make the single payment.

It is anticipated that in Spring 2009, after your password and valid user ID have been mailed to you, a notice will be sent to you regarding payment of the annual practitioner maintenance fee. The notice will set a due date for paying the fee and provide instructions for methods of paying the fee.

Troubleshooting Hints
One common scenario involves the following. Not infrequently, practitioners identify the firm or company with names that a computer recognizes as different names. For example, the firm of Smith, Jones and Brown would not be recognized in a computer search as being the same as Smith Jones & Brown because as the latter name does not contain precisely the same characters (i.e., it omits a comma and employs an ampersand sign instead of the word “and.”) The company ABZ Corporation, ABZ Co., ABZ Corp and Alpha Beta Zeta Co are recognized as different names. Therefore, if it is anticipated that your firm or company will want to make a single payment for all practitioners, the roster should be checked to ensure that the firm or company names is the same for practitioners registered to practice before the USPTO. Firms and companies with multiple locations - whether in the same or different states or countries - may make a single payment of the annual fee for all practitioners, so long as the name of the firm or company is the same for all the addresses.

Law firms and companies should check the roster and search “Business/Firm Name” to determine which practitioners are not using the firm or company name that should be used. Some practitioners at the firm or company may continue to be listed at the address where they were previously engaged, and their addresses need to be updated. A change of address must be filed by the practitioners to correct their address.

Firms and companies may find a practitioner who is no longer with them but has not yet changed his or her address from that of the former firm or company. The former firm or company cannot change the address of the practitioner who has separated from the firm or company. The former firm or company probably does not want to receive communications from OED for the practitioner and the practitioner probably does not want the former firm or company to receive communications intended for the practitioner. It is therefore suggested that the former firm or company contact the practitioner to update their address with OED to ensure communications from OED will be sent to the correct address.